The Legal 500

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Overview

Many types of firms, from large IP boutiques to full-service international law firms, populate the top end of the intellectual property market. Indeed, full-service firms are increasingly specialising in IP to capitalize on the growing workload in global brand protection, particularly in the emerging technology sector. However, smaller IP boutiques continue to struggle in an increasingly competitive market, and some have been absorbed into larger, general practice firms while continuing to function as a boutique service.

Among a number of significant recent developments in the IP legal market, San Francisco-based Howard Rice Nemerovski Canady Falk & Rabkin merged with Arnold & Porter LLP. Additionally, Leydig, Voit & Mayer Ltd. opened a San Francisco office in February 2012, having hired Gerald Gray from Kilpatrick Townsend & Stockton to head the team. A team of Section 337 litigation specialists left Miller & Chevalier Chartered to set up Foster, Murphy, Altman & Nickel PC, and Quinn Emanuel Urquhart & Sullivan, LLP opened a Washington DC office, after hiring attorneys from Alston & Bird LLP to handle patent disputes before the ITC. One of the most closely watched moves was that of highly regarded patent litigator Matthew Powers, who left Weil, Gotshal & Manges LLP to set up plaintiff-side firm Tensegrity Law Group LLP. Latham & Watkins LLP brought in six patent attorneys from Wilson Sonsini Goodrich & Rosati, including Ron Shulman and Michael Ladra, to join its Silicon Valley group.

In terms of legal developments, recent proposals to tackle online piracy have only served to increase the battle between traditional copyright owners and new technology players. The Stop Online Piracy Act (SOPA) and Protect IP Act (PIPA) are widely supported by content owners for proposing measures aiming to tackle websites trafficking infringing goods, but opponents criticise the bills for inhibiting free speech and innovation.

The firms listed in the Copyright table are assessed for their performances in complex court disputes as well as on corporate and transactional matters such as licensing and ownership. Those firms that do most or all of these things well are ranked highest, although there is also room for specialists with niche expertise. The copyright market is relatively fragmented by industry, with practices tending to specialise in particular areas, such as literature and the arts, entertainment, film, music or new technology.

In the patent market, the passing of the America Invents Act (AIA) signalled a major reform of US patent law, with the introduction of a first-to-file rather than first-to-invent system for patent ownership; this is due to be implemented in 2013. A number of legislative changes will affect non-contentious patent work and although both the fast-track patent processing and the harmonization with global standards will be welcomed by many clients, there is uncertainty over how this will affect law firms' workloads. In addition to testing a firm's responsiveness and prosecution capabilities, there will also be greater emphasis on alternative dispute resolution, challenging firms' strengths in re-examinations and the newly created post-grant proceedings.

Firms ranked in the Patent: licensing and transactional section are recommended for their ability to prepare and negotiate licenses, joint development agreements or other collaborations, as well as to advise on IP aspects of corporate transactions, such as IP due diligence as support for a merger. The higher-ranked practices have the ability to deal with complex licensing issues across a number of industries and jurisdictions for some of the world's largest companies, as well as to deal with a high volume of patents. Numerous firms in the table are also equipped to deal with licensing issues arising from patent litigation.

The Patent litigation: full coverage table recommends firms best equipped to handle work across the state and federal court system, including the US Supreme Court, as well as before the International Trade Commission (ITC) and in interference matters before the United States Patent and Trademark Office (USPTO). A firm's ability to reach equitable settlements is also factored in.

In terms of its impact on litigation, the AIA will impose stricter requirements for naming multiple-defendant disputes and will likely see more motions to transfer venue, as well as an increase in the volume of cases. A noticeable change over recent years has been seen in the popularity of certain venues, with a number of cases being transferred from the historically plaintiff-friendly Eastern District of Texas to other jurisdictions such as Delaware and California.

The Patent litigation: International Trade Commission ranking covers IP firms specialising in ITC investigations as well as general practice and full-coverage firms that demonstrate strong expertise before the ITC. Notably, 2011 was another record year for the volume of Section 337 investigations and the AIA is expected to increase the popularity of the ITC as a forum for faster resolution of patent disputes, particularly multi-defendant cases. There has also been an alternative proposal to SOPA and PIPA, suggesting that complaints about copyright infringement on foreign websites should go before the ITC.

The Patent prosecution: utility and design patents ranking recommends US practices with top-end ability to draft, facilitate and pursue US applications throughout the process. The marked increase in ex parte and inter partes re-examinations, reissue applications and interferences means that expertise in these areas is also recognized.

The Trademarks: litigation section recommends firms for their expertise, focus and depth in litigation, and also recognizes strong anti-counterfeiting practices. The need to protect and secure domain names remains a key battleground, and gray market goods cases are also commonplace.

Firms recommended in the Trademarks: non-contentious (full coverage) section assesses firms on their ability to manage brands, with a particular emphasis on large, complex portfolios for leading companies. Relevant skills include enforcement, policing, protection, licensing and procurement, with credit also being given to firms with multijurisdictional reach.


Copyright

Index of tables

  1. Copyright
  2. Leading lawyers

Leading lawyers

Cowan, Liebowitz & Latman, PC's highly experienced copyright attorneys are well regarded for litigation and counseling work, particularly for representation of owners of traditional copyrights in entertainment and publishing. Of counsel Tom Kjellberg heads the practice, which also includes Richard Dannay, an expert in literary copyright issues who has 'an encyclopedic knowledge of US copyright law and is also an excellent litigator'. Dannay and Kjellberg obtained a favorable decision for Penguin Group at the New York Court of Appeals in Penguin Group v American Buddha. Significantly, the ruling makes it easier for New York-based publishers to bring online piracy claims at the court, regardless of whether the alleged infringement or use took place within the state or not. Jeremy Nussbaum, who focuses on the entertainment sector, is also recommended, as is William Borchard, who handles copyright registration, licensing and clearance work. Robert Clarida retired in 2012.

Jenner & Block LLP's content, media and entertainment group advises and litigates on behalf of copyright owners, but is particularly well known for its ability to negotiate music-industry settlements. The practice represents various major film and TV studios and music recording companies, including UMG Recordings, Fox Entertainment Group, NBC Universal, Warner Brothers and Sony Music, as well as the Recording Industry Association of America (RIAA). On the contentious side, Los Angeles-based David Singer successfully defended Disney and Pixar against a copyright infringement claim brought by an individual, who alleged that the Cars motion picture infringed their copyright. Singer also successfully won dismissal of infringement claims brought against author Rick Riordan and the Disney Book Group regarding the literary series, Percy Jackson & The Olympians. Non-contentious work includes counseling on copyright protection and the negotiation of music royalty settlements. Practice co-chair Steven Fabrizio focuses on new media litigation and also advises on copyright protection and enforcement. Litigator Andrew Bart represents entertainment industry groups but mainly film and music sector corporations. Steven Englund specialises in new media and technology.

Loeb & Loeb LLP has a strong reputation for copyright litigation and advice to leading names in the entertainment industry. Jonathan Zavin is 'smart, practical and easy to work with', and 'a very experienced litigator who is candid at all times'. Major film studios are among the practice's key clients, and Zavin recently successfully defended DreamWorks Animation in a lawsuit brought by Terence Dunn, an individual who alleged that the studio made unauthorized use of his idea for a martial arts panda bear in creating the film, Kung Fu Panda. Barry Slotnick has been busy advising various music industry clients on acquisition and licensing rights as well as in litigating copyright infringement cases. Slotnick acted for the National Music Publishers Association and the Harry Fox Agency to settle a case against YouTube regarding the unauthorized use of musical works on the website. Following this, he advised the clients on negotiating a licensing agreement that allows music publishers to receive royalties from YouTube for music posted on the site.

Davis Wright Tremaine LLP handles a broad range of contentious and non-contentious copyright matters. It advises various media and broadcasting interests on registration rights and transactions, and clients of IP practice co-chair Alexandra Nicholson include publishers Ziff Davis Media and Yellow Book USA. The practice's key litigators include Elizabeth McNamara, who has longstanding experience in representing clients in the publishing and broadcasting sectors. She obtained a dismissal for the defendants in Marquardt v King and Simon & Schuster, and also recently acted as lead amici counsel to a number of publishing associations in the appeal of Penguin Group v American Buddha. Los Angeles-based Kelli Sager also has trial and appellate experience, representing broadcasters, media and online publishing companies, and Marcia Paul represents TV and film companies in copyright infringement disputes.

Fross Zelnick Lehrman & Zissu, P.C. has ‘an ability to cut through to the heart of the matter and provide skillful, cost-effective advice appropriate to the situation'. It is particularly known for its work in copyright protection of high-profile names and characters in the entertainment industry. Recent successes include settling infringement disputes prior to trial. Roger Zissu and Michael Chiappetta achieved a favorable settlement for Avon Products in a dispute originally brought by advertising agency Kilter Industries during 2009, which included a claim to copyright ownership of the LIIV logo. In 2011, following discovery and summary judgment motions, the plaintiff withdrew its claims. James Weinberger won dismissal on summary judgment of a copyright infringement claim brought against defendants, including Sundance Channel executives and Newark Mayor Cory Booker. The plaintiff, author Everett Adam Jackson, had alleged that the clients' Brick City documentary series infringed the author's novel of the same name. Craig Mende, Barbara Solomon and John Margiotta are also recommended for contentious matters.

Kirkland & Ellis LLP's copyright team is part of an integrated trademark, internet and advertising litigation group, and is ‘very experienced, smart, keeps up on the law and even influences the creation of law on copyright issues'. It acts for major names across entertainment, publishing and high-tech industries, with clients including The Tetris Company, IBM and Fox Entertainment Group. New York-based Dale Cendali is well known for handling high-profile copyright cases, and for her expertise in fair use issues. Cendali and Claudia Ray were part of the team that settled a lawsuit for The Associated Press, which had brought a claim against artist Shepard Fairey over the use of its copyrighted Barack Obama photograph to create the 'Obama Hope' poster, which was also used on merchandise. Cendali and Claudia Ray previously represented Scholastic Inc in obtaining a dismissal of a copyright infringement claim brought by the estate of the late author Adrian Jacobs, which alleged that JK Rowling's fourth book in the Harry Potter series infringed a 1987 novel by Jacobs.

Mitchell, Silberberg & Knupp, which is headquartered in Los Angeles, is known for its representation of copyright owners and industry associations across the entertainment, media and high-tech sectors. Both Marc Mayer and IP and technology practice co-chair Karin Pagnanelli are 'highly knowledgeable and get results quickly' in copyright disputes. For example, they obtained a settlement for Sony in a multibillion-dollar copyright infringement suit, which had been brought by Cybersitter, a software company, against the Chinese government, software companies and other computer manufacturers including Toshiba and Acer. Russell Frackman is well known for representing music industry associations and individuals in copyright litigation in the entertainment and new media industries. Mayer and Frackman are representing Capitol Records in litigation against online companies Bluebeat, Vimeo, VideoEgg and Hi5. Practice co-chair Robert Rotstein filed an amicus brief on behalf of the Motion Picture Association of America (MPAA) in MDY v Blizzard. New York-based Howard Weller has ‘excellent judgment regarding cases, and an openness and proactive approach to working with clients'.

New York firm Pryor Cashman LLP is particularly recommended for high-value music copyright infringement matters, and broadly acts for numerous high-profile artists as well as film and entertainment associations or companies – such as Lions Gate Films, Star Branding and Sony/ATV Publishing – in litigation, copyright registration and licensing. Litigation chair Donald Zakarin's 'knowledge, confidence, business and legal acumen is unparalleled', and Frank Scibilia has 'excellent industry understanding and is a good advocate'. Scibilia focuses on copyright issues in the digital media space. He and Zakarin were part of the team that represented EMI Publishing in bringing a copyright infringement case against MP3tunes, achieving partial summary judgment in the client's favor. Zakarin also acted for independent music trade organization Merlin in reaching a settlement with LimeWire over copyright infringement damages. IP chair Brad Rose handles copyright protection and enforcement matters. He also successfully defended music artist Kanye West and music companies Roc-A-Fella Records and UMG Recordings against a copyright infringement claim brought by artist Vincent Peters.

Arnold & Porter LLP's coast-spanning practice handles copyright registration, licensing, enforcement and litigation, and has a bias towards new media and emerging technologies. Robert Garrett in Washington DC specializes in advising sports industry associations, TV broadcasting networks and film studios on copyright issues regarding online and new media devices. Garrett successfully represented a group of plaintiffs, including Fox, CBS and Major League Baseball, in a case against ivi TV regarding internet streaming of programming without consent. Garrett was also part of a team that advised Viacom in disputes with Time Warner Cable and Cablevision over online streaming of programmes on iPad devices. The California-based team, which focuses on acting for entertainment, new media and high-tech companies, was expanded when the firm combined with Howard Rice Nemerovski Canady Falk & Rabkin in January 2012. This brought on board the appellate specialist Jerome Falk Jr, whose track record includes being co-counsel to Autodesk at a Ninth Circuit appeal regarding whether copyright's first sale doctrine applies to computer software. A cross-office team, led by Louis Ederer in New York and James Blackburn in Los Angeles, gained a preliminary injunction on behalf of Sweet People Apparel against LA Idol Fashion in a copyright and trademark infringement case regarding rear pocket designs on denim jeans.

Debevoise & Plimpton is a leading IP firm with national scope, particularly in the areas of technology and internet law, and its 'first-rate team offers succinct, clear and thorough advice' concerning copyright litigation, enforcement, licensing and counseling. The practice's track record includes having advised the Association of American Publishers and various publishing houses on the copyright infringement case challenging Google's proposals to develop a digital archive of published works through its Google Books Library Project. Bruce Keller leads the IP litigation group from New York and is also noted for his work on issues of first impression as well as entertainment industry cases. Keller successfully defended Sony Pictures Television and A&E TV in a high-profile copyright case brought by a photographer who claimed his copyrighted photo was infringed by the television film, Who is Clark Rockefeller? Keller also won a copyright infringement claim for the National Football League against Titlecraft's wooden replicas of the NFL's Vince Lombardi Trophy. New York-based litigator Jeremy Feigelson is also recommended, as is Washington DC-based Jeffrey Cunard, who handles IP transactions and copyright litigation.

Hogan Lovells US LLP's strong contentious and non-contentious practice acts on a wide range of licensing and transactions as well as litigation for major technology, media and entertainment industry clients. New York-based Slade Metcalf successfully defended HarperCollins Publishers and authors Conn and Hal Iggulden in a copyright infringement dispute, regarding a treehouse design featured in their children's literary work, The Dangerous Book for Boys. In the same office, Dori Ann Hanswirth represented Fox News Network and News Corporation as defendants against an allegation of copyright infringement regarding a news report's use of video footage of the late Michael Jackson's ex-wife, Debbie Rowe. The practice has also previously acted for ASCAP in high-profile digital piracy disputes. Recent advisory matters include acting for AEG on licensing issues regarding the creation of new cable network AXS TV, and for Digital Cinema Implementation Partners on the digital distribution of 3D movies and major motion pictures for cinema screens across North America. Other clients include New York Post, Sony Pictures Classics, Twentieth Century Fox, Oracle and Hulu. David Singer joined Jenner & Block LLP at the end of 2011.

Irell & Manella LLP's of counsel David Nimmer specializes in copyright law. He was part of the team that represented Amazon in its amicus brief to oppose a settlement agreement between publishers and Google regarding the digitising of works for the Google Books Library Project. The federal judge agreed with the opposition and rejected the $125m settlement proposal. Commercial litigator Steven Marenberg acts for entertainment and gaming sector companies, and has represented Universal Music Group in copyright disputes regarding the broadcasting of music videos on user-generated content websites.

Kilpatrick Townsend & Stockton's copyright practice, which handles counseling and litigation matters for clients across a wide range of industries, is mainly based in Atlanta, New York and San Francisco, respectively with James Trigg, Joseph Petersen and Timothy Cahn leading the teams in each office. Petersen and New York colleague Joseph Beck represented defendant AT&T Mobility in obtaining dismissal of a copyright infringement claim, which alleged unauthorized use and distribution of copyrighted material via its wireless multimedia messaging service. Cahn was part of the team that successfully led representation of Sony Computer Entertainment America in a lawsuit against distributors of pirated copies of PS3 video games. Other clients include Pearson Education, Sony Pictures Entertainment, and Oracle. Lisa Pearson and Georges Nahitchevansky, who are based in New York, are also recommended.

Paul, Weiss, Rifkind, Wharton & Garrison LLP's copyright practice is staffed by lawyers that are 'very responsive and practical; they have an understanding of how businesses work, which is rare among law firms'. This New York-based practice is underpinned by the wider expertise of the firm's media and entertainment group as well as its strong trial experience and corporate client base. Lynn Bayard acts for music copyright holders, TV networks and various sports leagues in litigation. Bayard's experience includes the representation of music industry associations such as ASCAP in copyright royalty rate proceedings as well as acting for Bagdasarian Productions in a well-publicized copyright infringement case regarding the movie, Alvin and the Chipmunks: The Squeakquel. Jay Cohen, co-chair of the litigation department, has substantial experience acting for music industry clients such as Sony Music and The National Music Publishers' Association, and counsel Claudine Meredith-Goujon is 'extraordinary' for IP transactional matters. Former IP litigation co-chair Carey Ramos joined Quinn Emanuel Urquhart & Sullivan, LLP.

Winston & Strawn LLP's New York office managing partner Michael Elkin leads the firm's copyright litigation practice, which continues to represent new media and emerging technology clients in copyright infringement disputes. Elkin, Thomas Lane and San Francisco-based Jennifer Golinveaux continued to successfully defend Veoh Networks against copyright infringement claims brought by UMG Recordings, and recently represented Veoh at a Ninth Circuit hearing, which confirmed that its user-generated service was protected by the DMCA safe harbour provisions. Elkin and Lane also represented online company Myxer Technologies in settling a lawsuit brought by various music recording companies, including Arista Records, alleging copyright violation through allowing website users to create ringtones based on their copyrighted works. Alfred Fabricant has represented data research firm Arbitron in filing litigation against broadcasters and advertising agencies for unlicensed use of its data, including recently suing former client Magic Broadcasting for allegedly using its radio ratings reports unlawfully. The practice lost IP practice co-chair Andrew Bridges, who moved to Fenwick & West LLP in San Francisco. However, this loss was balanced by the recruitment of a number of former Howrey LLP attorneys, including Houston-based John Keville.

