Arent Fox is chiefly known for its headlining trademark group, although it also garners recommendations in patents, particularly in the licensing space. The practice has taken off in recent years under the guidance of Pamela Deese, one of the firm’s focused licensing specialists. In both the brands and technology areas, clients commend her for her commercially minded approach and experience. She is suited to complex tasks, such as counselling patent pools on cross-licensing arrangements, and has a niche in secure digital memory cards.
DC-based international firm Arnold & Porter maintains a sterling reputation for drafting and prosecuting quality patents. In its traditional strongholds of biotechnology and pharmaceuticals, clients can capitalise on leading Food & Drug Administration (FDA) regulatory knowledge in addition to top-drawer IP expertise. Practice co-chair David Marsh is “fantastic, and one of the best biotechnology patent prosecutors in town”. He has outstanding academic credentials and extensive experience in areas such as plant genetics, stents and molecular biology. Following recent developments – including the arrival of a team from Howrey – the patent litigation practice is growing in leaps and bounds and is winning recognition. Trial lawyer Matthew Wolf has the highest profile of the Howrey recruits: “He is unflappable, and a commanding presence in the courtroom.” Many large institutional clients call on the transactional abilities of Michael Raschid. In addition to a substantial standalone licensing practice, he has proved indispensable to the IP litigators and corporate partners on licensing affairs, and is a vital cog in the machine.
Buchanan Ingersoll & Rooney is one of the more prolific – and high-quality – prosecution firms in the United States, but adding to this distinction is the truly well-rounded nature of its patent practice. The firm is a pioneer in leveraging skill sets in IP-related areas to add real value for clients. Life sciences companies can take advantage of the first-class FDA expertise available, in addition to IP capabilities. Deep specialisation in licensing is another mark of distinction, and a number of its members have forged strong connections with the Licensing Executives Society (LES), the world’s premier licensing organisation. Brian P O'Shaughnessy is vice president of the US branch and an authority on licensing and wider strategies for the protection and commercialisation of intellectual property in the life sciences. Esteemed IP section chair Patrick C Keane is also sought after for licensing, although his work is much broader, encompassing all aspects of IP development and protection. With his litigation background, industry experience and insight as a former USPTO examiner, he has developed one of the keenest minds in the IP world today. The firm has also mastered the art of more arcane areas of patent law and is recommended by commentators for post-grant proceedings. Todd R Walters is an “exceptional interference attorney” and one of the foremost experts in the country, having handled over 100 interference matters. Peers acknowledge him as a “more than worthy opponent”. Chemistry expert Robert G Mukai maintains a high-end re-examination and portfolio management practice; with over three decades of re-examination experience, he is one of the most seasoned specialists on the market. Strength in depth is a characteristic of the firm’s IP section, with many individuals winning acclaim. Counselling and opinion lawyer Samuel C Miller III “is one of the finest patent lawyers around in terms of finesse and judgement”; with his “outstanding ability to apply the law to complex technology issues”, he is greatly respected as a discussion partner across the legal community. Versatile counsel Erin Dunston undertakes interference, litigation and prosecution, and is favoured for her “responsiveness, fine quality work and ability to stay completely on top of things”. In all respects, “Buchanan Ingersoll & Rooney does a fantastic and timely job, producing a product that sets the bar”.
Intellectual property is a central pillar of Connolly Bove Lodge & Hutz’s business practice and the firm houses a well-reputed patents group in the District of Columbia. “The team understands technology in the utmost detail and is extremely proactive in obtaining the best IP protection.” It has prosecuted some of the most valuable and significant patents – for example, it recently handled the advanced prosecution of Lipitor patents, acting on behalf of Pfizer. Local managing partner William McShane co-chairs the patent prosecution and counselling team and wins rave reviews. “He has an exceptional background in pharmaceutical patent law, is extremely responsive and easy to deal with, and he stays on top of all things at all times.”
