The Legal 500

The leading players in the intellectual property market consist of larger IP boutiques, full-coverage firms and general practice commercial firms. Full-service firms are increasingly specialising in IP to capitalize on the growing workload in global brand protection, while smaller IP boutiques continue to struggle in an increasingly competitive market. New media continues to present challenges and opportunities to dispute what and where protection rights lie.

New York-based Darby & Darby, one of the oldest IP boutiques in the US, was dissolved, with lawyers leaving to join general practice firms such as McDermott Will & Emery LLP and Stroock & Stroock & Lavan LLP, while San Francisco’s Townsend and Townsend and Crew merged with Kilpatrick Stockton to form Kilpatrick Townsend & Stockton at the start of 2011. Once one of the IP powerhouses, Howrey LLP dissolved in April 2011. Among the key high-profile partner moves, former IP co-chairs William Rooklidge and Alan Grimaldi went to Jones Day and Mayer Brown respectively, while Dewey & LeBoeuf LLP hired a number of West Coast-based lawyers, including former vice-chairman Henry Bunsow. Bert Reiser, a key lawyer in Section 337 cases, and Matthew Moore, went to Latham & Watkins LLP. Matthew Wolf and counsel Marc Cohn moved to Arnold & Porter LLP.

Emerging technology and new media continue to influence and shape the issues facing copyright law, particularly the challenges presented by the internet’s growing role in the music, film, television and publishing industries. The firms in the copyright table advise on complex disputes in court as well as on corporate and transactional matters such as licensing and ownership. The legal copyright market is relatively fractured, with practices tending to specialise in particular areas, such as literary, arts, entertainment, film, music and new technology.

Firms listed in the patent licensing section work on the preparation and negotiation of joint development agreements, as well as being active in other patent fields. Firms in this ranking have the ability to deal with complex licensing issues across a number of industries and countries for some of the world’s largest companies, as well as representing those with a particularly high volume of patents. A large number of firms in the table are also equipped to deal with licensing issues arising from patent litigation settlements.

Firms listed in the patent litigation table handle work in the US district, federal and supreme courts, as well as before the International Trade Commission (ITC). They also advise on interference matters before the United States Patent and Trademark Office (USPTO). The section encompasses firms that are competent across the full range of industry sectors as well as those that have specialist focus areas, such as hi-tech, life sciences, mechanical and energy.

The ITC’s time-efficient and cost-saving proceedings remain popular for IP cases, with 2010 seeing the volume of cases rise by three quarters from 2009. There was a high concentration of cases related to smart phone technology in 2010, with both individual applicants and foreign companies making up a significant percentage of filers for protecting US patents. The rankings in the ITC patent litigation section cover IP firms specialising in ITC investigations as well as general practice and full-coverage firms that demonstrate strong expertise before the ITC.

The utility and design patents ranking lists US practices with strong capabilities in non-contentious patent applications and utility and design patent prosecution. Firms listed in the rankings also handle a high volume of patent applications and filings, while the ability to draft US applications and the strength of a firm’s US and foreign client base are relevant factors in assessing its ranking. As the US has seen a marked increase in ex parte and inter partes re-examinations, reissue applications and interferences in recent years, firms with strong capabilities in these areas are also recognized.

The landmark Tiffany v eBay dispute, concerning the extent to which eBay and other consumer resale sites are required to police counterfeit sales, has dominated the contentious trademark landscape in 2010. Firms in this section demonstrate specialist focus and depth in the area, litigating on complex issues at court, including domain name disputes, and anti-counterfeiting and gray market goods cases.

Firms listed in the trademarks: non-contentious section demonstrate the ability to manage well-known brands, with a particular emphasis on large, complex and unique portfolios for the world’s leading companies. The section encompasses practices dealing with matters including enforcement, policing, protection, licensing and procurement, with credit given to global reach in terms of protecting marks in multiple jurisdictions.

Jenner & Block LLP has strong expertise in complex litigation, as well as transactional support in relation to both new media and traditional entertainment and copyright issues. The team is led from Washington DC and includes co-chairs Steven Fabrizio, who has a strong reputation for advising on high-stakes content protection and hi-tech copyright issues, and Andrew Bart in New York, an experienced trial lawyer with a particular focus on entertainment sector clients, particularly recording companies. Steven Englund also specialises in content rights issues relating to the digital world. Other notable attorneys include Gianni Servodidio and Susan Kohlmann, while former partners Thomas Perrelli and Donald Verrilli were appointed to the Obama Administration in 2009. Viacom remains a major client, and its ongoing lawsuit against YouTube and Google remains a key highlight. The court ruled in favour of the defendants in the $1bn copyright infringement case, with the client having appealed and the appeal pending. The firm is also known for representing major recording companies, including EMI, which it is advising in the ongoing Capitol Records v MP3tunes case. The practice successfully represented a group of US recording companies, including Arista Records, in an infringement case against Usenet.com, and achieved a victory for Universal Music Group in a traditional copyright case brought by the family of Bob Marley, which sought damages relating to music rights and licensing for ringtones. The team also handles literary rights matters, including representing the heirs of Elaine Steinbeck (widow of author John Steinbeck) at a Second Circuit appeal, which affirmed a previous ruling and retained the client’s rights to the author’s works, ending a long-running dispute. Additional key clients include all major motion picture studios and video games companies in the United States.

Loeb & Loeb LLP handles both counseling and litigation for entertainment clients. IP protection co-chair Barry Slotnick and commercial litigator Jonathan Zavin have extensive experience in copyright litigation. The team continues to represent leading names from the entertainment field including EMI, Sony/ATV Music, Rainbow Media and major film studios, as well as brands such as Harley Davidson Motor Company. Recent highlights include defending MGM Studios and Twentieth Century Fox against an infringement allegation brought by one of the authors of the book Raging Bull, claiming the film version infringed their rights. A district court ruling granted judgment in the clients’ favor. The firm also represented Sony/ATV Music as defendant in a long-running copyright ownership suit brought by the widow of country music singer-songwriter Roger Miller.

Cowan, Liebowitz & Latman, PC is highly respected in the copyright field with strong counseling and litigation expertise. It is particularly strong in the publishing sector, with 2010 seeing it successfully defend key client Penguin Group in a long-running dispute with descendants of the author John Steinbeck relating to the rights of the client to continue publishing The Pearl. Richard Dannay and of counsel Tom Kjellberg led on the case. Additional clients span financial services, film and music; they include Universal Pictures and Recording Industry of America, as well as hi-tech companies such as Sony Computer Entertainment. William Borchard advises on counseling and transactional copyright matters, while Robert Clarida advises on both transactional and litigation aspects of copyright issues.

Noted for its strength in media and broadcasting, Davis Wright Tremaine LLP’s team, based in New York, handles counseling, registration and transactional issues alongside a dedicated litigation practice. Copyright litigator Elizabeth McNamara has extensive experience acting for television broadcasters, literary agents and publishing houses alongside other media and entertainment clients. McNamara recently represented Spike Cable Networks, MTV Networks, Viacom and CBS in an infringement suit regarding a television show. Kelli Sager also has experience representing media broadcasters and publications at trial and appellate level, and is currently defending British newspaper The Mail on Sunday in a copyright claim brought by a Beach Boys band member. Other clients include BBC and NBC Universal. The practice successfully represented the latter in an infringement claim regarding the television show Heroes. In a reflection of its strength in literary rights, it represented author JD Salinger in Salinger v Colting, an infringement suit alleging that another writer’s work was a would-be sequel to The Catcher in the Rye. The case was granted preliminary injunction and at a Second Circuit appeal was vacated and remanded. Marcia Paul represents various major media organisations in copyright litigation.

Fross Zelnick Lehrman & Zissu, P.C. has ‘unsurpassed depth of knowledge and experience’ in copyright issues, alongside its better-known trademark capabilities. This dual capability has attracted crossover clients from a range of sectors, including publishing and entertainment, and handles copyright counseling and litigation for companies in the pharmaceuticals, insurance and finance sectors. Recent highlights include successfully representing Kam Hing as plaintiff in a copyright infringement claim against Wal-Mart, which affirmed a previous award of damages of over $2m. ‘Expert litigators’ Roger Zissu, James Weinberger, Barbara Solomon and Craig Mende are notable copyright attorneys. Zissu has a particular focus on litigation regarding literary, film and television works as well as contract and licensing issues for creators and owners. Weinberger’s broad client base extends to non-media and entertainment companies, and his practice includes transactional matters.

Mitchell, Silberberg & Knupp has a strong reputation in the entertainment industry, particularly for its work in the music field, and is backed by a history of involvement in influential copyright cases. Clients include film and music industry associations such as MPAA and RIAA, as well as NBC Universal, Sony and UMG Recordings. The highly regarded Russell Frackman is a lead lawyer for entertainment-sector clients, with a track record that includes important industry cases such as A&M Records v Napster and MGM v Grokster. He recently represented music artists Jay-Z, Linkin Park and others at a Ninth Circuit appeal which affirmed a previous judgment in favor of the clients as defendants. Federal court litigator Karin Pagnanelli represented Sony in defense of a $1bn infringement claim brought by software company Cybersitter, which named the Chinese government and China-based software manufacturers as defendants. She co-chairs the IP and technology group alongside Robert Rotstein, who represents Twentieth Century Fox, Universal City and other major film studios. The team lost George Borkowski in 2010, who left to co-chair the IP litigation practice at Venable LLP. The firm’s New York office, which opened in 2008, includes entertainment litigators Christine Lepera, Paul LiCalsi, and Howard Weller. Clients include ASCAP, publishing house Scholastic, music artists Ludacris and Kanye West, and Broadway performers.

The ‘exceptional’ Pryor Cashman LLP ‘always focuses on how to reach an effective resolution and is incredibly responsive’. Drawing from the firm’s litigation and entertainment expertise as well as working closely with its corporate and finance groups, the practice has full-service copyright capabilities, including registration, licensing, negotiating and preparing agreements. It acts for well-known music artists, and successfully represented Timothy Mosley and Nelly Furtado in defending a copyright infringement case brought by Finnish label Kernel Records. Music publishers EMI and Sony/ATV are also major clients. The practice also represents content owners in the digital and emerging technology sector. Tom Ferber is ‘intelligent, communicative’, ‘a creative problem-solver’ and ‘able to articulate arguments clearly and concisely’. His more recent work has been for film-industry clients, representing leading names such as Horror Inc and New Line Cinema/Time Warner. Ferber was also part of a team representing Fox Broadcasting, Dick Clark Productions and 19 Entertainment in defending an allegation of misappropriation in relation to reality television show So You Think You Can Dance. Donald Zakarin is ‘very smart, practical and responsive’ and ‘a great litigator and advisor’. He successfully defended members of music group System Of A Down against a co-ownership claim over a particular song. Frank Scibilia is also well regarded and offers particular experience in music copyright issues in relation to emerging technology. In early 2011, Jacqueline Charlesworth joined from Morrison & Foerster LLP and specialises in digital technology and media.

Arnold & Porter LLP handles a full range of copyright protection matters for media and entertainment clients, including internet companies and sports leagues. The bi-coastal team fields nine partners across San Francisco, Los Angeles, New York and Washington DC. The New York group defended Paramount Pictures and Dreamworks in a copyright and trademark infringement case, in which the plaintiff alleged that the Transformers movie used her copyrighted bee-design air freshener. An experienced trial lawyer, Louis Ederer also represented an apparel maker as plaintiff in a case involving copyright infringement regarding fashion designs. The California-based team represents leading music recording and internet companies, with emerging technology a major focus. International IP co-chair Ronald Johnston has experience as lead counsel in new media and technology-related disputes, and Sean Morris specialises in technology and Internet law. Both attorneys represented Universal Music Group (UMG) in its litigation against DivX, involving an important industry-wide issue of copyright protection for music and videos in social networking and user-generated content websites. They also filed an amicus brief on behalf of NBC Universal and various music industry associations in a Ninth Circuit appeal for another UMG dispute against Veoh Networks, in relation to applying the Digital Millennium Copyright Act to user-generated content websites. Suzanne Wilson’s core client base is made up of internet, software and consumer goods companies; she recently settled a copyright infringement case for Microsoft and AOL. In Washington DC, Robert Garrett focuses on the sports and entertainment sectors, acting for clients such as the NBA, the NFL, Twentieth Century Fox, ABC, CBS and Disney. Roberta Horton acted for Swarovski North America in a copyright infringement case. The Virginia team takes on non-contentious matters for technology, entertainment and media interests such as acquisitions and licensing of content.

Covington & Burling LLP receives high praise for its work on high-profile, complex copyright matters, and is ‘very responsive, understands business impacts very well and has deep understanding of the law as well as the jurisdictions’. The practice stands out for its knowledge in policy matters, particularly in relation to emerging technology, with equal strength in contentious and non-contentious matters, while publishing and sports are key specialisms. San Francisco-based Simon Frankel has ‘the highest integrity’ and is ‘an exceptionally intelligent lawyer with deep knowledge of the law’. Frankel settled a dispute for Microsoft as defendant regarding an allegation of search engine links infringing music distribution websites. He also defended Samsung in a copyright infringement claim brought by a German software company. On the non-contentious side, of counsel Ronald Dove has been advising publishers on internet piracy and gray-market issues, and the NFL on telecasts being broadcast online. Dove also represented Public Broadcasting Service before the Copyright Royalty Board in a case relating to cable retransmission of public broadcast programming, which resulted in its highest payout to date. He was also involved in drafting an amicus brief for American Watch Association on Costco v Omega, a landmark copyright case regarding gray-market importation. For licensing cases, IP co-chair Robert Fram is ‘second to none’, and possesses the ‘ability to command both a boardroom and a courtroom’.

Debevoise & Plimpton has strong litigation expertise as well as licensing and counseling capabilities within its IP and media group. its copyright client base includes both traditional media and entertainment interests as well as online companies. It represented leading publishers and the Association of American Publishers as plaintiffs in settling a copyright infringement case against Google, which involved the defendant’s digitized book search database; Bruce Keller, Jeffrey Cunard and Jeremy Feigelson were among the team members involved. David Bernstein is another notable attorney.

Frankfurt Kurnit Klein & Selz has a dedicated IP practice, with a particular emphasis on media, advertising and entertainment. Literary infringement cases are a particular specialism of the practice, with its involvement in the high-profile copyright infringement claim brought by writer JD Salinger a recent highlight. Heading the firm’s IP and commercial litigation groups, Edward Rosenthal advised the defendant Fredrik Colting in that case, which involved the book 60 Years Later: Coming Through the Rye, an alleged sequel to Salinger’s famous novel. The dispute was recently settled. Elsewhere, Rosenthal defended publishing house Scholastic and author JK Rowling against copyright infringement allegations filed by an author named Nancy Stouffer. The firm also handles copyright matters for Nike, film industry creatives and other high-profile individuals. Richard Heller represents traditional publishers and authors, media personalities, and film and television companies. Other attorneys include Thomas Selz, who handles copyright and counseling; Mary Sotis, who focuses on sports and entertainment industries; and Brian Murphy, who advises advertising and entertainment companies.

Irell & Manella LLP is noted for ‘its expert substantive knowledge and recognition by the copyright Bar and courts’. The full-service copyright practice has dedicated transactional and litigation attorneys across its Los Angeles and Newport Beach offices, with a strong entertainment focus. Clients clients include Viacom, ABC, NBC/Universal and CBS. Of counsel David Nimmer is a ‘recognized pre-eminent copyright scholar, practitioner and commentator’, and litigates on behalf of entertainment, publishing and hi-tech sector clients. Nimmer recently led as co-counsel for the plaintiff in Reed Elsevier v Muchnick, a copyright infringement dispute between publishers and freelance writers in relation to literary works being made available in an electronic database. An appeal at the Second Circuit reversed a district court decision certifying a $18m settlement to the plaintiffs. Trial lawyer Steven Marenberg has high-profile IP and entertainment litigation experience, with clients including film director Peter Jackson, Universal Group and Warner Brothers Pictures.

Kilpatrick Townsend & Stockton LLP’s recent merger with IP boutique Townsend and Townsend and Crew LLP provides the general practice firm with a presence in San Francisco alongside its Atlanta HQ and New York and Washington DC bases, and strengthens its contentious and non-contentious copyright capabilities. Joseph Beck and Joseph Petersen are well regarded for their knowledge of cutting-edge copyright issues, and the practice is developing its hi-tech focus alongside its established reputation for advising industrial manufacturers. The team advised wireless service provider AT&T Mobility in a case against ASCAP concerning the value of performances of music on mobile phones and certain AT&T websites, which ended in a favorable settlement for the client. It also acted for the client in obtaining a summary judgment declaring that its distribution of ringtone files did not implicate performance rights or require a license. In addition, Beck represented Sony Pictures Entertainment in successfully dismissing a copyright infringement claim brought by a comic writer regarding the movie You Don’t Mess With The Zohan; Lisa Pearson successfully represented well-known consumer brand Pedi-Perfect in a copyright infringement claim; while James Trigg focuses on internet and music copyright-related issues. Other clients include visual content provider Masterfile, industrial manufacturer Universal Furniture, Fusion Entertainment and Capitol Records.

As well as advising traditional entertainment clients, Latham & Watkins LLP’s copyright practice has a focus on the software and technology sectors. Split across the firm’s New York and Los Angeles bases, the team focuses particularly on international matters in the film, music, publishing and hi-tech sectors. IP litigator Daniel Schecter has acted as lead counsel for the likes of Apple and MGM. Global IP chair Perry Viscounty acts for a range of hi-tech and internet clients.

With ‘strong legal and technical knowledge’, O’Melveny & Myers LLP’s copyright practice focuses on traditional media content disputes as well as on the emerging technology sector. Apple is a key client, while 2010 saw the team advise software company Artifex in a copyright infringement suit against smartphone maker Palm Inc claiming unauthorized copying and distributing of registered technology. Robert Schwartz leads the entertainment and media group and assists artists, film and television groups and publishers in content-related disputes, while David Eberhardt and counsel David Sepanik form part of the ‘outstanding team’ in California. Eberhardt acted alongside lead partner Darin Snyder in a Ninth Circuit appeal for digital technology provider NDS Group in a long-running dispute with EchoStar involving piracy and copyright infringement issues arising from digital television viewing cards. Schwartz is currently representing GDC Technology and other defendants in a case involving copyright claims regarding movie theater 3D glasses. 2010 saw the team take over representation of Warner Brothers and DC Comics, in cases against co-creator Jerry Siegel’s rights to the Superman character, as well as acting on a newly filed case against Siegel, Schuster and other defendants.The team lost litigators Dale Cendali and Diana Torres, who left for Kirkland & Ellis LLP in early 2009. It took steps to fill the gap with the hire of New York-based Marc Ackerman from White & Case LLP.

