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United States > Intellectual property > Law firm and leading lawyer rankings

Editorial

Overview

The firms listed in the copyright table are assessed on their capabilities across advisory, transactional and litigation matters. Those firms that do most or all of these things well are ranked highest, although there is also room for specialists with niche expertise. Uncharted territory at the intersection of copyright and new technologies is fertile ground for the legal market, with clients seeking advice and representation in high-stakes litigation that is often not just bet-the-company but bet-the-industry. After the 2014 Supreme Court decision against Aereo, and its business model of capturing over-the-air television and retransmitting it over the internet, disputes have intensified over other internet television services; prominent examples are Aereokiller, Dish Network and TVEyes. Similar disputes exist in the music area, where internet radio service Pandora Media has continued its litigation over royalty rates. In addition to these and other headline-grabbing first impression cases, there is also a large volume of more traditional copyright work that keeps practices busy.

The patent litigation: full coverage ranking features firms with strong, demonstrable expertise in handling patent infringement cases at both trial and appellate level, and with an active presence before the specialist forums of the International Trade Commission (ITC) and the United States Patent and Trademark Office (USPTO). The number of cases filed has remained steady over 2015, with an increasing emphasis on inter partes reviews as a crucial part of defense litigation strategy; this, along with the increased number of post-Alice motions concerning patentable subject matter, has resulted in the continual decrease in the volume of claims filed by non-practicing entities. Competitor cases remain prevalent nonetheless, with major companies increasingly seeking protection and enforcement of their patent rights, and the market has seen a significant number of Hatch-Waxman cases related to the production and marketing of generic drugs. The hi-tech, pharmaceuticals and medical devices sectors remain the key areas of focus within this space.

The patent litigation: International Trade Commission table features a mix of IP boutiques and full-service firms that have a strong wealth of knowledge regarding the ITC’s regulations and procedures and are thus best equipped to handle investigations within this forum. Despite the drop in matters brought to the ITC following the decline of the high-profile smartphone wars, the Commission continues to receive a steady stream of multiple-respondent and competitor cases, both of which have kept the docket busy. The issue of whether products covered by process patents are admissible to the ITC is a matter of ongoing debate.

The patents: portfolio management and licensing table covers firms with outstanding expertise in managing and monetizing patent portfolios for domestic and international clients in the US and around the world. This includes firms with strong capabilities in preparing and negotiating licenses, patent acquisitions and sales, joint development agreements and other collaborations. Credit is given to firms that can demonstrate a full-service transactional patent practice and a notable profile in national and international deals.

The patents: prosecutions (including re-examination and post-grant proceedings) section recommends firms for their breadth and depth of technical expertise in drafting and prosecuting US patents for domestic and international clients. Under the America Invents Act (AIA), ex parte re-examination proceedings, which have unique rules and procedures, remain an important option to consider when challenging the validity of a patent. But the shakeup regarding post-grant proceedings has led to a drop in the amount of IP litigation being filed, and, in many cases, post-grant proceedings can provide a true alternative to lengthy district court proceedings.

The misappropriation of trade secrets continues to be a major concern in the corporate world, in particular for hi-tech companies. A potential new federal act covering trade secrets is being considered for next year, which would overthrow the current regulation at state level. This legislative change is the key upcoming development of note.

The trademarks: litigation section recommends firms for their depth and breadth of expertise in trademark disputes. While the greatest emphasis is on cases before federal courts, litigation in other forums is also taken into consideration, including the Uniform Domain-Name Dispute-Resolution Policy and the USPTO’s Trademark Trial and Appeal Board (TTAB). The TTAB had a lot of attention due to the 2015 Supreme Court decision in B&B Hardware v Hargis Industries, which clarified that, in certain circumstances, a prior TTAB decision can have preclusive effect on a court. There are different views on this decision. Some say that its effect on the general trademark litigation landscape is very limited, while others say that it significantly raised the profile of the TTAB and is often relevant for the strategic decision about where to litigate a case. Another important development regarding the forum chosen for litigation is the increasing use of the US International Trade Commission (ITC) for trademark litigation, although this forum is still used for significantly more patent than trademark matters.

The trademarks: non-contentious section recommends firms for their capabilities across portfolio management, prosecution, transactional and other advisory work. Many of the listed firms also have significant experience with administrative proceedings, including cancellations and oppositions, as well as anti-counterfeiting and enforcement work. Overall, the market for trademarks non-contentious legal services is steady, with high demand for external advisers. Non-traditional trademarks and matters involving trade dress are on the rise.