Taking advantage of activity in the Dulles Technology Corridor, Silicon Valley native Cooley opened in Reston, Virginia in the late 1990s. It subsequently expanded to the capital in 2005, giving it a solid presence on the East Coast. The market has taken to this innovative, cutting-edge player and its reputation continues to expand from coast to coast; it is a favourite among emerging companies and established technology leaders alike. It fields a dedicated IP licensing and transactions team, with almost unmatched strength and depth in both life sciences and high technology. “Cooley really has your back and instils confidence,” say start-ups. Technology transactions head Adam Ruttenberg is widely admired for his business savvy. He operates alongside special counsel Eric Tobias, an authority on digital media. The national patent prosecution and counselling practice also wins plaudits, and the DC office houses a dedicated file and docketing support unit that edges it ahead of competitors. Eric Milch “always demonstrates superior technical knowledge and has an innate ability to meet client needs”. He is regularly sought after to solve the most complex legal challenges due to his level of experience. “With an eye on the business goals, he provides insightful counsel regarding patent matters.”
DC stalwart Covington & Burling has a “wonderful, first-rate” patent capability and is “absolutely rock-solid on high-end work”. Elite patent trial skills are front and centre, and the multi-talented litigation team has a proven track record of success in bet-the-company cases, whether before federal district courts, the International Trade Commission (ITC) or the Court of Appeals for the Federal Circuit. George Pappas is “the real deal – a class apart”, and one of the brightest stars. “He is a fantastic lead trial lawyer and, though very tough to compete against, is a true gentleman.” Rod McKelvie is another “wonderfully talented litigator” and a revered statesman. He is massively experienced on both sides of the bench, having served as a district court judge for the District of Delaware and as lead trial lawyer on over 20 jury trials. Kevin Collins receives superb reviews across the board and joins the tables this year. “He is personable, yet also an intensely driven and extremely diligent litigator.” In the fast-paced world of ITC patent litigation, Covington & Burling excels. Sturgis Sobin is identified as the top ITC expert; “he knows the game inside out.” Maureen Browne has an in-depth knowledge of international trade issues and IP litigation and is another “terrific ITC specialist”. The firm boasts “one of the pre-eminent IP transactional practices in the city” and is especially proficient in the life sciences sector. Technology transactions head John Hurvitz is a favourite among major pharmaceutical and biotechnology companies for his commercial and strategic intellect, as is focused and determined negotiator Lee Tiedrich. Stuart Irvin also draws praise for his high-technology, software and IP deal-making prowess. Although the patent litigation team wins most of the headlines, Covington & Burling is also home to a reputable prosecution group chaired by Andrea Reister. She channels her litigation and prosecution experience into a vibrant, busy re-examination practice.
“Dickstein Shapiro has adopted the full-service IP concept, and has done so successfully, with accomplished lawyers doing great licensing, prosecution and litigation.” Attorneys cutting their teeth here gain exposure to all areas of patent law and become very well rounded as a result. With a market-leading government contracts practice, the need for sophisticated IP licensing expertise grew within the firm as the government increasingly began to invest in new technology and start-up companies. Against this background, the firm developed one of the capital’s more dedicated IP transactional units, at the forefront of which stand Donald Gregory and Jon Grossman. Both are regarded as masters of the commercialisation process and can add great value to clients’ intellectual property. IP group chief Gary Hoffman does significant licensing work, but typically in the context of litigation, his primary focus. He has an electrical engineering background, but has been exposed to a huge variety of technologies throughout his career, involving everything from semiconductors to organic chemistry, biotechnology and medical products; he is one of the more ambidextrous lawyers. Although the DC team remains the heart and soul of the IP practice, recent expansion to the West Coast has strengthened the firm’s profile on the national stage.