Covington & Burling LLP handles litigation, licensing and registration. Recent instructions include advising non-profit television network Public Broadcasting Service on copyright licensing matters, as well as representing it in proceedings before the Copyright Royalty Board. The group also acts for the American Council of Education on negotiations regarding royalties to be paid by higher education radio stations for the use of copyrighted musical works. Other clients include Samsung and Microsoft as well as publishers Penguin and McGraw-Hill. In San Francisco, Simon Frankel leads on copyright litigation and Evan Cox focuses on licensing and enforcement of digital media rights. Of counsel Ronald Dove in Washington DC acts for clients across sports, media and publishing industries.

Fish & Richardson P.C. advises on registration, enforcement and licensing matters but is most noted for its copyright litigation expertise. Copyright group co-chair Joel Leviton focuses on fair use and licensing matters. Both he and litigator Gregory Madera are representing Boston artist Jayme Gordon as plaintiff in a copyright lawsuit against DreamWorks Animation regarding the Kung Fu Panda movie sequel, alleging that the film copied ideas from his illustrated literary works. Leviton is also defending online retailer Threadless against copyright infringement claims brought by plaintiff Charles Schmidt, who alleges that a video recording he created of his cat playing a keyboard is being infringed by an apparel design labelled 'Three Keyboard Cat Moon' sold by Threadless.

Morrison & Foerster LLP's coast-spanning practice continued to handle notable copyright disputes for clients in the high-tech, online and software fields. This included Tenth Circuit affirmation of a lower court's decision in favor of the firm's client Novell in a longstanding and high-profile lawsuit brought by SCO regarding copyright ownership of the UNIX software system. IP co-chair and experienced trial lawyer Eric Acker led this matter with IP litigator Michael Jacobs, who is 'an outstanding lawyer: he is a strategic thinker, outstanding courtroom advocate, and a great team leader'. Jacobs also represented the defendant in Vernor v Autodesk, earning a favorable Ninth Circuit appeal ruling regarding the application of the first sale doctrine to computer software. James Hough, who heads the firm's New York litigation team, has handled a number of copyright infringement cases. The Los Angeles team includes Anthony Press, who led for the plaintiff in Konami Digital Entertainment v The Upper Deck Company, which involved copyright infringement claims regarding the Yu-Gi-Oh! trading card game.

O'Melveny & Myers LLP acts for media, entertainment and technology industry clients, handling disputes involving traditional rights owners as well as issues relating to online and new media forums. San Francisco-based David Eberhart focuses on representing technology companies in litigation. He successfully led in a Ninth Circuit appeal for Apple against Psystar Corporation, which affirmed a previous district court decision that Apple's license agreement did not constitute copyright misuse. Los Angeles-based Daniel Petrocelli is well known for representing major Hollywood industry names. He continued to act for Warner Brothers and DC Comics in litigation regarding copyright ownership and rights to the Superman character, including well-publicized cases against the heirs of the character's co-creators. Robert Schwartz continues to represent GDC Technology and certain other defendants in a dispute involving a copyright infringement claim regarding 3D movie glasses.

Proskauer Rose LLP's copyright practice shows 'the ability to work out solutions no matter how complex the issue'. The group focuses on technology, media and communications, and provides copyright advisory and transactional support but its greatest strength lies in litigation and appeals. Practice head William Hart, who is expert in copyright issues, co-led with trial lawyer Charles Sims in representing The Football Association Premier League and a number of other sports and music associations as plaintiffs in a case against YouTube regarding copyrighted material uploaded on the file-sharing website. The case reached a Second Circuit appeal during 2011. Sims also represented the plaintiff in Reed Elsevier v Muchnick, a long-running dispute regarding legislation that requires works to be registered prior to an infringement action being brought, which was remanded from the US Supreme Court to the Second Circuit. The practice also obtained dismissal of a copyright infringement claim brought against the New York Yankees regarding rights to the famous top hat logo design.

Quinn Emanuel Urquhart & Sullivan, LLP draws on its extensive trial expertise to handle some notable copyright disputes for new media and online technology companies. Trial and appellate attorney Robert Raskopf heads the copyright group and has represented file-sharing website Vimeo as a defendant against infringement claims brought by Capitol Records, EMI and other record companies. The case was stayed pending a Second Circuit decision in Viacom v YouTube. Other attorneys particularly experienced in copyright cases at trial and appellate levels include media and technology specialist Carey Ramos, who joined the firm from Paul, Weiss, Rifkind, Wharton & Garrison LLP, and Andrew Schapiro, who joined from Mayer Brown. Schapiro won a Ninth Circuit appeal for Google against magazine publisher Perfect 10, successfully defending against allegations of direct and secondary copyright infringement of the publisher's images. The practice also argued for Google and Twitter as amici in support of the defendant in Barclays Capital v TheFlyOnTheWall.com, a copyright dispute in which financial groups brought a 'hot news' misappropriation claim against the website for publishing equity research information before it was publicly available. The defendant was successful at a Second Circuit appeal.

Washington DC-based Wiley Rein LLP's lawyers 'are leaders in the music licensing space' and can 'provide a hard-to-find combination of technical knowledge and practical legal advice'. It maintains a strong focus on issues regarding digital technology and the internet, with experience representing both traditional copyright owners and new media and technology companies. Practice head Bruce Joseph is 'one of the premier copyright lawyers in the USA'. Joseph and Andrew McBride have previously represented Verizon Wireless and Ericsson in proceedings to determine license fees for performances of music works owned by ASCAP members. More recently, the team acted for T-Mobile in a multi-defendant copyright infringement lawsuit brought by Luvdarts, a company that creates multi-media messaging content. The plaintiff alleged that wireless mobile operators, such as AT&T and Verizon, were allowing the transmission of copyrighted materials without compensating the rightsholders. The case was dismissed at district court level but was recently taken to a Ninth Circuit appeal. David Weslow, who joined the firm from Sutherland Asbill & Brennan LLP in 2011, practices IP law relating to online and emerging technology.

Frankfurt Kurnit Klein & Selz is noted for its representation of publishing and entertainment industry clients such as Scholastic Inc and The Tribeca Film Festival in copyright litigation clearance, registration, and licensing. It remains best known for its experience in copyright infringement cases within the literary sector, having previously handled high-profile representations for authors such as JK Rowling. Key attorneys in the team include IP and commercial litigation group chair Edward Rosenthal and co-chair of the entertainment practice Richard Heller. Thomas Selz mainly handles transactional matters, Mary Sotis specializes in sports and entertainment copyright protection and enforcement, and Brian Murphy focuses on the advertising industry.

Greenberg Traurig LLP's Kenneth Steinthal is 'excellent' in copyright litigation, particularly in new media matters. He has defended a number of emerging technology and online companies against infringement claims brought by music copyright owners. Alongside the practice's capabilities in contentious matters, it also has a strong focus on transactional work, with Atlanta-based Bobby Rosenbloum handling copyright licensing and agreement issues as well as litigation for film and music industry copyright owners and digital media companies.

Hunton & Williams LLP handles the full range of copyright matters, including licensing, registration and disputes, with Stephen Demm handling litigation as well as advising on registration and clearance, while John Gary Maynard has handled copyright disputes for clients across advertising, retail and finance sectors.

Kenyon & Kenyon LLP's Edward Colbert is leading the defense of international restaurant chain Vapiano in a copyright infringement case involving a foreign defendant and international activities. The lawsuit was brought by Swedish photographer Ewa-Marie Rundquist, who alleges that the company used her works without permission as central décor in its restaurants and on its website. He previously handled a similar infringement case, successfully defending a leading wine company, Constellation Brands, against a lawsuit brought by American photographer Charles White. Jonathan Reichman acts for a number of entertainment sector clients, and has experience advising on the protection, enforcement and licensing of fictional characters and representing estates of literary authors and artists. James Rosini chairs the firm's trademark, copyright and design group, which handles both counseling and litigation of copyright issues.

Weil, Gotshal & Manges LLP's IP and media group head Bruce Rich is a prominent litigator in the music licensing sector, having been involved in reducing music performance rights fees for broadcasters, including online and wireless transmissions. Rich has represented music licensee DMX in litigation against music industry associations ASCAP and BMI regarding copyright rate proceedings, with the case against BMI reaching a Second Circuit appeal during 2011. Benjamin Marks was lead counsel to Barclays Capital, Merrill Lynch and Morgan Stanley in a copyright infringement claim against TheFlyOnTheWall.com regarding the publication of equity research information.

White & Case LLP's copyright team in New York continues to focus extensively on the music entertainment sector. Fred Koenigsberg, Christopher Glancy and newly promoted partner Stefan Mentzer represented the American Society of Composers, Authors and Publishers (ASCAP) in rate proceedings for license fees to be paid by online companies for performing musical works owned by ASCAP members. The Supreme Court recently denied an appeal brought by ASCAP to the Second Circuit. Opponents in the litigation included AOL, Yahoo! and RealNetworks. Koenigsberg has experience in advising on and litigating copyright issues, and his track record includes having acted for clients such as music artist Garth Brooks, BMG Publishing and Walt Disney Company.


Patent licensing and transactional

Index of tables

  1. Patent licensing and transactional
  2. Leading lawyers

Leading lawyers

    • Knox Bell - DLA Piper LLP
    • Michael Lennon - Kenyon & Kenyon LLP
    • Alfred Server - WilmerHale
    • Steven Singer - WilmerHale
    • Lee Tiedrich - Covington & Burling LLP

Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. continues to advise leaders in the technology world on a variety of licensing matters, including corporate-driven transactions and standalone complex joint ventures or licensing. This experienced team includes Brian Kacedon, Patrick O'Reilley and John Paul, all based in Washington DC. Kacedon, who is also an active litigator, has experience in drafting software licensing agreements; Paul, chair of the firm's IP management group, is active across licensing, litigation and prosecution matters; and O'Reilley is dedicated to transactions in all technological industries including biotechnology, telecommunications and pharmaceuticals. The group recently advised on HTC's acquisition of a $300m stake in S3 Graphics. It also performed IP due diligence for Rambus during its $350m acquisition of Cryptography Research, and provides ongoing IP advice to clients such as Abbott Laboratories, Accenture and Philips Electronics.

Intellectual property boutique Kenyon & Kenyon LLP has a leading practice, and excellent licensing capabilities. The group is well known for its ties to the automobile industry, where its client roster is impressive, and is also active within the high-tech space – particularly within consumer electronics. New York-based Michael Lennon, chair of the European practice, is hugely experienced and the key figure in the licensing team, wherein he acts for a number of leading brands. Lennon is also an experienced litigator, representing clients such as Audi, Daimler, Volkswagen and Aladdin Knowledge Systems. Other clients of the practice include AT&T, Olympus, Elpida, Robert Bosch, Mercedes-Benz, Sony and Toyota. Deborah Somerville and Charles Weiss – who focus on chemical, pharmaceuticals and biotechnology matters – are also recommended, as is George Badenoch, an expert in advising on IP aspects of M&A transactions.

Morrison & Foerster LLP's ‘outstanding' patent licensing practice adeptly caters to a large number of global clients, across the full spread of licensing transactions. This strong group fields three partners and two of counsel, and is based in New York and San Francisco. It is led by the hugely experienced Paul Jahn, and also includes William Schwartz, who is a ‘real expert on IP transactions and a trusted advisor. He understands complex issues'. Tessa Schwartz has acted on the IP aspects of acquisitions by Intel and ON Semiconductor. Work highlights for the team included representing EchoStar in its $500m settlement and cross-license with TiVo, following long-running litigation, and acting on a number of mandates for Yahoo!, including the sale of its social bookmarking service Delicious; and its acquisition of online advertising alliance 5to1. The group has also acted on a number of complex standalone licensing transactions, such as a landmark digital licensing deal and IP-heavy joint venture agreements for leading companies in the entertainment industry. Of counsel Rufus Pichler and Aaron Rubin are also recommended.

WilmerHale has an extremely active practice, most notably in pharmaceuticals and life sciences. In 2011, the team advised on a glut of mandates, from complex collaboration agreements to the settlement of litigation. Boston-based Steven Barrett and Belinda Juran co-chair the technology transactions and licensing practice. The duo recently represented Enobia Pharma during its acquisition by Alexio Pharmaceuticals, and Epizyme in a $296m small molecule therapeutics collaboration and licensing agreement. Steven Singer, co-chair of the life sciences group, has 30 years' experience in biotechnology, medical devices and pharmaceuticals. He recently advised Atlas Venture on the formation of Arteaus Therapeutics with Eli Lilly, and represented Aveo Pharmaceuticals on the development and commercialization of cancer drug tivozanib. Other key clients include Broadcom and Millennium Pharmaceuticals. Life sciences expert Alfred Server is also highly recommended.

Weil, Gotshal & Manges LLP has an established technology and IP transactions practice that undertakes the full range of mandates including acquisitions and R&D and licensing agreements. Clients range from start-ups to Fortune 500 companies and the five-partner group's industry expertise encompasses software, hardware, semiconductors, consumer products, energy, life sciences, and financial services. New York-based Michael Epstein and Jeffrey Osterman are both recommended; and Osterman recently advised Eli Lilly on the intellectual property aspects of its acquisition of ChemGen. Karen Ballack in Silicon Valley and Charan Sandhu are also core members of the team. The group has recently worked on a number of corporate transactions, including advising on the IP aspects of Fidelity National Financial's acquisition of the remaining stock of restaurant chain operator O'Charley's, and on Ceridian's acquisition of Dayforce. Key clients include Estée Lauder, General Motors, Getty Images, Microsoft, Panasonic, Procter & Gamble, and Samsung.

Baker Botts L.L.P.'s licensing capabilities span the gamut of transactions, including negotiations and collaborations on a worldwide scale. The team is headed by the experienced Barton Showalter, who is based in Dallas, and also includes Paul Ragusa in New York, whose personal practice is focused on high technology, and Dallas-based litigator Douglas Kubehl, whose expertises lie in electrical and computer engineering. It recently advised Columbia University on the licensing of its worldwide patent portfolio on various technologies, such as semiconductor device fabrication and audiovisual compression. The group also acted on the IP aspects of CA Technologies' $300m acquisition of Interactive TKO, a software company. It also undertakes a large amount of due diligence and strategic planning as IP counsel to clients such as Cisco Systems. Other clients include AT&T, Facebook and Halliburton.

Covington & Burling LLP's ‘excellent' technology transactions practice has ‘real strength in depth' and an impressive client base, and is a strong presence in the life sciences and information technology spaces. John Hurvitz heads the 11-partner group, and also co-chairs the firm's life sciences practice. The group also includes a several other experienced practitioners, such as Lee Tiedrich in Washington DC, who has ‘first-class drafting skills, an uncanny ability to anticipate client needs and is relentless in the pursuit of clients' interests'. Evan Cox in San Francisco also comes highly recommended, and recently advised Adobe Systems on outbound patent licenses in relation to open sourcing software code. Cox is also a key advisor to Microsoft, which he advised on the IP aspects of Microsoft's $8.5bn acquisition of Skype. Other key clients of the practice include Gilead Sciences, Samsung and Sanofi.

Davis Polk & Wardwell LLP's team has ‘excellent business judgment' and continues to go from strength to strength within the corporate IP space. The group is smaller than most rivals but nonetheless operates at a high level, providing comprehensive licensing transactional services. It is also able to leverage the firm's corporate expertise to attract instructions on IP aspects of litigation and M&A. Frank Azzopardi, head of the commercial IP group, is the lynchpin of the practice. He is ‘very knowledgeable about a wide range of IP issues but is also a commercial lawyer that can draft complex contracts'. Azzopardi leads on the majority of the team's mandates, and is supported by ‘an excellent core of associates'. Recent work highlights include advising NBCUniversal on its joint venture with Fox Broadcasting, Pearl Mobile DTV and ION Television to form Mobile Content Venture, which will pool various technologies to provide content to portable devices using broadcast spectrum. It also advised Comcast on the IP aspects of its acquisition of a controlling interest in NBCUniversal. Other clients include Cosan, Symantec, Baidu and Aetna.

Foley & Lardner LLP's robust licensing practice is particularly well known in the life sciences, electronics and software fields. Washington DC-based Stephen Maebius, a former biotechnology patent examiner, leads the practice and plays an active part in licensing mandates, often acting for leading pharmaceuticals companies. Boston-based John Lanza and Christopher McKenna are both active on the electronics side, and Kristel Schorr is a life sciences expert based in Washington DC. The ‘smart, articulate and responsive' Richard Kaufman has ‘excellent industry knowledge' relating to life sciences; predominantly he advises clients on technology transfers, collaborations and strategic partnerships. He recently represented Preglem in drug licensing negotiations, which involved a $17m up-front license fee, milestone payments and royalties. Other highlights for the practice include advising a leading pharmaceuticals company on the worldwide licensing of a biotechnology drug, involving milestone payments of around half a billion dollars. Other clients include Amgen, GE Healthcare and Takeda Pharmaceutical.

Pillsbury Winthrop Shaw Pittman LLP's ‘terrific' licensing group is ‘very knowledgeable in the patent space'. Sector strengths include pharmaceuticals, medical devices and technology, with work divided between IP support on M&A transactions, and standalone mandates such as the licensing of IP portfolios. Practice head Jack Barufka is recommended, as is James Gatto, whose recent work includes advising on patent divestitures and assisting clients with licensing strategies. Patrick Doody, who is based in McLean, VA, is ‘exemplary on many fronts, including knowledge of the field and depth of experience'; he recently advised on European drug licensing, and the IP aspects of certain acquisitions. The group recently performed due diligence and IP portfolio strategic analysis for Texas Pacific Group in relation to its investment in Alphabet Energy. Other clients include Apple, AOL and Activision Blizzard.

DLA Piper LLP has a strong presence in the life sciences industry, and routinely advises leading players on standalone complex licensing matters as well as on IP aspects of corporate-led mandates such as acquisitions. The licensing and technology team sits within an extensive intellectual property practice that can call on 450 lawyers globally across 24 countries, allowing the firm to assist its clients with representation worldwide. The US intellectual property group is chaired by John Allcock in San Diego, and notably also includes Chicago-based Vincent Sanchez, head of the technology sourcing and communications team. Recent instructions include advising leading IT and media industry companies on master service and software licensing agreements. Clients include Abbott Laboratories and Verizon Wireless.