Copyright

Index of tables

  1. Copyright
  2. Leading lawyers

Leading lawyers

  1. 1

The ‘very good’ team at Cowan, Liebowitz & Latman, PC in New York is particularly recommended for its advisory work in the music, book publishing and fashion industries, and remains active in significant litigation. Jonathan King leads the group, which also includes Richard Mandel and Eric Shimanoff, who are especially noted for their expertise in the music and recording industry, while Richard Dannay and counsel Thomas Kjellberg are strong in the book publishing area. The team continues to represent Capitol Records in a prominent case against ReDigi, which operates an online marketplace for secondhand digital music. In the fashion industry, it represented Varsity Brands against competitor Star Athletica, and achieved a victory before the Sixth Circuit, which reversed the lower court’s decision regarding the copyrightability of the client’s cheerleading uniforms. In the publishing industry, the firm successfully defended Merkos L’Inyonei Chinuch against authorship claims by Vaad L’Hafotzas Sichos regarding the publication of collected talks by Rebbe Schneerson.

Jenner & Block LLP has ‘outstanding expertise’ in the music and motion picture industries, and frequently represents content owners in litigation at the forefront of copyright and new online technologies. After its earlier Supreme Court victory against online TV streaming service Aereo, it continues to represent Fox in cases against similar services, such as Aereokiller, FilmOn and Dish Network. In the music industry, the team successfully represented the Universal Music Group in a long-running copyright infringement case against Escape Media, which resulted in the shutting down of Escape Media’s streaming service Grooveshark. It also successfully defended music artist Jay Z in a copyright infringement case related to an Egyptian song sampled in his song Big Pimpin’. Other clients include the Recording Industry Association of America (RIAA), the Motion Picture Association of America, the Entertainment Software Association, Electronic Arts, NBCUniversal, and Warner Music. Practice co-chair Andrew Bart in New York has a large number of recording companies as clients, while co-chair Richard Stone in Los Angeles acts for many motion picture studios and TV broadcasters.

Loeb & Loeb LLP provides ‘great service’, especially for clients from the music, motion picture and television industries. New York-based practice chair Barry Slotnick and ‘copyright guruJonathan Zavin are recommended. David Grossman in Los Angeles is praised as a ‘smart and aggressive litigator’ for the entertainment industry. The team successfully defended Sony against copyright infringement claims brought by Mayimba Music regarding the Shakira song Loca, Loca, Loca. It also has been defending NBCUniversal and Time Warner against copyright infringement claims by We 3 Kings Music regarding alleged use without authority of numerous music cues. On the plaintiff side, it is representing Sony/ATV, Warner Chappell Music and others in a copyright infringement case against online music archive Wolfgang’s Vault. It also continued to represent Metro-Goldwyn-Mayer and 20th Century Fox as defendants against copyright infringement claims by Paula Petrella concerning the film Raging Bull.

The ‘excellent’ practice at Weil, Gotshal & Manges LLP in New York has particular expertise in music licensing and frequently represents distributors in first impression copyright litigation. It recently obtained favorable sound recording royalty rates for the internet radio site, Pandora Media, before the Copyright Royalty Board (CRB). It also achieved a major victory for several local television broadcasters as plaintiffs in their class action against the copyright licensing practices of the performing rights organization, SESAC. In the book publishing sector, the firm successfully represented HarperCollins in its copyright infringement action against e-book publisher Open Road Integrated Media. On the defense side, it successfully represented eBay in a copyright infringement suit filed by a photographer who sought to hold eBay liable for allegedly infringing photos offered by third-party sellers. Other clients include Facebook, Sirius XM, Disney and Marvel Entertainment. Practice head Bruce Rich is praised as a ‘brilliant legal mind’ and recommended along with Randi Singer and Benjamin Marks.

New York-based boutique Fross Zelnick Lehrman & Zissu, P.C. is particularly recommended for advisory work in the areas of author-publisher agreements, music licensing and online infringements. It has also represented clients in several dispute resolution matters. Highlights included the successful representation of DC Comics, publisher and owner of the Batman comic book series, before the Ninth Circuit, in a copyright infringement case against Mark Towle, who converted cars to replica ‘Batmobiles’ and offered kits for self-conversion. James Weinberger, Roger Zissu and David Donahue are recommended.