Finnegan’s standing in the IP field is second to none: “It knows how to prosecute the best patents, how to litigate them and license them – it is truly top-notch across the board and in all areas provides consistently excellent advice and guidance.” The prosecution team is chaired by Charles Van Horn who, with over three decades in various leadership positions at the USPTO, is one of the country’s most knowledgeable attorneys on patent policy and practice. Thomas Irving is another engine of the prosecution group and an extremely popular lawyer, specialising in chemical and pharmaceutical patents. “He is a force of nature and one of the best patent experts in the country.” The firm’s depth of talent is remarkable. This is reflected in the litigation team: Donald Dunner is perhaps the most recognised IP litigator nationwide. He is a “fabulously talented appellate specialist who has communicated with the Federal Circuit successfully over many years”. Also “among the best of the best” is Charles Lipsey, a “wonderfully skilled, true trial lawyer” at both the appellate and district court level. Heading the appellate side is Michael Jakes, a member of the Federal Circuit’s advisory council. An adroit litigator, he regularly appears before the federal district courts and the ITC. Finnegan has true international appeal, and Robert Yoches is especially sought after by Asian companies to handle complex disputes, usually involving information technology and electronic technologies. The firm also has a standout life sciences practice, as personified by Robert Bajefsky, a versatile attorney with trial and appellate litigation, opinion and re-examination experience spanning a career of over 30 years. Also operating in the pharmaceutical sector is Ford Farabow, a distinguished attorney and one of the most accomplished trial and alternative dispute resolution strategists. The group is admired for its “excellent execution” in ITC patent litigation, an area in which Smith Brittingham specialises. He understands the workings of the ITC, having served as a senior investigative attorney at its Office of Unfair Import Investigations. Thomas Jarvis has litigated upwards of 50 cases before the ITC and is another top name. He is a master of computer science, but has abundant knowledge in other technology fields. There is no shortage of expertise on the transactional front and again, the team is one of the deepest around. Chief among the licensing specialists are John Paul, an “extremely sharp and intellectual lawyer, and a fine negotiator”; and Patrick O’Reilley, a major player within the LES and an IP commercialisation thought leader. Brian Brunsvold is one of the most senior licensing experts. As testament to his prowess, he has served as an expert witness on licensing issues numerous times. William Pratt’s practice incorporates both litigation and licensing. He is appreciated for his “understanding of clients’ needs and ability to develop a tight strategy that overcomes any negotiation roadblocks”. Brian Kacedon’s star remains in the ascendant and he wins positive reviews for his broad-spectrum work in licensing, prosecution and litigation. He is a “smart, responsive and thorough lawyer”.
Commentators regard the DC and Boston offices as the jewels in the crown of Fish & Richardson’s expansive IP group. It both litigates and prosecutes patents, and this dual capability enhances the quality of its output; litigators, for example, benefit from the technical muscle that the prosecution team provides. It has one of the most substantial prosecution dockets by both volume and quality, and its large US client base is the envy of peers. Patent practice head John Hayden has an electrical engineering background and experience in industry. An astute operator, he knows how to drive value in obtaining patent protection. Timothy Riffe is a “diligent attorney who is willing to go the extra mile”. With his litigation skill, “he is able to bring a unique perspective to the prosecution process and one that ensures clients are better able to enforce patents further down the line”. The firm’s standing in the litigation arena is equally stratospheric. “First-rate advocate” Michael McKeon is currently enjoying exceptional levels of success, especially in Section 337 proceedings before the ITC. “He always demonstrates great finesse and maturity in the courtroom and is a fine trial lawyer who knows the ITC extremely well.” Ruffin Cordell, another of the group’s big hitters, is “hugely talented and great at thinking on his feet”. Whether in district court litigation or before the ITC, “he is a seasoned lawyer who presents the most convincing arguments”. Fish & Richardson is “very particular about the credentials they are looking for, and only hires quality individuals; in short, it remains a premier outfit in the IP business”.
Famed New York IP boutique Fitzpatrick, Cella, Harper & Scinto enhances its national prominence with a presence in the capital. Given its proximity to the USPTO, patent prosecution has historically been a focus for the DC team, although its federal district court and ITC litigation practice has grown the most remarkably. Recent highlights include acting for Canon in an ITC investigation against 20 US and Chinese respondents seeking to exclude the import and sale of printer cartridges due to infringement of two Canon patents; lawyers succeeded in prohibiting the import and sale of the infringing products by all respondents and additionally obtained a permanent injunction following concurrent district court litigation in the Southern District of New York. The case illustrates the firm’s ability to team together quality trial lawyers from different offices in order to bring about fantastic results. Edmund J Haughey III , who played a key role in the case alongside cohorts from New York, is applauded for his courtroom presentation skills and ability to handle any type of technology.