Dechert LLP's 19-partner IP practice is expert in the life sciences, semiconductor and electronics areas, and has expansive geographical reach, with 22 offices across the US, Europe and Asia. Recent work for the team included advising on the implementation of a worldwide IP strategy of a pre-clinical development drug in order to locate a potential collaborator. The practice is co-led by Martin Black in Philadelphia and Ann Pease in Silicon Valley. Pease, who also chairs the patent group, and focuses on biotechnology, pharmaceuticals and life sciences broadly, whereas Black's primary expertise lies in financial services, electronics and pharmaceuticals. Licensing and transactional expert Joshua Rawson in New York is also recommended, and he advises on electronics, digital media and pharmaceuticals.

K&L Gates's technology licensing and transactions practice represents licensees and licensors, and has expertise in a wide range of industries, including chemistry, semiconductors, and computer hardware and software. Recent mandates include advising Amazon on over 50 IP licensing matters. Other clients include Sony and Archer Daniels Midland. The practice leaders are Robert Barrett and Michael Abernathy in Chicago, Susan Jackson in Charlotte and David McDonald in Seattle, and international support is provided by colleagues in Hong Kong, Berlin and London. All four of the practice leaders advise on a mix of litigation, strategic counseling and licensing matters, with a strong technical focus. Other recommended partners include Boston-based Michael Brodowski, a chemistry expert, and Thomas Turano, who is recommended for his work in the health sciences and electronics industries.

Kirkland & Ellis LLP is very active in patent licensing, and advises clients in the private equity, energy and utilities and pharmaceutical sectors. Work highlights include litigation settlement negotiations, and assisting a client with the development and commercialization of new branded generic drugs in emerging markets such as China and India. Russell Levine is a key member of the practice, and splits his time between patent licensing agreements and disputes over patent infringement and technology transfer. Neil Hirshman, Gregg Kirchhoefer and New York-based David MacDonald are also key figures. All lawyers are based in Chicago, except where noted otherwise.

Knobbe Martens Olson & Bear LLP advises on standalone licensing transactions, IP due diligence on deals, and litigation settlement agreements. Mechanical engineering experts William Shreve in Orange County and James Herkenhoff in San Diego are key members of the team. Both recently advised medical equipment manufacturer CR Bard on the IP aspects of a number of its corporate deals, including its $250m acquisition of Medivance. Former patent examiner Art Rose in Orange County is another key partner, and recently represented Journée Lighting in the licensing of its new LED light bulb to GE Lumination. The group also assisted in licensing negotiations between Sigris Research and bioMerieux following the settlement of litigation.

Orrick, Herrington & Sutcliffe LLP's technology transactions team sits within the corporate practice group, and is able to leverage off the firm's strong presence in this market. The team's expertise spans various industries including software, life sciences, and semiconductors, and its workload includes distribution, divestiture and co-branding. The group has acted for companies such as Fujitsu, UPEK, Brocade Communications, Logitech, eBay, ProMOS Technologies, Foundry Networks, Dow Corning and Varian Medical Systems. The IP practice is co-led by Neel Chatterjee, and Steven Routh in Washington DC, both of whom are focused on litigation, and other key partners include former IP chair and trade secrets expert Gary Weiss. Recommended for licensing matters are Stephanie Sharran and Daniel Yost.

Ropes & Gray LLP excels in corporate IP work, and represents leading companies in the pharmaceuticals and consumer products industries. The licensing group is part of the firm's 200-strong IP practice group, and is noted for its expertise in collaborative and joint venture agreements. Co-head of the IP practice Edward Black has a strong focus on media and technology and predominantly advises proprietary product companies, advertising agencies and media organizations. Black recently advised Oscar de la Renta on its strategic expansion via joint ventures and international licensing. Other mandates included advising American Express on its collaborative agreement with Concur Technologies to unite travel booking and automated expense reporting. Other licensing clients include AstraZeneca, Bristol-Myers Squibb and Travel Click.

Snell & Wilmer LLP has an experienced and busy technology transactions practice. Phoenix-based Chuck Hauff heads the practice, and has expertise in a wide variety of technologies, including mechanics, biotechnology and computer software. The team also includes Joseph Price in Orange County, who has a broad contentious and non-contentious IP practice.


Patent litigation: full coverage

Index of tables

  1. Patent litigation: full coverage
  2. Leading lawyers

Leading lawyers

    • Leora Ben-Ami - Kaye Scholer LLP
    • Henry Bunsow - Bunsow & Demory
    • Morgan Chu - Irell & Manella LLP
    • William Lee - WilmerHale
    • Charles Lipsey - Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P.
    • Matthew Powers - Tensegrity Law Group LLP
    • Charles Verhoeven - Quinn Emanuel Urquhart & Sullivan, LLP

Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. is ‘a Premier League firm, visibly better than most others. It displays superior IP expertise and a balanced fighting spirit'. The practice is particularly active in ITC and appellate proceedings, and handles disputes across a broad range of industries, with recent highlights in the pharmaceuticals and high-tech sectors. Life sciences expert Charles Lipsey recently acted for the plaintiff in Eli Lilly and Co v Wockhardt Ltd to successfully retain market exclusivity until 2013 for the blockbuster drug Cymbalta. Appellate practice head Michael Jakes represented Research Corporation Technologies in a favorable Federal Circuit hearing against Microsoft in the forum's first case dealing with patentable subject matter since the Bilski ruling. The practice went up against Microsoft again at the Federal Circuit, obtaining a successful reversal to find Microsoft did infringe Uniloc's patent for anti-piracy technology. Litigation head Doris Johnson Hines mainly handles federal district court and ITC proceedings. Frank DeCosta, who leads on electrical and computer technology cases, is ‘a top IP litigator and an excellent diplomat'. Steven Parks joined Paul Hastings LLP.

Fish & Richardson P.C.'s IP litigators are ‘very responsive and demonstrate a solid knowledge of IP law generally. They have a deep stable of talent and work hard to bill at an appropriate level'. The practice undertakes a high volume of cases, and acts for many leading names across a range of industry sectors. It was lead counsel to the plaintiff in Cephalon v Watson Pharmaceuticals Inc et al, achieving a Federal Circuit appeal win, which affirmed a lower court ruling of infringement and upheld the validity of Cephalon's patent for its drug, Fentora. That case was led by Juanita Brooks, who is ‘a fine litigator, with a great rapport with judges and devastatingly good on cross-examination'; Jonathan Singer, ‘a solid trial litigator and fine appellate lawyer. He has a sound legal mind and is always on point and concise'; and William Marsden, who is ‘an excellent resource in Wilmington courts particularly and is well organized, quick on all issues, and a reliable, value-added member of any litigation team'. Brooks and Singer are also representing Mayo Medical Ventures in a closely watched case against Prometheus regarding the patentability of a physician's thought process, which was argued before the US Supreme Court at the end of 2011. They also won a Hatch-Waxman case for Allergan against Sandoz regarding Combigan glaucoma treatment. Experienced trial lawyer Frank Scherkenbach and Howard Pollack, who is noted for his technical expertise in electronics, represented Power Integrations in a successful Federal Circuit appeal, affirmed that its patents were infringed by Fairchild Semiconductor. Douglas McCann is also recommended.

One of the top firms in IP litigation', Kirkland & Ellis LLP's ‘broad, cost-effective team provides excellent service. Its response time is outstanding, as is its technical and business knowledge'. This busy trial practice acts for clients including GlaxoSmithKline, Abbott Laboratories, Siemens, Cisco, IBM, Boston Scientific and Amgen. Russell Levine is ‘a first-class professional that presents himself and the firm in a down-to-earth manner that always keeps the best interests of the client first'. Levine led for BP Lubricants in a successful and important Federal Circuit appellate win against Thomas Simonian in which the court ruled that it is insufficient simply for the plaintiff to identify a falsely marked product but that the plaintiff had to show evidence of intent to deceive consumers. This decision led to a notable decline in new filings of patent false marking suits. Luke Dauchot won a $101m award for a Medtronic entity in an infringement case brought against NuVasive regarding medical devices used in spinal surgery. He also achieved a damages award for Alcatel-Lucent at appeal in a long-running dispute with Microsoft. Other recommended attorneys include ‘outstanding first chair litigation partner' Gregory Arovas and Mark Pals, who handles pharmaceutical and biotechnology cases. Robert Krupka retired, but the firm recruited Kenneth Adamo from Jones Day and Michael De Vries from Latham & Watkins LLP.

WilmerHale is well regarded in the field of patent litigation, and has earned some significant US Supreme Court decisions recently. In i4i v Microsoft, it successfully represented the plaintiff in an appeal challenging its $290m-plus damages award, with the court's decision against Microsoft affirming that patent validity challenges have to demonstrate convincing evidence. The practice also acted for Roche Molecular Systems in a long-running dispute with Stanford University, which concluded with the US Supreme Court affirming that the two parties share ownership of patents for HIV testing kits. Highly respected patent litigator William Lee and appellate lawyer Mark Fleming represented Intel in a federal court appeal against an inventor, which upheld the merits and costs verdict in the client's favor. Mark Selwyn in Silicon Valley co-chairs the IP litigation group, and recently represented Cisco at trial. The Washington DC team includes Paul Wolfson, who specializes in US Supreme Court and appellate litigation, and Amy Kreiger Wigmore, who is an expert in biotechnology cases and has also recently represented major pharmaceutical companies in defending patented products.

‘A “go-to" firm for sophisticated IP advice', Fitzpatrick, Cella, Harper & Scinto has ‘a well-organized team offering a high level of expertise'. It is known for its excellence in life sciences, with representative clients including Bristol-Myers Squibb, GlaxoSmithKline, Merck and Reckitt Benckiser. Some view Dominick Conde as ‘the best trial lawyer in the country for complex medical patent cases'. Recently he was lead counsel to sanofi-aventis in its dispute with Sun Pharmaceutical over branded drug Eloxatin, and achieved a favorable ruling to prevent the defendant from selling a generic version until a contract dispute is resolved. John Murnane led successful representation of the plaintiff in Amgen v Teva, achieving a verdict that barred the defendant from selling a generic version of Sensipar until at least 2016. The practice also acted for Canon in an ITC proceeding regarding printer cartridge patents. The team in that case included Nicholas Cannella and Michael Sandonato, who ‘always propose thoughtful and creative strategies and are reliable litigation counsels'. Additionally, Edward Vassallo is ‘absolutely outstanding – he is thoughtful, considered, courteous and impressively prepared', and Filko Prugo is ‘exceptionally bright and has a strong scientific background so can dig in deep with experts'. Litigation chair Scott Reedbrings a lot of sage advice and experience'.

Irell & Manella LLP is particularly strong in the hi-tech, semiconductors and electronics sectors. Litigation chair Morgan Chu is highly regarded, and recommended along with Andrei Iancu and Jonathan Steinberg, who have represented clients such as Tessera and St Jude Medical. The practice has been representing TiVo in long-running litigation with EchoStar, with the Federal Circuit issuing an en banc decision, which impacted post injunction contempt proceedings against modified products. It is also representing TiVo in other disputes, including cases against Microsoft and AT&T. Another ongoing representation is Skyhook Wireless in two parallel suits against Google regarding its location positioning technology for mobile devices and applications. In life sciences, the Los Angeles team of Gary Frischling and Jason Sheasby are representing Trustees of the University of Pennsylvania, which asserts that certain uses of Genentech's anti-cancer drug Herceptin infringe its patent.

Morrison & Foerster LLP is ‘excellent for complex patent litigation', and ‘provides well-thought advice, can simplify a case, and focus exclusively on core issues'. The team has been involved in a number of bet-the-company cases and is noted for its focus on high-tech and related industries, with representative clients including Cypress Semiconductor, Nikon and Mitsubishi. Michael Jacobs is a lead partner for the plaintiff in Oracle America v Google, alleging infringement of its Java software patents. Eric Acker was involved in achieving a favorable settlement for Kyocera after Fractus brought patent infringement allegations. In medical devices, the team acted for ICU Medical in a case obtaining a jury verdict of infringement against RyMed. Harold McElhinny has ‘excellent trial skills, getting involved in matters from the beginning and providing great advice'. Alexander Hadjis is recommended for ITC investigations and has particular expertise in semiconductor and related areas. He is representing Osram in ITC and federal district court proceedings against Samsung and LG regarding LED technology.

Quinn Emanuel Urquhart & Sullivan, LLPepitomizes the gold standard of litigation law firms' and is a growing force in major patent litigation cases, handling high-profile disputes at federal district, appeal and US Supreme Court levels. It also recently opened a Washington DC office specifically to handle ITC investigations and East Coast matters. IP co-chair Charles Verhoeven has been acting for Motorola, HTC and Samsung in the ‘smartphone wars', including in ITC proceedings, and IP litigation co-chair Edward DeFranco has recently represented IBM and Sony. Peter Armenio led for American Express in two cases: achieving summary judgment of non-infringement over its gift card product and winning a Markman hearing regarding its contactless expresspay products. In life sciences, Verhoeven and Victoria Maroulis represented Genentech against Sanofi-Aventis, gaining a writ of mandamus to transfer the district court case from Texas to California, where it won a non-infringement ruling, before reaching a Federal Circuit appeal in early 2012, where the lower court ruling was successfully upheld. Brian Cannon was on the brief for representation of the respondent in Board of Trustees of the Leland Stanford Junior University v Roche Molecular Systems et al, which had a favorable ruling at the US Supreme Court. IP practice co-chair Claude Stern is ‘extremely bright and experienced as well as widely known and respected'.

Sidley Austin LLP's ‘entire team works together like a well-oiled machine. They are the definition of grace under pressure'. Notable clients in the hi-tech and related industries include RIM, which it is representing in Mosaid Technologies v Dell Inc et al; and Microsoft, which it is representing in smartphone litigation against Motorola. The practice achieved a $95m-plus jury verdict for the plaintiff in SynQor v Artesyn Technologies et al, with a ruling that all the defendants infringed patents. In subsequent court proceedings, it also obtained a permanent injunction against the defendants as well as additional damages. In life sciences, David Pritikin, William Baumgartner and Todd Krause acted for Merck and Schering-Plough in Hatch-Waxman litigation against generic drugs companies. Other clients include Deutsche Bank, AT&T, Johnson & Johnson, and Pfizer. Jeffrey Olson and Thomas Beck are also recommended. Joseph Micallef, who joined from Arnold & Porter LLP, is an experienced ITC practitioner.

Weil, Gotshal & Manges LLP's patent litigation practice is now solely chaired by Jared Bobrow following the departure of David Ball and former co-chair Nicholas Groombridge to Paul, Weiss, Rifkind, Wharton & Garrison LLP. The group also lost Steven Cherensky and Matthew Powers, who was widely considered to be the firm's leading patent litigator, after they left to set up plaintiff-only firm, Tensegrity Law Group LLP. The firm has since hired Stephen Shahida, whose experience includes ITC proceedings, from McDermott Will & Emery LLP to bolster the Washington DC office. Experienced first-chair litigator Bobrow and Mark Davis were involved in successfully defending Apple at an ITC proceeding against complainant Elan Microelectronics, which sought to ban importation of Apple's wireless technology products. Other recommended attorneys are Brian Ferguson, who handles high-tech-related disputes, and Elizabeth Weiswasser, who focuses on life sciences.

Baker Botts L.L.P.puts together excellent teams for high-stakes, high-risk patent cases. It does top-notch work and delivers good results'. Barton Showalter leads the team, which primarily focuses on telecoms, electronics and software. Showalter is leading a Dallas-based team to represent Cisco in a multi-defendant case brought by SynQor. ‘Top-notch litigators' Samir Bhavsar, David Wille and Jonathan Rubenstein represented HTC in a multi-defendant case brought by Fractus regarding patents used in smartphone technology, and achieved a settlement. The practice is also defending AT&T in litigation against TiVo, which accuses its U-verse television service of infringing its DVR technology products. In life sciences, Michael Hawes and Houston-based colleagues acted for the plaintiffs in Enzo Biochem and Yale University v Applera Corp and Tropix, successfully obtaining a denial of the defendant's petition for a writ of certiorari. The firm recruited Mark Whitaker from Howrey LLP to chair its ITC practice in Washington DC, and he is representing Dell in a multi-respondent investigation regarding DRAM and NAND flash memory devices. Douglas Kubehl and Christopher Kennerly are ‘young IP litigation partners who are very smart, efficient, responsive, and easy to work with'.

Covington & Burling LLPprovides solid industry knowledge with good bench depth', and remains strongly focused on ITC proceedings. Sturgis Sobin is particularly recommended, and has recently acted for Knowles Electronics, Samsung and Hewlett-Packard. Additionally, Robert Haslam has been representing a client in smartphone patent litigation at federal district court level. George Pappas has substantial appellate experience and recently represented Microsoft in a multi-defendant case brought by MedioStream, for which the practice achieved a Federal Circuit motion to transfer the case from the Eastern District of Texas to Northern California. Pappas and Jeffrey Elikan are recommended for Hatch-Waxman litigation, and are currently representing Shire in litigation against Watson Pharmaceuticals regarding approval sought to market a generic version of Shire's Adderall XR product. Other life sciences clients include Nycomed and Merck. Alan Blankenheimer and Christopher Sipes are also recommended.

Gibson Dunn draws on its extensive trial and appellate litigation expertise to act for a number of leading names such as Amazon, Novo Nordisk and Pfizer in high-value, high-stakes patent disputes. It is also counsel to Apple and Sharp in ITC investigations. Wayne Barsky's broad practice includes pharmaceuticals and medical devices, and he was recently lead counsel to various defendants in the online space, including Zynga, Atari and Turner Digital, in patent infringement cases brought by patent holding company Walker Digital. Jeffrey Thomas successfully represented Allergan in two recent disputes: he obtained a reversal at an appeal against Athena Cosmetics and won a Hatch-Waxman trial against Barr, which had sought approval to make a generic version of Allergan's glaucoma treatment drug Lumigan. Josh Krevitt has represented leading technology names such as T-Mobile, Hewlett-Packard and Cablevision. He recently led with Mark Lyon to win a non-infringement verdict for defendants Red Hat and Novell at a district trial against IPI, and is currently representing the defendants in Softview v Apple and AT&T.