Kirkland & Ellis LLP’s ‘outstandingDale Cendali has ‘a solid record of winning cases’, in particular with regard to copyrightability and fair use issues. Other recommended partners are Johanna Schmitt and Claudia Ray, who are also based in New York, as well as Diana Torres in Los Angeles. The team successfully represented Fox News before the Southern District of New York in its lawsuit against the media monitoring company, TVEyes, which defended its provision of news broadcasts as fair use; the case is currently on appeal. In a copyrightability case, the team successfully defended Nike against claims by photographer Jacobus Rentmeester that the ‘Jumpman’ logo used on Air Jordan shoes infringes his 1984 photo of Michael Jordon. Other clients include Oracle, the National Football League and McDonnell Boehnen Hulbert & Berghoff LLP.

Mitchell, Silberberg & Knupp provides ‘excellent service’ for clients in the motion picture, television, music, video game and publishing industries. Highlights included the successful representation of Capitol Records, Sony Music Entertainment, Universal Music Group, Warner Music Group and ABKCO Music in disputes with Pandora Media and Sirius XM regarding the question of whether there is a public performance right for pre-1972 sound recordings. In the video game industry, the team has been representing Blizzard Entertainment and Valve Corporation in a copyright infringement case against mobile games developers Lilith and uCool. Other clients include Fox Television Studios, Lionsgate, the RIAA, and the Entertainment Software Association. Russell Frackman is recommended, as are Robert Rotstein, Karin Pagnanelli and Marc Mayer, who are all based in Los Angeles. Christine Lepera in New York is praised as an ‘excellent litigator’.

Quinn Emanuel Urquhart & Sullivan, LLP’s team of litigators has been handling several high-profile copyright disputes and is best known for representing service providers in new media issues. New York-based practice head Robert Raskopf is recommended, as are Todd Anten, also in New York, and Rachel Herrick Kassabian in Silicon Valley. Work highlight included the defense of the video-sharing website Vimeo against copyright claims brought by Capitol Records and EMI Blackwood Music, as well as defending media monitoring company TVEyes against copyright claims by Fox News. The team also continues to defend the Richard Avedon Foundation in a matter brought by a former employee who is seeking a declaratory judgment that he owns the copyright to photographs he took while working for Avedon.

Arnold & Porter Kaye Scholer LLP is especially noted for advising sports leagues, motion picture studios and TV broadcasters, and has been involved in major copyright disputes. Washington DC-based Robert Garrett and his team have been representing Joint Sports Claimants, a consortium including Major League Baseball, the National Football League and the National Basketball Association, in proceedings before the CRB for many years. They are also advising Major League Baseball on various copyright issues involving the telecasting of games over traditional and new media. In addition, the firm continues to represent several TV broadcasters, including ABC, Disney and NBCUniversal, in disputes against the online streaming service FilmOn. Other clients include Nexstar Broadcasting, Barnes & Noble, and Saul Zaentz Company.

The ‘excellent’ practice at Debevoise & Plimpton LLP is underpinned by its wider commercial litigation capabilities. It has been involved in several high-profile copyright cases, most notably representing several broadcast television companies before the US Supreme Court in a case against Aereo in 2014. More recently, it has been representing Rimini Street in seeking a declaratory judgment that the software maintenance services it provides do not infringe Oracle’s copyrights. Washington DC-based practice chair Jeffrey Cunard and recently promoted partner Jim Pastore in New York are recommended. Former practice chair Bruce Keller became an assistant US attorney in New Jersey.

San Francisco-based boutique Durie Tangri LLP has gained a significant profile for representing users and distributers in high-profile copyright disputes regarding new technologies. Daralyn Durie and Joseph Gratz won praise from peers for their successful fair use defense of Google Books against copyright infringement claims by the Authors Guild. The team was also retained by Google and its navigation subsidiary Waze to defend copyright infringement claims brought by PhantomALERT regarding user-generated data on speed traps and other safety locations. The firm continues to defend CoreLogic, a technology provider for real estate websites, in a class action suit regarding the removal of copyright management metadata from photographs originally taken by professional photographers for real estate agents and brokers.

Kilpatrick Townsend & Stockton handles a broad range of contentious and non-contentious copyright issues. Silicon Valley-based practice head Joseph Petersen is recommended along with Larry McFarland in Los Angeles, Marc Lieberstein in New York and senior counsel Joseph Beck in Atlanta. Work highlights included the representation of CBS in an unprecedented anticipatory copyright infringement suit that preemptively shut down pirate streaming sites for the duration of the championship boxing match between Manny Pacquiao and Floyd Mayweather. The team has also been representing Viacom against the website operator of NickReboot.com regarding the defendant’s streaming of copyrighted television shows from the plaintiff’s Nickelodeon channel. Another highlight was the successful defense of the HathiTrust, a collaborative digital library that includes more than 60 colleges, against the Authors Guild.

