Fish & Richardson

IAM Research

The Patent 1000 focuses exclusively on patent practice and has firmly established itself as the definitive 'go-to' resource for those seeking world-class legal patent expertise.

Highly-recommended - Firms: prosecution

Recommended - Firms: transactions

Silver - Firms: litigation

Fish & Richardson is one of the elite IP players in the United States; in key business centres across the country it is not only present, but scene shaping, thanks to the number and influence of its patent lawyers. There are many Texan contributors to Fish’s formidable reputation when it comes to the procurement, enforcement and monetisation of intangible assets. Helping to maintain the foundational prosecution and counselling skills that the firm has so conscientiously cultivated are Dallas-based attorneys Sushil Iyer and Jonathan Solomon, and Austin managing principal James Babineau. Iyer capitalises on the international environment in which he practises – Fish has solid footholds in Europe and China – and provides a premier global portfolio management and development service to innovators in the mechanical, chemical and computer technology fields; he is also an authority on privacy matters. Solomon does sophisticated work with a focus on software and communications; while his training and mentoring mindset is evident in the time he generously gives to new Fish recruits and, through his pro bono work, to Texas inventors and entrepreneurs. Babineau adapts his counselling style to fit different clients brilliantly, though all comers benefit from his gift for IP value creation. Of course, patent litigation is a real forte for Fish: the firm is dominant at the district court level, in the ITC and at the Federal Circuit. Many of its most significant wins can be credited to Texas litigators including Jayme Partridge, John Lane, Danielle Joy Healey and David Hoffman. Partridge’s leadership qualities pay handsome dividends in high-exposure competitor battles such as a recent dispute between client Tenaris and Global Tubing, in which she captained an all-female team to a satisfying Markman hearing result. Down the hall in Houston, seasoned trial lawyers Lane and Healey have also been calm and collected in the spotlight of late, acting for Seabed Geosolutions against Magesis, a competitor in the field of ocean bottom seismometers. Austin-based Hoffman sees the big picture and pursues litigation strategies that bring business benefits; he is helped in this regard by a broad patent skillset that encompasses prosecution and portfolio management. Versatility is likewise a strength of Terry Stalford, Wes Musselman and Joshua Griswold, who promote joined-up thinking across Fish’s contentious and non-contentious practices. Stalford knows how best to pursue patents in thorny areas that will stand up to litigation challenges and thus creates tremendous value for patrons; Musselman manages risk superbly; while Griswold shines in a post-grant group that is one of the best in the country. By contrast, Kevin Gray is a pure-play transactional IP lawyer and a repository of trust for senior business managers who are looking to cut deals that will take their companies to the next level.

Highly-recommended - Firms: prosecution

Gold - Firms: litigation

The crown jewel of the US legal market when it comes to patent practice, Fish is a potent force in litigation, a leader in post-grant proceedings and a global prosecution powerhouse. The firm doesn’t just have handfuls of people dotted around the country, but teams stacked with accomplished trial lawyers and high-level strategists in innovation hubs from coast to coast. The Boston group boasts incredible strength in depth across the contentious/non-contentious divide. Zooming in on the prosecution side brings superlative life sciences and medical technology practices into focus. Biochemistry PhDs Janis Fraser, Anita Meiklejohn and Christine Goddard are the anchors of the former; Peter Fasse and Michael Hamlin pillars of the latter; and Todd Garcia central to the success of both. Fraser capitalises on 25 years in the game to dispense advice that is richly laced with strategic insight; she deals with bleeding-edge innovations every day, which helps her stay out in front of the most pressing patent issues that scientific developments give rise to. Meiklejohn prosecutes with finesse in all areas of molecular biology and biochemistry; while Goddard’s previous in-house experience gives her an insider’s view of pharmaceutical product development. Fasse has an accurate read on the global patent landscape and devises clever strategies to help medical device and other clients stay two steps ahead of their competitors; Hamlin is in hot demand for opinions on diverse patent matters and for his astute approach to risk management; and Garcia provides leadership as managing principal of the Boston office. Fasse and Garcia have worked hard together to build up a valuable patent portfolio for Roche covering a complex system for automatically analysing patient blood samples. Jeffrey Barclay, meanwhile, is the go-to for anything high-technology-related; he excels at developing portfolios and extracting commercial value from them. The top names on the fight card when it comes to litigation, meanwhile, are Frank Scherkenbach and Kurt Glitzenstein. Scherkenbach has tried dozens of cases to verdict and advocates with unblemished distinction in the district courts, the ITC and at the Federal Circuit; he is currently representing Intuitive Surgical as lead counsel in an ITC case and co-pending inter partes reviews. Glitzenstein, who leads the firmwide litigation group, also brings the heat, but not just in court – he’s awesome on the prep and strategy piece, too. Proshanto Mukherji is a rare trial lawyer with a PhD (computer science), giving him an edge on the technical aspects of cases. Adam Kessel has a total command of the issues in multi-layered patent, trade secret and unfair competition actions, and is also a confident presenter. A well-rounded litigator, post-grant lawyer and counsellor, Lawrence Kolodney has made many valuable contributions to the success of both the firm and its clients; he also serves as chair of Fish’s market-leading pro bono programme.