Jones Day has substantial litigation experience in the life sciences as well as high-tech sectors, acting for clients such as Abbott Laboratories, Celgene, Kyocera and IBM. Greg Castanias successfully argued for Myriad Genetics on appeal against the Association for Molecular Pathology, with the court affirming that isolated human DNA molecules are patentable and validly patented. John Normile obtained favorable summary judgment for Fenwal in litigation brought by Haemonetics Corporation, which alleged infringement of a redesigned medical device. Blaney Harper led the defense for Vizio in an ITC investigation filed by LG Electronics, which was subsequently settled. Brian Poissant and Anthony Insogna lead the team, and are also recommended. The practice hired a number of former Howrey LLP attorneys to its California team, including former practice co-chair William Rooklidge. It also hired Patrick Michael from Winston & Strawn LLP and opened a Boston office during 2011. These moves helped to balance the losses of Kenneth Adamo to Kirkland & Ellis LLP, Gregory Porter to Andrews Kurth LLP, and Mark Campagna, who joined Motorola Mobility.

Kenyon & Kenyon LLP's highly experienced team has ‘a lot of expertise and knowledge about how to best serve clients' needs'. It handles cases across a broad range of industries but is highly recommended for pharmaceuticals litigation. Steven Lee, co-chair of the chemical/life sciences group, and trial lawyer Elizabeth Holland form ‘an exceptional team that understands the full picture and business pressures. They are very good at narrowing and prioritising the issues at hand'. The pair successfully represented Teva at appeal, gaining exclusive rights to sell generic versions of Eli Lilly's Gemzar cancer drug. Lee is also acting for Teva in litigation regarding its biggest-selling product, Copaxone. ‘First-rate trial lawyer' Michael Lennon ‘knows the patent law and how to argue and win cases, even in complex situations with multiple clients world-wide'. Lennon and Mark Hannemann represented Robert Bosch in achieving a reversal to gain a permanent injunction against Pylon Manufacturing, in a precedent-setting appeal decision on obtaining an injunction after proving infringement and validity. Richard DeLucia is co-counsel to Barnes & Noble in the e-reader dispute against Microsoft.

IP firm Knobbe Martens Olson & Bear LLP is a strong choice for complex patent disputes and has broad industry capabilities. Litigator Joseph Re has wide-ranging experience in acting for plaintiffs and defendants at trial and appellate level. He successfully represented medical devices manufacturer Applied Medical Resources against patent infringement claims brought by Tyco Healthcare, obtaining summary judgment of invalidity for two asserted patents and a ruling of non-infringement for the remaining two asserted patents at trial. Re was also part of the team that represented Typhoon Touch Technologies at a Federal Circuit hearing against Dell regarding touchscreen device patents. The practice also obtained a reversal of non-infringement and invalidity on appeal for The Laryngeal Mask Company. Craig Summers is experienced at trial and appellate level and is ‘very professional and diplomatic. He understands the balance between the practical side of doing business against the strength or weaknesses of a case'. Michelle Armond focuses on electronics, medical devices and computer software sectors and is ‘very professional and down-to-earth. She is thorough in providing information in a style and manner that is consistent with corporate culture'.

Paul Hastings LLPexhibits a rare combination of technical and legal understanding', and is recommended for bet-the-company patent litigation. It remains best known for its work in the life sciences, although RIM is a new client acquisition and it is also handling various disputes for a major consumer electronics company. For pharmaceuticals, both Bruce Wexler and Joseph O'Malley have ‘superior cross-examination techniques and formulate winning strategies'. They were involved in Amgen's successful Hatch-Waxman win against Teva regarding Sensipar. Gerald Flattmann led representation of Galderma, which successfully brought a patent infringement case against Mylan Pharmaceuticals, finding that the defendant's generic version violated the client's patent for the acne drug Oracea. Allan Soobert has ‘complete command of the law and a case as well as excellent judgment and instincts'. Both he and IP co-chair Jeff Randall are defending Barclays Bank in a case regarding patentability of methods for trading securities. Atlanta-based Steven Park, who ‘has the ability to take complicated technical material and simplify them into understandable, persuasive arguments', joined from Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., and trial lawyer Robin McGrath was recruited from Alston & Bird LLP.

Cravath, Swaine & Moore LLP's excellent generalist trial lawyers handle high-stakes patent litigation as part of their brief, with key clients including Novartis, Medinol, Time Warner, Xerox, and EI du Pont de Nemours & Co. Richard Stark is ‘a very good general patent litigator. He has an easy courtroom demeanor, which plays favorably to judges'. He co-led with the experienced Evan Chesler and David Greenwald in representing plaintiffs Bristol-Myers Squibb and sanofi-aventis before a Federal Circuit hearing, which affirmed a lower court's $442m damages award against Apotex for patent infringement. Although Greenwald mainly focuses on pharmaceuticals and biotechnology, he is also working with Keith Hummel to defend Qualcomm against patent infringement allegations brought by Parkervision regarding patents for radio frequency technology.

Fulbright & Jaworski LLP's Texas and New York practitioners provide ‘high-quality service, good business acumen and industry knowledge'. Marc Delflache has experience litigating across a wide range of sectors, and has been representing a major semiconductor manufacturer in multi-defendant litigation. Richard Zembek has been acting for leading names in the high-tech and electronics sectors in patent infringement cases. James Repass represented YRC Worldwide in a multi-defendant case regarding infringement of vehicle-tracking technology. Charles Walker has an extensive trial record, and Michael Barrett also has experience across an array of technologies, including telecoms, life sciences and semiconductors.

Kaye Scholer LLP has deep trial and appellate expertise, and acts for a number of Fortune 500 names. It won an important trial for Pfizer regarding its Viagra product, preventing Teva from manufacturing a generic version and retaining market exclusivity until 2019. The case was led by Aaron Stiefel, who combines general litigation experience and technical expertise in complex pharmaceuticals and biotechnology patent issues, and Daniel DiNapoli, who is experienced in acting against generic drug companies in Hatch-Waxman litigation. A favourable non-infringement ruling was obtained for defendant Pier 1 Imports, a retailer accused of infringing patent holding company Alexsam's gift card technology patents. Practice co-chair Alan Fisch was lead counsel for the defense and is a highly experienced first-chair litigator. High-tech specialist William Tanenbaum and experienced trial and appellate attorney Steven Glassman led for CLS Bank in an important post-Bilski ruling, obtaining summary judgment against patent infringement claims brought by Alice Corporation regarding business methods and systems used for foreign exchange transactions.

Latham & Watkins LLP provides broad litigation and technical expertise, and its clients notably include Sony, Vizio, Honeywell and General Motors. The practice's resources were deepened with the hire of six IP litigators from Wilson Sonsini Goodrich & Rosati to bolster its California offices, including Julie Holloway and Ron Shulman, who are experienced in ITC proceedings. They successfully defended AU Optronics against claims brought by LG Electronics over LCD technology patents in a federal district court case, and are also representing the client in ITC investigations against Samsung. The practice is counsel to Prometheus Laboratories in a benchmark US Supreme Court appeal regarding the patentability of medical and diagnostic processes. In the Washington DC office, Bert Reiser focuses on Section 337 disputes, and Lawrence Gotts and Maximilian Grant are experienced first-chair litigators. Los Angeles-based Bob Steinberg handles high-tech cases.

Consistently outstanding', McDermott Will & Emery LLP is a go-to firm for patent litigation nationally, and it handles a high volume of cases. Recent client wins including Spansion, Fairchild Semiconductors, Panasonic and Novartis. In California, ‘formidable litigator and strategist' Yar Chaikovsky achieved settlements for Rovi, Broadcom, Motorola and Huawei, while Terrence McMahon settled for Spansion against Samsung. Eric Hagen is ‘a patent litigator who gets results. He has superb judgment and helps clients navigate highly complicated and novel legal issues'. William Gaede and Anthony de Alcuaz are also recommended. Washington DC-based Joel Freed has ‘tremendous breadth and depth of experience' for trial, appellate and Section 337 proceedings. Sarah Chapin Columbia in Boston is representing Siemens in a patent dispute brought by Sky Technologies and obtained a preliminary injunction for plaintiff Sandoz in Momenta Pharmaceuticals v Amphastar. Other clients include Shire and Mylan.

McKool Smith PC provides ‘exceptional trial attorneys, great results and extremely responsive, thoroughly professional service'. Its clients include American Airlines, WiLAN, MIT, University of California, Halliburton and BTG International. Noted for its successes in representing plaintiffs against leading high-tech companies, the practice obtained a $345m patent infringement award for Versata Software against SAP. Other clients represented in disputes against multiple defendants include Eolas Technologies, Ericsson and Gemalto, while it also filed an ITC investigation on behalf of Openwave Systems against Apple and RIM. It continued advising i4i in closely watched litigation against Microsoft, which reached the US Supreme Court in 2011, and is acting for the defendant in Wyeth v Medtronic. Theodore Stevenson, Samuel Baxter, Bradley Caldwell and founding partner Mike McKool are recommended. In 2011, the firm merged with Los Angeles-based litigation firm Hennigan Dorman LLP, thereby adding several IP specialists including Alan Block and Lawrence Hadley. The firm also hired former ITC investigative attorney Benjamin Levi to handle Section 337 disputes in Washington DC.

Orrick, Herrington & Sutcliffe LLP's IP group, led by Gary Weiss, has acted for clients such as Intel, Sony Ericsson and Apple. Steven Routh has extensive experience as a first-chair litigator at federal court level and before the ITC. He led representation of Fujifilm in successfully defending against patent infringement claims brought by St Clair, with an appeal finding non-infringement and the parties subsequently settling remaining issues. For ITC proceedings, Neel Chatterjee is ‘very committed and focused on cases. He does not delegate away the details. He is very creative in thinking through claims and defenses'.

Cadwalader, Wickersham & Taft LLP's ‘highly competent' IP team is led by Christopher Hughes, an experienced trial and ITC attorney who has represented clients such as and AT&T, IBM and Medinol. John Moehringer and special counsel Robert Pollaro focus on cases relating to computer software, electronics and telecoms. Tony Pezzano has handled ITC and federal district court proceedings, and Bartholomew Verdirame has expertise in chemicals, pharmaceuticals and engineering. The practice's recent defense-side instructions include ParkerVision v Qualcomm and the multi-defendant suit Ganas LLC v IBM et al. It is also lead counsel to Merck in two Hatch-Waxman cases regarding its Propecia patent.

DLA Piper LLP's greatest strength lies in the high-tech industries, where its core clients include Toshiba, Samsung and Siemens. It has also been active in the life sciences field, including representing Affymax in long-running litigation against Johnson & Johnson and Ortho-McNeil. IP group chair John Allcock has extensive trial and appellate experience, and recently won a $16m damages award for Abbott Laboratories against generic drug manufacturer Glenmark Pharmaceuticals, following a dispute regarding its blood pressure treatment, Tarka. Allcock and Sean Cunningham are co-lead counsels to Motorola and General Instrument in asserting patent infringement claims against TiVo regarding digital video recorder technology. Cunningham ‘brings logic, practical advice, and in depth-analysis. He cares about getting the best result for clients and clearly knows how to make a good argument in front of any audience'. Richard de Bodo co-chairs the patent litigation practice and is lead trial counsel to APP Pharmaceuticals in Hatch-Waxman litigation against numerous generic competitors regarding its anaesthetic drug Naropin, and also recently represented Sharp in district court cases. Patent litigator John Guaragna provides ‘outstanding service and results'.

Although a smaller practice than some others', Keker & Van Nest, L.L.P. is ‘on the shortlist of go-to firms for high-stakes patent litigation', especially for leading names in the hi-tech and related industries. Recent examples include leading for HTC in its smartphone technology disputes with Apple before the ITC and defending Google in a lawsuit brought by Oracle alleging infringement of its Java software patents. ‘Excellent trial lawyer' Robert Van Nest is leading both cases. David Silbert is acting for Comcast in a number of patent disputes and recently achieved a win for Twitter Inc, defending against a patent infringement and associated $40m damages claim brought by VS Technologies.

O'Melveny & Myers LLP has ‘an impressive depth of technical knowledge', predominately in the high-tech, electronics, semiconductors and related industries. Clients include Apple, Google, Hynix Semiconductor, Viacom and Novartis Vaccines and Diagnostics. George Riley led representation of Samsung Electro-Mechanics as respondent to an ITC investigation filed by Murata Manufacturing concerning alleged violation of electronic device patents, with the forum issuing a final determination in Samsung's favor. Darin Snyder leads the team, which includes Mark Miller, who has ‘extensive experience in the semiconductor industry, and a keen ability to understand the unique relationship between technology and law in IP litigation'. Brett Williamson is ‘a skilled and very practical patent litigator', and Eric Namrow is the key attorney for ITC proceedings. Stephen Akerley joined Dechert LLP.

Ropes & Gray LLP has a broad client base, including major names in high-tech, telecoms, pharmaceutical and medical devices industries. Leading attorneys include experienced trial counsel Bradford Badke, electronics and semiconductors expert Jesse Jenner, and ITC specialist Stephen Rosenman. The group is representing Motorola in district court and ITC proceedings against Microsoft, and is acting for Genzyme in a number of patent infringement claims against companies such as Anika Therapeutics and Seikagaku Corporation. Other notable representations include LG Electronics against Whirlpool and appearing on the brief for defendant Nova Biomedical in patent infringement claims brought by Roche Diagnostics. Other clients include Pfizer, Astra Zeneca and Google.

Simpson Thacher & Bartlett LLP's IP litigation team is led by experienced trial lawyer Henry Gutman and includes Jeffrey Ostrow and of counsel George Newcombe, who both act for Silicon Valley companies. The team achieved settlements for CSR, which had been engaged in long-running patent litigation with Broadcom, and for Intel in a patent licensing dispute with NVIDIA. Gutman represented Daiichi Sankyo at an appeal hearing, which affirmed a patent extension for its Levaquin product and an injunction preventing Lupin Pharmaceuticals from manufacturing a generic version. The practice also acted for the client in another successful appeal, which affirmed that its Benicar patent was valid and infringed by Mylan Pharmaceuticals. Other clients include Cisco Systems, Human Genome Sciences and Apple.

Winston & Strawn LLP's excellent trial record has helped to feed it a diet of high-stakes patent cases relating to pharmaceuticals, telecoms and electronics. Practice head James Hurst achieved wins for several generic drugs manufacturers, including leading for Sun Pharmaceutical Industries in successfully asserting the invalidity of Eli Lilly & Co's Gemzar drug for double patenting at a Federal Circuit hearing. Hurst also successfully acted for the defense in Novo Nordisk v Caraco, a case that then reached the US Supreme Court in late 2011. Other clients include Dell and Verizon. The firm hired numerous former Howrey LLP attorneys, the majority of whom joined the firm's new Houston office, among them Stephen Cagle, while Robert Ruyak and Vivian Kuo joined the Washington DC team. In New York, Alfred Fabricant and Lawrence Drucker joined from Dickstein Shapiro.

Cooley LLP's patent litigators are ‘professional and strategic in the courtroom'. This ‘solid firm' continues to develop a strong reputation in IP litigation, and is increasingly representing major players in high-end disputes. Both Stephen Neal and head of litigation Michael Rhodes are ‘skilled trial lawyers, who are very good at assessing strengths and weaknesses in cases and positions'. They represented NVIDIA in a dispute with Intel, which was settled with a cross-licensing deal. Rhodes also represented Facebook as defendant in a patent infringement case brought by Leader Technologies, and won the verdict at trial in 2011; an appeal is ongoing. Jim Brogan and IP litigation co-chair Thomas Friel are ‘bright, highly experienced and responsive'. They successfully represented technology licensing company Acqis as plaintiff in asserting patent infringement claims against IBM in the Eastern District of Texas. The practice achieved another win at the same venue for defendant Vistaprint. Stephen Smith, formerly an investigative attorney at the ITC, joined the firm to handle Section 337 litigation.

Davis Polk & Wardwell LLP focuses on technologies such as medical devices, biotechnology, digital and other high-tech fields. Practice head Matthew Lehr has strong trial and appellate experience and both he and Anthony Fenwick lead on patent disputes for clients such as Callidus Software, Comcast and Playtex. The team achieved an infringement verdict and $45.8m in damages for VNUS Medical against multiple defendants. The group also defended Yahoo! against patent infringement claims brought by Xerox regarding patents related to its internet advertising services, with two asserted patents dismissed with prejudice during 2011.

Leydig, Voit & Mayer Ltd. is ‘an excellent firm, with some extremely experienced and knowledgeable attorneys'. It is particularly known for representing generic drug manufacturers but has also been expanding its experience in electronics and high-tech fields. Key clients include Teva, Lupin, Fresenius, Agfa-Gevaert and Human Genome Sciences. Robert Green has ‘an excellent command and knowledge of all areas of law related to the pharmaceutical industry. His advice is always well considered and holistic'. For electronics and computer technology, Steven Petersen and John Kozak are ‘aggressive and very capable patent litigators for high-stakes cases'.

Mayer Brown has ‘a solid team, good bench strength and provides practical legal advice', drawing upon its deep experience in trial, appellate and Supreme Court litigation to handle patent disputes across a broad range of technical sectors. Highlights included representing GlaxoSmithKline (GSK), Glaxo Group and Lonza Biologics in numerous patent infringement lawsuits regarding GSK's Arzerra and Benylsta products. It also represented Acushnet in numerous lawsuits regarding patents asserted against the company’s Pro V1 golf ball. Alan Grimaldi, former IP co-chair at Howrey LLP, joined the firm along with a number of other patent litigators as co-leader of the global IP group and now co-leads the US team alongside John Mancini. Brian Nolan is also recommended.

Paul, Weiss, Rifkind, Wharton & Garrison LLP combines strong trial experience with expertise across a broad range of industries. Kenneth Gallo and IP litigation co-chair John Nathan are counsel to Genentech in a number of cases, including litigation brought by GlaxoSmithKline claiming that its Cabilly II patent is invalid. Nathan and Catherine Nyarady recently defended Edwards Lifesciences in an appeal brought by Medtronic over its $74m patent dispute win. The firm hired Nicholas Groombridge, who is particularly experienced in pharma and biotech matters, and David Ball, who handles litigation in the semiconductor and related industries, from Weil, Gotshal & Manges LLP. They brought over clients such as Life Technologies, Garmin and Biogen.