Proskauer Rose LLP is particularly noted for its strength in the music industry. Practice head Sandra Crawshaw-Sparks and recently promoted partner Alexander Kaplan have been defending Madonna and WB Music against a copyright infringement claim by VMG, which alleges that a co-author and producer of Madonna’s song Vogue included an unauthorized sample of the plaintiff’s composition Chicago Bus Stop; this case is currently on appeal. Charles Sims has expertise in fair use issues and matters at the intersection of copyright and First Amendment law. He continues to act for Reed Elsevier on the implementation of the class action suit following the US Supreme Court’s decision in Reed Elsevier v Muchnick regarding the republication of freelance periodical articles on electronic databases. All mentioned attorney are based in New York.

The ‘excellent’ practice at Winston & Strawn LLP is especially recommended for representing service providers in high-profile disputes at the intersection of copyright and new technologies. In New York, Michael Elkin and Thomas Lane are recommended litigators. Jennifer Golinveaux in San Francisco and Erin Ranahan in Los Angeles are further names to note. Work highlights included the representation of Bill Graham Archives as defendant in several copyright suits regarding its online music archive, Wolfgang’s Vault, including a successful defense against copyright infringement claims by the sons of concert promoter Bill Graham. The team has also been representing Megaupload.com and its founder Kim Dotcom in an appeal involving a prominent copyright case in which the US government is seeking to confiscate allegedly illegal proceeds of third-party copyright infringement.

Covington & Burling LLP’s extensive experience in online piracy and Digital Millennium Copyright Act (DMCA) liability issues underpins its litigation practice and its advisory work on general anti-piracy programs and targeted copyright enforcement. The practice is co-chaired by Simon Frankel in San Francisco and of counsel Ronald Dove in Washington DC. Clara Shin, also in San Francisco, focuses on technology-related disputes. Recent work highlights include the successful defense of Samsung against copyright infringement claims by CCP Systems concerning printer software, assisting the NFL in combatting the unauthorized re-transmission of game telecasts over the internet, and acting for PBS and its member stations in matters before the CRB regarding the distribution of statutory copyright royalties.

Davis Wright Tremaine LLP’s team is noted for litigation at the intersection of copyright and First Amendment issues. It also provides day-to-day copyright counseling for news organizations, entertainment companies, advertisers and publishers. Bruce Johnson in Seattle and Edward Davis in New York successfully defended playwright David Adjmi against copyright infringement claims by the producers of Three’s Company regarding his play 3C, which is a parody of the 1970s television series. New York-based Elizabeth McNamara has been defending the book publisher Simon & Schuster against copyright infringement claims by Ashleigh Erwin regarding her contribution to the book Disaster Artist.

Fenwick & West LLP is praised for its ‘very commercial approach’ and ‘excellent technology sector knowledge’. ‘Very good’ litigator Andrew Bridges is particularly strong in secondary liability disputes. He is defending the internet service provider Cox Communications against claims brought by BMG Rights Management and Round Hill Music that the defendant is liable for file sharing activity by its subscribers. It also continues to represent service provider Giganews against copyright infringement claims brought by Perfect 10. Jennifer Stanley chairs the non-contentious side of the copyright practice, which advises clients such as Expedia, Airbnb, King.com, Depict and Meerkat. All mentioned attorneys are based in San Francisco.

The ‘excellent’ practice at Frankfurt Kurnit Klein & Selz PC in New York advises various clients in the publishing, entertainment and advertising business and represents them in disputes. Practice chair Edward Rosenthal and litigator Maura Wogan are praised as ‘very personable, responsive, smart, and excellent in court’. Work highlights included the representation of the Authors Guild as plaintiff in the prominent Google Books case and the representation of Hasbro in a suit against Sweetpea Entertainment regarding copyright infringements as a result of the defendant’s production of the Dungeons & Dragons movie. On the defense side, the team has been representing John Wiley & Sons against copyright infringement claims brought by Senisi arising from disputes over the scope of photo licenses.

