United States: Utah

Firms

  • Dorsey & Whitney LLP
  • Maschoff Brennan
  • Stoel Rives LLP
  • TraskBritt PC 
  • Workman Nydegger
  • Holland & Hart LLP
  • Parsons Behle & Latimer PLC
  • Ray Quinney & Nebeker

Dorsey & Whitney LLP

In February 2018 Dorsey amped up its IP practice with the addition of a large team of attorneys from Holland & Hart including partners Brett Foster, Grant Foster, Mark Miller and Bryan Pratt. The highly respected Foster brothers “give the right answer to any technical or business question” and possess prosecution, counselling and litigation expertise in abundance. They are considered by rights holders to be “responsive, deeply knowledgeable, enjoyable to work with and highly cost efficient”. Focusing on portfolio creation and management, Pratt “never creates problems but solves them”. “He is excellent with relationship dynamics and has cultivated an outstanding client base.” As a litigator, Miller “has stage presence” and showcases “amazing creativity”.

Holland & Hart LLP

Although it recently suffered the loss of a four-partner team, Holland & Hart remains committed to developing its patent practice in Salt Lake City. The firm continues to provide a robust offering, with eight associates and a solid partner anchor in Scott Karren. An astute IP strategist and portfolio manager – and a master of the electrical arts – Karren performs flawlessly for big clients, including a leading name in cybersecurity software. His experience recruiting, training and mentoring other lawyers will no doubt be a boon as the group evolves.

Maschoff Brennan

“Having not only really strong prosecution credentials but also a phenomenal patent litigation capability, Maschoff Brennan is making strides.” Team growth in Utah and Orange County has taken the side’s attorney headcount to nearly 50 – an impressive number which speaks to the firm’s technical depth. The group is particularly strong in the high-tech realm but has scientists and engineers for all occasions. Showcasing this on a daily basis are savvy strategic counsellors and patent portfolio pros Eric Maschoff, Kevin Johanson, Burns Israelsen and Richard Gilmore – “a fine group of top-notch attorneys”. With his rich computer hardware and software design engineering experience, Maschoff is razor sharp when it comes to information technology; Johnson blends IT nous with an understanding of the finer nuances of patenting and business in the wireless communications and electronics areas; Israelsen is fluent in all of these, but his reach also extends into mechanical systems; and the same goes for Gilmore, who adds further trademark expertise to the mix. Litigation parties in need of no-nonsense, business-oriented representation can call on Larry Laycock with complete confidence. Given his transactional experience, Laycock is not one to fight for fighting’s sake – he can cut deals when commercially felicitous; that said, he is very much cut from the lead trial counsel mould and has advocacy awards stretching back to his student days.

Parsons Behle & Latimer PLC

A full-service outfit with a rich and colourful history, Parsons Behle & Latimer is a firm fixture on Utah’s legal market. When it comes to patents, the set is well positioned to provide comprehensive support and showcases a particularly deft touch when intellectual property intersects with other disciplines, such as competition law. Sitting in both the IP and antitrust groups, trial lawyer David Mangum is the go-to guy for a must-win case, whatever the technology at issue.

Ray Quinney & Nebeker

Ray Quinney & Nebeker had an evolutionary year in 2017; in March it recruited Paul Taylor to build and lead a new patent prosecution practice. Securing the former Workman Nydegger patent attorney and equity shareholder was an excellent move – Taylor is well-known to be an elite IP protector in the Mountain States. A medical device maestro, he is nonetheless proficient in many industries and counts a leading software company and universities with broad research activities among his patrons. RQ&N also maintains a resolute litigation practice and serves as both shield and sword.

Stoel Rives LLP

Regional powerhouse Stoel Rives runs a highly sophisticated life sciences patent practice – something which is very hard to find anywhere other than the coasts. Setting commercial IP strategy for biopharmaceutical, medical device and chemical companies is the forte of former technology and IP group head Matthew Bethards, a risk analyser and mitigator par excellence and “leader in the community”. Another touchpoint in the sector is Barton Giddings, who stands out for his astute asset creation and portfolio management skills. A former chief patent counsel at NPS Pharmaceuticals, he understands the daily challenges in-house professionals face and helps them to not only navigate around, but to truly conquer them. The picture of technical dexterity, commerciality and pragmatism is no different in the electrical arts, which is the preserve of Aaron Barker and John Thompson. A master at preparation and prosecution, counselling and IP monetisation, Barker dispenses on-the-money advice to a diverse clientele. Thompson is not just a big dog locally, but is well-reputed among the most innovative companies in California and the Pacific Northwest. He loves to get hands on with computer technology.