Pillsbury Winthrop Shaw Pittman LLP's practice chair Jack Barufka successfully represented plaintiff Stanley Black & Decker in false patent marking cases. Both he and Bryan Collins, whose focus includes the electromechanical and automotive industries, successfully defended the client in a Federal Circuit appeal against Zircon, with the court affirming an earlier decision of non-infringement. James Gatto handles high-tech and internet technology disputes, and Adam Hess' litigation experience includes ITC proceedings. Other clients include Clearwive, AOL, Intel and Medtronic. The team hired trial lawyer Duane Mathiowetz and appellate lawyer William West from Howrey LLP.

White & Case LLP is a key choice for ‘important and potentially challenging patent litigation matters', particularly in the fields of high-tech and electronics. Kevin McGann is ‘a hands-on, experienced patent litigator', who has been representing Google and YouTube in a number of multi-defendant cases. These include obtaining favorable construction claim rulings in Wireless Ink v Facebook Inc et al; a case brought by Walker Digital remains ongoing. Jack Lever is representing Panasonic in various ITC and federal district court proceedings against Freescale Semiconductors. Additionally, Dimitrios Drivas achieved a trial win for Pfizer in longstanding litigation against Teva regarding Pfizer's billion-dollar drug, Detrol.


Patent litigation: International Trade Commission

Index of tables

  1. Patent litigation: International Trade Commission
  2. Leading lawyers

Leading lawyers

As an international trade law specialist, Adduci, Mastriani & Schaumberg continues to be involved in a high volume of patent litigation before the ITC and remains a top choice as co-counsel for Section 337 investigations. Highly experienced managing partner James Adduci heads the team, and has had a number of successful representations of manufacturers of computer printers recently. These include having acted for Lexmark International to obtain a US ban on 24 companies selling certain replacement laser toner cartridges; and winning a ruling of no violation in favor of Oki Data in a patent infringement investigation brought by Ricoh. Louis Mastriani was involved in a successful decision for Garmin as respondent to an allegation of infringement brought by Pioneer regarding GPS navigation patents, in a significant ITC ruling which impacts non-practicing entities that use the forum for litigation. Tom Schaumberg has strong litigation and counseling experience, and successfully represented Analog Devices in gaining an exclusion order against Knowles Electronics for infringing its MEMS microphone devices and products. The practice has also been involved in ITC investigations for 3M Company, IBM, Apple, RIM, Honeywell, Rolls-Royce and General Electric.

Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P.'s practice is well reputed for its expertise acting for a broad range of industries. Group co-heads Smith Brittingham and Christine Lehman are former ITC senior investigative attorneys, and give the firm strong Section 337 capabilities. Brittingham and Patrick Coyne have extensive trial and appellate experience, and recently represented United Technologies Corporation in a claim against Rolls-Royce for infringement of a patent covering turbofan aircraft blades; the case was subsequently settled. Lehman teamed up with head of litigation Doris Johnson Hines to lead for Rambus in its complaint against 33 respondents (including Broadcom, NVIDIA, Asustek and Garmin) asserting memory controller patents against numerous technologies and products of these companies. Trial counsels John Alison and Thomas Jarvis have been acting for complainants such as HTC Corporation and S3 Graphics in numerous investigations against Apple.

Covington & Burling LLP's ‘attorneys really help guide clients through the process and provide industry knowledge and spot-on advice in high-profile cases'. The team is led by Sturgis Sobin, who has extensive Section 337 trial experience, and Silicon Valley-based, Stanley Young is ‘extremely responsive and articulate. He has great insight into understanding a company, its culture, and needs, and works with clients to develop strategies that have proven successful'. Robert Haslam is ‘an excellent trial lawyer, who demonstrates outstanding performance in the court and good overall strategy'. The practice is representing technology companies Hewlett-Packard and Huawei Technologies in multi-respondent investigations regarding infringement of patents for wireless communications. It is also acting for Samsung in investigations against OSRAM regarding LED technology. Elsewhere, it has been representing Merck and major pharmacy chains against a patent infringement claim filed by a non-practicing entity regarding Merck's NuvaRing product. Maureen Browne is among the other IP litigation attorneys with a particular focus on Section 337 investigations. Richard Rainer left to accept an in-house role at General Electric.

Fish & Richardson P.C.'s busy ITC patent litigation practice is well known for handling a number of high-profile investigations relating to the high-tech and semiconductor industries. Ruffin Cordell remains a prominent figure, and Michael McKeon has extensive trial experience and focuses mainly on litigating for high-tech clients. The pair represented Samsung, Apple, Nokia, PNY Technologies and Transcend Information as respondents in an investigation filed by Spansion regarding memory chip technology patents. The case was settled with a cross-licensing agreement between the companies. Richard Sterba was a lead attorney for complainant LG Electronics in filing patent infringement allegations regarding digital televisions against Sony, which was also subsequently settled. Ahmed Davis was part of a team representing Hewlett-Packard in an investigation against a number of companies, including MicroJet and APM, regarding infringement of inkjet printer cartridge patents. The case saw several settlements and the ITC ruling in the complainant's favor with an exclusion order obtained.

Boutique ITC practice Foster, Murphy, Altman & Nickel PC was established in 2011 by former attorneys of Miller & Chevalier Chartered, with the team additionally hiring Susan Koegel as counsel from Steptoe & Johnson LLP. The practice typically co-counsels in Section 337 investigations, and David Nickel acted for Furuno in investigations against Honeywell regarding patents for navigation devices. Nickel and James Altman represented BDT as a respondent alongside IBM and Dell in a patent infringement filing made by Overland Storage. Altman, David Foster and Barbara Murphy represented respondent MStar in a complaint filed by Thomson Licensing regarding LCD technology, with the ITC issuing a ruling of no violation in the client's favor.

Sidley Austin LLP has substantial experience in litigating patent disputes before the ITC, and the firm represents a number of well-known names in the high-tech and electronics sectors. The practice has been kept busy representing core clients Microsoft and Research in Motion (RIM), particularly in the smartphone dispute between Microsoft and Motorola. The practice reached settlements for RIM in disputes with Motorola and Spansion. Brian Nester in Washington DC has extensive trial experience, as do Richard Cederoth, Douglas Lewis and national IP chair David Pritikin, who are all based in Chicago. The firm continued to build its team of specialists, hiring Joseph Micallef from Arnold & Porter LLP, who is experienced in handling disputes regarding electronics and computer technology.

Kirkland & Ellis LLP's extensive trial litigation practice sees many blue-chip clients of that practice turn to the firm to handle ITC investigations. Gregory Arovas and Edward Donovan have been part of the team involved in the smartphone disputes and also successfully acted for Samsung in its semiconductor patent dispute with Spansion. Steven Cherny, Eric Lamison and De Vries are acting for respondent Cisco in a complaint filed by patent licensing company Mosaid. The firm recently hired Chicago-based Kenneth Adamo from Jones Day and Los Angeles-based Michael De Vries from Latham & Watkins LLP. The lateral hires have previously represented clients such as IBM, Oracle and Broadcom.

McDermott Will & Emery LLP's bi-coastal practice handles significant patent litigation before the ITC, with attorneys across Washington DC and Silicon Valley offices often teaming up to represent start-ups and major names in the high-tech sector. Trial lawyer Terrence McMahon and patent litigator Joel Freed represented Spansion as complainant in bet-the-company litigation against Samsung, which was settled with a multimillion-dollar cross-licensing deal. A similar result was achieved for Rovi, when the practice filed for investigations on behalf of the client against Toshiba, concerning patents for television and digital video technology. IP litigators Yar Chaikovsky and Blair Jacobs led on the dispute and both focus on sectors such as semiconductors and internet technology. Paul Devinsky represented Funai Electric Company as respondent to the semiconductor chip patent infringement allegation brought by Freescale, with the ITC ruling that no violation was found. Other clients include Qualcomm, Hitachi, Prism Technologies and Nortel Networks.

Morrison & Foerster LLP fields a team with extensive trial experience and has a keen focus on areas such as semiconductors and high technology. In Washington DC, Brian Busey mainly focuses on Section 337 disputes, and IP co-chair Alexander Hadjis has clients including Hitachi, Spansion and Meru Networks. The pair are representing complainant Osram against Samsung and LG regarding LED technology as well as counter suits made by Samsung before the ITC. Hadjis is also litigating for Cypress Semiconductor in an investigation against GSI technology and other respondents (including Nokia, Motorola and Alcatel-Lucent) in a patent case regarding SRAM semiconductor technology.

Quinn Emanuel Urquhart & Sullivan, LLP opened an office in Washington DC in September 2011 specifically to handle ITC investigations and other East Coast-based IP matters. The firm hired Paul Brinkman as practice head as well as Alan Whitehurst and Alex Lasher from Alston & Bird LLP to provide specialist Section 337 capabilities in the new office. Brinkman is representing Ford and Nissan in an investigation brought by Beacon Navigation, which is alleging infringement of GPS navigation system patents against virtually every major automotive manufacturer. He is also counsel to Barnes & Noble in a complaint brought by Microsoft regarding the Nook e-reader. Charles Verhoeven, Edward DeFranco and David Nelson are acting for Motorola, Samsung and HTC in the smartphone disputes. The practice settled for Sony in litigation with LG over digital TV and Blu-Ray technology and achieved a favorable outcome for Cablevision as respondent to a complaint by Verizon regarding TV set-top boxes, with the ITC overturning a previous ruling to conclude that there was no violation.

WilmerHale was recently counsel in an ITC investigation regarding smartphone patent infringement allegations. The highly reputed William Lee and James Quarles have previously acted for Broadcom in its dispute with Qualcomm. IP litigation co-chair Mark Selwyn heads the Silicon Valley office and has experience in handling disputes in sectors including electronics, telecoms and digital technology. Other attorneys with experience in Section 337 investigations include Michael Summersgill and James Dowd, and Washington DC-based Nina Tallon has made numerous ITC appearances.

DLA Piper LLP's California team acts for a broad range of leading names across technology sectors such as semiconductors, internet technology and consumer electronics. Patent litigation practice co-chair Mark Fowler is part of a Silicon Valley-based team that is leading in two ITC investigations for digital technology company Zoran Corporation as a respondent to allegations made by Freescale regarding semiconductor chip patents. Los Angeles-based Richard de Bodo co-chairs the practice and has extensive trial experience. He is involved in the Freescale litigation, representing Sanyo Electric Company and its US subsidiaries. San Diego-based patent litigator Sean Cunningham has litigated before the ITC on behalf of various large technology companies, and is currently representing Overland Storage in litigation against Germany-based BDT.

Latham & Watkins LLP has ‘broad and deep litigation expertise, and lawyers that are outstanding at every level'. Bert Reiser's ‘considered and pragmatic approach is especially effective in a highly specialized forum like the ITC'. Reiser has been involved in numerous Section 337 proceedings, and is representing Vizio as respondent to a patent infringement complaint brought by Sharp regarding LCD technology. The IP practice hired a team of patent litigators from Wilson Sonsini Goodrich & Rosati to bolster its West Coast practice, including Ron Shulman and Julie Holloway, who are both experienced in ITC litigation. Shulman ‘cuts to the chase and focuses on what matters, which is effective for both judges and clients. He has terrific judgment, and provides real advice: well considered and decisive'. Shulman is representing InterDigital in a complaint against Nokia, Huawei Technologies and ZTE Corporation, asserting infringement of patents relating to 3G wireless technology. Holloway is part of a team representing AU Optronics in a number of proceedings, including cases against Samsung. The ‘tough, tenacious' Maximilian Grant is also recommended.

Orrick, Herrington & Sutcliffe LLP's recent highlights include representing NVIDIA in Section 337 investigations filed by Rambus. The team has also been acting for Nintendo in an ITC suit brought by Motiva seeking an exclusionary order to prevent importation of the Wii product. The case remains ongoing with an initial determination ruling in favor of Nintendo. The practice has also represented a number of respondents, including Acer and Nanya, in an ITC investigation filed by Tessera over DRAM technology, with a favorable ruling of no infringement affirmed by the Commission. Bas de Blank, who is based in Silicon Valley, has expertise concerning seminconductor, telecoms and software technologies. Michael Heafey has handled successful ITC representations. The practice lost its Washington DC-based practice co-head Steven Adkins, who joined Allen & Overy LLP in early 2012.

Steptoe & Johnson LLP's Charles Schill is recognized for his sound expertise in patent litigation before the ITC. He co-leads the firm's Section 337 practice alongside John Caracappa and Alice Alexandra Kipel, who respectively provide strong trial and appellate experience. The Washington DC practice handles high-profile cases both as co-counsel and lead counsel, and has recently been involved in closely watched disputes regarding smartphone technology and wireless communication devices. Schill and Caracappa are representing Motorola, as complainant and respondent, in investigations against Apple, Microsoft and Rambus. Recent ITC judgments for Motorola include an initial determination finding no infringement of three patents asserted by Apple and a favorable ruling on six out of seven patent complaints made by Microsoft. The team is also representing Samsung in litigation against Apple regarding wireless technology.

Weil, Gotshal & Manges LLP's expertise before the ITC is underpinned by a highly reputed patent litigation practice and has represented household names such as Apple in Section 337 investigations. In Washington DC, Mark Davis and Brian Ferguson are both experienced ITC practitioners. The practice lost its litigation co-chair Matthew Powers and patent litigator Steven Cherensky, after they left to set up plaintiff-side law firm Tensegrity Law Group LLP.

White & Case LLP is recommended for its sector expertise relating to semiconductors, electronics and related technologies. Recently it has been involved in representing respondents in multi-defendant cases before the ITC, including defending Chimei Innolux in a complaint by Thomson Licensing asserting patents for LCD technology; and Mstar Semiconductor in a dispute brought by Vizio regarding digital TV patents. Jack Lever is an experienced first-chair litigator, with extensive experience in ITC proceedings. Lever, David Tennant and Section 337 practice head Shamita Etienne-Cummings represented Panasonic in two proceedings against Freescale over semiconductor chip technology used in televisions, cameras and media players.


Patent prosecution: utility and design patents

Index of tables

  1. Patent prosecution: utility and design patents
  2. Leading lawyers

Leading lawyers

    • Samir Bhavsar - Baker Botts L.L.P.
    • Bryan Diner - Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P.
    • Harold Fullmer - Woodcock Washburn LLP
    • Mark Kassel - Foley & Lardner LLP
    • Charles Mottier - Leydig, Voit & Mayer Ltd.
    • John Pratt - Kilpatrick Townsend & Stockton

Intellectual property powerhouse Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. is highly regarded in the global marketplace and continues to act for a host of Fortune 500 companies, many of which are longstanding clients. The practice has a diverse industry sector base, which is particularly strong in pharmaceuticals and healthcare. The prosecution practice group includes around 30 partners, and is jointly headed by Leslie Bookoff and Michele Bosch in the Washington DC office. Other prominent team members include senior counsel Charles Van Horn, who specializes in chemistry and biotechnology, and Bryan Diner, who was managing partner of the Brussels office for five years and has a strong litigation practice. Recent highlights include the prosecution and management of foreign and US portfolios for clients such as Abbott Laboratories, Boston Scientific and Caterpillar. The team also recently handled two significant re-examination proceedings for Abbott regarding Cordis patents. Alongside drafting original US patents, the team also manages and prosecutes a number of foreign patents, for clients in a range of industry sectors such as Accenture and China-based Hutchison MediPharma. Other clients include AOL, SAP and Toyota.

Intellectual property specialist Fish & Richardson P.C. is a leading player in patent prosecution, and has amassed an impressive client base including numerous global leaders in industries such as information technology, pharmaceuticals and financial services. The firm has 199 partners supported by 80 other attorneys and technology specialists, spread across 11 offices in the US and one in Munich, Germany. The practice is full-service, undertaking portfolio management for its global clients, opinions and strategic counseling mandates and a busy re-examination practice. Clients include Adobe, Google, Boston Scientific, Smith & Nephew, and Bank of America. Jeffrey Barclay, who focuses on electric engineering, is recommended along with the hugely experienced Charles Hieken, both of whom are based in Boston. Richard Anderson in Minneapolis and Spencer Patterson in Dallas are also recommended.

Baker Botts L.L.P. provides an ‘excellent' service and has a ‘deep bench of knowledgeable and responsive' lawyers. The 35-partner group has an impressive client list including Fortune 500 companies and some of the largest patent owners in the US, and is noted for its expertise across a range of technologies such as social media, software and cloud computing. The practice is able to utilize resources in offices nationwide and 13 locations internationally. New York-based Paul Ragusa, who represents Columbia University, is recommended, as is Dallas-based Luke Pederson, who is noted for his ongoing work for CA Technologies, and Palo Alto-based Travis Thomas, who is a key partner for Facebook. Well-regarded department chair Barton Showalter, who is based in Dallas, plays a key role in the management of Cisco Systems' patent portfolio. Other key clients include Brother Industries, Fujitsu and Bank of America.

Fitzpatrick, Cella, Harper & Scinto's ‘top-notch' team maintains an ‘extremely high level of service', has ‘a strong knowledge of patent law' and is ‘scientifically strong' in chemistry, computers, and mechanical engineering. The 27-partner group is well respected in the marketplace and its impressive client list includes Amgen, Bristol-Myers Squibb, GlaxoSmithKline and IBM, many of which are longstanding engagements. Other clients include Canon, Sirona Dental and Michelin. The practice, headed by Anthony Zupcic, has an extremely deep bench, which includes Michael Sandonato, who is ‘impressive, and extremely client and value-oriented', and who chairs the electronics and computers team; and biotechnology chair Raymond Mandra, who provides ‘quality advice built on a strong practice'. Frank DeLucia shows ‘excellent attention to detail', is ‘highly skilled at patent prosecution', and is also noted for his re-examination and reissue practice. Other key partners include Robert Fischer and Brian Klock in Washington DC, and Michael O'Neill in Costa Mesa. All recommended attorneys are based in New York, except where noted otherwise.

Foley & Lardner LLP's prosecution practice is ‘unsurpassed in terms of quality', and provides an ‘excellent and prompt service based on real industry understanding'. The team is strong across the science and healthcare sectors and, with 37 partners spread across eight offices, clearly has nationwide coverage. Former biotech patent examiner Stephen Maebius in Washington DC leads the practice, which includes a number of prominent personalities such as biotechnology expert Stephen Bent, IP vice chair Pavan Agarwal and Richard Peet, who is focused on chemistry, nanotechnology and biotechnology. Madison-based chemical, biotechnology and pharmaceuticals chair Mark Kassel is also recommended. Recent highlights for the team include developing a patent program for US Bancorp and providing patent procurement services to the University of Chicago, Super Green Biofuels and Global Fresh Foods. Other clients include Amgen, Citrix Systems, Google and Kraft Foods.