Hogan Lovells US LLP handles a variety of arts, media and entertainment sector-related copyright matters, with particular expertise regarding fair use and First Amendment issues. Practice head Dori Ann Hanswirth in New York continues to defend Fox News in two suits filed by North Jersey Media Group regarding claims of copyright infringement based on photos posted on Facebook. Washington DC-based Neal Katyal and Dominic Perella successfully defended Google in the prominent Garcia v Google case regarding a request to take down the controversial anti-Islam video Innocence of Muslims from the defendant’s video-sharing site YouTube based on the copyright claims of one of the actors appearing in the video. Perella later became deputy general counsel at Snapchat.

King & Spalding LLP’s ‘highly capable trial counsel’ Kenneth Steinthal in San Francisco is recommended as an ‘acknowledged expert’ for matters where new technologies meet music copyright, and has been acting for content distributers in contentious and non-contentious matters. Highlights included the representation of Pandora Media in a dispute with the American Society of Composers, Authors and Publishers (ASCAP) over the scope, structure and rates of license fees. He also continues to act for Pandora in a license fee dispute with BMI. In addition, he has been representing Amazon, Microsoft, eMusic, and The Orchard in a putative class action alleging copyright infringement regarding the sale of digital music downloads.

The ‘very good’ practice at Morrison & Foerster LLP is best known for litigation in the technology sector. Los Angeles-based Benjamin Fox successfully represented the internet service providers Verizon Communications, Cox Communications and Bright House Networks in an appeal regarding the downloading of copyrighted material by their customers. San Francisco-based Michael Jacobs acted for VMware in a software copyright and breach of license dispute with Phoenix Technologies. Jacobs also represented Autodesk in a software copyright dispute. Besides litigation, the practice regularly advises on a variety of copyright issues, not only for technology companies but also for many clients in the entertainment and arts business.

O’Melveny & Myers LLP’s copyright work is most prominent in the entertainment and media sector, but the practice extends beyond that to areas such as retail products and computer software. Work highlights included the successful defense of Warner Bros., New Line Productions and Katja Motion Picture against copyright infringement claims by novelist Tess Gerritsen regarding the movie Gravity, as well as the representation of Sirius XM in appeal proceedings against four separate court decisions concerning copyright infringement claims relating to pre-1972 sound recordings. Matthew Kline in Los Angeles and David Eberhart in San Francisco are recommended. Robert Schwartz went to Irell & Manella LLP in 2015.

The ‘excellent’ practice at Orrick, Herrington & Sutcliffe LLP is praised for its successes in high-profile copyright disputes in the technology sector, particularly involving issues of copyrightability and fair use. The team continues to represent Oracle as plaintiff in a long-running dispute with Google over the defendant’s use of parts of Oracle’s Java software in its Android operating system. On the defense side, it continues to act for Dish in the dispute with several TV broadcasters regarding its ad-skipping digital video recording service. Other clients include Microsoft and ZestFinance. San Francisco-based Annette Hurst and Gabriel Ramsey are recommended, as are New York-based Joshua Rosenkranz and Lisa Simpson.

Paul, Weiss, Rifkind, Wharton & Garrison LLP is noted for its litigation work for various copyright owners, especially from the media and entertainment sector. ‘Excellent’ litigators Jay Cohen and Lynn Bayard in New York are highly recommended. ASCAP is a key client, which the firm represented in several proceedings and negotiations over royalty rates. For example, the firm represented ASCAP in a trial in the Southern District of New York to determine license fees to be paid by the internet radio service, Pandora Media. Other clients include Viacom, Huffington Post, and the National Music Publishers Association.

Pryor Cashman LLP’s practice has a steady flow of work from its many clients in the music industry, including EMI, Sony, BMG, and Universal Music Group, and is also frequently retained by motion picture studios such as Lionsgate, Nu Image, and The Weinstein Company. Work highlights included bringing claims on behalf of EMI against MP3Tunes founder Michael Robertson for willful copyright infringement. On the defense side, the firm successfully represented the artists Kanye West, Shawn Carter and Mike Dean and several music companies against copyright claims regarding the song Made in America. New York-based litigators Donald Zakarin, Frank Scibilia, Tom Ferber and Brad Rose are recommended.

Wiley Rein LLP in Washington DC has remarkable expertise in music licensing, acting for many broadcasting and new media clients. Bruce Joseph, Thomas Kirby and Karyn Ablin are recommended for litigation and contract negotiation. The team is acting for the National Association of Broadcasters in litigation before the CRB to establish license fees for the online streaming of sound recordings, and is also representing a group of non-commercial radio broadcasters in its pending litigation before the CRB. Beyond music licensing, the firm advised numerous online service providers on questions of secondary liability and frequently represents publishers of professional newsletters and periodicals, including Grant’s Financial Publishing and Warren Communication News, and has obtained several million dollars in copyright infringement settlements for them.