Winston & Strawn LLP's copyright litigation team, led by managing partner Michael Elkin and IP practice vice chair Andrew Bridges, has handled some highly influential copyright infringement cases regarding new media and emerging technology. These include a win for Yahoo! in United States v ASCAP at a Second Circuit appeal, which confirmed a decision that websites offering music downloads do not need licenses for copyright performance rights. It previously defended Yahoo! subsidiary Launch Media in a successful Second Circuit appeal against Arista Records and a number of other major recording labels, in a potential damages claim worth up to $2bn, alleging that the client’s webcasting service infringed sound recording copyrights. Elkin worked with Jennifer Golinveaux and Thomas Lane as lead counsel for the defendant in UMG Recordings v Veoh Networks, successfully representing the online video company against alleged copyright infringement through permitting third-party users to share user generated videos containing musical performances. The case recently went to appeal before the Ninth Circuit. Bridges advises The Financial Times on IP matters, which included settling a copyright infringement case against private equity company The Blackstone Group in relation to multiple use of a single subscription for access to the business newspaper’s online publication. The practice also advised Swiss file-sharing company RapidShare on a number of international disputes regarding the client’s one-click hosting service, which has faced copyright infringement allegations.

Fish & Richardson P.C. is better known for its patent capabilities, but also offers strength in copyright, particularly in publishing, design, online and software. The firm suffered a blow when it lost Mark Fischer, who led its media and copyright practices, to Duane Morris LLP in mid-2010. Cynthia Johnson Walden heads the trademark and copyright group and provides litigation, counseling and prosecution expertise. Highlights included defending the publishers in Reed Elsevier v Muchnick, a closely watched dispute which most recently reached the Supreme Court and determined that copyright registration was not required for a class action settlement. The firm also represented sculptor Frank Gaylord in an infringement suit regarding a commemorative stamp issued by the US Postal Service which featured a photograph of the client’s sculpture of the Korean War Memorial, with the Federal Circuit ruling in favor of Gaylord regarding the issue of fair use. Additional highlights included representing Five Dollars a Day LLC in a copyright declaratory judgment action to determine the rights to distribute the motion picture Five Dollars a Day, and winning summary judgment for Defendant L-3 Communications Corporation in multiple copyright cases involving source code for software used to track aircraft maintenance. Associate Kristin McCallion ‘brings a high level of energy to a case and has good analytical skills’.

A full-service firm with strong international capabilities, Greenberg Traurig LLP’s copyright practice spans the full spectrum of technology, media and entertainment sectors, advising on litigation as well as registration and licensing issues. The national practice expanded further with the opening of a San Francisco office in 2010, with a new team that includes litigator Kenneth Steinthal from Weil, Gotshal & Manges LLP. He advises media companies including ESPN, Netflix and Real Networks, and has particular strength in defending traditional and new-media content providers against lawsuits brought by music copyright owners. Former IP counsel at the Motion Picture Association of America, Joseph Geisman joined the firm in late 2010 and focuses on copyright issues. California-based Ian Ballon specialises in e-commerce and internet-related issues, and represented Yahoo! and Microsoft in a copyright infringement case regarding digital music, as well as advising clients such as Sony Pictures Entertainment and eBay. Ballon was also lead counsel to The McClatchy Company in Reed-Elsevier v Muchnick, an important case for copyright law regarding rights of freelance authors in relation to the digitization of unregistered works by database companies and publishers. In Atlanta, Bobby Rosenbloum advises on transactional matters, negotiating contracts and licensing issues for entertainment-industry interests, particularly in music, and also counsels on digital media issues.

Hogan Lovells US LLP is respected for its excellent business acumen and ‘well-heeded advice’. Its merger added further international capabilities to its copyright practice, which advises on ownership, infringement, internet enforcement and anti-counterfeiting issues. Clients span traditional media and entertainment companies, as well as automobile and industrial manufacturers. The New York team includes Dori Ann Hanswirth and Slade Metcalf, who have a ‘keen and insightful intellect’; Hanswirth focuses on media cases, representing interests in the print media, television and film sectors, while Metcalf was part of a team that advised HarperCollins in an infringement lawsuit against Gawker Media, which runs an online blog, in relation to Sarah Palin’s published work. Trial lawyer Steven Hollman and commercial litigator Robert Wolinsky were co-counsel to industrial manufacturer Victor Stanley Inc in a case involving copyright infringement against Creative Pipe, alleging that it procured copies of its copyrighted drawings of products. IP co-chair Raymond Kurz leads from the Washington DC office and also provides experience in copyright disputes.

Hunton & Williams LLP offers a full range of services related to copyright issues and represents clients from the traditional entertainment, media and arts sectors as well as software and IT interests. It is particularly noted for its experience in the video games arena, representing clients such as Epic Games. Additional clients include the Colonial Williamsburg Foundation, Elite Sports and Baby Network. Richmond-based Stephen Demm has represented software, consumer product and F100 companies in copyright infringement disputes. Also based in Richmond, John Gary Maynard represents industrial manufacturers, while Washington DC-based Rodger Tate focuses on technology matters. Douglas Kenyon is also recommended, for his trademark and copyright expertise.

Kenyon & Kenyon has a full-service copyright practice and is particularly strong on the non-contentious side, with experience in areas such as advertising, transactions and financing. James Rosini chairs the firm’s trademark, copyright and design group, which acts for television, publishing and media spheres as well as high-profile entertainment individuals, and software and telecoms entities. It represented BNP Paribas subsidiary CooperNeff Advisors in a case involving alleged copyright infringement relating to a software platform used for daily financial trading. Trial and appellate attorney T. Cy Walker and Brian Mudge, who specialises in software and internet-related issues, were among the lead lawyers on the case. Jonathan Reichman has transactional and litigation expertise in the area of copyright, with particular experience within the entertainment field, dealing with matters involving fictional characters and estates of leading writers and artists. Reichman recently led on an international dispute involving a well-known toy manufacturer.

Morrison & Foerster LLP’s copyright practice represents leading software and technology companies in disputes and non-contentious issues, and also has experience advising traditional media and entertainment clients such as the National Music Publishers Association (NMPA). Based in San Francisco, Michael Jacobs acts for leading emerging technology names such as Yahoo! and Apple. Highlights included acting on the high-profile Vernor v Autodesk case, which reached a Ninth Circuit appeal hearing in favor of the client, overturning a previous decision which ruled that Vernor did not infringe Autodesk’s products by selling used copies on eBay. The appeal decision is significant for its impact on the rights consumers have in purchasing digital content. Jacobs also represented Novell in its long-running dispute with SCO regarding ownership of the UNIX computer operating system, with the most recent hearing affirming that the client owned the copyrights. The practice also successfully defended internet service provider PCCW Global against an infringement filing by a photographer regarding copyrighted images of celebrities on certain websites. The New York team lost Jacqueline Charlesworth to Pryor Cashman LLP.

Providing a service that is a ‘cut above others’, Paul, Weiss, Rifkind, Wharton & Garrison LLP has a six-partner copyright team in New York that offers deep litigation expertise for high-end clients. Music remains its specialist strength, where it has a particular focus advising industry associations and songwriters. Lynn Bayard and Jay Cohen are part of a media and entertainment-focused team, which successfully led for the NMPA, the Songwriters Guild of America and the Nashville Songwriters Association International in a case affirming favorable mechanical rate terms for physical products, downloads and ringtones. Bayard also represented the family of the creator of Alvin And The Chipmunks in a high-profile case against Twentieth Century Fox. Commercial litigator Leslie Gordon Fagen is an ‘excellent trial lawyer and general counselor’ with experience representing media and fashion industry clients. Fagen and Andrew Ehrlich (‘a very strong younger partner’) acted for MTV Networks in a case brought by the bankruptcy estate of Trans Continental Television Productions regarding copyright entitlement to television show Making The Band. Charles Googe handles a range of IP transactional issues including copyright counseling and licensing for clients in the corporate and entertainment sectors.

White & Case LLP’s copyright practice maintains particular strength in the music arena. Based in New York, Fred Koenigsberg offers international expertise and is counsel to ASCAP, the industry association for songwriters and music publishers. Both Koenigsberg and Christopher Glancy combine litigation and counseling expertise, and recently represented ASCAP in proceedings relating to the key issue of determining rates for music performing rights license fees. Other clients include Garth Brooks, BMG Music Publishing, Walt Disney Company and literary author Rosemary Wells. The team lost Jonathan Moskin to Foley & Lardner LLP in 2009.

Wiley Rein LLP provides ‘superior service’ in the copyright law space, recently representing leading hi-technology companies in copyright infringement cases. Led from Washington DC, practice head Bruce Joseph is a litigator whose ‘negotiation abilities are superior’. Joseph successfully represented Verizon Wireless before the ASCAP, which granted judgment that wireless technology devices do not require a public performance license for downloading or playing of music ringtones. Joseph and ‘excellent litigator’ Andrew McBride were counsel to Ericsson in litigation, which was also in relation to setting license fees for music performances implicated in ringtones. The team is also defending T-Mobile against an allegation of illegal file sharing through its multimedia messaging service. Thomas Kirby successfully achieved a $15m-plus copyright infringement settlement for publishers of professional newsletter and periodicals, in relation to subscribers multiplying a single electronic subscription into many. Kirby is also defending Supermedia, a major media and publishing company which sells print and internet advertising to SMEs, against alleged infringement of hundreds of yellow pages advertisements.

Intellectual property powerhouse Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. routinely advises some of the world’s largest companies on a wide variety of licensing and portfolio management issues. In the past year, the team has handled around 300 licensing matters for small and mid-sized companies and large corporations from diverse industries including electronics, pharmaceuticals and consumer products. The team includes three partners who spend more than half their time in the field and are supported by another 21 partners and 20 counsel and associates. Work highlights from 2010 included advising longstanding client and leading patent management company Audio MPEG on its licensing and enforcement program for patents relating to digital compression technology. The team also advised Vertex Pharmaceuticals on issues relating to their drug development programs for treating the Hepatitis C virus and Cystic Fibrosis. Eric Raciti in Cambridge also represents Boston Scientific on a number of ongoing licensing matters. The team is jointly headed out of the Washington DC office by Patrick O’ Reilley, who focuses on biotechnology and chemicals, and John Paul, who covers consumer products and medical devices. Other active partners include William Pratt and Douglas Henderson, also based in Washington DC. Major clients include Abbott Laboratories, Accenture, INEOS, Mitsubishi Corp, Philips Electronics North America and Sony.

Kenyon & Kenyon has a premium and institutional client base that speaks volumes for the quality of the work that its licensing lawyers undertake year in-year out. The team, which is headquartered in New York and includes lawyers in three other offices across the US, takes a distinctive client-focused approach to patent law which has assisted it to retain a number of longstanding clients, among them some of the world’s largest patent portfolio owners. With some 95% of the lawyers coming from scientific backgrounds, the team covers areas including chemicals and pharmaceuticals, computers, consumer electronics and entertainment, and is particularly strong on the automotive side, representing some of Europe’s largest manufacturers. European practice group head Michael Lennon leads the team from the New York office and brings 25 years of experience to the group. Lennon, who is also an experienced litigator, is noted for his work for clients such as Audi, Daimler, Volkswagen and Aladdin Knowledge Systems. Key partners in New York include John Flock and George Badenoch, who chairs the firm’s electrical and mechanical practice group, with Charles Weiss and Deborah Somerville also coming highly recommended. Other major clients include Robert Bosch, Mercedes-Benz, Sony, Toyota and AT&T.

Headquartered in San Francisco, Morrison & Foerster LLP’s experienced licensing practice goes hand in hand with its technology practice. The team covers a broad spectrum of licensing matters, from comprehensive cross-licenses of hundreds or thousands of patents between multinational electronics companies, to negotiation of settlements with individual inventors. It is experienced in a range of industries and technologies, including biotechnology, chemicals, entertainment and financial services. Electronics and information technology expert Paul Jahn heads the group from San Francisco and recently advised Intel (on entering into a joint venture with General Electric for home health products) and ContentGuard (on the licensing of its digital rights management patent portfolio). Jahn also assists Emulex, Hitachi, Sharp, DreamWorks Animation and the University of California. Also in San Francisco is William Schwartz, who concentrates on areas such as computer technologies, semiconductors and communications equipment. In New York, co-head of the sourcing practice Vivian Hanson comes recommended. Other clients include Yahoo!, Warner Music Group, Sega of America, Time Warner Cable and Sharp.

Weil, Gotshal & Manges LLP represents clients in all stages of development, from start-ups to established companies, and is adept at complex and strategic transactions and cutting-edge technology matters. The team also has niche capabilities in complex licensing and technology dispositions entered into as a result of patent litigation settlements. The practice group works across industries including pharmaceuticals/biotech, software, hardware, semiconductors, consumer products, energy, and financial services. The team of four partners based mainly in New York, is recommended. Michael Epstein, who is also well versed in litigation, Jeffrey Osterman and Charan Sandhu all have extensive experience in the field, as does Karen Ballack in San Francisco. Work highlights included advising Apple on all aspects of its patent licensing; representing GE Aviation on its joint venture with Aviation Industry Corporation of China; and representing Texas Instruments on both the sale of its cable modem product line to Intel and its purchase of two Japanese semiconductor wafer fabs. Key clients include Eli Lilly, Estée Lauder, General Motors, Getty Images, Microsoft, Panasonic, Procter & Gamble and Samsung.

WilmerHale has a strong bench when it comes to technology, as reflected in its extensive client list. The team of 14 partners, which structures, prepares and negotiates thousands of licenses each year, is chaired by New York-based Steven Singer, who leads the technology transactions and licensing practice group and has more than 30 years of experience. Singer also co-chairs the life sciences group and has expertise in the biotechnology, medical device and pharmaceutical fields. In Boston, Alfred Server is also highly recommended for his work in the life sciences field. Recent work for pharmaceutical and healthcare companies includes representing TransTech Pharma in a $1.1bn licensing transaction for a treatment of diabetes, and advising MacroGenics in a $60m collaboration with Boehringer Ingelheim International GmbH. The team also represented Infinity Pharmaceuticals in a $489m research and development collaboration for INK1197 and other PI3K delta/gamma inhibitors. Other clients include Alnylam Pharmaceuticals, Millennium Pharmaceuticals/Takeda, Infinity Pharmaceuticals, Aileron Therapeutics, Bristol-Myers Squibb and Broadcom Corporation.

The team at Baker Botts L.L.P. handles the full spectrum of licensing matters, from traditional patent license agreements to complex multiparty technology development and acquisitions. The sizeable licensing team includes 28 partners across six offices, and is headed by Bart Showalter in the Dallas office. Showalter focuses on electronics, telecommunications and software fields, including contentious matters. Other key partners are Chris Kennerly, head of the IP department in Palo Alto, and Douglas Kubehl in Dallas. In 2010 the team advised Renesas Electronics on the licensing of approximately 40,000 of its patents and patent applications to Hynix Semiconductor. The firm provides ongoing legal services to Facebook, handling patent strategy, patent prosecution and licensing matters. The team also advises longstanding client the University of Columbia and a number of other research universities and institutions, including the University of Pittsburgh and the University of Texas Southwestern Medical School. Other key clients are Cisco Systems, IMS Health, Vidyo and Yahoo!.

Covington & Burling LLP is an ‘elite law firm’ with a licensing and transactional practice ‘of the highest caliber’, ‘one of the best in its field’. The team has particular expertise in life sciences, dealing with strategic transactions, development, manufacturing and marketing rights agreements. The hugely experienced Evan Cox leads the group from San Francisco, while the remainder of the team primarily work out of the Washington DC office, with support provided from three other US offices. It acts for market-leading clients such as Microsoft, Procter & Gamble, ExxonMobil, Genentech and AstraZeneca, and has recently gained new clients such as Adobe, the Blu-Ray Disc Association and the Open Authentication Technology Committee (advising the latter on a number of complex cross-licensing matters). The ‘exceptional’ Lee Tiedrich, based in Washington DC, is recommended for her ‘ability to identify critical issues’ and her ‘extremely strong work ethic’. The firm also acts for Astellas Pharma, Gilead Sciences, Medicines360, Samsung, Amyris, and Novartis Vaccines and Diagnostics.

The licensing and e-merging commerce group at K&L Gates is well equipped to handle both complex licensing issues and cutting-edge technology matters. With a practice including commercial contracts and outsourcing, audits and due diligence, the team is strong in industries such as pharmaceuticals, computer software and finance, and is supported by the firm’s interdisciplinary life sciences group. The hugely experienced Michael Abernathy leads the team from Chicago, and uses his extensive litigation experience to strategically advise clients on their use of IP assets, licensing programs and patent due diligence issues. He works with clients across a host of different industries, including medical diagnostic systems and crude oil desalting. In the Boston office, Michael Brodowski comes highly recommended for his expertise in the chemistry space, and Thomas Turano is recommended for his work in the health sciences and tech-related industries. Key clients include Amazon.com, T-Mobile, Microsoft, Novartis and the Instrumental Laboratory Company.

Orrick, Herrington & Sutcliffe LLP has a large practice group made up of over 40 lawyers in offices across the US, with strong global support from bases in Asia, London and a recently opened office in Munich. The team has experience representing both sides of sales and licensing deals, and a client list ranging from individual entrepreneurs and start-ups to multinational companies. Sector specialisms include agricultural products, computer hardware, industrial chemistry and medical devices. The group is chaired by Gary Weiss in Silicon Valley, who is particularly strong in trade secrets litigation. Also recommended in Silicon Valley is Jeffrey Miller, who has expertise in patent work, including litigation. Work highlights included advising Dow Agrosciences on licensing and collaboration agreements relating to its crop biotechnology platform and technologies. Other clients have included Fujitsu, UPEK, Brocade Communications, Logitech, eBay, ProMOS Technologies, Foundry Networks, Dow Corning and Varian Medical Systems.

Pillsbury Winthrop Shaw Pittman LLP has an experienced team with strengths in sectors such as energy, financial services and technology. The practice is based across a number of US offices, with the highly experienced Jack Barufka heading the group from the McLean office. Barufka has expertise in strategic matters, prosecution and litigation, and focuses on electronics, mechanics, semiconductors and computers. Other recommended lawyers include James Gatto, also in McLean, and John Wetherell in San Diego, both of whom have more than 20 years experience in the field. Key clients include The Bank of New York Mellon Corp, Chevron, Intel, Invenda, Morgan Stanley, Nike, Stanley Black & Decker, Toshiba, Xerox and Yamaha Shinohara.