General practice firm McDermott Will & Emery LLP has a strong patent prosecution practice, centered on a diverse range of specialisms including cloud computing, nanotechnology and healthcare. The team is ‘excellent across the board' and is praised for its deep knowledge of the workings of the US Patent and Trademark Office. The group, which has 36 partners in six offices, significantly swelled its ranks during 2011 by hiring 31 new associates and patent agents. The practice group has an impressive client base across an array of industries, and represents companies including Lockheed Martin, Google, Halliburton and Qualcomm. New clients include Celanese and Covidien. Mark Itri heads the practice from his base in Orange County. Within the team, the ‘absolutely fantastic' Stephen Becker, who heads the Washington DC prosecution group, is an expert in semiconductor and telecoms, and is ‘incredibly knowledgeable and extremely client-oriented'. Houston-based chemicals and energy expert Carey Jordan, and Boston-based Toby Kusmer, who has a diverse litigation and prosecution practice, are both also recommended.

IP boutique Oblon, Spivak, McClelland, Maier & Neustadt has the most active prosecution practice is terms of patent filings and has a truly global client list. The firm's offices are strategically placed, with its US office located close to the USPTO campus, and with a Tokyo office, which is an excellent resource for the firm's many Japanese clients such as Ricoh, Toshiba, Sony and Toyota. Although the practice is centered on its Asia Pacific clients, it has bulked up its domestic representations with the addition of Research In Motion, Eastman Kodak, Otis Elevator and CoreLogic. European clients include Airbus and L'Oréal. The firm is noted for its busy and well-established re-examination and interference practice, wherein Charles Gholz and Todd Baker are prominent practitioners. The pair have a ‘fundamental knowledge of law paralleled by a strong character, brilliant language and a winning attitude'. The firm's strong bench also includes Stephen Baxter, Stephen Kunin, James Kulbaski and Scott McKeown, who are all recommended.

In terms of filings, specialist IP firm Birch, Stewart, Kolasch & Birch, LLP has one of the busiest US prosecution practices for utility and design patents. The 27-partner team is mainly based in Falls Church, Virginia, with support from colleagues in San Diego. Michael Mutter, who co-chairs the firm's electrical department and also has expertise in computer arts, is a key figure in the practice, as is hugely experienced life sciences expert Gerald Murphy. The firm has strong ties to clients in Asia Pacific, particularly Japan, including longstanding relations with Honda and LG, and its substantial life sciences client base includes Mitsubishi Tanabe Pharma, Mochida Pharmaceutical and Chugai Pharmaceutical. The group also acts for Google.

Blakely, Sokoloff, Taylor & Zafman is a full-service IP firm with 37 partners spread across six offices including Los Angeles, Denver and Seattle. The group has a good reputation in a number of sectors, most notably the medical, computer software, electrical and mechanical industries. Its filing and prosecution experience is augmented by expertise in re-examination and interference proceedings. Clients range from start-ups to Fortune 500 companies, including Network Appliance, Openware Systems, Apple and Intel. Silicon Valley-based name partner Edwin Taylor is recommended for his electronics and semiconductor experience. Denver-based mechanics expert Gordon Lindeen is recommended for his in-house experience and European knowledge, where he prosecuted patents before the European Patent Office and has broad European experience of prosecution and enforcement. Other notable practitioners include Eric King in Orange County, whose experience includes electronics, IT hardware and software; and Judith Szepesi in Silicon Valley, whose key clients include VeriSign and DigitalPersona.

Well-established IP boutique Cantor Colburn LLP has a busy prosecution group, which is ‘a true partner with its clients' and ‘willing to adapt its practice and to explore alternative ways of providing services'. The 31-partner IP practice is based across five offices, and has recently added 21 new patent lawyers. Co-managing partners Michael Cantor and Philmore Colburn play key roles in the team, and Colburn provides ‘invaluable experience'. ‘Well-rounded practitioner' David Fox, Keith Murphy and David Arnold in Hartford are also recommended, as is Daniel Drexler in Washington DC. Its exceptional client base includes a large number of Fortune 100 companies such as IBM, General Electric, United Technologies, Raytheon, AT&T and Research In Motion. The group's developing pharmaceuticals client base now includes Actavis, Genomas and Mutual Pharmaceuticals.

Knobbe Martens Olson & Bear LLP's well-respected practice is noted for its ‘excellent expertise'. Headquartered in Irvine, CA, with seven support offices, this 126-partner boutique has a strong client base centered on leaders within the medical devices, biotech and internet sectors. Recent highlights include successfully prosecuting innovative stem cell patents for Professor Shinya at Kyoto University, and assisting Cosmos Lyles and ultrasound technology developer Ulthera in patent prosecution matters. The experienced Steven Nataupsky leads the group, which includes key personalities such as San Diego-based Michael Fuller, who focuses on biotechnology, computer and internet matters, and Jerry Hefner, whose focus is on biotechnology, chemicals and pharmaceuticals.

Merchant & Gould PC is a well-reputed IP boutique that has been in existence for more than 100 years. Based in Minneapolis, with support from seven other US offices, it fields a number of specialized, industry-focused teams including nanotechnology, chemical engineering and mechanical. Denver managing partner and chair of the electrical and software group Timothy Scull is recommended, as are technology transactions practice group head Gregory Leibold and Minneapolis-based Gregory Sebald, who chairs the mechanical group. The firm reinforced the team in 2011, most notably via the recruitment of Jefferson Boggs from Bingham McCutchen LLP and Jeffrey Blake from Sutherland Asbill & Brennan LLP.

Morrison & Foerster LLP is 'recognized as one of, if not the best, in life sciences IP' overall and the team 'can be counted on to go that extra mile in every situation'. The team of 20 dedicated partners is based in five offices, and has comprehensive coverage of different technologies. The group continues to provide patent application, drafting and strategy services to clients such as Genentech, Abraxis and Gilead. New clients include Heinz. San Francisco-based practice head Michael Ward is a true professional and super-knowledgeable in science, industry and the law'. The group also includes the well-respected Catherine Polizzi and Mika Mayer, who represents Guided Delivery Systems, and has ‘a strong technical background' and ‘star quality status'; both are based in Palo Alto.

Pillsbury Winthrop Shaw Pittman LLP provides ‘an extremely high-level service in terms of business acumen, industry knowledge, and legal acumen'. The group has a diverse client base across a range of sectors, and is particularly noted for its expertise in electronics, mechanical, chemicals, pharmaceuticals and biotech. Alongside day-to-day portfolio management, the team also handles interferences, and the prosecution of complex patents, most recently in relation to nanotechnology. The practice is headed by McLean-based Jack Barufka, who is key counsel to Chevron and Phillips Electronics. Other prominent team members include the ‘high-caliber' leader of the virtual worlds and video games team James Gatto, and Washington DC-based Raj Davé, who represents Apple and Intel. Other key clients include Corel and Applied Materials.

IP boutique Sughrue Mion has the second most active prosecution practice in the US by number of filings. The practice, which is split by industry sectors such as nanotechnology and chemical, has a strong offering in terms of experienced practitioners and technical expertise, and its Washington DC head office is located close to the USPTO. The firm also has offices in San Diego and Silicon Valley, and in Tokyo, which is helpful for its large Asia Pacific client base. As well as its industry-specific teams, the firm also has dedicated groups for re-examinations and interferences, in which key figures are San Diego-based Karen Dow and international director Alan Kasper. Other prominent members of the prosecution practice are Brett Sylvester, Brian Hannon and John Bird. The group's global client base includes names such as Fujifilm, IBM, NEC, Wockhardt, Alcatel and Zeiss.

Chicago-based IP boutique Banner & Witcoff, Ltd. represents global leaders in innovation and design. The team is particularly active in design patent prosecution, where it has the busiest practice in the US and procured 543 in 2011. Former USPTO examiner Robert Katz is a cornerstone of the design patent practice, being an acknowledged leader in the area of industrial designs and specializing in mechanical and electromechanical devices. Key practitioners in the patent prosecution group include Washington DC-based Gary Fedorochko, whose specialisms include computer software and e-commerce; and Chicago-based Charles Miller, who has a strong international practice and is focused on electrical engineering. Clients on the design patent side include Electrolux, Microsoft, Nike, Nokia, PepsiCo and Toshiba.

Bracewell & Giuliani LLP's practice ‘consistently performs at a very high professional level', and continues to go from strength to strength. The 19-partner team, while smaller than many competitors, has an impressive client list, spanning a diverse range of sectors. Houston-based technology specialist Jeffrey Whittle continues to lead the practice, and is a key advisor to The Weir Group. The office is also home to key partners Constance Gall Rhebergen and Albert Kimball, who act for a global oil company, and Houston-based Jim Bradley, who represents Baker Hughes and The Weir Group. Further demonstrating its strength in technology relating to oil and gas, the team also acts for GE Oil and Gas. In other industry sectors, clients include Lockheed Martin, Tesco and new client Google.

Brinks Hofer Gilson & Lione is a well-regarded Chicago-based IP boutique with notable sector strengths in semiconductors, medical devices, telecoms and pharmaceuticals. The group has a strong emphasis on technology and advises on re-examinations and interference matters. Recent instructions include patent portfolio management work for Alticor, the Cook Group, and Yahoo!, and notable new clients include Groupon and Broadcom. Practice head Andrew Stover is recommended, as are the hugely experienced Peter Nichols and Kent Genin. The firm lost former Washington DC managing partner Thomas Holt and Meredith Martin Addy to Steptoe & Johnson LLP.

General practice firm Buchanan Ingersoll & Rooney has a strong and dedicated IP group, which counsels clients from start-ups to Fortune 100. The group, headed by Patrick Keane, has extensive knowledge across science, technology and engineering, and has recently expanded into renewable energy and power. Clients include Apple, Chevron, Pfizer and BAE Systems. Pittsburgh-based Michael Dever is recommended for his prosecution and licensing skills, as is James LaBarre for computer technologies. The team also has a dedicated re-examinations, interferences and reissue group, in which counsel Erin Dunston is recommended for her ‘top-quality work'. This group neatly complements the prosecution practice, and has been representing Dupont in two interferences. All recommended attorneys are based in Alexandria, except where noted otherwise.

Kenyon & Kenyon LLP has a diverse and well-reputed prosecution practice, which displays ‘deep and extensive technical knowledge'. Predominantly based in New York, supported by offices in Washington DC and Silicon Valley, the practice has deep technical expertise and is prolific with patent filing numbers and adept at complex re-examinations. The group is co-chaired from New York by Patrick Birde, who leads chemicals and medical devices work, and Gerard Messina, who focuses on electronics, mechanical and computer technology. The group's extensive client base includes leading domestic and international companies within life sciences, chemicals and electronics, including names such as Akzo Nobel, Analog Devices Inc, Boston Scientific and SAP.

A year on from its merger, Kilpatrick Townsend & Stockton is going from strength to strength and the IP group has a prominent presence in the market. Clients include Adobe, IMAX, Smith & Nephew, Oracle and DuPont. Practice head John Pratt is a manufacturing and life sciences expert and leads the 50-partner team in Atlanta, which is supported by additional staff in eight other US offices. San Francisco-based Paul Haughey and Patrick Jewik are recommended, as are William Shaffer and Mark Barrish in Silicon Valley, and James Ewing in Atlanta. Gerald Gray joined Leydig, Voit & Mayer Ltd..

Leydig, Voit & Mayer Ltd.'s patent prosecution practice provides ‘high-quality services' and ‘excellent value for money'. The practice's industry specialisms include mechanical, electrical and chemical, and its clients include Caterpillar, Huawei, BP Amoco and USG. John Kilyk has ‘a strong grasp of subject matter – both legal and technical, a pragmatic view of legal matters that is sensitive to business needs, and an exceptionally high level of efficiency'. The group is based across four offices, and was bolstered in February 2012 with the opening of a new San Francisco office, which is headed by Gerald Gray, who joined from Kilpatrick Townsend & Stockton.

IP boutique Nixon & Vanderhye PC has a strong prosecution practice that is well versed in a range of technologies such as consumer electronics, telecoms and medical devices. The 48-attorney team performs the full range of services including original drafting and the filing of these and foreign-drafted patents; it remains one of the most active practices in terms of patent filing numbers. Larry Nixon has 40 years' experience and focuses on sophisticated technical matters. Former patent examiner Alan Kagen is also recommended; his core expertise lies in the computer, mechanical and electro-mechanical industries. Re-examination expert Bryan Davidson has 30 years' experience.

Covington & Burling LLP's IP prosecution team at is predominantly known for its re-examination practice, and, while the team is comparatively small, its client list is impressive. In 2011, the practice was busy with inter partes and ex parte re-examination proceedings, with notable matters including the representation of The New York Times, CBS Interactive and Fujitsu. The group also represented Trend Micro in ex parte proceedings concerning two patents centered on anti-virus technology, and continues to assist Osmose and Alkermes with the management of their patent portfolios. The experienced Andrea Reister heads the 14-lawyer team from Washington DC and focuses her personal practice on software, technology and life sciences. Washington DC-based Paul Berman is ‘particularly strong in prosecution matters'.

Crowell & Moring LLP is a well-known name in the IP market, and assists with domestic and foreign filings. The group is headquartered in Washington DC, with support from four other US offices, including teams in New York and San Francisco. Litigator Mark Supko leads the practice and is focused on the computer, electrical and mechanical arts. Jeffrey Sanok handles electrical, mechanical and aeronautical patent litigation and interference work, and Stephen Palan is expert in wireless and data networking technologies. The firm's clients include BMW, Daimler, Funai Electric and Sprint.

Dickstein Shapiro has ‘multidisciplinary knowledge and capabilities, a deep team, and international and global reach'. Washington DC-based Gary Hoffman heads the 44-partner practice, which has particular expertise in pharmaceuticals and healthcare. In 2011, the group prosecuted patents for clients including First Solar, Nile Therapeutics, Pfizer and Bristol Myers-Squibb. The team also successfully affirmed the validity of a patent for Ricoh in a re-examination proceeding, and represented Bruce Saffran and Micron Technology in patent interferences. Thomas D'Amico is recommended for his expertise in semiconductors and computer science.

Harness, Dickey and Pierce is a general practice firm with a strong, well-established team of patent prosecutors and a number of Fortune 500 companies among its clients. The group has expertise in a wide range of technical disciplines, and continues to be very active in terms of patent filing numbers, drafting roughly 1,500 patent applications every year and filing a large volume of foreign origination patents. The firm has acted for clients including Boeing, Biomet and Omron Healthcare. The 100-attorney patent practice is split into industry groups, including life science, business and information, and material and chemical. Detroit-based George Moustakas regularly acts for Fortune 500 clients, and former electrical engineer Richard Warner uses that knowledge to focus on electrical and mechanical matters as well as biomedical work. John Castellano in Washington DC is recommended for work with semiconductors, telecoms, consumer electronics and satellite communications.

Respected IP boutique Oliff & Berridge, PLC has a well-established prosecution practice acting for domestic and foreign clients from a wide range of industries including semiconductors, electronics, and IT hardware and software. Clients include Brother Kogyo, Kabushi Kaisha, Denso, Brother Industries and Seiko Epson. The Alexandria-based firm has 16 partners, supported by around 30 associates, many of whom have experience of working as examiners at the USPTO. Founding partners James Oliff and William Berridge are key figures, and both are hugely experienced. Edward Walker is recommended for his expertise in mechanical engineering.

Shook, Hardy & Bacon LLP has a strong, broad-ranging patent prosecution and counseling practice. The 30-lawyer team's industry expertise includes technology for the agriculture, biotechnology and computer software industries. Clients include Bayer Healthcare, Clearwire, Volvo and Hallmark Cards. Additionally, practice head Michael Gross is primary counsel to clients including Nike, Stanley Black & Decker, and Microsoft. John Garretson, who focuses on pharmaceuticals, medical devices and biotechnology, is also recommended, as is John Gibson, whose expertise include optics, semiconductors and nanotechnology. All recommended attorneys are based in Kansas City.


Trademarks: litigation

Index of tables

  1. Trademarks: litigation
  2. Leading lawyers

Leading lawyers

Debevoise & Plimpton continues to defend leading consumer goods brands in high-profile trademark disputes. The practice successfully defended Yves Saint Laurent (YSL) in the highly publicised trademark dispute brought by rival fashion design house Christian Louboutin regarding trademark protection for the red colored sole on footwear. The firm defeated YSL's pursuit of a preliminary injunction, which the plaintiff then appealed to the Second Circuit; the case attracted a number of amicus briefs. David Bernstein is a lead lawyer on the case and is involved in other trademark and trade dress litigation regarding major global brands. Bernstein continued to act for Allied Domecq (owned by brewer and distiller Pernod Ricard) as a defendant in the Stolichnaya trademark dispute brought by the Russian government against SPI Group. In this case, the plaintiffs recently filed a third amended complaint, which was dismissed at a district court ruling. Bruce Keller was part of a team leading for plaintiff The Gap Inc in a trademark infringement and dilution case brought against travel company G.A.P. Adventures, citing actual customer confusion regarding both companies' brands and logos. It won a district court ruling of infringement.

Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. has ‘extraordinary knowledge and experience in the trademark area, practical real world advice and a deep bench' for complex trademark disputes. The practice acted for X/Open Company as a co-defendant in Gray v Novell Inc, a dispute regarding ownership of the UNIX trademark. The case reached an Eleventh Circuit appeal, which affirmed a previous judgment in favor of the defense. Douglas Rettew now leads the team and recently represented sports apparel maker Under Armour in filing a number of trademark infringement and dilution cases. Former head David Kelly, Jonathan Gelchinsky and Linda McLeod are all ‘very bright, skilled, strategic thinkers'. Kelly and Gelchinsky were co-counsel to plaintiff Harley-Davidson in a claim for breach of a trademark licensing agreement brought against a European-based retail store chain. McLeod handles litigation before the Trademark Trial and Appeal Board (TTAB) for household name brands and clients.