TraskBritt PC 

Inculcated by the firm’s tailored commercial solutions, the loyalty of influential and discerning clients continues to blow a steady wind into TraskBritt’s sails. A number of the side’s lawyers have high-level in-house counsel and industry experience, which enables them to serve not just as legal representatives, but as business advisers and problem solvers too. Playing these roles perfectly are Joseph A Walkowski, J Jeffrey Gunn and Allen C Turner. Walkowski represents BakerHughes – one of several oil service companies for which he has previously served as in-house IP counsel – and many others in connection with the procurement and exploitation of patent rights. The fact that he won a 2017 Client Choice award – the only Utah-based individual to do so – and is featured in the IAM Strategy 300 should also be noted; he clearly shines on the service side of his role and is a fount of insight on IP value creation. Similarly, Gunn has won trophies for his commitment to clients and, again like Walkowski, has an impressively broad technical compass. Turner, who worked at AkzoNobel previously, has been a rock for patrons for nearly three decades. As an IP owner himself, he has a vested interest in identifying the best ways to unlock the business potential of patent rights. These attorneys capitalise on a consolidated time-keeping and billing software platform to render an uncommonly efficient service – something which helps TraskBritt maintain exceptional price competitiveness without being a commodity firm. When companies want to get more aggressive in their IP approaches – or handle competitors who are forcing the issue – they would be wise to turn to H Dickson Burton. He has achieved some splendid results recently, securing two preliminary injunctions for Catheter Connections and a finding of contempt against Ivera Medical and defending a case against Electronic Arts by obtaining a dismissal on Section 101 grounds for a White Knuckle Gaming patent.

Workman Nydegger

IP boutique Workman Nydegger has that rare ability to crunch through large volumes of instructions cost effectively while keeping to exacting quality standards. The inspiration behind the outfit is wizard Rick Nydegger, one of the few Salt Lake City IP specialists with a national, if not international profile. A former American Intellectual Property Law Association chief who has led other IP groups, he has his ear to the ground in terms of patent law and policy and is a visionary when it comes to IP best practices. He and Adrian Lee serve up perspicacious advice to Microsoft, among other industry leaders. Lee, who makes his debut in the IAM Patent 1000 this year, is “a seasoned attorney who grasps difficult inventive concepts quickly and captures them in effectively written patents. When you need something done right, he is the person to call – he exercises sound judgement, delivers actionable counsel and makes the life of an in-house counsel easier”. Another newcomer in the guide for 2018 is board of directors member Justin Cassell, who specialises in medical devices and in particular prosthetics. “Justin gets you to grant efficiently. He has a remarkable ability to absorb complex information and translate it clearly, and he is well equipped to deal with any IP situation. He also knows what it takes to be successful in inter partes reviews." When trouble brews, the king comforter is Brent Lorimer, a “fantastic IP litigator” with a big reputation regionally. Inspiring litigation teams to their best, he tackles disputes in any technical field with poise.

Other recommended experts

Chair of Thorpe North & Western’s litigation group, Mark Bettilyon is an IP trial lawyer with a flair for creative strategies. Edgar Cataxinos, the founder of Magleby Cataxinos & Greenwood, is a versatile patent ace – he can spot and plug any potential limiting holes in a portfolio and can advocate persuasively in district court litigations, post-grant proceedings and appeals from each. A registered pharmacist with deep regulatory knowledge, he focuses much of his practice on the life sciences. While working out of Lowenstein Sandler’s Utah office, Kevin Grange stays close to his many Silicon Valley patrons. The former Blakely Sokoloff Taylor & Zafman lawyer customises his prosecution approach nimbly according to the needs of different clients, from e-commerce leaders to start-ups. He is a cheerleader for Utah and for technology and, therefore, a popular figure in the Mountain States as well as on the West Coast. Ryan Marshall runs the life sciences-oriented Utah patent practice of Brinks Gilson & Lione. In prosecution, he thinks carefully about the commercial objectives to be served by the assets he obtains while exploiting a fine-milled knowledge of the patent system’s inner workings. His broad practice encompasses IP due diligence, transactions and litigation, the latter having been more active of late than usual. Charles Roberts brings a prosecutor’s eye to litigation, so the arguments he puts forward are always well supported; he runs things at IP disputes and licensing boutique Wasatch-IP.

Individuals: litigation and transactions

  • Brett L Foster - Dorsey & Whitney LLP
  • Brent P Lorimer - Workman Nydegger
  • Mark M Bettilyon - Thorpe North & Western LLP
  • H Dickson Burton - TraskBritt PC 
  • Edgar Cataxinos - Magleby Cataxinos & Greenwood
  • Larry R Laycock - Maschoff Brennan
  • David G Mangum - Parsons Behle & Latimer PLC
  • Mark Miller - Dorsey & Whitney LLP
  • Charles L Roberts - Wasatch-IP

Individuals: prosecution

  • L Grant Foster - Dorsey & Whitney LLP
  • Joseph A Walkowski - TraskBritt PC 
  • Aaron Barker - Stoel Rives LLP
  • Matthew S Bethards - Stoel Rives LLP
  • Justin Cassell - Workman Nydegger
  • Edgar Cataxinos - Magleby Cataxinos & Greenwood
  • Barton W Giddings - Stoel Rives LLP
  • Richard C Gilmore - Maschoff Brennan
  • Kevin O Grange - Lowenstein Sandler LLP
  • J Jeffrey Gunn - TraskBritt PC 
  • Burns Israelsen - Maschoff Brennan
  • Kevin K Johanson - Maschoff Brennan
  • J Scott Karren - Holland & Hart LLP
  • Ryan L Marshall - Brinks Gilson & Lione
  • Eric Maschoff - Maschoff Brennan
  • Bryan Pratt - Dorsey & Whitney LLP
  • Jason A Sanders - Workman Nydegger
  • Paul N Taylor - Ray Quinney & Nebeker
  • John R Thompson - Stoel Rives LLP
  • Allen C Turner - TraskBritt PC 

Luminaries

  • Rick D Nydegger - Workman Nydegger