The licensing team at DLA Piper LLP includes nearly 200 IP lawyers, making it one of the largest in the US, and with excellent technical knowledge and an almost unrivalled geographical reach, it is well placed to cater to wide-reaching multinational clients. The team is led by John Allcock in San Diego. Based on the other side of San Diego, well-respected senior counsel Knox Bell comes highly recommended for his work in the biotech and life sciences sector. Significant matters in 2010 included assisting a client in relation to worldwide freedom-to-operate analyses, worldwide patent filing strategies, and collaborations and partnerships with leading stem cell research institutions. The team also worked with one of the largest multinational electronics manufacturers on a global brand redesign.

At Davis Polk & Wardwell LLP, the complexity and scope of the IP group’s work indicate it is the match of many larger practices. The 15-attorney team is headed by Frank Azzopardi in New York, and acts for a variety of life sciences, media broadcasting and publishing, and financial services clients. Recent high-profile deals include advising Comcast on a number of ventures, including its $37bn NBC Universal joint venture with GE; its minority investment in Houston Regional Sports Network; and negotiations with Rovi. The team also advised Symantec on its $1.3bn acquisition of Verisign’s authentication and identity security business. Major clients include Citigroup, Playtex Products, Energizer Corporation, Polo Ralph Lauren, Cosan, VNUS Medical Technologies, Yahoo! and Warner Chilcott.

The IP transactions team at Dechert LLP represents clients in a wide variety of industries, including life sciences, semiconductor and electronic products, and consumer products. Practice head Martin Black leads the team from the Philadelphia office and is supported by former litigator Joshua Rawson in New York, who is recommended for his work in the IT and electronics sectors. James Marino in Princeton is highly recommended for his life sciences work. Work highlights included representing Monster on its $225m acquisition of HotJobs from Yahoo!, which included a multi-year traffic agreement. Other representative matters included advising Citigroup on various licensing matters, including with respect to its digital identity authentication technology, and Landmark Digital Services on the licensing of its digital audio recognition technology. The group also advises semiconductor manufacturers Amkor Technology and Intersil, and a number of pharmaceutical and healthcare companies.

Foley & Lardner LLP has a strong IP practice which went from strength to strength in 2010. The licensing team includes eight partners who spend more then half their time on the area, and covers industries such as electronics and pharmaceuticals. Stephen Maebius chairs the practice from Washington DC, and is supported by recommended life sciences lawyers David Charapp and Richard Kaufman in San Diego/Del Mar. The firm strategically expanded with a spate of lateral partner hires in 2010, including a team of six IP attorneys from Choate, Hall & Stewart, among them Christopher McKenna. McKenna brings more than 15 years of experience to the team and joins the Boston office. In 2010 the team handled the due diligence and agreement work for United Therapeutics on an intricate and creative licensing and supply agreement with Eli Lilly. Other clients are Acologix, Brain Mapping Technologies, Calmune Corporation, GE Healthcare, Micro-Imaging Solutions and Takeda Pharmaceuticals.

The 20-attorney IP licensing team at full- service firm Kirkland & Ellis LLP is ‘outstanding’ and ‘extremely knowledgeable’, and is part of a 300-lawyer IP team across seven of the firm’s offices in the US. It covers a diverse range of industries, notably electronics, pharmaceuticals and financial services, and works hand in hand with the firm’s litigation and biotechnology, pharmaceutical and life sciences teams to provide ‘high-quality and creative’ solutions. The experienced and well-respected Russell Levine in Chicago comes highly recommended; ‘his strength is in understanding the issues in a business context and seeking creative ways to end litigation’.

The team at boutique firm Knobbe Martens Olson & Bear LLP is well versed in all areas of IP, and is well placed to cater to a wide variety of medical and technological clients, drawing on resources across seven offices in the US. The hugely experienced Steven Nataupsky, who has been with the firm for 20 years, heads the team from Orange County, and works with clients in the mechanical, medical devices, and entertainment industries. The team is ‘responsive’ and attracts praise for its understanding of its clients’ business. Key clients include I-Flow, Kimberly-Clark, Masimo Corp, Journée Lighting Inc and Qualcomm.

Ropes & Gray LLP has a particularly active licensing and transactions practice, acting for clients in industries including life sciences, hi-tech/engineering, consumer branded products and financial services. The IP team of 200 attorneys and 43 patent agents is located across six offices in the US and is particularly experienced in structuring joint development and joint venture relationships. Edward Black heads the group from the Boston office, and has extensive experience in media and technology management, while James Haley in New York comes highly recommended for his work in the biotechnology, pharmaceutical and chemical industries. Work highlights included advising Genzyme on its divestiture of three significant business units; Astrazeneca on a $1.2bn transaction with Rigel Pharmaceutical and a $350m acquisition of Novexel; and Applied Genetic Technologies on its acquisition of biopharmaceutical company Icagen. Other key clients include American Express, ExxonMobil, United Online, Motorola, Pfizer, Oscar De La Renta, Vertex Pharmaceuticals and Bristol-Myers Squibb.

Full-service firm Snell & Wilmer LLP has an experienced team based across eight offices in the US, with support provided from an office in Mexico. The majority of the partners are based in Phoenix, and from there Charles Hauff heads the practice group. The team possess is well placed to cover a broad range of industries, and particularly excels in life sciences and electronics. Alongside Hauff, Joseph Price in Orange County comes highly recommended for his work in the science and technology space. The firm began 2011 by taking on David Rogers from Squire, Sanders & Dempsey into the Phoenix office, who adds experience in litigation, licensing and due diligence matters. Key clients include American Express and Freeport McMoran.

Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. is highly regarded for its overall IP capabilities, and has ‘a strong ability to understand and translate complex technical principles into effective legal arguments’. The specialist firm draws on a large team with wide sector expertise to advise on patent infringement cases. Litigation head Doris Hines and Michael Jakes, who leads the appellate practice, offer particular experience in ITC cases, and successfully represented the complainant in Rambus v Nvidia Corp, regarding infringement of multiple semiconductor patents. It also represented Equitable Resources/Bilski in Bilski v Kappos, with the Supreme Court affirming that the Bilski business method was not patentable, and also overturning the Federal Circuit’s ‘machine-or-transformation test’. On the life sciences side, litigator Charles Lipsey successfully obtained a ruling for AstraZeneca, IPR and Shionogi that multiple generic drug companies infringed the patent of blockbuster drug Crestor, with a decision to maintain exclusivity until 2016. It also represented Eli Lilly and Company against patent invalidity claims from Teva Pharmaceuticals, winning both district court and appeal rulings in favor of the client. i4i is another key client.

‘Incredibly professional and skilful in its guidance’, Kirkland & Ellis LLP is a go-to firm for high-stakes patent infringement cases, possessing a team with depth at both partner and associate level. The lawyers are ‘always thinking two or three steps ahead of the competition’ and are ‘dedicated in doing their homework and thinking of alternatives’. While its broad-based practice and deep bench strength has allowed it to maintain its reputation, the team lost patent litigator John Desmarais, who left to set up a patent licensing company; Peter Armenio, who went to co-head Quinn Emanuel Urquhart & Sullivan, LLP’s life sciences practice; and Gerald Flattmann, who joined Paul, Hastings, Janofsky & Walker LLP. Clients include The Boeing Company, Genentech and Braun Medical, with Edward Donovan winning a patent claim for the latter against rival healthcare product company Terumo. Experienced trial counsel Steven Cherny, who ‘will find a way to win where others shy away from a problem’, advised CR Bard on one of the longest-running patent disputes to date, with 2010 seeing the client awarded additional damages, bringing the current value of the dispute to $660m and making it one of the highest-value awards in patent litigation. Robert Krupka successfully led on Teva’s Women’s Health patent infringement case, and Mark Pals and Marc Sernel have ‘excellent legal instincts and are thoughtful on the issues faced by clients’. Adam Alper advises a number of leading hi-tech corporations. Areas of niche expertise for the practice include section 337 investigations.

The ‘excellent’ Weil, Gotshal & Manges LLP ‘delivers the level of service you would expect from a top-flight, world-class firm’, as illustrated by a client roster that includes leading global names across a range of technologies, although Vernon Winters and Nicholas Brown moved to Greenberg Traurig LLP in 2010, while Douglas Lumish and former counsel Jeffrey Homrig left for Kasowitz, Benson, Torres & Friedman LLP. Nicholas Groombridge co-heads the national practice and is ‘brilliant, practical, terrific in front of a jury, and a nice person to boot’, while fellow co-head Jared Bobrow has extensive lead counsel experience. Groombridge represented Life Technologies against Illumina in a battle between the major biotech rivals, with a Markman hearing ruling in favor of Life Technologies on the majority of the disputed patents. Global litigation head Matthew Powers and Mark Davis have been representing Apple in its ongoing dispute with Motorola before the district court and ITC. Powers also represented Merck/Schering in a successful appeal court ruling against Teva, which challenged its patent for brain cancer drug Temodar. Associate Audrey Maness is ‘a real rising star’.

‘An excellent practice’, WilmerHale is active in both the technology and pharmaceuticals sectors. William Lee remains a highly regarded patent litigation figure with strong, wide-ranging trial experience, including at the ITC. Lee recently acted as co-lead counsel for Cisco, defending it against an infringement allegation brought by Linksmart Wireless Technology. On the life sciences side, Robert Gunther acted as lead counsel for Roche in obtaining dismissal of a case brought by Polymer Technology Systems, which alleged non-infringement and invalidity of a Roche patent relating to diabetes blood-testing meters. The team also successfully represented Smith & Nephew as plaintiff in its case against rival medical devices company Arthrex, with a favorable ruling on all issues including damages and a rejection of the opponent’s invalidity defense. Wyeth is another key client, and the practice added to its ranks with the hire of David Manspeizer, who was vice president of IP and associate general counsel at the pharmaceutical company Wyeth, while Spence Chubb joined as special counsel from the USITC.

‘Highly strategic, with a very deep bench with non-paralleled IP backgrounds’, Fish & Richardson P.C. is a specialist IP firm that handles a high volume of patent litigation. Led by the firm’s litigation head Katherine Kelly Lutton, the team is highly praised for its ability to take on high-stakes lawsuits, and can ‘manage client expectations appropriately and deliver results’. Among its clients are leading names such as Microsoft, which it defended in ongoing litigation brought by Uniloc, with a trial jury overturning a previous ruling in favor of the plaintiff. However, a more recent Court of Appeals decision sided with Uniloc but ruled for a new trial on damages. In life sciences, Jonathan Singer is ‘terrific at working up a case’ and recently represented Allergan and Eurand as plaintiffs in separate Hatch-Waxman cases, with a favorable ruling achieved for the former affirming exclusive rights for a multimillion-dollar glaucoma drug. Singer was also involved in a Markman hearing relating to alleged video-streaming technology infringement, on behalf of multiple defendants against Acacia Media Technologies. ‘A wonderful trial lawyer’, Juanita Brooks won a month-long trial for Fresenius Medical Care, which rejected a patent infringement allegation brought by Baxter Healthcare. Brooks is also representing Cephalin and CIMA as plaintiffs in a Hatch-Waxman hearing to prevent generic versions of its cancer pain drug Fentora. Delaware-based attorneys William Marsden, Timothy Devlin and associate Susan Colletti are ‘all excellent litigation counsel’.

‘Highly responsive and results oriented’, Fitzpatrick, Cella, Harper & Scinto has a core strength in life sciences, with ‘excellent knowledge of the pharmaceutical industry’. It typically represents brand companies such as Astra-Zeneca, Sanofi-Aventis and GSK in infringement cases involving high-value products, and also acts for leading technology/hi-tech companies such as IBM and Canon, recently representing the former in litigation against Rambus. Dominic Conde is ‘an outstanding strategist and litigator. If you end up going to trial, he is amazing – nothing gets by him’. Conde was involved in some of the practice’s largest cases, including successfully defending Daiichi Sankyo in an appeal case that affirmed a ruling that Mylan Pharmaceuticals infringed its billion-dollar-selling high blood pressure drug. Conde also achieved a reversal of a non-infringement judgment for Adams Respiratory Therapeutics (owned by Reckitt Benckiser) in a case against Perrigo, regarding popular branded non-prescription medicine Mucinex. William Solander is also recommended.

With a team that provides ‘excellent business acumen, knowledge, advice and results’, clients turn to West Coast-based Irell & Manella LLP for ‘the most complex and highest-exposure patent cases’. Morgan Chu is a well-known and highly respected patent trial counsel, and together with Andrei Iancu ‘provides top-class customer service’. Perry Goldberg and Ben Yorks are also highly regarded. The team covers a range of sectors, though it has a particular focus on the hi-tech sector. Chu, Goldberg and Iancu represented TiVo in a high-profile dispute with EchoStar regarding digital video recording devices, with recent rulings finding in favor of TiVo and awarding additional damages amounting to $400m to date, as well as a US Court of Appeals hearing that affirmed EchoStar was guilty of patent infringement; the litigation remains ongoing. Additional clients include eBay, Skype and Tessera; the team acted as co-counsel for the latter in an appeal win which affirmed a previous ITC ruling that various semiconductor chip manufacturers had infringed Tessera’s patent. The team added to its IP litigation expertise in 2010 through the lateral hire of patent re-examination specialist Greg Gardella from Fish & Richardson P.C..

Led by Brian Poissant and Anthony Insogna, Jones Day provides ‘legally and technically sophisticated advice’ to telecoms and life sciences clients including Celgene, Visa and P&G. Calvin Griffith and Patrick Norton are both ‘excellent lawyers’ with ‘great client relation skills’. Griffith in particular is recommended for complex patent litigation. Both attorneys were involved in successfully representing DePuy Spine as one of two defendants in a patent interference claim brought by Stryker Spine. Poissant was part of the team that secured a $29.4m damages win for Marine Polymer Technologies against HemCon Medical Technologies, while Federal Circuit group head Gregory Castanias led on appeal victories for The DirecTV Group and Fenwal/Baxter Healthcare. The firm also represented Vizio and AmTran Technology before the ITC. Daniel Malone is recommended. Randall Kay from DLA Piper LLP, Patrick Elsevier from Alston & Bird LLP, Mark Finkelstein from Latham & Watkins LLP and Astrid Spain from McDermott Will & Emery LLP all joined the California-based practice in 2010.

Quinn Emanuel Urquhart & Sullivan, LLP is an ‘outstanding’ litigation firm of ‘real trial lawyers’ that has built a strong reputation for patent litigation. Trial lawyer and IP co-chair Charles Verhoeven represented Google in its first patent infringement jury trial win, successfully defending a $600m damages claim by patent holding company Function Media regarding internet advertising-related patent infringement.The jury ruled non-infringement by Google and found Function Media’s patent to be invalid. This was one of three successes for Verhoeven on behalf of Google as defendant in Eastern Texas cases. He also successfully led alongside Victoria Maroulis for Cisco as defendant in a case brought by ESN LLC regarding integrated service routers. Edward DeFranco was part of a team that obtained a non-infringement decision for Gibson Guitar regarding the Guitar Hero video game of Activision, the plaintiff. Brian Cannon is rated for his in-depth legal knowledge and effectiveness in building a successful defense, and advised Roche in district and federal hearings against Stanford University regarding HIV testing kits. Peter Armenio joined from Kirkland & Ellis LLP in 2010, and obtained favorable rulings for Lundbeck, Forest Laboratories and American Express against multimillion-dollar infringement allegations. Co-chair Claude Stern and business trial lawyer John Quinn are also recommended.

Baker Botts L.L.P. provides ‘great availability, and creative advice and solutions’ to clients that include Cisco Systems, Yahoo! and AT&T. Practice head Barton Showalter has experience in hi-tech and electronics sector litigation, and recently defended WebEx Communications (a subsidiary of Cisco) against a lawsuit brought by Automated Business Companies, obtaining a non-infringement summary judgment for the client. The team also obtained a $1.8m damages win for Whirlpool and a favorable non-infringement ruling in an ongoing dispute with rival home appliances maker LG Electronics over refrigerator technology. Robert Scheinfeld ‘gives very practical advice and looks out for the interests of his clients’; both he and Eliot Williams are ‘very strong business partners who are also good litigators’. Lisa Kole and Paul Ragusa are also recommended, leading on a number of ANDA patent litigation suits on behalf of Ethypharm as either co-plaintiff or co-defendant.

Noted for its ‘outstanding trial work and results’, Covington & Burling LLP is ‘a brain trust full of qualified and bright lawyers’ and ‘knows the quiet art of writing a winning brief’. It is valued for its specialist focus on Section 337 investigations before the ITC. Clients include Hewlett-Packard, Samsung, AK Steel Corporation, Abbott Laboratories and Sanofi-Aventis. The team advised Monsanto in a highly publicized dispute against DuPont regarding GM crop technology, as well as defending Samsung in a case against BTG International regarding flash memory technology, which went before the ITC and district court. George Pappas is ‘a great courtroom advocate’, and obtained successful summary judgments for pharmaceutical companies Ortho-McNeil and Shire in patent exclusivity cases. Robert Haslam, ‘the consummate patent lawyer’, and the ‘smart, analytical’ Robert Fram, who ‘can engage a client or an adversary on an IP litigation matter at any level of detail’, are recommended, and Richard Rainey has ‘vast knowledge of appellate issues’. Michael Plimack, Christine Haskett and Kevin Collins are also recommended.

IP boutique Kenyon & Kenyon primarily focuses on patent litigation and provides ‘excellent advice and experienced staff that are on top of the latest developments’. The team ‘takes a holistic view of clients, their needs and the industry in general’, serving a wide range of sectors that includes hi-tech and life sciences, and is developing strength in ITC proceedings. In life sciences, it represented key client Teva in litigation against rival companies Sandoz and Pfizer, and obtained a favorable appeals decision for Photocure ASA in another case. John Bateman is an ‘excellent litigator’, who is ‘able to focus on the important points rather than getting lost in a case’. On the hi-tech side, clients include Sony, SAP, and automotive clients include Volkswagen. Life sciences co-chair Steven Lee and European practice chair Michael Lennon are also key attorneys. Marcia Sundeen leads on litigation before the ITC, and successfully represented China-based chemicals company Sinorgchem in a patent infringement suit filed by Flexsys.

West Coast-based Knobbe Martens Olson & Bear LLP is a respected specialist IP firm, with the strength in depth to offer litigation capabilities across a broad range of technologies. Clients include leading pharmaceuticals, healthcare and medical devices companies. It continues to demonstrate a strong appellate practice, representing Invention and Schindler as plaintiffs in a successful Appeals reversal against Otis Elevator Company, and also successfully defending leading medical devices company Smith & Nephew against rival Kinetics Concepts. Litigator Joseph Re has extensive trial and appellate experience.