Fross Zelnick Lehrman & Zissu, P.C.shows great depth of knowledge and offers well-thought advice with good context and attention to strategic considerations'. Litigator David Donahue represented Universal Music Publishing Group (UMPG) as a co-defendant in Revelations Perfume v Prince Rogers Nelson, a trademark licensing dispute regarding the use of music artist Prince's name and mark in connection with fragrance products. The practice gained partial summary judgment dismissing the plaintiff's $5.6m damages claim against UMPG. Donahue and Michael Chiappetta also defended medical devices company Mindray DS USA in a trademark licensing claim brought by Datascope Corporation. The group is well known for handling contentious matters such as domain name disputes and TTAB proceedings. Barbara Solomon acted for Clinique Laboratories in successfully challenging a regional US company's application to register the mark ‘Clinique Dentique'. Roger Zissu, Craig Mende and James Weinberger are also key figures in the team.

Kenyon & Kenyon LLP's IP team has ‘excellent industry knowledge and provides sage counsel' concerning trademark disputes. The ‘smart, creative and capable' Edward Colbert successfully represented defendants Stephen Paul, Home Shopping Network and Daystar Productions in a lawsuit brought by musical instrument maker Fishman Transducers, which alleged trademark infringement of the plaintiff's ‘Fishman' mark. The practice has something of a niche in representing alcoholic beverage producers, and went to appeal to affirm a previous summary judgment win for Jim Beam Brands regarding a breach of settlement agreement over the client's ‘old crow' brand and design. The team also argued for Maker's Mark at a Sixth Circuit appeal to uphold a ruling that gives the spirits maker exclusive use of the dripping red wax seal on its product. In an ongoing dispute, the practice is representing defendant William Grant & Sons in a third amended complaint filed by the Russian government regarding rights to the Stolichnaya vodka trademark. Michelle Mancino Marsh has extensive experience in state and federal court litigation.

At Kilpatrick Townsend & Stockton, New York-based litigator Lisa Pearson has experience representing brand owners from a variety of industries in trademark and trade dress infringement cases. Pearson recently acted for Victorinox Swiss Army in bringing a trademark infringement and dilution lawsuit against counterfeiters, and also successfully defended fragrance company Coty Inc on appeal in a trademark licensing dispute brought by John B Stetson Company. San Francisco-based Anthony Malutta co-heads the trademark and copyright group, and handles litigation at federal court level as well as TTAB proceedings. Atlanta-based William Brewster has strong trial and appellate experience in trademark disputes, and Denver-based Ian Saffer is also an experienced first-chair trial litigator.

Kirkland & Ellis LLP's trademark litigation team acts for numerous leading clients, and is primarily based in New York. Dale Cendali is well known, having litigated numerous IP cases across a broad range of sectors. These include having acted for Colgate-Palmolive to settle a dispute with Johnson & Johnson regarding the client's Total toothpaste mark, as well as successfully defending The Walt Disney Company against a trademark lawsuit brought by the owner of the Mr Men and Little Miss literary series. Claudia Ray handles internet-related litigation and is currently involved in defending Apple against infringement claims regarding its iBook trademarks. Cendali and Los Angeles-based Diana Torres are acting for Limited Brands in a trademark dispute against Summit Entertainment, which owns the Twilight film series, in moving to dismiss an action against the client's ‘Twilight Woods' line of products. The team also represented Limited Brands in a case filed by footwear maker Fortune Dynamics regarding the plaintiff's ‘Delicious' registered trademark, which was settled following a Ninth Circuit appeal. Jeanne Heffernan has experience representing luxury brand owners such as Hermès.

New York-based Louis Ederer heads Arnold & Porter LLP's practice, which is focused on trademark and trade dress protection as well as grey market and anti-counterfeiting matters for brands in clothing, luxury goods and consumer product sectors for clients such as Cartier, YSL and Alexander McQueen. He recently led a cross-office team with Los Angeles-based James Blackburn to represent denim clothing manufacturers Sweet People Apparel and RCRV Inc in bringing a trademark counterfeiting and copyright design dispute against LA Idol regarding rear pocket designs on well-known jeanswear brands. Ederer is also leading representation of Gucci America in a trademark and trade design infringement lawsuit against Guess? Inc. Senior counsel Martin Glick and Clara Shin joined the firm following its absorption of San Francisco-based Howard Rice Nemerovski Canady Falk & Rabkin PC. The team is representing Amazon in a trademark dispute brought by Apple regarding the client's use of the term Amazon Appstore, with the most recent ruling denying the plaintiff's motion for a preliminary injunction.

Cooley LLP has a robust commercial litigation practice and represents major technology companies in trademark disputes. Peter Willsey chairs the firm's trademark, copyright and advertising practice from Washington DC, and is experienced in federal court and TTAB litigation. Willsey and New York-based Janet Cullum led the defense of Google against a trademark infringement lawsuit brought by Isys Technologies, regarding Google's Chromebook tablet computer. A district court hearing denied the plaintiff's request for a temporary restraining order and preliminary injunction to prevent the launch of Google's product and the dispute was subsequently settled. Willsey also settled a trademark dispute for defendant the Tug McGraw Foundation after a claim was brought by Major League Baseball Properties and the owner of the New York Mets regarding use of the ‘Ya Gotta Believe' mark. On the West Coast, John Crittenden is an experienced trial and appellate lawyer, and Anne Peck, who has acted for clients including Facebook, is also recommended.

Latham & Watkins LLP's trademark dispute team is mainly concentrated on the West Coast and is underpinned by the firm's strength in commercial litigation and its blue-chip client base. Global IP litigation chair Perry Viscounty's record in trademark litigation includes representing Allergan in a multi-jurisdictional trademark infringement case regarding its Botox mark. More recently, Viscounty has worked on trademark infringement and anti-counterfeiting cases with San Diego-based trial lawyer Jennifer Barry, who is expert in domain name matters. Viscounty and Barry are representing Symantec in a trademark lawsuit brought against Johns Creek Software regarding the registration of domain names that infringe Symantec's Norton trademarks. The team also settled a lawsuit for plaintiff City of Hope National Medical Center, which filed an infringement, dilution and unfair competition lawsuit against Morris Publishing Group regarding use of the City of Hope trademark. Another settlement was achieved for Entrepreneur Media Inc in a consumer confusion case against Texan entrepreneur Daniel Castro's Entrepreneur. Ology website. Barry was also a lead attorney in settling another well-publicized case involving trademark infringement claims when he acted for Ansel Adams Publishing Rights Trust in a case filed against Rick Norsigian and PRS Media regarding the sale of prints claimed to be from negatives of the famed photographer.

Morrison & Foerster LLP's practice, led by San Francisco-based Douglas Hendricks, Jennifer Lee Taylor and Rosemary Tarlton, has been representing high-tech industry clients in IP disputes involving trademark and trade dress infringement claims. Hendricks and Taylor also have experience in cases regarding medical devices and consumer products. Both are acting in cases regarding the distinction between trade name and trademark confusion: Nimbus Data Systems v Nimble Storage, Inc and Rearden LLC v Rearden Commerce, Inc, which is currently on appeal to the Ninth Circuit. Tarlton was a lead partner in the successful defense of software company Red Hat Inc against a trademark and unfair competition lawsuit brought by website hosting site Karasulu regarding Red Hat's acquisition of a software hosting service it owned. Other clients include Autodesk and Lucasfilm Ltd.

Paul Hastings LLP's ‘excellent' trademarks litigation practice is led by Robert Sherman, who is ‘a brilliant intellectual property attorney and trial lawyer. He is practical, strategic and helps achieve results that are in line with clients' business goals'. The practice continues to be active in litigating at trial and appeal, and is particular well known for its representation of companies behind leading fashion brands such as Stella McCartney, Nine West, Lancôme and Garnier. Sherman led for defendant L'Oréal in the dispute brought by USPA against Polo Ralph Lauren, with a New York federal hearing giving a favorable decision, permanently enjoining USPA from using the double horseman logo and Polo trademark. The practice also demonstrates its capabilities in acting on high profile trademark disputes outside the fashion industry. It is currently representing plaintiff Muhammad Ali Enterprises in a lawsuit claiming trademark infringement, unfair competition and misappropriation of the right of publicity against Kobo Inc. The defendant used the former boxer's ‘float like a butterfly, sting like a bee' slogan – and registered trademark – in advertising for its e-reader product.

Covington & Burling LLP's ‘excellent' trademark litigation team ‘cares about the bottom line and ensuring litigation is worthwhile and profitable'. The practice handles numerous TTAB and domain name dispute proceedings for clients such as National Geographic, The American Automobile Association, Microsoft and the Public Broadcasting Service. It also represents clients in a broad range of trademark disputes, including infringement claims, counterfeit and gray market goods and online piracy. San Francisco-based Neil Roman is recommended, as are Simon Frankel and senior counsel Bingham Leverich in Washington DC. Leverich was recently part of the team that defended Spirits International in the long-running cross-border trademark dispute regarding the Stolichnaya vodka brand, which recently had the plaintiff's third complaint dismissed at a district court hearing. The team also acted for the Government of the District of Columbia in a TTAB appeal regarding the Patent and Trademark Office's (PTO) refusal to allow it to register its own official seal as a mark.

New York IP and litigation firm Cowan, Liebowitz & Latman, PC has a strong reputation for its expertise in contentious trademark matters, including the handling of TTAB proceedings. It serves clients across the fashion, consumer goods, entertainment and sports sectors, including Columbia Pictures, Varsity Brands, DKNY and Major League Baseball Properties. Litigator Richard Mandel is ‘very smart, a good listener, very well prepared for thinking through issues, a superlative writer and excellent at drafting and verbal communication'. He has successfully represented clients including Ferrari, sanofi-aventis and Capitol Records in trademark disputes. Arlana Cohen's broad trademark practice includes anti-counterfeiting issues, with previous representations in trademark infringement cases including Luxo v Disney and Pixar and Dessert Beauty v Fox. Litigator Eric Shimanoff has acted for clients in industries such as life sciences, media, food, apparel and other consumer products.

Fitzpatrick, Cella, Harper & Scinto's trademark litigation team has extensive trial and appellate experience. Of counsel Edward Vassallo heads the practice and has experience acting for a broad range of consumer product companies and household brand name owners. Of counsel Pasquale Razzano and Timothy Kelly defended travel company G.A.P Adventures in a trademark infringement and dilution case filed by The Gap, Inc. The team obtained a ruling against the dilution claims. Razzano was also counsel to Pure Power Boot Camp in a case filed by competitor company Warrior Fitness Boot Camp, which involved trade dress infringement claims. A court ruling held that Pure Power's ‘boot camp' trade dress was unique and protectable. Kelly has also acted for Everest Gaming in a trademark infringement lawsuit brought against Harrah's License Company, which owns the World Series of Poker trademark, regarding the use of its Everest Poker marks. Other clients include Schaeffler, Condé Nast and Calvin Klein.

Fulbright & Jaworski LLP's full-service trademark practice handles a large volume of disputes, including proceedings before the TTAB. Minneapolis-based Timothy Kenny leads the IP practice, and is ‘experienced, practical, knowledgeable, responsive'. He has wide-ranging experience in trademark litigation at federal court level, notably handling domain name disputes and TTAB proceedings. His key clients include UnitedHealth Group, Georgia-Pacific and FICO. Laura Borst, Dallas-based Jeffery Richardson, and the Austin pair of Richard Groos and senior counsel Ashley Callahan are also recommended. In New York, Mark Mutterperl's noteworthy clients include leading names in the retail, consumer goods and technology sectors, including handling anti-counterfeiting matters for global telecoms and high-tech companies and successful representation of a leading coffee chain in a Second Circuit appeal over trademark dilution.

Goodwin Procter LLP's practice has strong experience in trial and TTAB proceedings and is ‘thorough, strong and solid. The strategies and approaches recommended are aggressive and creative'. The practice typically acts for clients in the consumer goods, computer software and financial industry sectors. Boston-based David Hosp ‘works well with clients, by collaborating to discuss strategies, options, and risks. He is a good lead attorney during negotiations, mediations, and meetings'. Mark Puzella has ‘a quick grasp on trademark law and procedure. He can be the "brains" behind a team effort'. The team is trial counsel to plaintiff Houghton Mifflin Harcourt Publishers in a lawsuit brought against gaming company Zynga, regarding use of the Oregon Trail trademark, with a temporary restraining order successfully obtained. Other engagements included acting for Triumph Learning in a Federal Circuit appeal brought by luxury apparel maker Coach Inc, opposing Triumph's attempt to register the Coach mark.

John Dabney in Washington DC leads McDermott Will & Emery LLP's global trademark litigation practice, and Robert Zelnick is recommended for his appellate expertise. The team represented Guggenheim Capital in a criminal case brought against individuals claiming to be members of the Guggenheim family, with the lawsuit alleging trademark violations and misuse of name claims. Dabney is currently defending fashion apparel manufacturer Hudson Clothing in a trademark opposition proceeding brought by Levi Strauss & Co, and also settled a case for plaintiff Lockheed Martin regarding the use of its Skunk Works trademark. The practice's recent experience includes domain name disputes and numerous federal court cases, among them a trademark and unfair competition lawsuit between Alzheimer's disease charities. Other clients include American Automobile Association, CGI Group, ADT Security, Howard Johnson's and Absolut Vodka.

New York-based Brendan O'Rourke and Lawrence Weinstein, who co-head Proskauer Rose LLP's false advertising and trademark group, and lead its contentious trademark cases. O'Rourke was a lead attorney in defending the New York Yankees against a lawsuit brought by an individual alleging trademark infringement regarding the baseball franchise's famous ‘top hat' logo, claiming that her uncle designed it but was never paid for his work. The team successfully dismissed the case at a district court hearing and it is currently on appeal to the Second Circuit. The practice also settled a case for the defendant in GSK v Colgate-Palmolive Company, which alleged that Colgate's ‘Triple Action' slogan infringes and dilutes GSK's ‘Triple Protection' trademark. Other clients include Major League Baseball Properties, Diageo North America, Church & Dwight and McGraw-Hill.

Greenberg Traurig LLP's main areas of focus include trademark disputes regarding gray market goods and anti-counterfeiting, particularly in the online sphere. The practice recently obtained an injunction for the NFL against numerous websites selling counterfeit merchandise. It also represented The North Face and Polo Ralph Lauren in an action to shut down foreign websites selling counterfeit goods via third parties. New York-based Roxanne Elings co-chairs the global trademarks group and is an expert in online counterfeiting issues. IP litigator Ian Ballon has expertise in internet and computer software-related issues, and recently represented eBay in the multi-defendant case Inman v Technicolor; he also defended eNom against claims relating to the transfer of domain names. James Donoian represented online company Adaptive Marketing in a trademark dispute regarding the use of Google AdWords and related domain names.

Katten Muchin Rosenman LLP's ‘extremely responsive' team has ‘deep knowledge and experience in the trademark field. The lawyers are practical advisors who are nevertheless prepared to litigate as necessary to protect their clients' interests'. Recent matters include representing Arcadia Group Brands in litigation against a Slovenian TV shopping network regarding rights to the TopShop mark for retail services in the US. It also settled for the defendant in Roxbury v Penthouse Media Group, which had been set to go to appeal in 2011, following a dispute regarding rights to use a trademark in a movie title. The practice also defended FriendFinder Networks in a domain name dispute brought by Facebook, and won summary judgment for defendant Microsoft against trademark infringement claims brought by Kinbook regarding the use of the word ‘Kin' in its Kinect and Kin smartphone products. IP co-chair Floyd Mandell is ‘an outstanding litigator and counselor in all respects', being ‘creative, insightful, practical, reliable, results-oriented, and always the consummate gentleman and professional'. Mandell has extensive first-chair litigation experience and was also involved in defending Dell against trademark litigation claims made by Sharp.

Kelley Drye & Warren LLP acts for numerous consumer goods and fashion brand name companies concerning contentious trademark matters. The practice has made successful representations in a number of ongoing cases, such as William Golden acting for Polo Ralph Lauren in a trademark dispute against the US Polo Association (USPA) regarding the rights to the Polo trademarks, including the horseman player logo. A federal court hearing concluded that USPA infringed the fashion brand's mark. Golden, who chairs the firm's IP and technology litigation group, also argued for Bacardi at a successful Third Circuit appeal against Pernod Ricard regarding the Havana Club trademark. Trademark and copyright practice head Andrea Calvaruso has litigated at district court trials as well as in TTAB and domain name dispute proceedings. She is currently advising the Miss Universe Organization regarding litigation and ICANN proceedings.

Mayer Brown's strong IP and litigation capabilities see it well placed to resolve contentious trademark matters, whether in federal district or appeal courts, or at UDRP and TTAB proceedings. Co-head of US IP John Mancini, who is based in New York, recently achieved settlements for defendants against trademark infringement claims. These include major consumer food companies Nestlé and Dreyer's, which were sued by Weight Watchers International for alleged unfair use of the ‘Weight Watchers' and ‘Points' trademarks. Mancini also represented Cablevision in a case in which Viacom alleged trademark violations in relation to the streaming of cable content programming on devices such as Apple's iPad.

Chicago-based IP firm Pattishall, McAuliffe, Hilliard & Geraldson LLP has a longstanding reputation for handling trademark trials, appeals and TTAB proceedings. It acts for companies from many industries, such as consumer goods, manufacturing, retail, and software, and clients include PepsiCo, BP, Acer and Castrol. Senior partner David Hilliard is recommended, as is Phillip Barengolts for his experience in anti-counterfeiting and trade dress disputes. Jonathan Jennings has handled various TTAB proceedings and is also recommended, and Robert Sacoff focuses on trademark infringement and unfair competition cases.

Pillsbury Winthrop Shaw Pittman LLP's trademark litigation clients include AOL, Intel and Apple. In Los Angeles, Mark Litvack is ‘an aggressive litigator, very ethical but tough – takes no quarter and gives no quarter'. He was lead counsel to Clearwire in successfully defending against alleged trademark infringement claims brought by Sony Ericsson over the client's logo. The practice successfully moved to deny a preliminary injunction sought by Sony, with the matter favorably settled to allow Clearwire continued use of its marks and logo. The practice hired former Howrey LLP attorney Bobby Ghajar, who has extensive trial experience and particular expertise in internet enforcement. Ghajar successfully defended Intel against trademark infringement claims brought by The Creatives Project, regarding Intel's ‘The Creator's Project' website, and also represented PayPal in bringing a trademark infringment and dilution lawsuit against online payment processing website PayPay.

Weil, Gotshal & Manges LLP's Randi Singer has experience in high-profile representations, including a successful defense in the precedent-setting case, Tiffany v eBay. Singer recently represented eBay again, obtaining partial summary judgment in a trademark infringement dispute regarding its ‘bill me later' payment service. Other notable attorneys include Bruce Rich, who heads the IP and media group and focuses mainly on entertainment, communications and online sectors. Trial lawyer Bruce Meyer is also recommended.


