United States: Pennsylvania

Firms: litigation

  • Akin Gump Strauss Hauer & Feld LLP
  • Dechert LLP
  • Baker & Hostetler LLP
  • Buchanan Ingersoll & Rooney PC
  • Caesar Rivise PC
  • K&L Gates
  • Morgan Lewis & Bockius LLP
  • The Webb Law Firm

Firms: prosecution

  • Baker & Hostetler LLP
  • Buchanan Ingersoll & Rooney PC
  • Caesar Rivise PC
  • Duane Morris LLP
  • Fox Rothschild LLP
  • Morgan Lewis & Bockius LLP
  • Panitch Schwarze Belisario & Nadel LLP
  • Pepper Hamilton LLP
  • The Webb Law Firm

Firms: transactions

  • Highly recommended
  • Buchanan Ingersoll & Rooney PC
  • Recommended
  • K&L Gates
  • Morgan Lewis & Bockius LLP
  • Pepper Hamilton LLP

Akin Gump Strauss Hauer & Feld LLP

Akin Gump fields a pharmaceutical patent litigation A-team. Operating leanly with out-of-this-world courtroom advocates and technically accomplished attorneys who can more than hold their own in cross-examinations with eminent experts, it wins tremendous success for some of the most exciting life sciences innovators. In charge is the inestimably talented Dianne Elderkin, a hands-on trial lawyer who is “top notch through and through”. She works closely with Steven Maslowski, who was recently elevated to chair of the global IP group, and Matthew Pearson, a PhD biochemist with difference-making scientific abilities, both of whom make their debut in the IAM Patent 1000 for 2019. They are currently acting for Bristol-Myers Squibb in an action brought by the Dana-Farber Institute to correct inventorship of six patents directed to a groundbreaking new immuno-oncology cancer treatment method.

Baker & Hostetler LLP

BakerHostetler’s Philadelphia office is an epicentre of the firm’s potent national patent litigation practice, being home to three experienced trial lawyers – Daniel Goettle, who co-leads the practice, decorated veteran Dale Heist and pharmaceutical specialist Joseph Lucci. They have had plenty to get stuck into recently: Goettle and Heist have been representing Comcast in a big-money Eastern District of Pennsylvania action against Sprint Communications; Lucci has been acting for long-term client Johnson & Johnson in litigation, inter partes reviews and portfolio management. BakerHostelter is also a go-to firm for prosecution across a kaleidoscopic range of technologies. Former general counsel Steven Samuels knows the level of scrutiny courts can subject a patent to, having seen it first-hand as a member of litigation teams; he is ideally placed, therefore, to procure ironclad protections for his marquee electronics, software and IT clients.

Buchanan Ingersoll & Rooney PC

Buchanan Ingersoll & Rooney runs one of Pennsylvania’s most multifaceted IP practices; as testament to this, it is the only firm with multiple individuals featured on each of the IAM Patent 1000 prosecution, litigation and transactions tables. Further underscoring this theme of impressive versatility, Michael Dever is recommended on all three tables, and fellow renaissance man Lynn Alstadt on two – litigation and prosecution. Representing mid-sized companies with limited (if any) in-house capacity, Dever has always been a jack – and master – of all trades. Alstadt is best known for his litigation prowess, his fine-grained understanding of international court and patent systems and his strategic insights. Though focused on prosecution and portfolio management, Duane Stewart III and Craig Cochenour are also big-picture international thinkers. Leading light Stewart co-chairs the chemical group. Cochenour has bags of corporate experience, which informs his commercial view of the world, and maintains close relationships with academic institutions, including Duquesne University. Susan Hartman and David Gurwin anchor the transactional practice. An experienced commercial contracts lawyer, Hartman is called in to supervise her clients’ most complex deals; a professional jazz pianist with an excellent entertainment practice, Gurwin is also a fount of knowledge on patents and technology.

Caesar Rivise PC

Pharmaceutical patent litigation is the strong suit of Caesar Rivise, an esteemed Philadelphia boutique with vast experience in Hatch-Waxman Act cases. At any given time, lead litigator Robert Silver has multiple cases on in Delaware, New Jersey and other locales, but he never drops the ball for his extensive following of generic drug makers. Caesar Rivise also garners excellent feedback for its prosecution dexterity. Lawrence Ashery, who has shepherded more than 4,000 high-techpatents to grant, is the focus of much praise: “Larry is quick to grasp the significance of inventions and he is a masterful writer. He is not a litigator but he provides valuable counsel on infringement issues.” Another stand-out is Michael Cornelison, who procures patents for well-known companies, such as Xerox. “Michael communicates extremely well with inventors and understands his clients’ technology at a deep and meaningful level. He demonstrates candour as an adviser and will tell you if he feels something isn’t worth pursuing. His work is exemplary in every respect, and he really cares about getting the docketing and billing side of things right, too.”