Few general service firms can lay claim to a high degree of specialisation in patent prosecution, but Foley & Lardner enjoys this distinction. With its litigation experience, it can prosecute stronger patents than many peers, and its prosecution expertise enables it to bring outstanding technical capabilities into the litigation arena. These combined skill sets are used to great effect in the re-examination and interference sphere, where it is “one of the most significant and best in the country”. IP department chair Stephen Maebius is a noted expert on re-examinations and a popular choice for referrals from litigators when parallel re-examinations arise. As a former USPTO examiner, he has an intimate understanding of its workings, which has helped to keep him ahead of the curve on developments in USPTO policy and approach. He wins commensurate acclaim in other areas, such as licensing. Interference, prosecution and appellate practitioner George Quillin is “consistently excellent and truly committed”. He specialises in mechanical and electromechanical technologies. Across all areas of patents, Foley & Lardner has a cadre of “top-notch lawyers that even the very best can learn a great deal from”. Gilberto Villacorta is a “fantastic patent prosecutor on the chemical and biotechnology side” who also has extensive skill in other technology areas, including electronics and mechanical engineering. In addition to patent prosecution, he expertly handles clients’ transactional requirements. Revered academic Harold Wegner is a former director of the IP law programme at the George Washington University Law School. He enjoys equal prominence in private practice, particularly as a high-level strategic adviser on Chinese and Japanese patent management and enforcement matters.
International powerhouse Jones Day has “put together a great patent litigation team, with a lot of fine lawyers in a lot of offices”. With its “outstanding work ethic”, the DC office has found the recipe for success in Section 337 ITC litigation and is “well attuned to the demands of litigating in the ITC”. It has played a lead role in some of the biggest semiconductor cases before the ITC in recent years, as well as cases involving other advanced technologies. It staffs trial teams from across the office network and uses its deep resources in the most efficient way; for example, it is defending Kyocera Communications in an ITC case relating to mobile devices containing accelerometers using lawyers from its DC, Dallas and San Diego offices. Partner Blaney Harper is one of Jones Day’s foremost ITC specialists. Peers remark that he is “without a doubt one of the strongest adversaries”.
“One of the most formidable” firms in the patent litigation arena, Kirkland & Ellis “does a superb job developing trial lawyers”, and the trial expertise that courses through its veins is a chief distinction. The firm is a premier choice for complex cases involving thorny legal issues, while run-of-the-mill disputes go elsewhere. Big-ticket litigation is also a natural playground for this Chicago native, as its ITC successes demonstrate; it has the necessary resources to tackle the largest cases. Sitting at the crest of the group’s local roster is Gregg LoCascio, a “legitimate first-chair trial lawyer who is impressive from top to bottom”. In a recent jury trial involving chemical foam blowing agents, he obtained a successful defence verdict for Honeywell, invalidating a competitor’s patent. Edward C Donovan ’s trial work has taken him all over the country and his reputation for quality has grown far and wide. He also handles appellate issues and alternative dispute resolution.
Latham & Watkins’s patent litigation team has undergone major development and is now considered a truly formidable force, with steady nerves and tactical excellence in the most commercially valuable cases. It has proved well suited to the demanding environs of ITC patent litigation and enhanced its credentials in that forum with the 2010 hire of Bert Reiser from Howrey. “He is an excellent ITC specialist who intimately knows the ins and outs of the system.” The group is home to another esteemed Howrey alumnus, Matthew Moore, a litigator who was appointed as liaison counsel on behalf of 240 defendants in one of the largest-ever multi-defendant patent litigations. “He is fantastic on his feet and can handle those big roles – he just instils supreme confidence.” Also recommended is Lawrence Gotts, one of the most experienced hands in high-stakes patent litigation. Sources give much of the credit for bringing this quality group together to Maximilian Grant, a lawyer who is “cut from the finest cloth”. The global IP litigation co-chair, he is an “outstanding leader” with exceptional organisational skills. His trial skills are widely admired: “His presentation is pristine and he has a background that sits well with the courtroom.” The firm made a strong play on the West Coast in 2011 with the addition of a team from Wilson Sonsini Goodrich & Rosati, and now has the coast-to-coast capability and depth that clients find so advantageous.