Combining deep IP knowledge and litigation expertise, Morrison & Foerster LLP is valued for its international focus in IP litigation. A strong presence in San Francisco, the practice is well balanced between life sciences and hi-tech sectors, Life Technologies, Kyocera Wireless and Sandoz calling on the expertise of attorneys Michael Jacobs and David Doyle. Recent highlights include successfully defending Bayer Healthcare against a patent infringement claim brought by Abbott Laboratories. The team is also active in ITC proceedings for leading hi-tech names such as Sharp, Nikon and Toshiba. Brian Busey is highly experienced in Section 337 investigations, and 2010 saw the firm hire hi-tech expert Patricia Martone from Ropes & Gray LLP, who joins the New York team. Brian Matsui is ‘an appeal expert who knows how to turn a lower court decision around’.

Orrick, Herrington & Sutcliffe LLP has international strength and broad industry coverage, with particular strength in the hi-tech, internet, and electronics sectors, where it advises household names such as Facebook, LinkedIn, AOL, Microsoft and Apple. Led by IP head Gary Weiss, the practice has also been representing leading names from the gaming and electronics world in Section 337 investigations. Hopkins Guy acted for Apple in an ITC investigation filed by S3 Graphics regarding image compression formats and, in another ITC investigation, successfully represented five respondents, including Acer and Nanya, in a patent infringement case brought by Tessera, which was the first time Tessera has been defeated in a case regarding seminconductor chip patents. The practice also acted for Intel Corporation, Numonyx, Sony Ericsson and Apple in a patent infringement case brought by Fast Memory (an Acacia subsidiary) regarding flash memory technology. Trial lawyer Steven Routh has experience in patent litigation before the federal court and the ITC, and is ‘not only one of the top litigators, but also a very trustworthy team manager’.

Sidley Austin LLP’s team has ‘incredible intellectual competence, impressive knowledge of the law and underlying trustworthiness and tenacity, coupled with phenomenal trial skills’. It represented Research In Motion and Microsoft in ITC cases against Motorola, and advised Microsoft in a case regarding its Xbox product. Practice head David Pritkin and Richard Cederoth are recommended, as is the newly recruited Brian Nester from Fish & Richardson P.C., who focuses particularly on disputes before the ITC, and former chair of the Intellectual Property Section of the State Bar of California Patricia Thayer, who is a ‘brilliant lawyer and great communicator, great at understanding clients’ needs’. Edward Poplawski and ‘brilliant mind and highly effective litigator’ Bryan Anderson are ‘incredibly bright, knowledgeable, talented and articulate, and produce phenomenal results’. Both partners represented Cornell University in litigation against Hewlett-Packard. James Bradley ‘does an excellent job of leading teams in complex litigation matters’. Life sciences clients include Genentech, Merck, Johnson & Johnson and St Jude Medical.

Although New York-based Cravath, Swaine & Moore LLP’s patent litigation practice handles a lower volume of cases and includes fewer attorneys than other practices, it has nonetheless been involved in significant disputes across a range of technologies and is developing a more in-depth focus on IP. Evan Chesler, who has broad trial and appellate experience, and commercial litigator David Greenwald both represented DuPont in settling a case filed by 3M Co regarding a patent method used in Teflon products. They also represent Bristol-Myers Squibb and Sanofi-Aventis, recently obtaining a multimillion-dollar damages award for both clients regarding one of the world’s biggest-selling prescription drugs. Keith Hummel acts for medical devices company Medinol and is defending Qualcomm in a GPS technology-related case, while Richard Stark advised Xerox Corporation in its lawsuit against Google and Yahoo! regarding patents related to internet search technology.

Fulbright & Jaworski LLP possesses strong Texas and New York-based teams that ‘apply faultless legal knowledge tempered by a massive depth of experience in every aspect of patent litigation, while maintaining an awareness of the bigger-picture and commercial objectives of its client’. Christopher Benson successfully acted for Chungwa Picture Tubes, one of a number of defendants sued by Honeywell over infringing an LCD patent, while Marc Delflache successfully defended Menusoft Systems against patent infringement claims made by wireless telecoms company Ameranth. David Parker leads on biotech patent litigation and was counsel in Brown v Barbacid, successfully representing inventors of a cancer treatment technology against pharmaceutical corporation Bristol-Myers Squibb. Charles Walker is representing tax service provider H&R Block as plaintiff in a business method-related patent case. Specialising in telecoms, Eric Hall ‘combines a deep knowledge of a broad range of technologies with an encyclopedic knowledge of patent law’. Trial lawyer Brett Govett has ‘an excellent courtroom presence’ and Norman Hanson is ‘highly experienced and knowledgeable in the biomedical sector’. Commercial litigators Robert Harrell and Karl Dial are also recommended.

Gibson Dunn’s team has a broad focus and expertise across the hi-tech and life sciences sectors. Recent work has been characterised by ANDA-related litigation, with trial lawyer Wayne Barsky involved in representing Johnson & Johnson in a district court case that dismissed patent misuse lawsuits brought against it. The practice is also representig Novo Nordisk against generic manufacturers regarding patent infringement of its multimillion-dollar diabetes drug. Barsky successfully led at trial for Tessera in an infringement suit brought against a number of semiconductor manufacturers, including Spansion, Qualcomm and Motorola. Josh Krevitt advises leading technology companies such as T-Mobile, Apple and AT&T, and recently acted for Hewlett-Packard in a patent infringement claim brought by Minerva Industries against various smartphone companies. Krevitt is also representing Amazon in its well-publicised multi-jurisdictional dispute against Discovery Communications regarding its e-book reader. Denis Salmon, who has been representing St Jude Medical, and Mark Reiter co-chair the practice from Palo Alto and Texas. Jeffrey Thomas has been representing Allergan in various disputes as both plaintiff and defendant.

Kaye Scholer LLP is ‘exceptional in trial ability’ and ‘provides smart legal advice with an eye on furthering the business objectives of the client’. It has great strength on the life sciences side, representing leading names such as Wyeth, Pfizer and Roche. Leora Ben-Ami has a strong track record in the sector, and advised alongside Patricia Carson in the district court and on appeal in Wyeth v Kappos. Ben-Ami and Thomas Fleming are ‘particularly gifted’ in IP trial work, and ‘have a high-quality team that can address litigation and transactional issues equally well’. They represented DuPont in a settlement of three lawsuits with Invista regarding technology for manufacturing Nylon, as well as a high-profile ongoing case against Monsanto involving patent infringement of biotechnology related to GM crops. Scott Lindvall represented Rolls-Royce in litigation against United Technologies regarding jet engine technology. Trial lawyer Alan Fisch defended Novartis in an infringement case brought by patent holding company Webvention. Litigators Michael Malacek and Peter Root joined the Silicon Valley office, which opened in early 2010, from Dewey & LeBoeuf LLP, while trial lawyer Robert Unikel joined the Chicago office from Howrey LLP.

Drawing on its deep trial experience, the team at Latham & Watkins LLP represented CR Bard in its complex dispute with WL Gore regarding the patent of a vascular medical device, with a pre-appeal damages award amounting to around $653m to date. It was also lead counsel in Prometheus v Mayo, which in light of the Bilski decision was successfully appealed and affirmed at a Federal hearing. The team, led by co-chairs Bob Steinberg, Perry Viscounty and Max Grant, is regarded as responsive, knowledgeable and ‘providing the right amount of depth’, and has been taking further steps to strengthen its offering through strategic hires in its Washington DC office; Matthew Moore (‘fantastic and so efficient with handling matters, the right combination of personable and intellectual’) and Bert Reiser, who provides significant Section 337 disputes experience, both arrived from Howrey LLP, while Lawrence Gotts joined from Paul, Hastings, Janofsky & Walker LLP and adds extensive trial experience. Gotts represented Honeywell against the US government, Lockheed Martin and L-3 Communications in a successful appeal that reversed a previous ruling that Honeywell’s patent, used in night vision aircraft goggles, was invalid.

‘A very professional and focused firm that has its clients’ commercial interests at heart’, McKool Smith PC continues to build a strong reputation in patent litigation, particularly for plaintiffs against major corporations. The Texas-based litigation firm is ‘small but highly specialised in this field’. Practice head Mike McKool is trial counsel for clients such as American Airlines, MIT and BTG International, and recently represented the latter in filing an investigation before the ITC against various leading technology companies. The group was also involved in significant wins for i4i and VirnetX as plaintiffs against Microsoft, defeating an appeal by the software giant at the end of 2009 for the former, and obtaining a $200m settlement for the latter. Gordon White is a ‘highly innovative, technically knowledgeable and experienced patent litigator’, and Steven Pollinger is ‘very thoughtful, and client oriented; a very good negotiator who understands how to get deals done’. Brett Cooper, Doug Cawley, Jeffrey Carter and Rodney Sweetland (‘expert in ITC investigations, very dynamic’) are also recommended.

Paul, Hastings, Janofsky & Walker LLP has a strong reputation in the pharmaceuticals sector, with the New York-based team providing ‘a first-rate level of service’, as well as being ‘very responsive and communicative’. IP co-chair Joseph O’Malley represented Sepracor in its lawsuit against multiple defendants regarding sleep aid drug Lunesta, while as co-counsel he won at trial for Pfizer/Wyeth and Altana Pharma regarding their $2bn market value ulcer drug. O’Malley and Bruce Wexler, who ‘explains complex situations clearly to enable informed decision-making’, acted for Boehringer Ingelheim in a patent protection dispute which resulted in a decision at appellate level reversing the original decision that its patent was invalid. The group was joined in 2010 by Gerald Flattmann and of-counsel Melanie Rupert and Christine Willgoos from Kirkland & Ellis LLP, who bring life sciences expertise and clients such as Sanofi-Aventis and Galderma Laboratories to the team. Co-chair Jeffrey Randall has been leading the Palo Alto and Washington DC practices in hi-tech-related litigation, and has been advising companies such as Samsung in smart phone-related litigation. Robert Masters represents Konami Digital and Flexsys America.

Cadwalader, Wickersham & Taft LLP ‘distinguishes itself principally in the efficiency and intelligence with which it tackles daily issues’. Well regarded for its overall IP capabilities, the practice continues to develop in life sciences, pharmaceuticals, hi-tech and telecoms, providing specialist sector advice. Practice leader Christopher Hughes has extensive trial experience, including at the ITC, and is ‘a veteran attorney whose advice on all aspects of IP law is indispensable’. Hughes was part of a team representing IBM in a long-running dispute with Asustek that reached a settlement in 2010. Life sciences specialist Bartholomew Verdirame is credited for his ‘competency, tenacity, and loyalty’, and, with Tony Pezzano and special counsel Michael Dougherty, successfully represented Roche against Ranbaxy Laboratories at district court, appeal and cross-appeal, with the parties agreeing on validity, enforceability and infringement of Roche’s multimillion-dollar-selling antiviral drug. The team, along with special counsel Kent Stevens, who focuses on Section 337 investigations, also represented Roche as respondent to a filing by Amgen before the ITC. Stevens also represented Sony Ericsson in a multi-respondent patent case involving LED technology. More recently, Dougherty, who also specialises in representing biotech and pharmaceuticals clients, and Pezzano filed a lawsuit for Merck against Hetero Drugs.

McDermott Will & Emery LLP has ‘the strength and depth to advise extremely large clients while also retaining the flexibility and responsiveness to meet the needs of small companies’. With sizeable teams across central and bi-coastal offices, it draws upon a deep bench with expertise across a range of technologies. The New York group added four partners from former IP boutique Darby & Darby, which was dissolved in early 2010, including Louis DelJuidice, who with Joseph Robinson, recently represented Nippon Shinyaku in a patent term extension lawsuit against the USPTO in light of the Wyeth v Kappos decision. DelJuidice handled the Nippon Shinyaku prosecution work and Robinson the litigation. Practice head Sarah Columbia, whose ‘patent litigation skills are complemented by her excellent business judgment’, acts for Infineon, CIBA Vision and Novartis, successfully representing the latter against an appeal of a patent interference decision. Historically strong in the hi-tech/electronics sector, the Silicon Valley group includes Anthony de Alcuaz (an ‘outstanding negotiator, and business oriented’); Yar Chaikovsky (noted for his analytical and strategic skills); and the ‘outstanding’ Terrence McMahon and Vera Elson, who represented software company Sybase in patent infringement litigation. Los Angeles-based Eric Hagen ‘has a knack for simplifying complex issues and communicating a client’s position persuasively’. Joel Freed’s extensive experience provides ‘an incredible perspective that enables him to be an especially good strategist’.

Based predominately in California, O’Melveny & Myers LLP offers a team experienced across various technologies including life sciences and electronics, with representative clients including Novartis Vaccines and Diagnostics, Hulu and International Game Technology. Key attorneys include Darin Snyder, litigator Mark Samuels and Stephen Akerley, who represents Google and Lenovo Group. It hired IP litigator Eric Namrow from Jones Day’s Washington DC office to develop its expertise in patent litigation before the ITC, an area in which Namrow has particular strength. He is considered ‘a superstar IP lawyer and well respected by staff at the ITC’. The practice represented Top Victory Electronics in a favorable appeal of a patent infringement investigation brought before the ITC by Funai regarding digital television technology.

Pillsbury Winthrop Shaw Pittman LLP ‘will do what it takes to get the job done’, and is able to handle large or smaller cases. Clients include Toshiba, Intel, Medtronic and Raytheon. Although focused on prosecution, Bryan Collins is well regarded for litigation and is ‘not only technically gifted but also a very creative patent attorney. He is invaluable in setting the strategies in litigation’. Both he and Jack Barufka led on two successes for Stanley Black & Decker, including Richardson v Stanley Works – a high-stakes lawsuit which threatened a long-established and popular product of the client’s. Experienced trial counsel William Atkins successfully defended Atlas Copco against a $250m lawsuit from a patent holder, and prevented Sirius XM Radio from being named as a respondent by the ITC in an infringement case filed by Spansion. James Gatto focuses on the internet and gaming sectors, while appellate group leader Claudia Wilson Frost represents clients such as AT&T.

A ‘quality’ practice of experienced trial lawyers, Simpson Thacher & Bartlett LLP’s IP litigation group, led by New York-based Henry Gutman and George Newcombe in Palo Alto, has an active patent litigation practice. Although also serving pharmaceutical companies such as Daiichi Sankyo, hi-tech names such as Intel, Cisco and Verizon account for the majority of representative clients. The team recently settled a case for Verizon as defendant against plaintiffs seeking over $100m, as well as representing Daiichi Sankyo in a patent term extension case alongside other US and international litigation.

DLA Piper LLP has ‘subject matter expertise and trial experience’, and is backed by a strong international focus and reach. Technology remains its main strength, representing leading hi-tech names such as Toshiba and Samsung in litigation, including before the ITC. Patent trial lawyer John Allcock recently led a cross-border team, including Sean Cunningham, representing Motorola in settling its smart phone war with Research in Motion. Allcock and Cunningham also represented Ricoh in an ITC filing against Oki Data. Trial expert Mark Fowler is leading for Oracle in a number of lawsuits, while Stuart Pollack represents pharmaceuticals companies Galderma and Abbott. ‘Best in class’ Drew Wintringham recently defended Siemens VDO and other automotive manufacturers, achieving a million-dollar award against the plaintiff. The hire of an LA-based IP group from Hogan Lovells US LLP, including Richard de Bodo, who now co-leads the patent litigation practice, adds further depth.

At Davis Polk & Wardwell LLP, ‘very talented trial attorneys’ Anthony Fenwick and Matthew Lehr ‘bring the highest quality and best representation one can obtain to the table. Both provide very thoughtful and sophisticated counsel’. The firm has been demonstrating its expertise in high-stakes patent disputes, with Lehr representing VNUS Medical in long-running litigation against other leading laser technology competitors. Lehr and Fenwick also acted for Yahoo! in cases against AOL and Xerox in relation to internet search technologies and internet advertising services. Comcast is also a key client.

Based solely in San Francisco, specialist litigation firm Keker & Van Nest, L.L.P. may be mid-sized but it continues to enjoy instructions from leading hi-tech and electronics names across the country, thanks to its deep trial expertise. David Silbert leads on major patent disputes, and recently served as trial counsel to Broadcom in a lawsuit against bluetooth company CSR. Silbert also represented Comcast with Matthias Kamber in a multi-defendant case brought by Acacia Media, which sought multimillion-dollar damages for infringement in relation to stored digital and audio files, with an appeals hearing affirming a ruling in favor of the defense. It is lead counsel for HTC in its smart phone technology battle with Apple, as both plaintiff and defendant, including trials before the ITC.

‘Excellent for high-stakes patent infringe-ment’, Leydig, Voit & Mayer Ltd. has significant strength and depth as a full-service IP firm. Life sciences is a core focus, with clients such as Teva Pharmaceuticals and Human Genome Sciences. Both Steven Petersen and John Kozak advise on hi-tech, IT and electronics matters, and are rated for ‘their skills as litigators’ in complex cases. Petersen’s ‘advice is always practical and appropriate for the situation’. He and Kozak acted for Mitsubishi Electric Corporation in a number of hi-tech patent infringement cases. Robert Green is ‘acute, accessible, insightful’.

Mayer Brown is well regarded for its overall IP capabilities and provides ‘attention to client business needs’, with its ‘international presence a big plus’. Key clients include Bristol-Myers Squibb, Solvay, Philips, Sony, McDonald’s and Nestlé. Brian Nolan acted alongside Duane David-Hough in a smart phone-related dispute for Avago Technologies, and defended GSK in an infringement case brought in relation to its cancer treatment drug. Joseph Mahoney provides strong expertise in Hatch-Waxman litigation, and is currently representing Galderma Laboratories and Dow Pharmaceutical Sciences in a dispute against a generics rival, regarding the protection of its Metrogel product. John Mancini is currently defending a Nestlé subsidiary against a food processing-related patent infringement allegation, while Gary Hnath leads on Section 337 investigations and focuses on China-based entities, with recent ITC cases involving food processing patents.

Ropes & Gray LLP has a strong presence in patent disputes, with a client base spanning the finance, telecoms, software and life sciences sectors. Jesse Jenner acted for Motorola in its high-profile complaint against Research In Motion before the ITC, and settled another dispute with Vtech. The practice’s Section 337 expertise was boosted with the arrival of Stephen Rosenman from Dechert LLP in 2010. Life sciences clients include Genzyme, Bayer, Purdue Pharma, Covidien and AstraZeneca. Bradford Badke successfully defended Nova Biomedical in a long-running dispute against Therasense and Abbott, which was affirmed on appeal.

Highly knowledgeable on the hi-tech and electronics front, White & Case LLP represents well-known pharmaceutical names such as Novartis and AstraZeneca. In New York, Dmitrios Drivas, Jeffrey Oelke and Adam Gahtan successfully represented Pfizer in a long-running dispute with Teva to prevent it from selling a generic version of the client’s $1bn-plus-selling drug Detrol. Drivas represents Google with Kevin McGann in various disputes, including a high-profile multi-defendant case involving other leading e-commerce and internet companies. In Washington DC, Jack Lever and David Tennant (‘very smart and very knowledgeable in hi-tech matters’) have been representing Panasonic in litigation against rival leading semiconductor company Freescale before the ITC.