Dechert LLP

In 2018 Dechert significantly augmented its “terrific and very reputable patent litigation practice”, hiring illustrious pharmaceutical litigators Noah Liebowitz from Simpson Thacher & Bartlett and Stephen Rabinowitz from Hughes Hubbard & Reed in New York. These power moves would not have come about without the momentum that Philly-based Martin Black and Kevin Flannery are largely responsible for building. These two winning trial lawyers have turned heads masterminding four victories in less than three years for Endo Pharmaceuticals acting against multiple generic manufacturers and a slew of household-name law firms, including Winston & Strawn and Kirkland & Ellis. They also scored a Supreme Court win for SCA Hygiene Products against rival First Quality Baby Products, in which the defence of laches was held not to exist in patent law to bar legal damages in patent cases due to the six-year limitation period baked into the Patent Act.

Duane Morris LLP

When it comes to practising before the USPTO, Duane Morris shines. Its sizeable roster of registered patent attorneys – including numerous PhD-level scientists – bring an abundance of broader industry experience to the mix, so they know how innovation is implemented in the real world. Superstar Samuel Apicelli worked as a product development engineer for AMP for over a decade, rising to the position of director of engineering with responsibility for Southern Europe, Latin America and Asia. Clients, particularly in the medical device sector, flock to him for honest and practical advice on the development and commercialisation of technologies. He supports the firm’s well-endowed patent litigation practice and showcases a talent for simplifying complex science and making it accessible for laypeople.

Fox Rothschild LLP

Fox Rothschild has an expansive patent toolkit and makes the most of it to deliver all-weather patent protection and litigation, post-grant and transactional successes. Putting the prosecution practice in the spotlight is Pittsburgh-based James Singer, the IP department chair and a repository of trust for a myriad of high-profile innovators. He does all the right things to make his clients’ lives easier, for example communicating his advice in crystal-clear and concise language and deploying clever project management tools to automate high-volume, administration-heavy tasks. He works strategically so it is not just a case of taking an invention disclosure and filing a patent; by visiting his clients (free of charge) and getting to know their business, he provides perspicacious commercial advice.

K&L Gates

“Among traditional Pittsburgh-based firms, K&L Gates has one of the strongest patent practices – it covers various technology areas and has an excellent relationship, for example, with Carnegie Mellon University.” Worthy of special mention is the litigation offering, central to which is Patrick McElhinny, who famously won a $1.5 billion judgment for the local university. “Patrick is a trial lawyer you can believe in. He has a gift for distilling down the most complex technical and legal matters and making them both understandable and relatable for judges and juries.” Prosecution and licensing matters, meanwhile, are the domain of George Dickos; he applies a keen eye for detail and quality when supervising patent procurement efforts, but in his own practice shines brightly as an opinion giver and deal broker. His good business sense chimes well with clients.

Morgan Lewis & Bockius LLP

Morgan Lewis & Bockius is one of the US patent scene’s top movers and shakers right now – in 2018, it added 16 partners and more than 40 counsel, associates, technical specialists, patent agents and docketing personnel. Helping to orchestrate this massive national expansion, Eric Kraeutler has been performing brilliantly as leader of the firm’s global IP division. His own practice is a high-flying litigation one – Kraeutler is a fellow of the prestigious American College of Trial Lawyers who has litigated high-stakes IP cases across the United States. His recent wins include successfully invalidating a key patent directed towards 3G licensing technology in an infringement complaint consolidating 11 lawsuits filed by 3G Licensing against his client BlackBerry. Deputy leader of the IP practice Louis Beardell is an architect of the firm’s prosecution prosperity which, at a national level, is largely unmatched by the firm’s general practice competitors. Life sciences and financial technology are his focused industries – something he shares with Pittsburgh office founding partner and transactions specialist Peter Watt-Morse.

Panitch Schwarze Belisario & Nadel LLP

Compact but perfectly formed boutique Panitch Schwarze Belisario & Nadel is a master at strategic patent prosecution. A collaborative approach internally and with clients elevates the set’s problem-solving skills and underpins its exceptional service. Key contact Martin Belisario’s well-roundedness as a patent lawyer enables him to devise and execute holistic international strategies to advance the business interests of his mechanical, medical device and software patrons while strengthening their legal security.

Pepper Hamilton LLP

“Pepper Hamilton presides over an outstanding chemical and life sciences practice. Its commercially focused team has vast experience advising pharmaceutical and biotechnology companies on a wide spectrum of matters – from product launch to listing and M&A.” The fulcrum around which the practice turns is Raymond Miller, who has cracked the code of IP value creation.