With a pristine track record in patent litigation and appellate matters, international firm McDermott Will & Emery wins plaudits from all corners of the market. Although chiefly known for its contentious expertise, its also boasts thriving patent prosecution and transactional practices, which set it apart from many of its general service brethren. Star lawyer Joel Freed anchors the litigation team. He is among an elite clutch of patent litigators recognised across the United States and further afield for trial skill, and is a go-to lawyer for high-stakes disputes that are likely to see the inside of a courtroom. Second in command is gifted IP litigator and strategic counsellor Blair Jacobs. Together with Silicon Valley-based trial veteran Terrence McMahon, Jacobs recently acted for Fairchild Semiconductor International in connection with the latest case in its long-running, high-profile dispute with Power Integrations, having taken over the matter from one of its competitors. An extensive prosecution practice encompasses a huge variety of technical fields, and with over 100 attorneys registered before the USPTO across the office network, the firm is particularly well resourced. Stephen Becker, who chairs the DC prosecution team, specialises in semiconductors, information technology and electronics, and is widely respected both as a productive writer on patent issues and as a diligent and effective lawyer.
This general business firm now houses a patent department to rival many of its boutique competitors. It has carved out a reputation for technical excellence and developed a passion for technology. This is especially true in the consumer electronics sector, in which it has long been identified as a leader in drafting and prosecuting top-quality patents. It understands patents as business tools, and its inherently commercial approach resonates with clients. IP and technology group chair Song Jung is a brilliant all-rounder with a practice extending to prosecution, litigation and licensing. He is an electrical engineering specialist and a world-leading expert on liquid crystal displays and other flat panel devices.
West Coast powerhouse Morrison & Foerster maintains offices in the District of Columbia and in McLean, northern Virginia, both of which focus on intellectual property along with several other key areas. The team has recently enjoyed a fantastic run of results and continues to win instructions on important mandates, especially in the ITC. Brian Busey has litigated more than 20 cases before the ITC and wins the utmost respect from peers; as testament to this, he served as president elect of the ITC Trial Lawyers Association in 2011. Notable examples of recent work include representing Siemens subsidiary Osram in a major fight with Korean superpowers Samsung and LG over light-emitting diode technology – a keystone technology with a huge global market value. The McLean office wins special commendation for its licensing work for both emerging and established technology companies. Of counsel Elizabeth Dillon is singled out for praise on the basis of her impressive command across the IP and technology transactions spectrum.
Measured by both volume and quality, Oblon Spivak McClelland Maier & Neustadt is a leading patent prosecution firm. “It provides the right advice at the appropriate moment and finds a way to achieve the client’s business goals.” Rapid response times and 24-hour availability also garner it much admiration. Cutting-edge expertise on re-examinations and interferences distinguish it from competitors, and “through brilliant moves and subtle manipulation, it is able to bring about fantastic results”. The depth of individual talent is remarkable: Charles L Gholz is “one of the very best on interferences”, his core area of specialisation. “His advice represents excellent value for money and his industry knowledge is outstanding.” Stephen G Kunin , who chairs the post-grant proceedings group, has held various executive positions in the USPTO and is regarded as a guru who has played an influential role in shaping patent policy in the United States. Patent interference chair W Todd Baker is also extolled. “He develops an intimate understanding of and appreciation for the client’s business position”, enabling him to provide commercially driven advice. Greg H Gardella is another prominent member of the post-grant prosecution group. His former big-ticket patent litigation experience has served him well in contested re-examination proceedings, of which he is regarded a master. Scott McKeown is equally a “thought leader” on all aspects of post-issuance proceedings. Electrical patent prosecution specialist and current managing partner Bradley D Lytle “drafts applications that are written well from both a technical and legal standpoint”, and adds immense value by “preparing patent applications which will be enforceable”. Although best known for prosecution, the firm has steadily built up a strong reputation in patent litigation. Co-heading the ITC litigation practice is Thomas J Fisher , who has “both legal know-how and pure litigation skills in abundance”.