Arent Fox LLP is praised for ‘excellent industry knowledge’, particularly in the music industry, but it also acts for a variety of clients in the entertainment, technology and fashion industries. Work highlights included the representation of Sirius XM in webcasting rate proceedings before the CRB, acting for Music Choice in matters before the Copyright Office, and advising HBO on numerous copyright matters. Other clients include Discovery Channel and Diesel. Paul Fakler in New York and Anthony Lupo in Washington DC are recommended. The practice lost Ross Charap to Akerman LLP, but gained Michelle Mancino Marsh from Kenyon & Kenyon LLP.

Baker & Hostetler LLP is best known for its work in the music industry, but the copyright practice also works with clients from the wider media and entertainment industry, as well as the technology sector. Practice head Oren Warshavsky in New York has been representing Freeplay Music as plaintiff in disputes with several multi-channel networks. Katrina Quicker in Atlanta continued to act as co-counsel to the Board of Regents of the University System of Georgia in a dispute with several academic publishers regarding the practice of distributing book excerpts to students without paying licensing fees. Other clients include Blackheart Records, NJJ Music and TuneSat.

Davis & Gilbert LLP’s practice in New York is praised for its ‘outstanding industry knowledge’ in the advertising and marketing sector, but it also increasingly acts for clients in the wider media and entertainment industry. ‘Practical and efficient problem-solverAshima Dayal is recommended for counseling work regarding assessments of copyrightability, license-free fair use and free speech. Guy Cohen has been defending Defy Media in a copyright infringement lawsuit brought by competitor Jukin Media. Marc Rachman has been representing the heirs of the comedy duo ‘Bud’ Abbott and Lou Costello in a copyright dispute with the producers of the Broadway play, Hand to God.

Fish & Richardson P.C. is best known for representing technology companies in disputes with content owners, especially regarding fair use issues, and Boston-based David Hosp and Mark Puzella have extensive experience in such litigation. For example, they represented Microsoft as defendant in a dispute with Getty Images regarding the display of image previews by widgets of the Bing search engine. Besides litigation, the team regularly advises various clients on the protection of copyrighted works and infringement matters.

At Greenberg Traurig, LLP, Ian Ballon, who splits his time between the firm’s Los Angeles and Silicon Valley offices, is recommended for technology and internet-related copyright litigation. Atlanta-based Robert Rosenbloum is recommended for copyright counseling work for recording artists, record companies and motion picture companies, as well as digital media companies and service providers in the online space.

Irell & Manella LLP in Los Angeles is particularly noted for its work in the media and entertainment sector. Recent work includes the defense of Spike Lee and 40 Acres and a Mule Filmworks against copyright infringement claims by Juan Luis Garcia regarding the motion picture, Oldboy. Of counsel David Nimmer has a long-standing reputation as thought leader in the copyright space; his legal treatise Nimmer on Copyright has frequently been cited by courts and he has given congressional testimony multiple times. Robert Schwartz joined the practice from O’Melveny & Myers LLP in 2015.

Katten Muchin Rosenman LLP provides ‘high-quality legal services’, particularly for clients from the media and entertainment industry. Chicago-based Floyd Mandell and Los Angeles-based David Halberstadter have been representing radio station operator Cumulus Media in a copyright infringement suit brought by ABS Entertainment regarding pre-1972 music royalties. Joel Weiner in Los Angeles successfully defended Seth MacFarlane, Universal Pictures and others against allegations that the teddy bear featured in the motion picture Ted was copied from a character in the plaintiff’s YouTube series Charlie the Abusive Teddy Bear. Other clients include HBO, Paramount Pictures and Universal Studios.

Kenyon & Kenyon LLP handles the full spectrum of copyright matters, including the registration of works, licensing, enforcement and litigation. Jonathan Reichman in New York has a particular focus on the entertainment industry and longstanding experience regarding fictional characters, including Superman, Batman, Spider-Man, and Barbie. Michelle Mancino Marsh went to Arent Fox LLP in September 2015.

At Mayer Brown, New York-based John Mancini and his team have particular expertise in digital media copyright. The team frequently represents digital distribution companies in disputes with content owners, particularly from the music industry. Highlights included the representation of Google in a putative class action claiming that it and other defendants failed to ensure that the music they make available for download is properly licensed. The team has also been retained by Spotify to defend two class actions regarding mechanical rights protection. In addition, it has been representing United Airlines in a dispute with Sony Music regarding the defendant’s in-flight entertainment system.