The Webb Law Firm

“The biggest IP player in Pittsburgh”, The Webb Law Firm has a squad of more than 50 professionals, all but one of whom has a science or engineering degree. There is not a technology or instruction that the firm cannot handle, given the breadth of its expertise encompassing all facets of prosecution, litigation and technology transactions. Vital to the success of the group is the mentoring and leadership of Richard Byrne, an IP polymath with a distinguished 35-plus year career on the frontlines of IP development. Ambidextrous prosecutor and litigator Kent Baldauf is another resourceful attorney; he thrives in the cut and thrust of courtroom combat but knows that good business resolutions are what count.

Other recommended experts

Ballard Spahr’s Robert Baron “works tirelessly to uncover facts and establish a timeline to help tell his clients’ stories. He has excellent interpersonal skills and innate business acumen and is a dependable attorney who you never need to chase.” “Amelia Feulner Baur has a strong scientific and technical background to complement her tremendous legal expertise. She provides sound, extremely helpful guidance and has an excellent success rate in prosecution.” For the IAM Patent 1000, the McNeill Baur lawyer and molecular microbiology PhD was described by one happy client as “the best patent counsel I have ever worked with”. DLA Piper patent prosecution co-chair Daniel Christenbury is extremely active in the Japanese and German markets and a reference among Pennsylvania lawyers on international prosecution and strategy best practices. Alongside nine other IP lawyers, Charles Dougherty recently switched Beck & Thomas for Vorys, Sater, Seymour and Pease in Pittsburgh. Benjamin Leace litigates to obtain commercial results for his clients, not just for the fun of it. Much more than a litigator, the RatnerPrestia man is a prominent voice in the wider IP community through his Philadelphia Intellectual Property Law Association and other memberships and his extensive speaking activities. Kenneth Nigon gives Schwegman Lundberg & Woessner a presence in Pennsylvania. As a thought leader on software patents, he helps maintain the firm’s reputation as a top-quality boutique. Vice chair of Blank Rome’s IP and technology group, Lisa Casey Spaniel delivers excellent results in transactional scenarios. Software and technology licensing are her fortes.

Individuals: litigation

  • Martin Black - Dechert LLP
  • Dianne B Elderkin - Akin Gump Strauss Hauer & Feld LLP
  • Eric Kraeutler - Morgan Lewis & Bockius LLP
  • Lynn J Alstadt - Buchanan Ingersoll & Rooney PC
  • Kent E Baldauf Jr - The Webb Law Firm
  • Robert Baron - Ballard Spahr LLP
  • Richard L Byrne - The Webb Law Firm
  • Michael L Dever - Buchanan Ingersoll & Rooney PC
  • Charles Dougherty - Vorys, Sater, Seymour and Pease LLP
  • Kevin M Flannery - Dechert LLP
  • Daniel J Goettle - Baker & Hostetler LLP
  • Dale M Heist - Baker & Hostetler LLP
  • Benjamin E Leace - RatnerPrestia
  • Joseph Lucci - Baker & Hostetler LLP
  • Steven Maslowski - Akin Gump Strauss Hauer & Feld LLP
  • Patrick J McElhinny - K&L Gates
  • Matthew A Pearson - Akin Gump Strauss Hauer & Feld LLP
  • Robert Silver - Caesar Rivise PC

Individuals: prosecution

  • Richard L Byrne - The Webb Law Firm
  • James M Singer - Fox Rothschild LLP
  • Lynn J Alstadt - Buchanan Ingersoll & Rooney PC
  • Samuel Apicelli - Duane Morris LLP
  • Lawrence E Ashery - Caesar Rivise PC
  • Amelia Feulner Baur - McNeill Baur PLLC
  • Louis W Beardell Jr - Morgan Lewis & Bockius LLP
  • Martin G Belisario - Panitch Schwarze Belisario & Nadel LLP
  • T Daniel Christenbury - DLA Piper LLP (US)
  • Craig G Cochenour - Buchanan Ingersoll & Rooney PC
  • Michael J Cornelison - Caesar Rivise PC
  • Michael L Dever - Buchanan Ingersoll & Rooney PC
  • Kenneth N Nigon - Schwegman Lundberg & Woessner PA
  • Steven B Samuels - Baker & Hostetler LLP
  • Duane A Stewart III - Buchanan Ingersoll & Rooney PC

Individuals: transactions

  • Michael L Dever - Buchanan Ingersoll & Rooney PC
  • George Dickos - K&L Gates
  • Charles Dougherty - Vorys, Sater, Seymour and Pease LLP
  • David A Gurwin - Buchanan Ingersoll & Rooney PC
  • Susan M Hartman - Buchanan Ingersoll & Rooney PC
  • Raymond A Miller - Pepper Hamilton LLP
  • James M Singer - Fox Rothschild LLP
  • Lisa Casey Spaniel - Blank Rome LLP
  • Peter M Watt-Morse - Morgan Lewis & Bockius LLP