Gold - Firms

Eminent patent litigation outfit Fish & Richardson has a superb reputation in the First State, just as it does around the country. Its lawyers in Delaware and elsewhere prepare with incredible diligence in pre-litigation and draw upon extensive trial experience to pursue optimal strategies from the moment that a case is filed. Strategic wisdom on the interplay between district court litigation and post-grant proceedings further defines the Fish & Richardson edge. On the frontlines of the practice are Douglas McCann, Jeremy Anderson, Susan Morrison and Martina Tyreus Hufnal, each of whom is worthy of special mention. Leadership is one of McCann’s most distinctive traits – he can inspire and motivate trial teams to achieve their best. Anderson is adept in technology-intensive litigation of all types, not just patent cases, and has cultivated a rich strategic playbook; this is helpful for long-running, hard-fought cases, such as one he is currently litigating on behalf of LG Electronics against Arendi which was filed in 2013 and has since gone through lengthy PTAB and Federal Circuit proceedings. Morrison is “incredibly practical and solutions oriented”, and has “a strong understanding of business”. Hufnal has tried a variety of suits, but has a special affinity for pharmaceutical disputes. Gwilym Attwell, meanwhile, anchors the firm’s highly sophisticated prosecution, counselling and opinions practice locally, while also making pivotal contributions on the post-grant front. He has a background in the life sciences, which remains a core industry focus alongside digital health and medical devices.

Highly-recommended - Firms: prosecution

Gold - Firms: litigation

World-class IP outfit Fish is scarcely rivalled for global patent prosecution. Leveraging its presence in the United States, Europe and China and an incredibly deep pool of technical and strategic talent, it prosecutes some 5,000-plus US patents and 4,000-plus foreign patents each year. Steering the ship is DC-based patent group leader John Hayden, whose management abilities, instinct for efficiency savings and sophisticated understanding of patent quality make him perfect for the role. Fellow high-level operatives in DC include Nick Jepsen, David Jordan and Phyllis Kristal, each of whom brings something special to the table. In the electrical, computer and medical technology spaces, Jepsen “provides great value in developing invention concepts into patentable intellectual property and writing strong and defensible claim sets; he is highly adept at negotiating with USPTO examiners, too”. Prolific prosecutor Jordan has an amazing success rate in the challenging field of software protection – one which he has absolutely mastered. Mechanical engineering is the metier of Kristal, a senior stateswoman of the firm who joined in 1993 and has been dispensing sage counsel and opinions to a huge number of innovative companies in many sectors ever since. Special attention should also be paid to Fish’s post-issuance proceedings experts, who drive the market’s busiest PTAB practice – and certainly one of the best. The fulcrum around which this turns is Karl Renner, a veteran of hundreds of AIA proceedings and a founding director of the PTAB Bar Association, which he now serves as president elect. Timothy Riffe doubles up as one of Fish’s top ITC litigators and has one of the most sophisticated contentious IP toolkits not just in the firm, but in the country. PTAB Bar Association board member Thomas Rozylowicz and David Holt bring added dynamism to the group, courtesy of their proficient advocacy and technical dexterity. To the latter point, Rozylowicz has impressive engineering experience on his résumé, having directed research into secure communications at the National Security Agency; while former examiner Holt was previously a software engineer in industry. Despite all the wonderful achievements of its prosecution and post-grant divisions, Fish remains best known for its contentious prowess and its indomitable performances in trials, appeals and Section 337 investigations. The headline acts are Michael McKeon and Ruffin Cordell, whose trial seasoning, calmness under pressure, strategic acumen and narrative gifts are behind many genre-defining wins. They are two among several potent ITC lawyers – other notable names being Riffe, Rich Sterba, Andrew Kopsidas and Joseph Colaianni. Sterba has tried more than a dozen cases at the ITC out of nearly 30 investigations he has handled; alongside colleagues in Boston and San Diego, he is currently representing Intuitive Surgical at the ITC and in co-pending inter partes reviews against Ethicon Endo-Surgery in a dispute over robotic surgical systems. Kopsidas and Colaianni also make the difference in this fast-paced forum – the former with his tenacity and efficiency, and the latter with his encyclopaedic procedural knowledge and sparkling presentation. All of Fish’s litigators translate their advocacy into success no matter what the forum. Lauren Degnan hammers out the right results in high-technology suits spanning many district courts, the ITC, the PTAB and the Federal Circuit; as do Christian Chu, a top appellate lawyer; Ahmed Davis, a compelling storyteller; and rising star Adam Shartzer, a “well-organised, thoughtful and effective communicator”.