Trademarks: non-contentious (full coverage)

Index of tables

  1. Trademarks: non-contentious (full coverage)
  2. Leading lawyers

Leading lawyers

Washington DC-based Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. is ‘excellent on all counts' when it comes to non-contentious trademark work. Regarded by many as a leader in the intellectual property market, it is known for its strong bench, innovative work and impressive client list. Washington DC-based Douglas Rettew, who heads the 11-partner group, focuses his practice on consumer products and electrical and computer technology, and acts for The NFL Players Association. David Kelly and of counsel Lynn Jordan provide ‘fast, practical advice, depth of experience, and understands a business' needs'. Kelly has substantial expertise in the entertainment industry and represents a number of the firm's key clients such as The Walt Disney Company (and related companies Pixar, The Disney Channel, and ABC Television). Other clients include the BBC, Caterpillar and The Association of Tennis Professionals. Julia Anne Matheson, who handles Starbucks' portfolio management nationally, is recommended along with Mark Sommers and Jonathan Gelchinsky. Lawrence Robins recently departed for Edwards Wildman Palmer LLP.

New York boutique Fross Zelnick Lehrman & Zissu, P.C. has ‘long been one of the preeminent firms worldwide for non-contentious trademark matters'. It has ‘unsurpassed depth of knowledge and experience', and ‘does an excellent job' on all matters for domestic and international clients, including leading players in the entertainment, finance and pharmaceuticals/healthcare industries. The group's work has included achievements such as successfully registering Tiffany's blue color as a non-conventional trademark and undertaking multinational trademark search and registrations. Clients include VEVO, Chanel, Bristol-Myers Squibb Miss America, Novartis and LEGO. Its depth of bench is ‘unparalleled' for trademarks. The ‘excellent' Mark Engelmann provides ‘advice that is not only technically correct but is also pragmatic from a business standpoint', and the ‘extremely careful and diligent' Lawrence Apolzon, ‘has a good sense of business necessity and practicality'. Other prominent partners include Alexandria-based Allison Strickland, the ‘superb' Ronald Lehrman, and David Ehrlich. Within the international practice group, Lydia Gobena, Peter Silverman, Janet Hoffman and the ‘excellent' Cara Boyle are recommended.

Covington & Burling LLP's ‘outstanding' trademark practice provides a ‘personalized service' and ‘advice which is very practical, and reflects a keen awareness of the balance between legal risk and commercial considerations'. Practice head Laurie Self has substantial experience with international and technology matters, and is ably supported by the ‘very knowledgeable, experienced' Marie Lavalleye, who ‘tailors her advice to meet the individual risk profiles of her clients'. Other team members include senior counsel Bingham Leverich, and special counsel Kristina Rosette, whose expertise lie in domain names. Rosette has recently advised on generic and .XXX top level domains. The team continues to provide portfolio management advice to clients such as Microsoft and Merck, and to assist in trademark acquisition and licensing matters as a result of M&A, such as Microsoft's acquisition of Skype. The group also advised on National Geographic Society's strategic partnership with Cenage Learning.

New York general practice firm Cowan, Liebowitz & Latman, PC has an excellent reputation and is viewed as a leader in the sports industry. This dedicated team of 15 partners is led by the experienced and well-regarded William Borchard, who ‘is very knowledgeable, well respected, and very easy to work with. He's responsive, very thorough and a strategic thinker'. Borchard acts on both domestic and international matters, and is noted for his expertise in internet and domain name work. Within the team, of counsel Lynn Frutcher is also instrumental, and represents clients in industries including food, entertainment and cosmetics, and Lawrence Greene is key on international matters. Mary Kevlin and Midge Hyman are also recommended. The group's impressive client list speaks volumes for the caliber of the practice, including Major League Baseball Properties Inc, Ann Taylor, J Crew; Morgan Stanley and Columbia Pictures.

Kenyon & Kenyon LLP is ‘one of the best IP law firms in the world and an absolute go-to-firm for trademarks and domain name defense'. The trademarks group at the New York IP boutique is ‘highly professional and responsive' with a ‘global presence', making it a leader in the field of multinational trademark registrations and searches. This ‘consistently excellent' team of 40 professionals includes the excellent James Rosini, who is ‘a brilliant and creative strategist, with a superior understanding of the nuances of trademark law'. Additionally, Washington DC-based Edward Colbert is highly experienced and skilled at IP litigation, licensing and acquisition. The team is expert in undertaking corporate name changes on a global scale, and, for example, was instrumental in the rebrandings of GMAC Financial to Ally Bank and AIG Financial to Chartis Insurance. The group manages the global trademarks portfolios of clients including Analog Devices, Olympus, Chartis Insurance and Teva Pharmaceuticals USA.

Washington DC-based Arent Fox LLP has a ‘top-notch' reputation in the media and entertainment industry. The IP practice is co-chaired by the ‘fantastic' Anthony Lupo and litigator Michael Grow, both of whom are based in Washington DC. Lupo also serves as a strategic counselor to the firm's key clients from the entertainment, technology and fashion industries, such as Pixar, Apple and Lacoste. Grow routinely acts for Warner Brothers and Hollywood producer Saul Zaentz. Christina Carvalho, who leads the trademarks group, manages a number of international portfolios and serves as primary counsel for clients such as Mars. Other clients of the team include The Oprah Winfrey Network, Choice Hotels International, Diesel and Benetton.

Dechert LLP's well-respected trademark practice centers on 18 partners in Philadelphia. IP group heads Martin Black and Ann Pease are recommended, as is the highly regarded trademark specialist Glenn Gunderson in Pennsylvania, who is key counsel to The Ivy League, TAG Heuer, Ebel and Breitling, and L'Oréal. The bulk of the group's workload focuses on providing strategic advice on clearance and registration, and assisting companies in protecting and maintaining their brands around the world. The group is noteworthy for its capabilities in global trademark searches. The team recently advised DirecTV on clearance, prosecution and strategic advice in the US, Caribbean and Latin America.

New York IP boutique Fitzpatrick, Cella, Harper & Scinto is a go-to firm for some of the world's leading brands. The practice has expertise in a number of industries, including electronics, clothing, pharmaceuticals and publishing. The trademark team is led by of counsel Edward Vassallo, whose practice spans contentious and non-contentious trademarks and copyright. Among the seven partners in the practice, Warren Olsen, Nicholas Cannella and Steve Warner all have 30 years' experience. The group also includes founding member and of counsel Lawrence Scinto, who is well respected. Clients include Condé Nast and Calvin Klein.

Fulbright & Jaworski LLP has a strong offering in trademarks, and has 11 offices across the US and global reach. The IP team is co-headed by biotech expert David Parker in Austin and James Repass in Houston, who focuses on the intellectual property aspects of corporate transactions. Other key partners include Mark Mutterperl in New York, who advises clients on domestic and international clearance projects and portfolio management. Recent highlights for the team include assisting clients such as Best Buy, Farmers Group and UnitedHealth Group with the management of their IP portfolios. Other clients include Brinker International, General Mills and Zeno.

K&L Gates caters to a number of leading companies with global brands. The global IP practice leaders are Robert Barrett and Michael Abernathy in Chicago, Susan Jackson in Charlotte and David McDonald in Seattle. Within the trademarks group, Newark-based Frank Politano is a highly regarded and experienced figure, whose expertise includes brand and software licensing. Boston-based David Byer is also recommended, and has expertise including publishing, entertainment and electronics. The team remains primary outside counsel for Wrigley and its brands, and the group undertakes trademark prosecution work for HTC and Chicken of the Sea.

Baker & McKenzie's trademark practice handles domestic and international work – something made feasible by the firm's impressive global network. The team is headed by chair of the North America IP group Kevin O'Brien from Washington DC, who focuses on various aspects of IP, including trademark, patent and copyright law. The 27-partner global IP group includes ten trademark experts. New York IP practice head Pamela Church and Dallas-based Nicole Emmons are recommended, with the latter having recently advised Deltek and Fogo de Chao on trademark portfolio matters. Other clients of the team include CEC Entertainment, Orthofix and The Lincoln Electric Company.

Excellent' general practice firm Baker Botts L.L.P. provides a ‘solid, reliable service from professionals that are knowledgeable in their field and sensitive to business needs'. This trademark group – containing three partners and one special counsel – is headed by Doreen Costa in New York, and has breadth and depth of service and clients despite the small team. Key clients include Dell, new media clients and a global oil and gas company. Costa and Paul Reilly are ‘superior lawyers with great business acumen – they are incredibly responsive and efficient'. Other key individuals include Dallas-based partner Priscilla Dunckel who is ‘super-quick when rapid help is needed', and has ‘experience in a wide variety of issues making her an excellent resource'; special counsel Valerie Verret is ‘professional, personable and reliable'.

Ballard Spahr LLP's trademark group is expert in a number of sectors, including biotechnology, pharmaceuticals and electronics. The 19-partner IP practice has a number of technical experts, and is led by the experienced William Needle, who is active within patent, trademark, copyright and trade secret law. Philadelphia-based Lynn Rzonca manages MedAssurant's domestic and international portfolio, and is a key member of the litigation department. Of counsel Corey Field in Los Angeles is also recommended for his work assisting The Mother Teresa Center with the protection and enforcement of IP rights in relation to the publication of books and films. Other clients include DriveTime Automotive Group and Broadcast Music. Philadelphia-based Hara Jacobs and Phoenix-based Brian LaCorte are also recommended.

Cooley LLP's four-partner trademark team has specialist knowledge and continues to punch above its weight. Washington DC-based practice chair Peter Willsey is an expert in copyright and trademark law, including litigation. Litigator John Crittenden in San Francisco is also recommended, along with Janet Cullum in New York, who is noted for her domain name expertise, and Anne Peck in Palo Alto, who advises on international trademarks and copyright ownership. The group has quickly established itself as a leader within the social network sphere, and its impressive client list includes a number of well-known global brands. Recent highlights include assisting with the management of Facebook's mark, providing tactical support to LinkedIn in relation to the management of its trademark portfolio, and managing the trademark portfolio for Yelp!. Other clients include Mozilla (Firefox), Google and Bluetooth.

DLA Piper LLP's trademark team provides ‘a five-star service' across a broad range of industries including apparel, food and beverage and leisure. Though the core team members are based in Washington DC and Chicago, it fields individuals across the firm's network, ensuring that ‘responses are immediate' and coverage ‘seamless', whether on domestic or international matters. Washington DC-based practice head Ann Ford is ‘very practical and extremely effective at cutting to the core of a dispute to avoid needless litigation. She thinks like a client and understands what is important from the business point of view'. Chicago-based Mark Feldman is ‘one of the top trademark lawyers in the world; he is responsive, pleasant, interesting, and always willing to go the extra mile'. The ‘responsive' Heather Dunn in San Francisco is also recommended, especially for internet matters. The group's clients include a leading cable television and multimedia entity, a national food and beverages retailer, and a luxury brand retailer.

Foley & Lardner LLP's ‘excellent' six-partner trademark practice has a client base which demonstrates it is a match for many larger practices. Clients include Citigroup, Kraton and many apparel and sports manufacturers. The ‘business-centric and responsive' Jeffrey Greene heads the practice, which also includes Andrew Baum, who is ‘an exceptional trademark attorney with a strong and loyal support staff'. Miriam Beezy and of counsel John Carson in Los Angeles, as well as Milwaukee-based Mark Diliberti, are also recommended. Senior counsel Toni Hickey, former USPTO chief of staff, recently joined the Washington DC office.

Kelley Drye & Warren LLP has a ‘fabulous and well-organized' trademark team that provides ‘fantastic' service, and, despite being a large general practice firm, ‘gives lots of “small firm" attention with “big firm" appeal'. The 17-partner group is split across New York and Washington DC, and has a strong client base consisting of a number of leading global brands in a diverse range of industries. The group is led by New York-based Andrea Calvaruso, who is ‘cost-effective and manages her team fantastically'. Calvaruso is the relationship partner for clients including The Miss Universe Organization, Foot Locker and Gucci America. Other clients include Avon Products, Bacardi and Polo Ralph Lauren. Nancy Lutz is also recommended, and is an expert in domain names.

Kilpatrick Townsend & Stockton's ‘excellent' and extensive trademark practice is led from Atlanta by the admired and hugely experienced William Brewster. Since the merger between general practice firm Kiltpatrick Stockton and IP boutique Townsend & Townsend & Crew, the firm has increased presence across the US, and has a client base to match. Recent highlights include managing the global portfolio for InterContinental Hotels (and all related companies including Crowne Plaza and Holiday Inn), and undertaking global clearance and enforcement actions for Levi Strauss. Other clients include Apple, Williams-Somna and Oxford Industries. Atlanta-based Christine James is also recommended, as are Georges Nahitchevansky and Jason Vogel in New York, and ‘excellent negotiator and strategist' David Mayberry in Washington DC.

King & Spalding LLP's trademark practice is predominantly based in Atlanta, with support coming from offices across the US including Houston and New York. Group head Holmes Hawkins primarily focuses on litigation, particularly patent infringement matters. The practice's other key partners are litigator Bruce Baber, who splits his time between New York and Atlanta; Kathleen McCarthy in New York, whose main expertise lies in copyright and false advertising; and Julie McWhirter, who predominantly advises on the IP aspects of corporate transactions. The team continues to act as primary outside counsel to Coca-Cola, and also assisted another a global beverages company in a co-branding initiative with a well-known musician. Other recent work highlights include representing the world's largest shipping and logistics company in the management of its global trademark portfolio.

Knobbe Martens Olson & Bear LLP is a well-respected boutique that has a strong trademark client base, notably in the food and beverages, cleantech and nanotechnology industries. The trademark team sits within the firm's 126-partner intellectual property practice, which is spread across eight offices, with the main bulk of members based in Irvine, California. Managing partner Steven Nataupsky heads the group, and has significant experience in the entertainment, medical devices and mechanical industries. Jeff Van Hoosear is the head of brand protection, and specializes in international trademarks and copyright law. The practice manages a number of domestic and international portfolios for clients in the beverages and apparel industries.

McDermott Will & Emery LLP's ‘response times are always prompt and industry knowledge is current'. The experienced Joanne Ludovici-Lint heads the team, which also includes the ‘very intelligent and professional' Richard Kim. The group represents many companies with leading brands in food and beverages, automotive and technology. The 20-partner group handles trademark filings and manages the portfolios of clients such as Absolut Spirits and Pebble Beach Company. Other clients include Tyco and Shiseido. Recent highlights include advising Lockheed Martin on an unauthorized use of Skunk Works, and assisting Waterworks with the establishment of a trademark licensing program for bath-related goods.


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  • Jersey Royal Court considers measure of damages for dilapidations claims

    In the absence of any statutory provision in Jersey addressing how dilapidations claims are to be quantified, the Royal Court's decision in JSSL v Barclays has provided some much needed guidance, particularly in circumstances where there is an acceptance that works to redress dilapidations have not been and will not be carried out.
  • English Supreme Court rules on Mistake and Hastings Bass

    On 9 May 2013 the English Supreme Court handed down a unanimous judgment on the seminal cases of Pitt-v- Holt and Futter -v- Futter , with Lord Walker's valedictory judgment conclusively resolving the English position on the rule in Hastings Bass and rescission on the ground of mistake.
  • Getting the breaks

    Shook, Hardy & Bacon currently authors the Insurance section of The In-House Lawyer magazine. For more information and articles from this author click here .
  • Product liability and dietary supplements

    Shook, Hardy & Bacon currently authors the Insurance section of The In-House Lawyer magazine. For more information and articles from this author click here .
  • The calm before 
the storm: are 
you prepared for 
a dawn raid?

    WilmerHale currently authors the Fraud and Corporate Crime section of The In-House Lawyer magazine. For more information and articles from this author click here .
  • International shipment of waste: transporters beware

    Burges Salmon LLP currently authors the Environment and Energy section of The In-House Lawyer magazine. For more information and articles from this author click here
  • Cyprus Shipping Industry : Business as usual. Why despite recent events Cyprus remains an internatio

    Cyprus is the third most populated island in the Mediterranean Sea. It is strategically located at the crossroads of Europe, Africa and the Middle East. Traditionally Cyprus has always been at the heart of the seafaring trade and therefore always functioned as an important centre for trade and commerce. Today as a member of the European Union it remains an optimal business base. It is one of the most attractive locations for foreign investments worldwide. Foreign companies have been given the opportunity to invest and establish business in Cyprus on equal terms with local investors as no distinction is made between foreign and Cypriot companies.
  • FOREIGN EXCHANGE OPERATIONS

    The excellent support system in combination with the ideal jurisdiction provided in Cyprus set the country in the list of the most desirable countries through which you can offer foreign exchange operations. In addition, the accession of Cyprus within the European Union and, most importantly, the extremely beneficial economic advantages available due to the low costs and the outstanding taxation, create a covetable environment for foreign investors.
  • National public order. Adoption of the Draft

    The Presidium of the Supreme Commercial Court of the Russian Federation (hereinafter - SCC RF) adopted by the Informative Letter No. 156 dated the 26th of February, 2013 (hereinafter - the Informative Letter) on Review of the consideration by arbitrazh courts of the cases on the implementation of the public order clause as the ground for rejection of the recognition and enforcement of the foreign court decisions and arbitral awards.
  • China Customs New Interpretation

    For many products, tariff classification can be technically complex, confusing, and subject to multiple interpretations. Often several different Harmonized System Codes ("HS Code") may seem applicable for one given product with different tariff rates. Tariff classification is indeed a process of application of customs classification rules, including customs rulings and decisions, and misclassification may trigger severe legal consequences. The sad fact is, unfortunately, that many companies rely on non-legal professionals to determine the HS Codes for imports or exports. A recent interpretation issued by the General Administration of Customs of China ("GACC") (Circular No. [2012] 495 Shu-Fa-Fa) (the "Interpretation") reinforces the process of tariff classification as a legal matter, and formulates the test as to what counts for regulatory violation if tariff classification rules are improperly applied by the importer or exporter in a given case. If the legal defense is successful, misclassification may only be treated as a non-violation misclassification, with the possible obligation to pay up additional customs duties, if any, but without administrative or criminal consequences. The Interpretation took effect as from February 1, 2013.

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