Sheppard, Mullin, Richter & Hampton LLP handles a variety of copyright matters for entertainment sector clients, including contentious and non-contentious issues. Martin Katz in Los Angeles is particularly recommended for copyright matters in the motion picture business. New York-based Paul Garrity continues to represent the hip-hop group the Beastie Boys in a copyright infringement suit against Monster regarding the unauthorized use of its music in a promotional video for the Monster energy drink.

Skadden, Arps, Slate, Meagher & Flom LLP draws on its transactional and litigation capabilities to handle contentious and non-contentious copyright matters for clients across a broad spectrum of industries, including fashion, consumer products, media, entertainment and sports. Anthony Dreyer in New York continues to act for the National Football League in a copyright dispute with seven photographers regarding alleged copyright infringements through the client’s use of photographs in advertising and marketing campaigns.


Patent litigation: full coverage

Index of tables

  1. Patent litigation: full coverage
  2. Leading lawyers

Leading lawyers

  1. 1

Finnegan, Henderson, Farabow, Garrett & Dunner LLP’s Washington DC-based group ‘performs admirably’, and ‘regularly obtains excellent results for its clients’. James Monroe and Paul Browning are successfully representing Otsuka Pharmaceutical in the ongoing protection of Abilify, a schizophrenia and mental disorder medication, against companies seeking FDA approval to market generic copies. Leading figure Charles Lipsey acted for AstraZeneca alongside Robert Shaffer in Hatch-Waxman litigation, defending its Onglyza and Kombiglyze products against generic companies seeking FDA approval, and defending claims of invalidity and non-infringement. On the tech side, Palo Alto-based Robert McCauley successfully represented Asetek in numerous matters concerning computer liquid-cooling patents, and in the Reston office, Jeffrey Berkowitz handles the preparation, prosecution and defense of a range of patents for FedEx. Monroe and Laura Masurovsky head the team.

Fish & Richardson P.C. has notable expertise in the life sciences field, with a particular focus on pharmaceutical, medical device and Hatch-Waxman cases. In San Diego, Juanita Brooks and Jonathan Singer won a summary judgment for Allergan in a case opposite generic manufacturer Actavis, successfully validating five patents for the dry-eye drug Restasis and rejecting a challenge to personal jurisdiction. Washington DC-based Ruffin Cordell also won affirmance of a summary judgment for Cox Communications, obtaining a unanimous Federal Circuit ruling in favor of the client against defendant Cambrian Science. The firm has strong capabilities in the tech sector, and Boston-based Frank Scherkenbach obtained a $105m jury award for Power Integrations, the latest victory in a series of patent cases against Fairchild; the group also won summary judgment for Microsoft, finding three IpLearn-Focus patents invalid under Alice. Ann Cathcart Chaplin heads the team from Minneapolis.

Kirkland & Ellis LLP provides ‘uniformly first-class service’, and is ‘at the very top level of firms for patent litigation’. The group has ‘legal prowess, bench strength and thoroughness’, and ‘the attorneys’ attention to detail is unsurpassed’. ‘Phenomenal court advocateGregory Arovas is representing Intel in a nine-patent action brought against Future Link Systems seeking to resolve matters concerning liability along with RAND (reasonable, and non-discriminatory) licensing issues, and the group is also defending Intel against Ericsson’s licensing and litigation efforts regarding Wi-Fi technologies. The group also has notable medical devices experience; Jeannie Heffernan represented Medtronic in a case brought by non-practicing entity (NPE) Atlas IP, successfully obtaining a non-infringement verdict and dismissing a $218m damages claim. The group is headed by Leora Ben-Ami in New York; other key figures include Steven Cherny, Chicago-based Luke Dauchot, and Gregg LoCascio in Washington DC. Samsung, Cisco Systems and C.R. Bard are notable clients.

Quinn Emanuel Urquhart & Sullivan, LLP offers ‘an excellent level of service’, providing ‘practical and pointed advice, which allows the client to make effective decisions’. Charles Verhoeven acted for Dow as plaintiff in a suit brought against Organik Kimya, successfully obtaining a default judgment on trade secret misappropriation claims. In New York, Kathleen Sullivan represented Marvell Technology and Marvell Semiconductor in the Federal Circuit, successfully overturning a ruling of willfulness in a patent infringement judgment related to a media noise algorithm patented by Carnegie Mellon University, significantly reducing the damages award. Raymond Nimrod also secured a complete victory for Everlight Electronics, securing a judgment of invalidity on two LED technology patents owned by Nichia Corporation. David Nelson and Edward DeFranco co-chair the firm’s national IP litigation practice in Chicago and New York respectively; Dominic Cerrito focuses on Hatch-Waxman litigation; and David Perlson is also recommended.