Specialists in handling Section 337 investigations, the attorneys at Adduci, Mastriani & Schaumberg ‘are the ITC experts’ and are praised for their ‘knowledge, experience and results’. Based in Washington DC, the team is led by managing partner James Adduci, ‘a terrific lawyer’ who has been representing Research In Motion in a complaint filed by Spansion against Samsung in relation to flash memory chips. The case remains ongoing but the ITC ruled in favour of the multiple defendants, including Research In Motion, preventing numerous consumer electronic products from being barred from importation into the US. Adduci also represented Japanese electronics manufacturer Oki Data as respondent against Ricoh in a patent infringement involving printing and imaging devices, with Oki cleared of violating four of the five patents in question. Louis Mastriani acted for Imation and Memorex in an infringement case brought by SanDisk in relation to seven flash drive technology patents. It is heavily focused on the hi-tech sector, with clients including Apple, Honeywell and Analog Devices. Tom Schaumberg represented the latter in a case brought by Knowles Electronics regarding silicon microphone packages. Promoted to partner in January 2010, Andrew Pratt ‘has an encyclopaedic knowledge of patent law and his analysis of the law and the facts is well reasoned, logical, and persuasive’.

Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. has particular expertise in ITC litigation, fielding ‘a strong team that is deeply capable’. Headed by Smith Brittingham and Christine Lehman, it includes 15 partners focusing on patent litigation before the ITC. Drawing on knowledge across a range of industries, recent Section 337 representations include a successful outcome for LG Electronics in a case brought by competitor Whirlpool, as well as a ruling in favor of Mitsubishi regarding patent infringement of wind turbines. A particular highlight for the practice was successfully representing Rambus in its long-running battle with Nvidia, resulting in a bar on importation of semiconductor chips. Michael Jakes (noted for his ‘steadfast style and calm demeanour under fire’) was among the attorneys leading on the case. The team also acted for Pioneer against Honeywell, obtaining a settlement granting use of each company’s patent technology for GPS navigation devices. Other clients include semiconductor makers Phicom Corporation and Monolithic Power Systems.

Covington & Burling LLP has developed a focused and ‘outstanding’ practice in Section 337 litigation, with a team that offers particular strength in the hi-tech and electronics sectors. Thirteen partners dedicate the majority of their time to cases before the ITC, with ‘ITC specialist’ Sturgis Sobin heading the team. He ‘brings a wealth of experience and a detailed knowledge of the intricacies of ITC practice that is invaluable. His tenure at the Commission brings a level of credibility that is hard to find outside of a select group of specialists’. Other notable lawyers include Robert Haslam, ‘a very skilled trial lawyer who quickly sorts through complex factual and legal issues to focus on the key points’, and Johnny Chiu, who ‘manages a case not only from the legal perspective but also the business perspective’. 2010 highlights included defending Samsung in a case brought by BTG International alleging flash memory product infringement, with the ITC concluding that there was no violation. Maureen Browne was part of the team representing uPI Semiconductor as respondent in an investigation filed by competitor Richtek, in relation to patent infringement of electrical circuit components. Additional clients include A-Data Technology and Knowles Electronics.

IP boutique Fish & Richardson P.C. regularly handles patent litigation cases before the ITC, with Ruffin Cordell highly regarded for his ITC experience, particularly in hi-tech and electronics sector cases, and was involved in many of the firm’s key Section 337 investigations of the past year. He acted for Paice in a case brought against Toyota regarding hybrid vehicle technology, with the parties reaching a settlement that ended all pending litigation. Cordell, along with Jeffrey Whieldon and hi-tech litigation specialist Michael McKeon, represented multiple respondents, including Samsung and Apple, in an investigation brought by Spansion alleging various patent violations involving flash memory technology. It also acted for Hewlett-Packard as complainant in an inkjet cartridge technology-related case against various domestic and Asian entities; the USITC granted Hewlett-Packard’s request for an exclusion order to bar all importation. The team lost ITC patent litigator Brian Nester to Sidley Austin LLP in late 2009.

Miller & Chevalier Chartered mainly acts as co-counsel with other firms on Section 337 investigations. A key presence in patent litigation before the ITC, the 10-lawyer team includes James Altman, David Foster and Barbara Murphy, with Foster and Murphy having handled around 60 and 50 cases respectively. They both advised Tessera on an investigation regarding the design of advanced integrated circuits. David Nickel has also built up extensive trial experience before the ITC. The team successfully represented CompX against Humanscale Corporation, with the ITC ruling that the asserted claims brought by the latter company were invalid and also reversing a previous decision that the respondent infringed a patent for computer keyboard supports. The firm also represented SiRF in litigation against Global Locate involving a complaint filed by the client and a counter-suit by Global Locate in relation to GPS technology.

DLA Piper LLP has a notable track record handling cases before the ITC, with a good number of trial wins and the ability to handle multi-jurisdictional cases from start to finish. It recently represented Japan-based Ricoh in its lawsuit against Oki Data regarding printing and imaging devices, with the respondent found to have violated one of five patents-in-suit. Based in San Diego, US chair of the firm’s IP and technology group John Allcock and Sean Cunningham represented Overland Storage, a data protection provider, in a complaint brought against Germany-based BDT, a tape automation supplier. Mark Fowler represents well-known hi-tech corporations, and the team’s hire of Richard de Bodo from Hogan Lovells US LLP provides additional ITC trial experience.

McDermott Will & Emery LLP’s team is based predominantly out of the firm’s Washington DC and Silicon Valley offices. It includes IP litigators Blair Jacobs, Robert Walters and Yar Chaikovsky, the latter joining from SNR Denton at the end of 2009. Although it handles a smaller volume of investigations than some firms, it is still regularly involved in key hi-tech representations before the ITC. It took over representation of Spansion in its claims against Samsung regarding flash memory chips, although it lost that case, with the ITC concluding that Samsung did not violate patent rights. Jacobs led on acting for Prism Technologies, which filed a complaint against Blackberry phone maker Research In Motion regarding technology used in email devices and smartphones, with both parties reaching a settlement. Other representative clients include Qualcomm, Funai and Hitachi.

Sidley Austin LLP continues to develop its ITC practice, with existing expertise boosted by the lateral hire of Brian Nester from Fish & Richardson P.C. in late 2009, who provides strong hi-tech sector experience, and the opening of a new office in Silicon Valley. Nester, David Pritkin and Richard Cederoth represented Microsoft in litigation brought against Motorola, as well as in design patent infringement claims related to its Xbox gamepads. The practice also obtained a settlement for Research In Motion in a case filed by Motorola. Other clients include Taiwanese companies Chimei-Innolux and Realtek. Edward Anderson remains a key figure in the team, and recently acted for semiconductor company ST Microelectronics in a multi-defendant case brought by Tessera.

Weil, Gotshal & Manges LLP’s patent litigation expertise and broad sector coverage, combined with a strong hi-tech client base, have enabled the practice to remain involved in significant Section 337 investigations for high-profile names such as Apple. Mark Davis and Matthew Powers form part of a cross-office team that acted on a number of lawsuits against both Motorola and Elan Microelectronics regarding smartphone, touchpad and other hi-tech products. Davis has particular experience in patent litigation before the ITC, and Powers has wide-ranging trial experience.

WilmerHale has a significant track record in investigations before the ITC, with past highlights including representing Broadcom in its patent infringement claim against Qualcomm regarding semiconductor technology used in cell phones. William Lee remains the team’s leading and best-known patent litigator, and led on the trial before the ITC for Broadcom. Lee also advised as outside counsel to Apple on its ITC hearing against Nokia, part of a high-profile battle between the two hi-tech giants regarding various alleged patent infringements. The practice added to its capability in Section 337 investigations with the hire of special counsel T Spence Chubb to the Washington DC office in May 2010. He joins from the US International Trade Commission, where he served as a supervisory attorney for over 20 years.

Kirkland & Ellis LLP is developing its focus on Section 337 investigations, in line with the ITC becoming a forum of choice for the biggest patent battles. Recent highlights include representing Research In Motion in the investigation filed by Prism Technologies to prevent importation of BlackBerry smartphones in late 2009 and a settlement reached between the parties in the first half of 2010. It also successfully defended Samsung against Spansion’s patent infringement claims, with a final decision concluding that there was no violation by Samsung and other respondents; and advised Apple in its litigation against smartphone rivals Nokia and HTC.

Drawing on its ‘breadth of IP knowledge and litigation expertise’, Morrison & Foerster LLP particularly stands out for its focus on international-based clients. A strong Japanese client base has kept the practice busy; it recently advised Nikon, Funai and Hoshino on matters including investigations relating to LCD technology patent infringements. It represented Sharp against Samsung in two ITC decisions that ruled in favor of the former on seven of eight disputed patents, in a high-profile battle between the two major competitors. Alexander Hadjis is acting on Thomson Licensing (a subsidiary of France-based Technicolor)’s multi-patent suit against LCD manufacturers Chimei Innolux, Qisda and other respondents. A widely recognized figure on Section 337 cases, Brian Busey is ‘the ITC expert’, while Hadjis has notable expertise in matters involving semiconductor technology.

Orrick, Herrington & Sutcliffe LLP is developing a good reputation for work on ITC cases, with a focus on the hi-tech arena. With extensive trial experience for both domestic and international entities, Steven Adkins co-chairs the firm’s Section 337 practice alongside Bas de Blank, who has represented the likes of SiRF Technology and Acer. It recently achieved a standout win for multiple respondents, including Acer, in a case brought by Tessera. Hopkins Guy was involved in Apple’s litigation against complainant S3 Graphics regarding four patents related to Apple products such as the iPhone and Macbook computers.

Commercial litigation firm Quinn Emanuel Urquhart & Sullivan, LLP has a strong team of patent trial lawyers, and although not as highly specialised in cases before the ITC as some other firms, it has been active for some well-known global entities the hi-tech and electronics sectors. The practice is representing HTC Corporation and Motorola in separate cases against Apple, the former as respondent and the latter as complainant in multiple patent infringement allegations. It also advised Sony in two separate investigations, one as complainant and the other as respondent, against leading Taiwanese LCD panel maker Chimei Innolux. Notable attorneys include IP co-chair Charles Verhoeven, who has extensive litigation experience, patent litigation specialist David Nelson, and Edward DeFranco, who has notable technical expertise.

Steptoe & Johnson LLP has strong trial experience before the ITC. Leading the team are the well-regarded Charles Schill, John Caracappa and Alice Alexandra Kipel, who regularly handle high-stakes cases as both co-counsel and lead counsel. Schill has longstanding experience in handling Section 337 investigations, including a successful defense of Mitsubishi’s multibillion-dollar renewable energy business against a patent infringement allegation by General Electric. More recently, Schill and Caracappa advised Motorola in two separate investigations: one against Microsoft, which alleged several patent infringements, and a filing against Apple.

Wilson Sonsini Goodrich & Rosati provides trial experience at the ITC across a broad range of sectors, including hi-tech and life sciences, with high-profile clients including footwear maker Crocs. Stefani Shanberg remains a key specialist on ITC investigations. James Otteson left to set up his own IP litigation boutique, Agility IP Law, in early 2010, while Larry Shatzer joined in June 2010 from Foley & Lardner LLP, where he was chair of the IP litigation practice.

Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. is a well-known and well-respected full-service IP boutique regarded as ‘pre-eminent in intellectual property matters’. It has a global presence, with offices in Brussels and numerous locations across Asia, and covers diverse industries such as consumer products, nanotechnology and agriculture. Some 90 of the firm’s lawyers boasts a PhD, and 60 have previously served as patent examiners. Eighteen of the firm’s partners are dedicated purely to prosecution, and they are supported by some 53 others. The team is headed from Washington DC by chemistry and biotechnology specialist Charles Van Horn, supported by medical devices and technology expert Leslie Bookoff. Other key partners include Washington DC-based Bryan Diner, who has strong ties with Europe. Longstanding clients include Caterpillar, for which it has prosecuted several hundred applications, and Toshiba, which it advises in relation to areas including communications, electronics and semi-conductors. Other major clients are Accenture, Boston Scientific Corp, Intertrust Technologies, Sony, SAP AG and Vertex, and the practice has taken on a number of new clients in recent months including RIM and Cypress Bioscience.

Fish & Richardson P.C. has the second-largest IP team in the US, and is particularly noted for its expertise in the science and technology industries. Almost 80 of its 250 attorneys boast a PhD. After a tough 2009, its ‘excellent and knowledgeable’ patent prosecution practice went from strength to strength in 2010, with the New York office taking on the patent team from recently dissolved firm Darby & Darby, which includes life sciences expert Peter Ludwig and brought with it a sterling list of new clients and considerable experience in the pharmaceutical and biotech industries. Between January and October 2010, the firm filed 3,532 US patent applications, and had 1,837 issued, while also filing 2,568 foreign applications and obtaining 968. Longstanding clients include Google, Cisco, Smith & Nephew, Bank of America, Intel, AstraZeneca and Novartis, while the firm has also acquired a host of new clients. Although leading life sciences expert Tina Mckeon left to launch McKeon Meunier Carlin & Curfman, LLC in April 2010, Boston-based Jeffrey Barclay, Charles Hieken, Minneapolis-based life sciences expert Richard Anderson and Spencer Patterson in Dallas all come highly recommended..

The patent prosecution practice at full-service firm Foley & Lardner LLP grew with the addition of Christopher McKenna and John Lanza from Choate, Hall & Stewart, and the return to the firm of Gerald Swiss and Lorna Tanner. Clients speak highly of the team; it is ‘very strong on all aspects and gives very thoughtful advice’. Headed by former biotech patent examiner Stephen Maebius out of the Washington DC office, the practice deals with a variety of industries, including information technology, electronics, mechanics and green energy. The group has also been particularly active in the re-examination field and has significant inter partes experience. Takeda Pharmaceutical, Amgen, Hitachi, Nissan and Hewlett-Packard are among the firm’s major clients. Key partners include the ‘very responsive and knowledgeable’ Mark Kassel in Madison, who is the chair of the firm’s chemical, biotechnology and pharmaceutical practice, and life sciences partner Richard Peet in Washington, who is praised for his ‘intellect and responsiveness’. Washington DC-based IP vice-chair Pavan Agarwal, who practises in a number of patent law areas with a focus on electronics and automotive technology, also comes highly recommended.

The overall level of service at McDermott Will & Emery LLP is ‘outstanding’, and ‘the team’s expertise and subject matter knowledge is exceptional and their advice is excellent’. With coverage in many of the key cities in the US and worldwide, the practice covers a variety of industries including energy, life sciences and electronics, representing a diverse client base ranging from Fortune 500 companies to academic institutions and start-ups, and is currently focusing heavily on work in the areas of nanotechnology, alternative energy and cyber protection. It has notable expertise in re-examination and reissue matters, and has one of the most active departments in the full-service firm. Major clients include Google, Qualcomm, Blackboard, Lockheed Martin, Ilumina and Panasonic. The practice is headed by hi-tech specialist Mark Itri in Orange County; other key partners include the ‘incredibly bright and committed’ Stephen Becker in Washington DC, whose team is ‘extraordinary’ and ‘always goes the extra mile’; Boston-based Toby Kusmer, who is recommended for his work with medical devices and technology; and Houston-based Carey Jordan, who ‘exhibits fine leadership skills’. The firm recently lost leading biotechnology figure Astrid Spain from the San Diego office, who left for Jones Day, taking David Gay and three patent agents with her.

Oblon, Spivak, McClelland, Maier & Neustadt has the most active prosecution practice in the US, in 2010 securing in excess of 5,000 patents. It boasts a number of high-calibre foreign-based clients, such as Saint-Gobain, Toshiba, L’Oréal and Asahi, and continues to make its mark on the US, recently acquiring a healthy mix of US-based clients, such as Research In Motion, Motorola and Kodak. The firm has an office in Virginia located adjacent to the USPTO headquarters and is supported by an office in Tokyo. The practice is particularly strong in the chemicals, mechanical and electronics industries and is well known for its re-examination and reissue expertise. Active partners include re-examination/reissue practice chair Stephen Kunin, and James Kulbaski, who has particular expertise in electronics and communication technologies. Also recommended is Steven Weihrouch, who heads the firm’s Tokyo office and co-chairs the US prosecution practice, and has recently been advising K-SWISS. Stephen Baxter is also notable, for his experience in the chemicals industry.

Sughrue Mion is an active IP boutique located in Washington DC, in close quarters to the USPTO headquarters. Acting for clients across a variety of industries, it has dedicated electronics/mechanical and biotechnology/chemicals teams headed by Brian Hannon and Brett Sylvester respectively. Its experience includes re-examination work, and it obtains over 2,000 patents each year. In 2010 the firm expanded its team in Washington DC with the addition of former USPTO patent judge Stuart Levy, who brings almost 40 years of experience to the practice and has previously worked at Oblon, Spivak, McClelland, Maier & Neustadt. Other key partners are electronics and internet expert Susan Pan, and John Rabena, who is also focused on litigation. Major clients include NEC, Fujifilm, Wockhardt, IBM, Zeiss and Alcatel.

Baker Botts L.L.P. provides an ‘overall level of service that is extremely good’; ‘high-quality legal advice is delivered in a way that meets cost and timeliness expectations’. The IP prosecution and licensing team is formed of 39 partners across seven offices in the US. Technology expert Bart Showalter heads the practice from Houston, and is noted for his ongoing work for Cisco Systems, managing its worldwide portfolio. The practice group works with a number of leading companies in a diverse range of industries, including financial services, electronics and biotechnology, and is particularly adept in specialized areas such as patent interferences, inter partes and ex parte re-examinations and accelerated examinations. Major clients include Brother Industries, MasterCard International, American Dynamics Flight Systems and MS Health. Dallas-based Samir Bhavsar is recommended for his technology expertise and his work with Bank of America. Paul Ragusa in New York, who works with Columbia University, is ‘a consummate legal professional for all aspects of patenting from prosecution to litigation’.