Gold - Firms: litigation

Recommended - Firms: transactions

Highly-recommended - Firms: prosecution

Towering boutique Fish is a compelling choice for the most dynamic, innovative and prestigious companies in the life sciences; its global capabilities, technical know-how, prosecution prowess, deal-making record and trial supremacy give it a huge advantage. The firm has a concentration of industry experts in its Twin Cities office, including Patrick Finn, Teresa Lavoie, Betsy Flanagan and John Adkisson. Prosecution maestro and all-round strategic counsellor Finn “understands both hardcore biotechnology and business, and is a true partner to clients in their efforts to bring lifesaving treatments to patients”. Throughout the patent and product lifecycle, Lavoie provides essential insight, analysis and action plans, and has been sensationally successful in developing portfolios that realise billions of dollars in value on sale. An assured litigator, Flanagan recently represented Mayo Medical Laboratories in a suit against Athena Diagnostics that raised fundamental questions regarding the patent eligibility of medical diagnostic tests, earning a critical win at the Federal Circuit; the Supreme Court’s denial of Athena’s petition for cert in January 2020 brought the case to a close. In this litigation, the district court and Federal Circuit cited Mayo’s 2012 precedent-setting Supreme Court win against Prometheus, which was also orchestrated by Fish. In the recent matter, Flanagan worked alongside John Adkisson, a Hatch-Waxman ace who has also been making waves in biosimilar litigation. Accustomed to leadership, having previously helmed the firm’s market-leading, 200-plus lawyer litigation group, Adkisson assumed the post of president and CEO in February 2020. Other Minnesotan stars include William Woodford and John Dragseth. Woodford has led trial teams to emphatic wins, but also spends his time designing alternative fee models and establishing efficient strategies to bring down the cost of litigation – initiatives that form a central plank of Fish’s wider innovation effort. Dragseth is celebrated as one of the country’s pre-eminent appellate lawyers. Special attention should also be paid to Fish’s prolific post-grant offering – particularly considering its recent milestone in becoming the first firm to chalk up 1,000 PTAB appearances. The post-grant group is co-chaired by Dorothy Whelan, who has played a key strategic role in hundreds of those appearances. Coming in for praise, Michael Hawkins “demonstrates aa complete mastery of inter partes review practice in terms of filing and defending petitions”. His recent work highlights, though non-disclosable, have all seen him represent companies that anyone would know. Stuart Nelson has handled inter partes reviews in the triple digits and is another rock-solid choice.

Gold - Firms: litigation

Recommended - Firms: prosecution

Judged purely on the strength of its trial lawyer contingent in California, Fish would be a potent force in patent litigation; but, being similarly stacked in key locations across the country, it is close to untouchable. San Diego alone is home to Juanita Brooks, Jonathan Singer, Chad Shear, Seth Sproul and Roger Denning – all of whom are legal lions. Brooks is a talismanic star of the practice with an illustrious reputation. Second to none in terms of advocacy skill, she continues to shine in the high-technology, medtech and life sciences spaces. Recent highlights include defending biotechnology leader Illumina in a case filed by The Scripps Institute regarding technological tools for genomic testing. Singer captains the life sciences litigation practice and ranks among the pharmaceutical world’s foremost trial attorneys. He and Shear continued their Herculean efforts for Gilead Sciences in its hard-fought battle with Idenix Pharmaceuticals in 2020 with a Federal Circuit appearance that resulted in the denial of Idenix’s bid to reinstate a $2.5 billion verdict it had previously secured, but then lost as a result of Singer and Shear’s successful bid to wipe it out; we’re talking ‘best trial lawyers in the world’-type stuff here. One of the firm’s most technically adept practitioners, Sproul has been at the vanguard of developments in the 5G space; his cases have also involved complex FRAND issues. Denning has spearheaded trials in patent litigation hotspots around the country, including the ITC, where he is now representing Intuitive Surgical against Ethicon Endo-Surgery in a dispute whose outcome which will significantly impact on the robotically controlled surgical technology market. There are guiding lights in Silicon Valley, too, with David Barkan, Michael Headley and Betty Chen all springing to mind. Barkan is hailed as an “elite IP litigator with profound knowledge of the law, but above all strategic vision”. The dominant storyline in Headley’s recent practice was a fierce battle for Power Integrations against Fairchild Semiconductor, which is all closed off now with a $175 million settlement for his client. Chen makes her debut in the IAM Patent 1000 this year in recognition of the leadership she has shown for the likes of Microsoft and other blue-chips. She also serves the firm as global hiring principal. No less integral than their contentious counterparts to Fish’s overall patent practice are counselling and prosecution aces Hans Troesch and Eric Schulman. Troesch founded the Silicon Valley office in the early 1990s and has since assisted a rainbow of established industry leaders, solo inventors, start-ups and academic and research institutions with the creation and management of patent assets. Schulman can transform companies’ IP programmes with new and innovative strategies – something that he has done both in-house and in private practice.

