In contrast to their peers on the East and West Coasts, lawyers in Illinois tend to have less specialised practices and typically combine litigation with transactional work and strategic counselling. However, this has in no way diluted the licensing expertise on offer, with the top lawyers in this market ranking as highly as in any other state. Many regard those with litigation expertise as better at fashioning long-term agreements that minimise the likelihood of disputes arising than those without such expertise. The market is also home to dedicated specialists. Chicago’s diversified economy produces a varied diet of licensing work for lawyers. Many nationally reported trends are also apparent in the Windy City, such as an uptick in deal volume, greater creativity in deal structures and the increased status of non-practising entities in both patent litigation and licensing.
With its lawyers occupying prominent positions in the LES and an ability to produce work of an outstanding quality, this longstanding IP boutique maintains a superb reputation for patent and technology licensing and can rightly be considered among the market’s best. Many partners have experience that traverses patent litigation, prosecution and licensing, and the practice is characterised by a deep understanding of the strength of the underlying assets. As a result of this cross-training, lawyers can advise on licensing in the context of the client’s wider IP strategy. Lawyers are exposed to many different technical areas and breadth of technological expertise is a hallmark of the practice. However, lawyers do focus on certain areas that fall within the scope of their technical expertise. James Sobieraj, for example, has an electrical engineering background and his licensing practice leans towards computer and internet technology. “A good example of a lawyer producing work at the highest level”, Sobieraj is recommended equally as a litigator, licensing expert and allround IP counsellor.Kirkland & Ellis LLP
International firm Kirkland & Ellis is a prominent presence in its home market of Chicago. In the IP area, its strength on the contentious side is mirrored on the non-contentious or transactional side, with the two successfully complementing one another; all-round patent expertise is a defining feature. It “always has someone at the top making intelligent and strategic decisions”, and in Chicago, that person is often Russell E Levine. With his instructions straddling patent litigation and patent and technology licensing, he is a “superbly well-rounded and practised attorney”. He regularly assists clients in designing and implementing their licensing programmes, and is adept at handling different technologies; adversarial licensing is a particular strength. Jeffery Norman is another of the group’s well-reputed technology transfer, licensing and litigation practitioners. He acts on behalf of hardware, software, biotechnology and pharmaceutical companies, as well as private equity firms, which he advises on licensing and corporate transactions including M&A deals, spin-outs and joint ventures.Leydig Voit & Mayer
For patent and technology licensing, this stalwart Chicago IP boutique wins the highest recommendation from peers and clients for the overall quality of its practice. It is “very capable in the law and in technology, solid, robust and assertive in its approach, producing excellent results while staying within budget”. Its standout litigation practice produces a substantial volume of settlement licensing work for the group, although standalone licensing and other strategic alliance work also feature prominently. The practice is proportionally split between mechanical, software, chemical and life sciences technologies. Leading the team is Michael Hartmann, an “accomplished lawyer who has been around the block and knows exactly what his clients need”. As both a litigator and a transactional lawyer, he is “extremely good at contentious licensing”. Charles Mottier is another experienced all-rounder in the group, with a practice that encompasses litigation, licensing, strategic counselling and prosecution. “He is a calm, reliable, extremely responsive and commercially aware lawyer who understands his clients’ business.”Marshall, Gerstein & Borun LLP
Hugely esteemed IP boutique Marshall, Gerstein & Borun is home to a dedicated licensing and transactional team. Partners are commended for building particularly strong client relationships and clients repeatedly call on the group to handle their most strategically important and complex transactions, as well as for all-round IP and business solutions advice. The practice has a strong life sciences bent, although diverse technological expertise and experience are very much in evidence. Practice chair Pamela L Cox is a leading light of the Chicago market, with an “outstanding knowledge of licensing and brilliant negotiating skills”. She has a deep understanding of the needs and commercial objectives of her clients, and an ability to move their businesses forward with creative advice, drafting and negotiation. Life sciences is a core focus; recent highlights include acting for Orion Genomics in a multi-year collaboration with the Malaysian Palm Oil Board for the sequencing of the oil palm genome. The vastly experienced Patrick D Ertel is another valued team member. “He knows licensing back to front, and with his ability to think proactively and creatively to find common ground, he is a very effective negotiator.” An admired all-rounder, his experience encompasses litigation, prosecution, counselling and transactions in an array of technical areas.McDonnell Boehnen Hulbert & Berghoff LLP
This local boutique offers an abundance of licensing know-how as part of its wider suite of IP services. It has enjoyed solid growth and is now a permanent fixture on the licensing scene in Chicago and beyond. With few exceptions, its partners have broad experience which incorporates the prosecution, commercialisation and litigation of intellectual property; this wide exposure to different aspects of practice enables it to satisfy all needs of its clients. As an IP boutique, it has a wealth of expertise in an array of sectors, and lawyers draft and negotiate complex licensing agreements across the industry spectrum. Founding partner Bradley Hulbert provides astute, commercial and litigation-savvy licensing guidance to clients, predominantly in the computing, electrical and telecommunications fields. Meanwhile, the technology transfer and litigation work of “strong combination litigation and transactional attorney” Michael Baniak mainly derives from the medical device, computer, automotive, telecommunications and life sciences sectors.Sidley Austin LLP
Unusually complex and high-value deals are a niche for this Chicago-based international powerhouse, whose technology transactions team often advises on licensing in the wider context of corporate transactions. For example, Sidley recently acted for Cephalon in its purchase of a 20% equity share of Mesoblast, with a licence agreement covering Mesoblast’s stem cell treatments for degenerative cardiovascular and nervous system conditions a key added ingredient. Indeed, life sciences is a specialty, with other representative clients including Monsanto and GE Healthcare. Licensing expertise is a feature at many Sidley offices both at home and abroad, and the group – which functions as a single integrated unit – can offer a deep pool of licensing and technology transactions talent. Jeffrey Rothstein, who played a leading role in the Cephalon deal, is a top-flight life sciences exponent, with human and agricultural biotechnology particular areas of expertise. A versatile lawyer, he is at ease advising clients ranging from small start-ups to the biggest multinationals on a variety of transactions. Focusing more on the IT side of the spectrum is Philip Crihfield, a longstanding and respected technology transfer, patent licensing and outsourcing attorney in the national market. He regularly counsels clients in the financial services and telecommunications sectors.
Thomas Filarski joined Steptoe & Johnson in August 2011, significantly enhancing the firm’s IP practice. He is a “superb attorney with topnotch licensing expertise”. He focuses on the biotechnology, pharmaceutical and medical device sectors. Larry Saret of Michael Best & Friedrich prosecutes patents, as well as developing and implementing licensing strategies and litigating; “he does a fantastic job helping companies to navigate the licensing arena.” Michael Stolarski, a 2010 arrival at general practice firm Dykema Gossett, is frequently instructed to draft and negotiate agreements for a diverse client base that includes multinational Fortune 500 companies, having participated as an expert witness on IP licensing matters and settled numerous disputes through licensing. He focuses on the consumer electronics, telecommunications and semiconductor industries. Perkins Coie’s Michael Warnecke is known first and foremost as a litigator, although he also wins plaudits for his expertise in technology transfer and licensing. “He has huge experience and is extremely knowledgeable on domestic matters, as well as the Asian market.”