Birch, Stewart, Kolasch & Birch, LLP, while having smaller a team, has one of the most active practices in the market, obtaining some 3,453 patents in 2010, a significant increase on 2009. The 23-partner boutique is based in Falls Church, Virginia with an office in San Diego. A ‘top-level firm that provides good service’, it specializes in the mechanical, electronics, cleantech/biofuels, life sciences and chemicals industries and acts for some of the largest Japanese manufacturers, such as Sharp, Mitsubishi Sumitomo Chemical, Asahi Kasei Kaabushiki Kaisha and Fujifilm. The firm also works with household names LG Electronics and Lockheed Martin. Key partners include life sciences expert Gerald Murphy in Virginia, and co-chair of the electronics practice Michael Mutter, who is currently leading the firm’s work in the niche area of electronics standards. Also recommended are San Diego-based Leonard Svensson, who has over 30 years’ experience and specializes in chemical and biotech patents, and John Bailey in Virginia, for chemicals and biotechnology matters.

Blakely, Sokoloff, Taylor & Zafman is a full-service IP firm which works with clients ranging from Fortune 500 companies to start-ups. The group has a number of offices in the US, including Silicon Valley and Denver, and is particularly strong in the computer software, mechanical and chemical industries. Its expertise includes filing for reissues, provoking interferences and re-examinations. Key partners include Silicon Valley-based founding member Edwin Taylor, who focuses on computer-related technologies and electronics. Other recommended partners include Denver-based Gordon Lindeen, who has extensive ties with Europe and significant in-house experience, and has a similar focus to Taylor; Eric King in Orange County, who is noted for his work on IT hardware and software; and Judith Szepesi in Silicon Valley, who is recommended for her work in the hi-tech space. Clients include VeriSign, Trimble and FullPower, Network Appliance, Good Technology, Openware Systems and Redback Networks.

Brinks Hofer Gilson & Lione is a 150-lawyer full-service IP boutique, headquartered in Chicago and with offices across the US. The prosecution practice has a strong emphasis on a variety of technical fields, including electronics, chemicals, pharmaceuticals and computer science. The practice group is headed by Chicago-based Andrew Stover, who focuses on the mechanical and electro-mechanical arts. Major clients include Alps Electric, the Chicago Board Options Exchange, the Chicago Mercantile Exchange, Infineon Technologies, Kimberly-Clark, LG Philips and NTT DoCoMo. Despite seeing the departure of a number of lawyers, mainly from the Chicago office, in the middle of 2010, it has continued to add to its new Washington DC office, expanding the firm’s presence on the East Coast. Thomas Holt is now the managing partner of the office and the new team, many of whom came from the Chicago office, focuses on trademark, copyright and patent matters. Chicago-based former chair Peter Nichols comes highly recommended, with 30 years’ experience at the firm. Kent Genin is also noted, for his work in the areas of telecoms, IT and medical devices.

Fitzpatrick, Cella, Harper & Scinto is an IP boutique renowned in the pharmaceutical arena with an ‘excellent’ level of service and an active practice, having obtained 1,845 patents in 2010. The firm, which is headquartered in New York, has a leading electronics/computer practice and boasts longstanding clients such as Canon and IBM – a testament to its skill in this space. The hugely experienced Anthony Zupcic heads the prosecution group, and focuses on a variety of industries from semi-conductors to jet engines. Clients praise the firm’s ability to understand their needs and provide appropriate and timely responses, with one stating ‘there is no comparable firm in my estimation’. The ‘outstanding’ Raymond Mandra is chair of the biotechnology patent group and one client states that he is ‘the best at pharmaceutical patent prosecution I have seen in my nearly 20 years in the industry’. Other recommended partners include Robert Fischer, Brian Klock in Washington DC, and California-based Michael O’Neill. Major clients include Warner Chilcott, Sirona Dental, Michelin & SC Johnson.

IP boutique Knobbe Martens Olson & Bear LLP, headquartered in Orange County, is known particularly for its work in technology; it is ‘second to none’ in the area of medical devices, while other areas of focus include internet, biotech, and wireless communications matters. Its experience includes re-examinations and interferences. In what was a difficult year for many, the firm managed to expand its practice, taking on 28 new associates in October 2010. Recommended lawyers include San Diego-based Michael Fuller, who focuses on biotechnology and computer/internet matters, and Jerry Hefner, who specialises in the biotechnology, chemical, and pharmaceuticals industries. Key clients include iRise, Hansen Beverage Company, Idev Technologies, Ranbaxy Pharmaceuticals, Micron and Masimo Corp.

Merchant & Gould PC is an IP boutique which deals with a wide variety of technology matters, including in the areas of life sciences, the internet and nanotechnology. The firm, which has been in existence for more than 100 years, is headquartered in Minneapolis with other offices located across the US. It opened an office in New York in April 2010, headed by former Darby & Darby principal Adda Gogoris, who also brought two colleagues from the dissolved boutique. The firm also expanded its offices in Seattle and Alexandria. Individuals of note include chair of the firm’s technology transactions practice group Gregory Leibold in Denver, whose background encompasses in-house work, and experience as a USPTO examiner and patent agent. Other recommended lawyers are Minneapolis-based Gregory Sebald, chair of the firm’s mechanical group, and chair of the electrical and software group Timothy Scull. Major clients include Chevron Phillips Chemical, 3M, AT&T, Medtronic, Microsoft, Cargill, Donaldson, Sun Microsystems and American Express.

‘Every lawyer is outstanding’ at Virginia-based firm Nixon & Vanderhye PC, which has a particularly experienced prosecution group with strength in the consumer electronics, telecommunications, medical devices, computer hardware, software and biotechnology spaces. Many lawyers in the small but active team have served as an examiner or a law judge for the USPTO, and are accordingly well placed to advise clients from a wide variety of backgrounds, ranging from start-ups to mid-size companies and major corporations. The team handles both re-examinations and reissues. Key individuals include former examiner Alan Kagen, who is noted for his work in the computer, mechanical and electro-mechanical industries. Hugely experienced founding partner Larry Nixon is also recommended for his higher-level technical work. Bryan Davidson brings 30 years’ experience, in-house knowledge and a chemical engineering background to the team.

When it comes to design patents, few rival Chicago-based firm Banner & Witcoff, Ltd.. 2010 was the eighth consecutive year in which the firm procured more US design patents than any other firm; the total number reached 641 patents, most acquired for major clients such as Electrolux, Microsoft, Nike, Nokia, PepsiCo and Toshiba. The firm’s prosecution expertise centers on biotechnology and electronics, although the group also covers chemicals, computer and internet technologies and medical devices. Washington DC-based former examiner Robert Katz leads the design patent practice, focusing on mechanical and electromechanical devices and computer and software-related patents. The Patent Prosecution practice is jointly headed by Gary Fedorochko in Washington DC, who works with clients in industries including computer software and e-commerce, and Charles Miller in Chicago, who focuses on prosecution in the electrical, computer and business method spaces.

Kenyon & Kenyon is an IP boutique that provides ‘excellent advice and experienced staff always on top of the latest developments’. The firm, which has 150 lawyers and patent agents, covers the full range of technologies, including life sciences, chemicals, and electronics. The group is co-chaired out of New York by Gerard Messina, who covers the electronics, mechanical and computer technology spaces, and Patrick Birde, whose focus is on chemicals and medical devices. The team is strong in re-examination matters, and many in the group coming from scientific backgrounds, so it is well suited to dealing with a wide variety of technologies. The firm was particularly active in 2010, obtaining 979 US patents and 238 foreign patents. The team acts for a healthy mix of Fortune 500 companies and foreign-based manufacturers, many of whom are longstanding clients. Key names include Robert Bosch, Boston Scientific, SAP, Sony, Intel, eBay, Audi and Toyota.

Newly formed firm Kilpatrick Townsend & Stockton is the result of the merger between full-service firm Kilpatrick Stockton LLP and well-regarded IP boutique Townsend and Townsend and Crew LLP, which came into effect in January 2011. The combined firm has a total of 14 offices across the US, and a well-resourced IP practice specializing in three core areas – mechanical engineering, software and electrical engineering, and biotechnology and chemicals. The team of 60 prosecution partners has a broad and highly esteemed global client base, including Amazon.com, Apple, Smith & Nephew, Pixar, Hitachi and Interface. Individuals of note include the hugely experienced John Pratt, who chairs the firm’s IP practice from Atlanta, and has notable expertise in tool and furniture matters. Other active partners include James Ewing and Mark Barrish, who co-lead the mechanical and medical devices team.

Morrison & Foerster LLP’s ‘excellent’ prosecution practice is headed out of San Francisco by life sciences expert Michael Ward, who also co-chairs the IP practice. The IP team is based across four other US offices and focuses on the entire spectrum of life sciences and a wide range of technologies, including biotechnology, pharmaceuticals and medical devices. The 34-partner practice is adept at handling complex matters for a wide range of companies. Clients speak very highly of the firm, which has ‘exceptionally high response times’ and ‘great business-industry knowledge’, and provides ‘exceptional value for money’. Ward is an ‘excellent person to work with and get input from. He responds quickly, gets things done when he says he will, and is always reachable’. Other recommended partners include Tessa Schwartz, for her ‘great client empathy’ and ‘tremendous business-perspective understanding’, and Christopher Eide in Palo Alto. Genentech, DreamWorks Animation SKG, Orbit Baby, Toshiba, Yamaha and Sharp are major clients.

Oliff & Berridge, PLC has a well-established prosecution practice (now in its 28th year), and continues to impress in terms of size and expertise. The group is mainly based in Alexandria, near the USPTO, with support provided from a second group in St Louis. Many lawyers in the 80-strong firm have worked as patent examiners. The group covers the full range of technologies, from computer hardware and software, to mechanical consumer goods and life sciences, and represents diverse clients, both US-based and foreign, and ranging from individual entrepreneurs to Fortune 200 corporations. Key clients include Kabushi Kaisha, Brother Kogyo, Brother Industries, Denso, and Seiko Epson. Recommended lawyers include founding partner James Oliff, who has been active for 40 years and has a background in aerospace engineering. Edward Walker is also recommended, for his work in mechanical engineering.

Pillsbury Winthrop Shaw Pittman LLP is a ‘top-level’ full-service law firm with one of the oldest national IP practices in the country. It has offices across the US, with the very experienced Jack Barufka heading the practice from McLean in North Virginia. The group acts for a variety of clients in the areas of electronics, mechanical, chemicals, pharmaceuticals, and biotech, advising on proactive and defensive strategies and handling more complex interference work. Active partners include James Gatto in North Virginia, whose specialism lies in the virtual worlds and video games industry, and John Wetherell, who heads the San Diego office. Evan Finkel and his team in Los Angeles also come highly recommended. The firm recently added to its McLean office with the hire of Patrick Doody from Goodwin Procter LLP; Moon Soo Lee from Vorys, Sater, Seymour and Pease LLP; and Raj Davé from dissolved boutique Darby & Darby. Chevron, Intel, Morgan Stanley, Activision Blizzard and Invenda are clients.

Buchanan Ingersoll & Rooney is an ‘excellent’ general practice firm, ‘extremely responsive’ with ‘very strong business acumen’ and a well-established technology-based IP group whose expertise includes patent interferences, re-examinations and reissues. The team, which is mainly based in Alexandria, obtained 1,331 patents in 2010, a number set to increase in 2011 with the recent addition of numerous new clients ranging from Fortune 250 companies to global manufacturers. The experienced practice group is headed by Patrick Keane and is particularly focused on electronics and materials science. Key partners include Michael Dever in Pittsburgh and Alexandria-based partner James LaBarre. Abbott, Agere Systems, Cargill, Galderma Research & Development, Georgetown University, Intuity Medical and Rhodia are clients.

Cantor Colburn LLP attracts strong praise from clients, and provides a ‘very high’ level of service; it covers a broad range of technologies and provides ‘excellent and highly consistent legal work’. The firm has five offices in the US, including a new office in Houston (which opened in June 2010), and is co-managed out of Hartford by hugely experienced founding partners Michael Cantor, who focuses on nanotechnology, chemical engineering and food science, and Philmore Colburn, who advises on electrical and mechanical engineering, optics and aeronautic patents. It recently added two new members to its team: Paul Madan in Houston and David Wood in Detroit, both of whom bring extensive in-house experience to the group. Also highly recommended are Keith Murphy, who co-chairs the firm’s mechanical and electrical department, and computer and telecoms expert David Arnold. Major clients include General Electric, IBM, AT&T, United Technologies Corporation, General Motors, Honeywell, Samsung, Dow Chemical and Ferrari.

Crowell & Moring LLP is a full-service firm headquartered in Washington DC, with a number of other offices across the US. The IP team is spread across four offices, with Washington DC-based litigator Mark Supko chairing the IP group. Also in Washington DC, Michael Jacobs is recommended for his contentious and non-contentious work; Jeffrey Sanok is noted for his patent interference work, with a practice focused on a range of electrical, mechanical and aeronautical technologies; and Stephen Palan is recommended for his expertise in strategic procurement involving wireless and data networking technologies. Clients include BMW, Daimler, Funai Electric and Sprint.

Harness, Dickey and Pierce is one of the most active firms in the US, obtaining over 2,000 patents in 2009, fewer than only four other firms. Based in Detroit and with three other offices, the firm now has over 100 attorneys working on patents across areas including telecommunications, electronics, complex machinery and medical devices. The firm writes around 1,500 original patent applications each year, and is adept at prosecuting foreign applications. In Detroit, active partners include former electrical engineer Richard Warner, who focuses on the electrical, mechanical and biomedical arts, and the hugely experienced George Moustakas. John Castellano in Washington DC is also noted for his work in the areas of semiconductors, telecoms, consumer electronics and satellite communications. Clients include Boeing, Biomet, Black & Decker and Omron Healthcare.

Though its prosecution practice is comparatively small, Bracewell & Giuliani LLP’s outstanding client list speaks volumes for the quality of its work. The ‘world-class, top-notch’ firm shows ‘a consistent level of professionalism and commitment to excellence’, and acts for the likes of Baker Hughes, Lockheed Martin, 3M, Tesco, General Electric and Microsoft. Following the addition of nine Fish & Richardson P.C. attorneys in 2009, the practice has gone from strength to strength, seeing growth both in client numbers and work flow. Sector strengths include cleantech and life sciences. Constance Gall Rhebergen, Jeffrey Whittle and Albert Kimball, all located in the firm’s head office in Houston, are highly recommended.

Covington & Burling LLP’s ‘excellent’ prosecution team is complemented by the firm’s extensive re-examination practice, and also its litigation practice. The 14-lawyer team can draw on some 140 IP attorneys for support, and is adept at dealing with a diverse range of technologies, from biotechnology to mechanics and telecommunications. Andrea Reister, chair of the firm’s patent advisory practice and re-examination practice, comes highly recommended; her focus is on the software, technology and life sciences areas, acting for clients such as Verizon, Trend Micro and Samsung. The firm also acts for Procter & Gamble, Alkermes, Johnson & Johnson, Schering-Plough, Merck, King Pharmaceuticals, Gylcovaxyn and Thomson-Reuters.

Dickstein Shapiro is a full-service firm headquartered in Washington DC and with three other US offices. The team obtained some 920 patents in 2010, and is notable for its experience on the litigation side. The firm also made some strategic expansions in 2010, with the hire of Crowell & Moring LLP’s Kimberley Chen Nobles into Washington DC, who is well placed to further cultivate and expand the firm’s growth into the Asian market. The firm also opened an office in Orange County in March 2010, positioning it for further growth on the West Coast. Individuals of note include Washington DC’s Jeremy Cubert, who is recommended for his expertise in life sciences, and hi-tech specialist DeAnna Allen. Major clients include Sony, Chrysler, Olympus, NEC, VeriSign and Yamaha.

Leydig, Voit & Mayer Ltd. is headquartered in Chicago with offices in Rockford, Seattle and Washington DC. The firm represents clients across a number of technical fields, including biotechnology, chemicals, medical devices and consumer products; names include Caterpillar, Human Genome Sciences, Mitsubishi Electric Corporation, Morgan Stanley & Company and Teva Pharmaceuticals. Recent successes include being awarded 10-year contracts in seven different areas by the National Institutes for Health. Recommended partners include Steven Petersen in Chicago, for his work in telecommunications, insurance and financial services; and Charles Mottier, also in Chicago, whose technical expertise lies in mechanical engineering and fluid dynamics.

Based in Kansas City, full-service firm Shook, Hardy & Bacon LLP’s prosecution practice boasts a number of high-profile clients and a history to rival most firms. The team is formed of a total of 30 attorneys who can also draw on the support of more than 125 in-house research analysts. The group has a close relationship with Microsoft, assisting with prosecution, counseling and litigation, while other major clients include Nike, Black & Decker, Hallmark Cards, ExxonMobil and DuPont. The practice is co-chaired by Michael Gross in Kansas City, and Trent Webb, who focuses solely on litigation.

Woodcock Washburn LLP has a prosecution team of 40 lawyers, who work from three offices across the US and represent a diverse range of clients from entrepreneurs to global market leaders. The team is headquartered in Philadelphia and is experienced in a range of technology fields including computer hardware, electronics, enterprise software, graphics software and biochemistry. The group is supported by a strong litigation practice and concentrates on representing small to mid-size companies. The firm has developed longstanding business relationships with many technology leaders, such as Johnson & Johnson, Microsoft, Crown Holdings and the University of Pennsylvania. Other key clients include the National Institutes of Health, DuPont, AT&T, Intellectual Ventures and InterDigital.

Debevoise & Plimpton’s trademark and advertising group includes litigators David Bernstein and Bruce Keller, who are highly regarded for handling complex trademarks litigation. An ‘IP powerhouse’, the team is particularly noted for its expertise in cases related to the technology sector and cyber law, advising household names such as The Gap Inc and the NFL on complex, often multi-jurisdictional, cases. Pernod Ricard is a major client for the practice; the firm represented it on several high-stakes disputes, including an appeal to the Third Circuit regarding a long-running dispute against Bacardi over the Havana Club trademark. Illustrative of the unusual, high-stakes litigation handled by the practice, it also advised the client on an infringement case to protect the color white as the trade dress of its Malibu rum product, obtaining a broad injunction against any use of a white bottle in the future for any spirit. Keller represented the NFL in an infringement case brought against Titlecraft’s fantasy football league trophies, recently winning partial summary judgment in the ongoing litigation. The team also prepared amicus briefs on behalf of The International Trade Association for some important internet-related trademark cases, including Tiffany v eBay and Rosetta Stone v Google.

Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P.’s ‘practical, smart and effective’ trademark litigation practice receives high praise for its broad capabilities, and expertise in domain name disputes, and is ‘best of the best, especially when losing is not an option’. The East Coast-based team is mainly located in Washington DC, and is led by David Kelly, who is lead counsel for major names in hi-tech, insurance and industrial manufacturing. Also noted is experienced trial and appellate attorney Douglas Rettew, who recently defended Under Armour in a case brought by sporting goods company Rawlings alleging trademark infringement, and sought an injunction against the sale of Under Armour’s recently launched helmet line. The court denied the injunction. Mark Sommers provides experience in representing international clients, with a focus that includes domain name disputes. The practice is increasingly taking on high-stakes lawsuits before the Trademark Trial and Appeal Board, and had a successful result for Italian fashion label Emilio Pucci in a case arguing that the defendant’s mark ‘Emidio Tucci’ was confusingly similar to the client’s brand name. Other recent disputes have involved trade dress issues and household names in media, fashion and consumer products. Trademark attorney Monica Riva Talley left to join Washington DC firm Sterne, Kessler, Goldstein & Fox PLLC in August 2010.