Bronze - Firms: litigation

Recommended - Firms: prosecution

Fish & Richardson sets the coordinates for success in must-win patent litigation and engages hyperdrive to achieve it. In every venue, its lawyers make sound strategic plays and, when the time comes to stand up and present in court, they hit all the right notes. New York managing principal Michael Autuoro is great at mobilising colleagues and resources in the optimum configurations to get difficult jobs done. An experienced trial lawyer in his own right, he is also happy to play support roles when needed and took his cue from Edmond Bannon in a recent infringement matter for Floodbreak, which designs and manufactures flood mitigation systems that NYC Transit has purchased to prevent the subway system from being inundated in the event of a storm. Bannon is praised for his ability to “mount successful defences, work with third-party technical experts and help clients understand and prepare for depositions”. He is also credited for his abilities in the ITC, where he recently secured a business-critical win as lead counsel for respondent Momentive UV Coatings in a four-patent case against DSM Desotech and its parent involving patents on optical fibre coatings and coated optical fibres – one in which DSM sought an exclusion order against Momentive’s largest-selling coating. The ITC found all asserted claims of the patents in suit invalid or not infringed – a decision that the Federal Circuit subsequently upheld. Michael Zoppo is another adept litigator, but also leans into the prosecution and portfolio practice – which, from a New York standpoint, is another strong one. Tony Zhang and Jack Brennan each have PhDs – Zhang in chemistry and Brennan in genetics – and produce superior results for their life sciences followers. One notable client of Zhang’s is Reflection Biotechnologies, a patient-founded company with a focus on rare genetic diseases; his prosecution efforts have helped to attract major pharmaceutical companies to the licensing and collaboration deal table. Samuel Borodach repeats Zhang and Brennan’s success in the electronic, software and mechanical technologies areas and is a vital contributor to Fish’s exceptional post-grant offering.

Gold - Firms

In the state of Georgia, Fish has a stacked line-up of trial lawyers who contribute to one of the country’s mightiest patent litigation practices. The first name on the team sheet is Christopher Green, who gets ringing endorsements from clients: “Chris is extremely sharp in dissecting complex problems and brings tremendous clarity to them. He is an outstanding case and project manager, as well as a brilliant mentor to his colleagues and associates.” Many at Fish are “creative and practical advocates who do great legal work to achieve business objectives” – which certainly holds true for Thad Kodish, with whom Green has recently been collaborating in the defence of patent infringement allegations on behalf of Samsung Electronics. They are joined in the IAM Patent 1000 for 2021 by Noah Graubart and Corrin Drakulich, both of whom play prominent roles at the firm. Gaubart co-founded Fish’s Atlanta office and has also recently had matters on for Samsung Electronic, defending it in a six-patent Eastern District of Texas shootout over digital camera and image processing technologies. Drakulich leads the local litigation group and orchestrates a wide range of patent campaigns, with a focus on medical device and life sciences disputes. She handles multiple cases for Exela Pharma Sciences. Aamir Kazi also debuts in the guide on the say-so of clients, who call him a “knowledgeable, attentive and efficient patent litigator and general counsellor who clearly cares about providing value above billable time”. “Aamir considers all angles to a case without getting lost in the weeds.” A valuable contact point in Atlanta for those requiring prosecution, portfolio management and counselling services is Tracy Hitt, who’s a go-to in the city for anything software related.

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