Clients appreciate Pillsbury Winthrop Shaw Pittman as a one-stop shop IP service, as it has every angle covered. It garners glowing reports on the licensing and transactional side, with a practice that combines the skill sets of its renowned global sourcing and IP groups. The IP team maintains a substantial patent litigation and licensing practice. It is well rounded, with many of its members having an outstanding command of a variety of areas. IP head Jack Barufka is a prime example of this; in addition to litigation and licensing, he undertakes prosecution, strategic counselling and opinions. He is an invaluable source of information on patent reform and the impact of the recent America Invents Act. “Response rates are incredibly good throughout, and its lawyers prove exceptionally knowledgeable both in and outside of their main areas of specialisation.”
Quinn Emanuel is a name on everyone’s lips: this crack trial firm is currently one of the busiest and best in patent litigation. While it only opened a local office in September 2011, it was already a DC fixture thanks to its prodigious activity before the ITC. To start the engine in the capital, a trio of well-regarded lawyers were hired from rival Alston & Bird, most notably among them Paul Brinkman, who now heads the Section 337 ITC team. Brinkman brings his extensive experience before the ITC to a vastly experienced group. “He is a superb thinker and writer, and has a calm demeanour – a serious strength in the fast-paced confines of ITC litigation.”
Cutting-edge IP specialist Rothwell, Figg, Ernst & Manbeck is “small, but perfectly formed”, and “terrific all round”. It maintains a full-scope patent practice, but is especially recommended for litigation, which is a central focus. The life sciences sector is a stronghold, although it also works deftly with mechanical and computer technologies. As testament to its high standing, it is a popular choice for referrals in conflict situations due to its lean, efficient and consistent staffing of cases, which renders a cost-effective, results-driven service. Quality runs right through the ranks, but starts at the top with E Anthony Figg – “one of the best adversaries you can come up against”. He is a thought leader who has played a substantial role in patent reform efforts over decades.
Top-flight patent litigation firm Sidley Austin has “incredibly talented lawyers in all its offices”, and the DC team comes in for considerable acclaim locally and nationally. Elevating it to a higher status is Carter Phillips, whom many regard to be the “greatest living Supreme Court advocate”. He has also argued many cases before the Court of Appeals for the Federal Circuit and is counted as a leading appellate specialist. His recent work includes acting on behalf of Star Scientific in an appeal in which the Federal Circuit reversed an adverse jury verdict finding certain patents held by Star – covering methods for curing tobacco – to be invalid. Sidley Austin is also a major player in ITC patent litigation and, in Brian Nester, has one of the most talented consumer electronics and high-technology ITC specialists around. Among the team’s busiest practitioners, he is acting on behalf of Research In Motion in smartphone technology disputes.
The technically accomplished Sterne, Kessler, Goldstein & Fox has long stood at the forefront of developments in patent law and practice. It brings together leading experts in all areas, from prosecution and licensing to litigation. It breeds multi-dimensional lawyers and is renowned for its “outstanding training process for younger, up-and-coming attorneys”. “More than most, it truly cares about the quality of patents it obtains, and it knows exactly how to deliver on that.” It excels in niche and demanding areas – for instance, “operating at the top level in patent re-examinations”. Robert Greene Sterne is regarded as “the visionary behind the immense success” of the firm. He is chiefly renowned for his re-examination expertise, but is also esteemed for his litigation and licensing skills. With one of the brightest minds in biotechnology patent law, prosecution attorney Jorge Goldstein also draws wide praise; his academic and business credentials are first class. Clients appreciate electronics whizz Michael Q Lee for his hands-on approach to the protection and monetisation of their patent assets and ability to elucidate the most complex technical concepts. He is a licensing specialist who is well versed in litigation and reexamination. Michael B Ray , the current managing director, has a background in patent prosecution, although he currently focuses on top-end counselling and risk analysis, a task to which he is well suited given his “exceptional intellect and strategic know-how”. Robert E Sokohl has a diverse workload that encompasses portfolio management, licensing, due diligence and opinions. He is “extremely resourceful and effective across the board”. Litigation has become an increasingly important component of the practice under the guidance of litigation chair Mark F Evens , whose talent for persuasion gets the desired results. He has obtained successful verdicts in cases involving a diversity of technologies and has nurtured a team-oriented culture in which trial lawyers integrate with leading technical experts.