‘Tuned into both the industry and client needs’, Fross Zelnick Lehrman & Zissu, P.C. has ‘unsurpassed depth of knowledge and experience’ in trademark disputes; these are a core focus for the IP firm, while internet-related disputes and anti-counterfeiting have been other key areas of activity. It successfully defended Estée Lauder/Clinique Laboratories against a trade dress infringement lawsuit brought by consumer skincare competitor Rodan & Fields, and also defended confectionery company Cadbury Adams USA against an injuction sought by Perfetti Van Melle to block the launch of Cadbury’s Dentyne Pure product, alleging the name was confusingly similar to its Mentos Pure Fresh brand. Roger Zissu, Barbara Solomon, Craig Mende and James Weinberger all have ‘an ability to cut through to the heart of the matter and provide skilful, cost-effective advice appropriate to the situation’. Other plaintiff clients include beverages company Dr Pepper Snapple Group, which it advised in a case against a UK entity before the USPTO, and CSC Holdings (Cablevision), which it advised in a trademark infringement case against Optimum Networks. Michael Chiappetta successfully represented music artist Calvin Broadus (publicly known as Snoop Dogg) in opposing an application to register the mark Snooptunes.

Kenyon & Kenyon has a strong team for trademark disputes, with practice head James Rosini advising leading names across various sectors, including telecoms, insurance, retail and publishing. He has a strong track record in domain name disputes, including recently acting for Wal-Mart before the WIPO. ‘A strong strategist and leader’, Edward Colbert’s track record includes successfully defending AT&T against AOL, and he recently won a case for bourbon distillery Maker’s Mark, which brought a trademark suit against Jose Cuervo in relation to the design of its distinctive red dripping wax seal, prohibiting the competitor from using it on bottles of its tequila brand. With experience in major trademark litigation, Howard Shire represented Ozzy Osbourne against Tony Iommi regarding ownership of the Black Sabbath trademark, with the case reaching an out-of-court settlement. Both Colbert and Michelle Mancino Marsh also recently won a victory of summary judgment for Jim Beam Brands, in another case against Jose Cuervo, regarding a settlement breach in relation to Jim Beam’s ‘Old Crow’ brand and design.

Kilpatrick Townsend & Stockton’s merger added further firepower to its trademark litigation capabilities through the arrival of a sizeable team in San Francisco. William Brewster leads the practice and is well regarded for his extensive trial and appeal experience; he recently represented key client adidas in a lawsuit against Herbalife International, claiming infringement of adidas trademarks through use of a similar logo on sporting apparel and in promotion of sporting events. The team also won an injunction for Chrysler regarding the use of the automotive manufacturer’s Jeep trademarks in its opponent’s products. New York-based Lisa Pearson has particular experience in representing fashion, luxury and other consumer goods companies. Highlights included obtaining a preliminary injunction for CVS in Zino Davidoff SA v CVS Corporation, an important ruling for anti-counterfeiting with a Second Circuit appeal affirming the decision. Charles Henn and Jerre Swann are also notable attorneys.

Arnold & Porter LLP’s practice has continued to be involved in some of the highest-profile trademark cases. The team includes nine partners, split across the firm’s California and East Coast offices. In New York, it continued to represent Gucci America in its long-running dispute against a former Gucci family member, with a district court ruling in favor of the client. Focused on brand protection and representing various luxury goods brands, Louis Ederer is also representing Gucci as plaintiff in a case against rival fashion label Guess. James Swire acted as lead counsel for Tiffany and Company in its appeal to the Second Circuit, which affirmed a previous non-infringement ruling but remanded the Tiffany v eBay case for further determination in relation to Tiffany’s false advertising claim. The Supreme Court also rejected an appeal by Tiffany. Roberta Horton, who leads the trademark practice in Washington DC, filed an amicus brief on behalf of various companies in support of appellant Rosetta Stone in its high-profile dispute with Google, alleging infringement of its trademarks through the use of online adwords which directed users to Rosetta’s rivals and counterfeiters. Los Angeles-based Suzanne Wilson focuses on representing hi-tech and consumer goods companies.

Primarily serving clients in the luxury goods, financial services and media sectors, Greenberg Traurig LLP’s sizeable team across the US handles the full spectrum of contentious trademark issues. In Los Angeles, the well-regarded Susan Heller advises on trademark litigation matters both domestically and internationally, particularly representing individuals in the entertainment field, as well as financial services companies. Representative clients include Barclays Global Investors and Exodus Entertainment. In the New York office, Roxanne Elings’ experience spans anti-counterfeiting, trade dress and domain name disputes, for apparel and fashion brand companies among others. James Donoian’s focus includes internet issues as well as representing consumer goods clients. The firm added Joseph Geisman in the Los Angeles office, who was formerly IP counsel at the Motion Picture Association of America.

Kirkland & Ellis LLP ‘demonstrates valuable business acumen and appropriateness of advice’ and is ‘extremely professional and responsive with tremendous expertise’, with a client base that includes leading names in the fields of entertainment, hi-technology, consumer products and fashion brands. Dale Cendali is a widely recognized figure in high-profile trademark disputes and, since joining the practice along with Claudia Ray and Diana Torres, has continued to represent well-known names on cutting-edge issues. Highlights included THOIP v The Walt Disney Company, representing the defendant against a case filed by the owner of the Mr Men and Little Miss trademarks, obtaining a partial summary judgment and dismissal of the plaintiff’s confusion theory. The practice is also acting in the defense of Directv, and represented Colgate-Palmolive as plaintiff in two lawsuits against competitors Johnson & Johnson and Chattem. David Callahan represents Dyson, recently filing an infringement case on its behalf against AAA Kitchen regarding its ‘Airblade’ trademark, concluding with a favourable settlement and a permanent injunction. In the Los Angeles office, Torres, ‘an extremely business savvy lawyer’, is also representing Victoria’s Secret as defendant in a trademark infringement lawsuit brought by apparel company Fortune Dynamic.

Morrison & Foerster LLP’s core group is based in San Francisco, led by Douglas Hendricks, who provides commercial litigation experience, and Jennifer Lee Taylor, who is active across IP litigation and counseling. The team has broad litigation experience before the USPTO and at trial and appellate level. It serves clients from a diverse range of industries, with previous successful representations for leading companies such as Robert Mondavi Winery, Lucasfilm, Indian Motorcycle International, and medical devices company NuVasive, as well as well-known names in retail services. Its recent focus has been on the medical devices, pharmaceuticals and hi-tech (particularly internet-based) sectors, representing both plaintiffs and defendants, including trademark fraud and anti-counterfeiting cases, and internet matters involving key word advertising – an area on which a number of recent high-profile trademark cases have focused. Trial and appellate attorney Benjamin Fox and Anthony Press successfully advised Konami Digital Entertainment as plaintiff in a high-profile dispute against Upper Deck, alleging the latter distributed counterfeit copies of its popular Yu-Gi-Oh! trading card game, with the case settled in Konami’s favor. Rosemary Tarlton has particular experience in domain name and anti-cybersquatting disputes. With experience representing software companies, Michael Jacobs represented Autodesk in its trademark infringement case against Solidworks, which considered the issue of whether computer file extensions can be trademark protected; the court held that they are not protectable but a later settlement between the parties agreed that ‘DWG’ was a valid trademark owned by Autodesk. Jacobs also settled on behalf of Yahoo! a trademark infringement suit brought against it by American Airlines regarding online key word advertising.

Cooley LLP’s trademark, copyright and advertising group draws on the firm’s commercial litigation expertise to handle trademark disputes, which has been one of the most active areas of IP for the group, and is reinforced by a high volume of counseling and portfolio handling. It maintains a strong reputation in representing hi-tech and internet clients, with leading names such as Facebook and VistaPrint among its client base. Its track record also includes representing music promoter Live Nation in a trademark infringement case filed by Black Sabbath band member Tony Iommi, which was settled. The team has also seen a recent increase in cases related to internet advertising. The team is based across the firm’s California and East Coast offices, with John Crittenden a highly reputed figure. Group chair Peter Willsey successfully represented language-learning software company Rosetta Stone in its dispute with Topics Entertainment over trademark and trade dress infringement regarding both parties’ product packaging; Topics counter-sued seeking a non-infringement judgment just hours after Rosetta Stone filed its lawsuit, but a district ruling deviated from the ‘first-to-file’ rule and dismissed Topics’ action. Janet Cullum, Michael Rhodes and Anne Peck also focus on internet and domain name trademark disputes, with clients including Facebook, Nvidia and Digital Chocolate.

Although IP boutique Fitzpatrick, Cella, Harper & Scinto is primarily a patent-focused firm with particular strength in serving pharmaceutical companies, it does handle some notable trademark disputes, with fashion brand Calvin Klein, apparel company Phillips Van Heusen and industrial manufacturer Schaeffler among its key clients. Edward Vassallo chairs the firm’s trademarks group and offers trial and appellate level experience. Vassallo represented The Dreyfus Corporation and MBSC Securities in a domain name dispute before the National Arbitration Forum, with the panel concluding in favor of the client as complainant regarding the use of dreyfuscorp.com and dreyfus-corp.com domain names by false aliases. Timothy Kelly has experience in e-commerce disputes, while Warren Olsen and Pasquale Razzano are other trademarks lawyers with significant litigation experience. Razzano has represented Mars and Nike in trademark and trade dress infringement cases. The practice recently led on both the plaintiff and defendant sides in infringement and interference cases for clients such as Disney Enterprises. It acted for travel agency Gap Adventures as defendant in a trademark infringement case filed by The Gap Inc, and advised Everest Gaming as plaintiff in a case against casino gaming giant Harrah regarding the use by the defendant of Everest Poker trademarks in relation to its world poker tournament.

Fulbright & Jaworski LLP’s trademark litigation group handles a wide spectrum of disputes, including anti-counterfeiting, trade dress and internet-related cases for well-known US-based and international companies. In the New York office, Mark Mutterperl and his team are well regarded for their counsel expertise. Mutterperl has experience in district courts across the US, as well as before Second and Fifth Circuits. Clients include high-profile names in telecoms, beverages, consumer products and retail services, in areas such as trade dress, trademark infringement and unfair competition disputes. From the Austin base, Richard Groos handles a broad range of trademark litigation as well as non-contentious matters. Acting alongside Minneapolis-based Timothy Kenny and Laura Borst, Groos represented General Mills in relation to a previous trademark infringement case it filed against a Turkish company regarding a brand-name product, with the defendant held in contempt when it violated a previous court order not to bring its brand of products into the US. Groos and Kenny also represented UnitedHealth Group in domain name and other cyber-related litigation.

Latham & Watkins LLP is perceived by clients to have particular strength in trademark litigation, with a team of lead lawyers with extensive experience across a range of issues, serving clients in a broad spectrum of sectors. Perry Viscounty focuses on the hi-tech, life sciences and media sectors, with clients including online and print publishers Entrepreneur Media, Omnicom and One True Vine. Viscounty settled a case for gaming company Trion Worlds, which was sued by game publisher Palladium Books for trademark infringement regarding the ‘Rifts’ name. The case went before district court and the TTAB, with the case dismissed and motions for expedited discovery and preliminary injunction denied. Viscounty was also part of a team representing as plaintiff Iconix Brand Group, a company that licenses to retailers and manufacturers, as appellate co-counsel in a successful appeal regarding a breach of licensing, trademark infringement and fraud case, with an original $40m damages award restored. Split between Los Angeles and Silicon Valley, Bob Steinberg is currently part of a team representing the trust that manages photographer Ansel Adams’ publishing rights, which has brought a suit against an individual and a media company, in a highly publicised trademark infringement case. In Chicago, litigator Matthew Walch has been lead counsel for clients such as online employment site Career Builder and the United States Olympic Committee.

Well regarded for its overall trademark capabilities, McDermott Will & Emery LLP serves a range of companies in the consumer goods, hi-tech and communications sectors, with a particular specialism in representing owners of apparel labels and alcoholic beverages. On the litigation side, experienced trial counsel John Dabney leads the firm’s global practice. Highlights included obtaining a seven-figure settlement for American Automobile Association, in an infringement case it brought against a domestic insurance company, as well as representing Tyco International subsidiary ADT Security as plaintiff in a lawsuit regarding its blue octagon company logo trademark, achieving a permanent injunction in court. Also based in Washington DC, Robert Zelnick has strong experience handling litigation related to trademarks at federal and appellate court level, as well as at the TTAB. Zelnick recently represented IT management company CGI Group before the TTAB in a trademark opposition filing. Following two years of litigation against competitor The CCI Group, the panel concluded that its trademark could cause confusion and that the client’s trademark is famous. Additional clients include Absolut Vodka, First Transit, Guggenheim Museum, eFax and hotel franchisor Howard Johnson.

IP boutique Pattishall, McAuliffe, Hilliard & Geraldson LLP has a strong specialisation in trademarks, with experience across a full range of litigation matters at TTAB and federal court levels. Based solely in Chicago, its capabilities are perhaps smaller than some larger specialist and general service firms, although it is well regarded for its track record. Clients include PepsiCo, Bayer Healthcare, Oracle America and Acer, and its experience includes significant disputes related to issues such as gray market goods, as well as internet and e-commerce matters. It successfully represented Mastercard International in a domain name dispute where the defendant had registered dozens of infringing domain names. More recently, the practice successfully led for The John Carson Foundation before the TTAB, which sustained a previous ruling granting summary judgment to the client and denying the defendant a trademark registration for ‘Here’s Johnny’; the decision affirmed the right of publicity to the former entertainer even after his death. Senior partner David Hilliard is a long standing figure in trademark litigation, with extensive trial and appellate experience, and is notable for representing Ford Motor Company and PepsiCo. Phillip Barengolts represented Bayer Healthcare as plaintiff in a domain name dispute against multiple defendants.

Covington & Burling LLP advises on a full range of trademark disputes, handling a high volume of cases for major clients including Pearson Education, McGraw-Hill, Microsoft, Yahoo!, Bacardi and Spirits International (SPI Group), as well as acting as national trademark counsel for American Automobile Association (AAA). It works closely with the IP practice’s internet enforcement group to litigate against cybersquatting, successfully recovering hundreds of domain names for clients such as Microsoft and AAA. The practice’s biggest case remains defending Spirits International in long-running litigation against the Russian government in relation to the Stolichnaya vodka trademark, of which the government is trying to reclaim ownership; a Second Circuit appeal affirmed dismissal of fraud charges but the litigation remains ongoing. The firm also advised The Wine Group against leading alcoholic beverages company Diageo, which owns world-famous brands such as Smirnoff and Johnnie Walker. Key attorneys are split across the firm’s Washington DC and California offices, with Neil Roman leading on trademark actions for AAA. He also represented Microsoft in a lawsuit brought against it by Bing Information Design for infringement by using the name for its search engine. Litigator Simon Frankel recently represented the German American Chamber of Commerce regarding rights to its name.

Cowan, Liebowitz & Latman, PC is well regarded for its contentious trademark capabilities. Richard Mandel handles internet-related issues and Eric Shimanoff advises clients across a wide range of consumer product sectors. The team successfully represented Ferrari at a Ninth Circuit appeal, in relation to enforcing an earlier settlement against replica car manufacturer Exoto, which prohibited the future use of ‘Ferrari’ marks. Mandel and Shimanoff are also part of the team representing longstanding client Promotion In Motion, a confectionery food manufacturer in high-profile trademark infringement litigation regarding its SwissKiss product. Rival company Hershey brought suit against the client, alleging that the product infringes its ‘Kisses’ product line. Arlana Cohen’s focus includes anti-counterfeiting issues. Cohen represented Norwegian lamp company Luxo in bringing a high-profile trademark infringement case against Disney and Pixar. The client alleged that its own Luxo lamp trademark was being infringed by Disney/Pixar’s limited edition Luxo Jr lamp product. Joel Schmidt counts international apparel companies among his clients; he represented design house Mercy of Canada in a well publicised claim against Diane von Furstenberg’s company, alleging that it had copied elements of one of its clothing designs.

Goodwin Procter LLP attracts praise from clients for its strong support and personalised service. Spread across New York, Washington DC and Boston, the litigation team works closely with the transactional side of the practice, with particular expertise in footwear and sports apparel matters, as well as serving financial groups such as JPMorgan and RBS. It acted for educational travel tour provider Explorica regarding a competitor’s use of the ‘Explorica’ name for rebranding its educational programs. It also represented New Balance Athletic Shoes in a trade dress and unfair competition case against Louis Vuitton regarding its well-known 574 model shoe, with a settlement reached in the client’s favor. It also successfully defended Triumph Learning before the TTAB in an opposition for trademark registration. Notable attorneys include Boston-based David Hosp and Mark Puzella, who are ‘smart, creative and anticipate everything’. Hosp and Puzella represent newspaper publications The New York Times and The Boston Globe, and Citizens Financial Group. Other clients include toy company Wham-O and Eric van Egeraat Associated Architects.

Kelley Drye & Warren LLP advises the companies behind well-known global consumer product brands such as Avon, Bacardi and Polo. New York-based IP chair William Golden is an experienced trial counsel, while Andrea Calvaruso leads the trademark and copyright group, with experience in district court, TTAB and ICANN proceedings. A particular highlight for Golden was successfully representing Bacardi in its long-running dispute with Pernod Ricard regarding the Havana Club trademark, with a district court ruling that no violation was found; the matter is now set to go to appeal at the Third Circuit. The practice was also involved in representing PRL USA Holdings in relation to its Polo fashion brand. Its track record also includes successful representations at New York district courts for various consumer product companies. It also successfully defended Perrigo against a lawsuit filed by Rexall Sundown regarding trademark violation and unfair competition in relation to a product description on Perrigo’s generic version of Rexall’s Osteo Bi-Flex brand product.

With a full-service practice, Mayer Brown can draw on a team across its East Coast, Central and West Coast offices, with broad experience in litigating at various levels and a notable client base which includes Nestlé USA and YouTube. IP litigator John Mancini led on many of the practice’s recent highlights, including a trademark infringement win for Entertainment One as defendant in a case brought by well-known television network E! Entertainment to prevent the client from re-branding itself with the ‘E1 Entertainment’ mark; the lawsuit was denied with the decision affirmed on appeal. Nestlé remains a major client, with two favorable settlements achieved for the global food corporation, including an infringement action brought by Weight Watchers International against Nestlé and Dreyer’s Grand Ice Cream regarding the ‘Weight Watchers’ and ‘Points’ trademarks. Other notable attorneys include Richard Assmus and Michael Adams in the Chicago office, who both have experience in federal court and TTAB proceedings, and recently acted on a case involving cybersquatting, infringement and unfair competition issues.

‘A go-to firm for trademark litigation’, Paul, Hastings, Janofsky & Walker LLP ‘provides practical advice that complements a client’s business needs’. The team is split across seven offices, mainly based in California, but also in Washington DC, New York and Atlanta. Robert Sherman leads the practice and is praised as being ‘a brilliant trial attorney and an expert in the field’ who offers ‘out-of-the-box thinking’. His extensive litigation experience includes representing leading global brands such as Nestlé Purina Pet Care, L’Oréal and Toni & Guy/TIGI Linea. Sherman led for FragranceNet.com as plaintiff in an internet keyword-related case, which stands out as one the first cases to cite the Second Circuit appeals ruling in Rescuecom v Google, which affirmed that the use of a competitor’s names as a keyword in an online search engine advertisement constituted a ‘use’ under the Lanham Act. In an illustration of the practice’s niche strength in acting to help protect well-known brands in fashion and cosmetics, including the likes of French Connection, Nine West and Jones New York, Sherman also advised the American Apparel and Footwear Association to help New York Senator Charles Schumer craft a bill for a new form of copyright protection for fashion designs. Additional highlights included advising L’Oréal in relation to a dispute between Polo Ralph Lauren (PRL) and USPA; L’Oréal, PRL’s exclusive licensee for fragrances, counterclaimed against USPA for trademark infringement, with the court prohibiting the defendant from using blue packaging.

Proskauer Rose LLP’s Brendan O’Rourke and Lawrence Weinstein co-chair the firm’s false advertising and trademark group, which has recently acted on some high-profile litigation regarding well-known competitor brands. The team includes ten partners, mainly based in New York, and the practice focuses on representing global consumer product companies and start-ups as well as individuals and corporations from the entertainment field. Fortune 500 energy company PPL Corporation, Mount Sinai Medical Center, a major casino operator and a sports governing body can be counted among clients recently represented in disputes. Highlights included successfully settling for Major League Baseball Properties (MLBP) as plaintiff in a lawsuit against The Upper Deck Company involving trademark infringement, unfair competition under the Lanham Act, and breach of contract allegations in relation to former licensing terms and the sale of unauthorized trading cards; the settlement included the defendant paying over $2.4m in past debts and being permanently enjoined from using any MLBP IP rights. The firm is also representing Colgate-Palmolive as defendant in a case brought by fellow leading toothpaste maker GSK, which alleges trademark and trade dress infringement regarding the ‘triple action’ formula and well-recognised ‘nurdle’ of toothpaste blob image used on the packaging of both parties’ products.

Weil, Gotshal & Manges LLP’s well-regarded IP and media litigation group is perceived as being highly pragmatic and business-oriented with good depth of expertise at both partner and associate level. Practice chair Bruce Rich and Benjamin Marks are noted for their ability to write strong briefs as well as being good on their feet, while Randi Singer and commercial litigator Bruce Meyer provide ‘solid and practical advice delivered in a very responsive manner’. The team has developed a strong reputation through its representation in arguably the most closely watched trademark dispute in recent years, Tiffany v eBay. A team consisting of Rich, Singer, Meyer and counsel Jonathan Bloom successfully represented eBay at district, Second Circuit appeal and Supreme Court levels against an allegation that it was responsible for monitoring counterfeit products offered on its website; the plaintiff’s argument was rejected to affirm that eBay did take appropriate action against counterfeit items, a false advertising claim was also dismissed and finally, a petition for certiorari was also denied. The case garnered huge interest in what was a potentially major challenge to major e-commerce businesses involved in third-party trading, with names such as Yahoo! and Google involved in amicus briefs. Rich focuses on the internet, communications and entertainment sectors, and has helped develop the practice’s reputation in acting for prominent names in high-profile disputes. Singer’s previous experience includes achieving a favorable settlement for Procter & Gamble as defendant in a false advertising proceeding against Kimberly-Clark.

The ‘outstanding’ trademarks team at Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. is led by David Kelly in Washington DC, and includes 11 partners, who ‘are helpful, friendly and go the extra mile’. The team is notable for its depth and breadth of experience, geographical reach, and industry knowledge, with a practice ranging from routine to complex matters. In Washington DC, Julia Anne Matheson ‘responds promptly, gives a thorough assessment of the issues and provides accurate information and direction on how to proceed’. The hugely experienced and well-respected team, which includes recommended lawyers Jonathan Gelchinsky and Brett Heavner, is praised as ‘responsive, creative in their solutions, and extremely knowledgeable in their field’. The team assists Starbucks with its domestic portfolio, handling routine clearances relating to the company’s time-sensitive seasonal promotions, and also acts for The Walt Disney Company (and related companies Pixar, The Disney Channel, and ABC Television), The Association of Tennis Professionals (ATP), Caterpillar, XConnect Global Networks, and Shenzhen TRONY Science and Technology Development. It recently gained The NFL Players Association as a new client.

Boutique firm Fross Zelnick Lehrman & Zissu, P.C. is particularly strong in US litigation, international prosecution and litigation, and US counseling and prosecution, making it ‘the best for trademark work in the US’; it is ‘timely, thorough, tuned into both the industry and clients’ needs, and of the highest quality while being cost-efficient’. The IP team is made up of approximately 40 lawyers and is based across two offices in New York and Washington DC. Its prestigious client list includes Tiffany, Chanel, Miss America Organization, LEGO, Bristol-Myers Squibb and Novartis. Clients are quick to praise a range of lawyers in the team, including Mark Engelmann in New York, who is ‘thoughtful, extremely knowledgeable and very client focused’ and provides ‘sage advice’ that clients can ‘always rely upon’; and Craig Mende, also in New York, with areas of expertise including litigation and copyright.

Covington & Burling LLP has a wide-ranging client base that speaks volumes of its expertise in a number of key industries. In 2010 the practice expanded into cutting-edge domain name work for a number of high-profile companies, while remaining strong in sectors such as life sciences, sports, media and luxury goods. The team of five partners has expertise in all non-contentious trademark matters, from global registration, maintenance, oppositions, and cancellations to policing programs. Work highlights included advising Microsoft in relation to its trademark and domain name portfolio, and managing the worldwide trademark portfolio for the National Geographic Society. Recommended lawyers include co-chair of the firm’s global trademark and copyright group, Laurie Self, who is noted for her work with Microsoft and has expertise in domestic and international IP policy. Special counsel Kristina Rosette is recommended for her work with USA Track & Field and her expertise in cyber fraud and domain name matters. Also in Washington DC, Kathleen Gallagher-Duff is noted for her work for King Pharmaceuticals, recently advising on its $3.6bn agreement to be acquired by Pfizer. Other key clients include SPI Group, United States Soccer Federation, Merck & Co, and Promontory Financial Group.

K&L Gates has a well-established trademarks practice experienced in matters ranging from international enforcement to selecting and clearing individual marks. The firm covers a number of industries, including construction, travel, healthcare, publishing and technology. The trademarks team, with over 40 lawyers, includes highly recommended former in-house counsel Frank Politano in Newark, who has expertise in copyright, unfair competition and entertainment law. In Boston, David Byer is experienced across a number of industries, including publishing, manufacturing, entertainment and electronics, and is noted for his work with Expedia and Polartec. Work highlights included managing the worldwide portfolio of 2,500 marks for International Game Technology, and handling global search and clearance for Wrigley and brands such as Starburst, Skittles and Orbit. Other key clients include Hotels.com, TripAdvisor, AT&T, HTC, T-Mobile, Corbis and Resco Products.

The ‘talented and dedicated’ trademarks team at Kenyon & Kenyon had a busy 2010 between taking over a number of multinational client portfolios and working on major global rebranding deals. James Rosini heads the team from New York, and has more than 30 years’ experience, offering ‘knowledge, the ability to explain what is likely to happen, and efficient and effective practical advice’. He is supported by Edward Colbert in Washington DC, who is an ‘excellent resource’ and a high-class team that is ‘efficient and very responsive’, and delivers ‘pragmatic advice on top of a high level of legal skill’. The firm took over the handling of trademark portfolios of clients including Walmart, Analog Devices, AIG and Olympus, and led a number of high-profile projects; these included the name change of General Motor’s financial division to Ally Bank, and AIG’s global rebranding to Chartis Insurance, which involved clearing the name in 180 jurisdictions across the world. Other key clients are the Tampa Bay Rays, Citifinancial, Amicom, SAP, Sony, Woolworth & Kenny, and Akzo Nobel.

Arent Fox LLP is a leader in its field when it comes to media and entertainment matters. The team of 30 partners acts for a great breadth of high-profile clients in this area, as well as assisting clients in the life sciences, electronics, consumer products and fashion industries. The talented Anthony Lupo co-chairs the entertainment/IP group from the firm’s head office in Washington DC, and has particular experience in entertainment and gaming matters. The team is primary counsel for a number of household names including Mars, and also assisted in the launch of the Discovery Communications brand in a number of countries. It is also primary entertainment and IP legal counsel for Pixar and The Walt Disney Company, advising on clearance, registration and licensing matters, while other key clients include Apple, Google, LG Electronics, Diesel, Geox, Benetton and Lacoste. The team was also recently retained by Qualcomm.

Clients are in agreement that the trademarks team at Baker & McKenzie is ‘excellent’ and ‘unique’, and is well equipped to deal with the most ‘challenging’ of domestic and international work. Aside from its breadth, the team is also praised for its ‘deep industry knowledge’ and ability to remain ‘responsive and sensitive to clients’ needs and budget’. The ‘experienced and practical’ John Flaim leads the global team from Dallas and primarily focuses on litigation. He is supported by New York practice head Pamela Church, who comes highly recommended by clients and is ‘knowledgeable, enthusiastic and pleasant to work with’. The group is equipped to deal with clients from all industries, and is particularly noted for its management of Unilever’s global trademark portfolio, which comprises over 155,000 marks. Other key clients include Fed-Ex, Schlumberger Technology Corporation, StudioCanal, The Body Shop International, Vodafone and Wendy’s International.

Cowan, Liebowitz & Latman, PC is a ‘respected name in the field’, highly regarded for its domestic and international work. The team of 20 attorneys and seven trademark administrators manages the international trademark portfolios of clients from a diverse range of industries, including Major League Baseball Properties, The Donna Karan Company, Columbia Pictures, Morgan Stanley, Sotheby’s, and the US portfolios of international companies such as Barclays, Ferrari and Intercontinental Hotels. Other key clients are The National Audubon Society, The Metropolitan Museum of Art, Columbia University and The Salvador Dali Museum in St Petersburg, Florida. Notable individuals include the hugely experienced and ‘excellent’ William Borchard in New York, who has been an ‘expert in this field for many years’ and specializes in internet and domain name matters.

The level of service provided by the team at Dechert LLP is ‘exceptional’ and ‘top notch’. The team of 18 partners is based across the US, and is noted for providing innovative and practical ways of protecting a company’s marks. Advising clients in industries ranging from hi-tech electronics to alcoholic beverages, it is skilled at dealing with high volumes of work, turning around search reports and rendering opinions ‘in a matter of days, with thorough analysis and sound advice’. Glenn Gundersen leads the team from Philadelphia and is ‘an absolute specialist’. Prestigious clients include leading apparel retailer Zara USA and the Ivy League. Work highlights included trademark clearance work for L’Oréal, and representing Diageo in a number of matters.

The team at boutique firm Fitzpatrick, Cella, Harper & Scinto, based in New York, Washington DC and California, has expertise in the electronics, clothing, pharmaceuticals and publishing sectors, among others, advising a range of well-known clients. The firm has 11 partners spending at least half their time on trademarks matters, with the team led by Edward Vassallo in New York, who has expertise in the mechanical, computer and chemicals spaces. Also of note is hugely experienced founding partner Lawrence Scinto. Longstanding clients include Canon and IBM, while other representative clients include Batmark, Frederick Warne, RUHOF, Phillips-Van Heusen, Calvin Klein and Tommy Hilfiger.

Fulbright & Jaworski LLP’s trademarks team has a global reach, with a number of offices across the US and overseas, and advises some of the world’s leading brand names. The team undertakes the full range of non-contentious work, and also has a strong grounding in litigation, which further assists with transactions, licensing and policing matters. Sector strengths include chemicals, biotechnology, telecommunications and consumer products; the firm manages the global IP portfolios of a diverse range of leading US companies, including the Home Depot, UnitedHealth Group, General Mills, Brinker International and Farmers Group. Key lawyers include New York-based Mark Mutterperl, who is also experienced in litigation and false advertising matters.

Ballard Spahr LLP’s ‘unbelievably attentive and responsive’ trademarks team includes 18 partners working from eight offices across the US, and covers a wide variety of sectors including biotechnology, pharmaceuticals and electronics. Noted for its ability to ‘use lower-cost resources to the fullest extent possible’ but still provide ‘timely, cost-effective and practical advice’, the team acted on numerous transactions over the course of 2010, including representing The Mother Teresa Center in negotiations regarding a best-selling book and The Council of the Americas/The Americas Society on numerous matters. Key lawyers include of counsel Corey Field in Los Angeles, who has extensive music industry experience, and Philadelphia-based Lynn Rzonca, who divides her time between litigation and advisory work.

Cooley LLP’s well-regarded trademarks practice has particular expertise in the technology, life sciences and software sectors. The team of 22 lawyers, including four partners, currently manages around 17,000 trademarks for clients ranging from start-ups to Fortune 500 companies. Peter Willsey chairs the practice group from Washington DC, and has particular expertise in internet and domain name matters. The firm handles the worldwide trademark portfolio of Bluetooth SIG, which includes counseling, clearance, prosecution, policing and enforcement matters around the world. It also assists in the management of Facebook’s mark, while other key clients include LinkedIn, Bare Escentuals and Lonely Planet Publications.

DLA Piper LLP has a 25-strong team in the US dedicated to managing trademarks across the globe. The firm’s great geographical reach assists its ability to manage of global portfolios for large multinational companies, and its prestigious client list includes Christie’s, Covidien, ESPN, Genentech, Harley-Davidson, Pfizer, The Associated Press and Verizon Wireless. Ann Ford leads the team from Washington DC, and specializes in communications and media law. In 2010 the team was retained by one of the world’s largest associations of investment professionals to implement a worldwide brand protection strategy and manage its global portfolio, and it also manages the Lance Armstrong Foundation global trademark portfolio. It made a number of strategic partner hires in 2010, including New York-based Frank Ryan from Nixon Peabody LLP, who is ‘highly capable, knowledgeable, and very conscious of understanding and achieving clients’ goals’.

The trademarks team at Dewey & LeBoeuf LLP is small but specialized, with the bulk of the work being done from the New York office. The non-contentious group is led by Stanton Lovenworth, who has more than 30 years’ experience and has particular expertise in technology licensing. The team has experience across a broad range of industries, including technology-driven transactions. In 2010 the group represented The Walt Disney Company in its acquisition of Palo Alto-based Tapulous, a leading developer of music games for the iPad, iPhone, and iPod Touch, which involved trademark elements. Other clients include eBay, Starbucks, Hewlett-Packard and Dell.

Foley & Lardner LLP’s six-partner trademark, copyright and advertising team is based across the US and covers a wide range of industries, including apparel, cosmetics, healthcare and telecommunications, with Jeffrey Greene heading the group from New York. It is retained as lead trademark counsel by a number of leading multinational corporations, including Citigroup; it regularly provides strategic and day-to-day advise on the institution’s global portfolio, which includes more than 5,000 applications and registrations in over 100 countries. The team is also lead trademark counsel for Hermès International, Monster and Nokia, and also advises Mattel, Motion Picture Association of America, Time Out New York and Yahoo!.

Kelley Drye & Warren LLP’s ‘fantastic’ trademarks practice has expertise in the full range of industries, including media and entertainment, fashion, retail, security and real estate, and assists a number of well-known clients with portfolio management matters worldwide. The team of six ‘knowledgeable’ partners is led by Andrea Calvaruso in New York, who is praised as ‘smart, reliable, trustworthy, knowledgeable and responsive’. The ‘superb’ Nancy Lutz is also singled out for praise, for her ‘unbelievable grasp of domestic trademark law and her impressive knowledge of international matters’. Clients also speak very highly of the group as a whole; ‘service on all requests is excellent’. Key clients include The Miss Universe Organization, Foot Locker, Polo Ralph Lauren, Avon and Bacardi.

Kilpatrick Townsend & Stockton’s team of 55 ‘highly skilled’ trademarks lawyers is mainly based in Atlanta, and undertakes the full range of work from watching services to multinational clearance and filing programs. The hugely experienced Bill Brewster leads the group from Atlanta, and is supported by recommended lawyers Jason Vogel and Stephen Feingold in New York. Aside from the firms’ merger, the team has recently grown with a number of associate hires across the US, giving further breadth to an already large team, and it ‘goes above and beyond and gets things done quickly’; ‘no firm comes close to how quickly the firm works on trademarks clearance work’. Clients include Citi, Dwyer Group, Furniture Brands International, Genesco, Krispy Kreme Doughnuts, Marriott, Merrill Lynch and Spectrum Brands.

King & Spalding LLP’s trademark prosecution and strategic counseling practice includes eight partners well versed in assisting clients on a worldwide basis. The team is mainly based in Atlanta with support from New York and Houston, and deals with a wide variety of sectors. The IP practice group is lead by chair Courtland Reichman, who, as well as handling patent litigation work, manages a number of valuable marks for the country’s leading companies. The team acts as primary outside trademark counsel for The Coca-Cola Company, handling protection and enforcement matters as well as strategic advice. The very experienced Steve Schaetzel acts for UPS, advising on protection, enforcement and prosecution matters.

Knobbe Martens Olson & Bear LLP is a well-regarded boutique with a strong bench of trademarks lawyers with expertise in a variety of technologies and notable international ties. The team is led by managing partner Steven Nataupsky, supported by recommended partner and head of brand protection Jeff Van Hoosear in California, who is an expert in both domestic and international marks. Dual qualified barrister/attorney Lynda Zadra-Symes also comes recommended. Specialisms of the team include cleantech, nanotechnology and plant biology, and it also has extensive experience in media and entertainment; it has represented The Walt Disney Company and is currently advising Bob Hope Enterprises and Quentin Tarantino. Other clients include Frontier Scientific, Hansen Beverage Company, Masimo Corp, Partners in Leadership, Ranbaxy and 99¢ Only Stores.