Sughrue Mion has one of the most prolific patent prosecution practices in the United States and is staunchly committed to obtaining the best protection for its clients’ inventions, which arise in virtually every area of technology. “It has been prosecuting patents for a long time, and has accumulated vast experience and does what it does to the highest level.” Commentators note the group’s sizeable portfolio of inbound foreign instructions, especially from Asian clients, but it also boasts an impressive roster of US companies: it “knows exactly how to deliver what a client needs, no matter what that need is”. Recommended individuals include litigation and interference specialist John Callahan: “His work product is top-tier and, with his numerous appearances before the USPTO Board of Patent Appeals and Interferences and the Federal Circuit, he is able to foresee and circumvent many of the roadblocks that normally plague applicants during the prosecution process.” Rising star Mark Davis also wins plaudits: “His technical ability is outstanding, as is his attention to detail.” Having previously been in-house, he understands what companies are looking for and how to provide it.
Weil, Gotshal & Manges continues to operate at the forefront of the recent boom in patent litigation before the ITC, seeing action in the ‘smartphone wars’, in addition to cases involving other types of technology. A do-it-all patent litigation shop, it also undertakes a significant volume of district court litigation and appellate matters. Big-ticket cases are the order of the day, with notable recent highlights including representing Apple in a series of cases against Eastman Kodak. Brian Ferguson and Mark Davis spearhead the DC practice and both play a key role in representing Apple. Ferguson is coveted for his trial skills: “He is very effective in court, takes great depositions and works well with clients. His style is understated, but he should never be underestimated.” Davis is equally admired for his case management nous, but is also a formidable courtroom presence.
Since recruiting a five-partner group in 2008 from a competitor, White & Case has gone from strength to strength in Washington DC. The IP team has considerable expertise in high-stakes patent litigation, its predominant focus. It is closely aligned with leading antitrust and international trade practices, and the firm’s global platform gives it a substantial edge, especially in Section 337 proceedings in the ITC. Its litigators know how to operate before the ITC’s administrative law judges in order to get favourable results. Jack Lever is the group’s foremost lawyer and a long-time expert and lecturer on ITC affairs. He is recommended for his finely tuned trial instincts. David Tennant also litigates in the ITC in cases concerning semiconductors, microprocessors and other technologies. He also has a dynamic transactional practice and is an authority on post-litigation settlement through licensing. While the New York office is best known for life sciences, the DC team also has strength in the sector in the form of Jane Plomly, a transactional and IP licensing specialist in the biotechnology and pharmaceutical industries. Her business savvy and dedication to clients set her apart.
Distinguished DC firm Williams & Connolly has resolutely remained a single office organisation, yet its reputation for rigorous, robust and aggressive yet fair representation in patent litigation has spread internationally. One German source suggested that “it may well be the best in US patent litigation”. Skills of presentation and persuasion at all levels of the court system set it apart from many of its competitors, and it is a favourite for cases that are hard to win. The adaptable and versatile trial group applies its talents to disputes concerning almost any type of technology, but it is best known for its heavyweight life sciences work. Pharmaceutical originators love IP leader Bruce Genderson for his strategic and tactical acumen, tenacity and ability to overcome any obstacles. Like Genderson, Glenn Pfadenhauer has diverse experience of complex civil litigation, but particularly concentrates on IP disputes. He has been instrumental in building the firm’s glowing reputation.
WilmerHale is, in the opinion of many commentators, the best for patent litigation in the United States. It enjoys prominence in the capital thanks to its ITC capabilities; it has been at the epicentre of the smartphone wars, as well as disputes raging in other advanced technology areas. It can pull in world-class talent from other offices – William Lee, for instance, has played a lead role on several ITC mandates – while also possessing a classy local group. James Quarles is “one of the biggest names in ITC patent litigation” and among the most respected. Special counsel Spence Chubb is another seasoned expert with a long history of service at the ITC; for over 20 years he was a supervisory attorney in its Office of Unfair Import Investigations, and he thus has up-close and personal knowledge of Section 337 investigations. William McElwain is a “fantastically talented trial lawyer” with a practice in both patent and general commercial litigation. The DC team also boasts outstanding appellate expertise in Seth Waxman, a former solicitor general of the United States and “one of the top lawyers anywhere and in any area of law”. His track record in patent cases before the Court of Appeals for the Federal Circuit is virtually unrivalled.
Baker Hostetler has committed to expand its IP practice, hiring Barry Bretschneider from Morrison & Foerster at the start of 2012. Adversaries think highly of his patent litigation skills, noting that “he is very tough and really keeps you on your toes”. Browdy and Niemark’s Roger Browdy draws praise on the prosecution front: “He outlines brilliant prosecution strategies, conducts wonderful interviews and knows how to overcome USPTO objections. He is one of the best prosecutors out there.” High-end trial specialist Alan Fisch of Kaye Scholer has a great reputation and his dynamic, flamboyant style has led to several dramatic jury trial victories in the patent litigation arena. The firm’s reputation in the life sciences sector has always been first rate, but Fisch has helped to elevate its status in the technology sector. Michael Gollin chairs the Venable life sciences group and is recognised for his ability to get to grips with large IP portfolios and provide invaluable direction. He is equally popular among household names and start-ups in the biotechnology and pharmaceutical sectors, understanding the diverse requirements and demands of each. A recent arrival at Cozen O’Connor, Louis Heidelberger handles a large volume of patent and technology licence agreements, acting on behalf of emerging companies for which licensing is a central business model. He is an IP all-rounder, with expertise encompassing prosecution and litigation. Popular ITC Section 337 authority Gary Hnath practises at Mayer Brown. A former senior attorney at the ITC and past chair of the ITC Trial Lawyers Association, he “has vast experience, really understanding how the game is played”. Drinker Biddle’s Mercedes Meyer is a biotechnology and pharmaceutical patent prosecutor whom competitors say they “would hire in a heartbeat”. She is particularly strong on US patent drafting and prosecution, although she also has a substantial overseas portfolio management practice. Larry Nixon of Nixon & Vanderhye has nearly four decades of IP practice under his belt and is a “massively talented lawyer whom you can turn to for almost anything”. He does litigation, opinion work and prosecution. Having handled well over 60 ITC cases in private practice, Charles Schill of Steptoe & Johnson is one of the most experienced Section 337 lawyers in town. The great results he obtains speak volumes about his expertise and strategic acumen. David Schlitz is the head of Baker Botts’s DC IP department. Licensing is a core area of focus, but he is also a strong litigator. His combination of skills lends itself to adversarial licensing. While Goodwin Procter’s New York and Boston offices concentrate on life sciences, the DC team is busy prosecuting software, internet-based and mechanical patents. Stephen Schreiner manages a huge docket of patent applications and is a leading expert on the prosecution of business method patents. Allan Soobert is vice chair of the Paul Hastings DC office and is a highly successful patent and trade secret litigator, with a talent for handling the most complex disputes in which critical IP assets are under threat. He recently obtained several significant victories for Apple. Kent Stevens, of Cadwalader, Wickersham & Taft, is a Section 337 ITC specialist who brings insider experience as both a law clerk in the Office of Administrative Law Judges and a senior investigator with the Office of Unfair Import Investigations to private practice. It is hard to find a more knowledgeable individual on ITC matters. Marcia H Sundeen chairs Kenyon & Kenyon’s ITC practice and, as a former president of the ITC Trial Lawyers Association, is a practitioner of eminent standing in the community. She previously worked at the ITC as an attorney and has that insider knowledge that is currently such a hot commodity. Ping Wang, a partner at Texas-based firm Andrews Kurth, comes highly recommended for patent prosecution. “She is an outstanding attorney who gives an exceptional service for a competitive price. She has a remarkable track record and prosecutes applications with skill, accuracy and speed.” One client remarked: “Our IP department would be lost without her.” Jeffrey Weaver practises at compact IP boutique Fiala & Weaver and is regarded as a leading strategist. His know-how spreads across all aspects of patent protection and enforcement, although he focuses on the prosecution of electrical, mechanical and software patents.