WilmerHale’s ‘responsive’ team has ‘excellent knowledge of patent litigation within the life sciences sector’, and is ‘highly flexible in adapting to challenging situations’. The highly regarded William Lee achieved a victory for Credit Suisse against NPE Realtime Data in the Federal Circuit, which affirmed the district court’s summary judgment of non-infringement and invalidity in the client’s favor. John Regan and New York-based Christopher Noyes represented Braintree in a three-day remand trial, obtaining an infringement verdict against generics manufacturer Novel Laboratories; and Robert Gunther defended Ariosa Diagnostics and Roche Molecular Systems in an infringement claim related to non-invasive pre-natal testing. Litigation vice-chair Amy Wigmore is ‘experienced in all facets of IP litigation’ and ‘puts emphasis on the right topics in court’. Lisa Pirozzolo and Donald Steinberg co-chair the IP litigation practice in Boston.

Fitzpatrick, Cella, Harper & Scinto is noted for its capabilities in the life sciences space and the group is ‘well versed in current case law, and in all issues facing the pharmaceutical, biotechnology and medical device areas’. The ‘exceptionalDominick Conde secured four inter partes review (IPR) defense wins for Ikaria, successfully protecting the client’s INOMAX nitric oxide product, and also obtained an appellate victory for Akorn Pharmaceuticals, Pfizer and InSite Vision in a Hatch-Waxman suit brought by Sandoz. Anthony Zupcic is also a key figure, and recently secured a favorable judgment from the PTAB on behalf of Gilead in patent interference proceedings against Idenix. Other recommended attorneys include Nicholas Cannella, who has significant ITC experience, and Michael Sandonato, who chairs the firm’s electronic and computer technologies practice. All named lawyers are based in New York.

Irell & Manella LLP’s Los Angeles-based group is headed by the highly regarded Morgan Chu, who is a key figure in the market and has been involved in a number of high-profile cases within the technology and life science sectors. Chu and Gary Frischling achieved a victory for Santarus, obtaining a $100m settlement from Par Pharmaceuticals and preventing its application to market generic versions of heartburn drug Zegerid. Wisconsin Alumni Research Foundation is also a key client, and the group recently secured $234m in damages in a suit brought against Apple concerning a data speculation circuit. David Gindler has notable life sciences expertise; Andrei Iancu is highly active before the USPTO; and Jason Sheasby is also recommended. Robert Schwartz and Victor Jih joined from O’Melveny & Myers LLP in June 2015.

Acting primarily on the plaintiff side, McKool Smith is ‘excellent at handling complex patent litigation cases’. ‘The attorneys are bright, highly responsive and fantastic at going to trial’. Practice head Mike McKool has ‘a terrific reputation’, and is ‘a consummate professional with tremendous trial skills’; Douglas Cawley ‘always provides wise counsel’, and Theodore Stevenson is ‘dedicated, creative and strategic’. Highlights included obtaining a favorable $15m verdict for Droplets in which its technology patents were found valid and infringed, and representing Summit 6 in a jury trial against Samsung, securing a $15m verdict in favor of the client. Other key clients include Ericsson, Medtronic, AT&T and Halliburton.

Morrison & Foerster LLP provides ‘both practical and cutting-edge advice to deal with complicated patent issues’, and the team ‘comprises strong advocates with significant knowledge and experience’. Michael Jacobs has ‘outstanding communication skills’, and recently represented Microscan Systems in a series of patent cases related to barcode scanner technology, securing a $4.4m damages award. Practice head Rachel Krevans has strong experience in handling patent matters across numerous sectors; recent highlights include representing Sandoz in a high-profile case brought by Amgen, winning a judgment allowing the client to launch its biosimilar of the Zarxio infection drug. The group also secured a Federal Circuit win on behalf of NuVasive, successfully overturning a $101m patent verdict favoring Warsaw Orthopedic. Leading figure Harold McElhinny splits his time between San Francisco and Tokyo, and Vincent Belusko is the key contact in Los Angeles.

Sidley Austin LLP’s attorneys have ‘impressive, technically sound strategic thinking’, providing ‘valuable practical advice which is focused on the bigger picture’. Key figures include David Pritikin, who has represented Microsoft in a series of cases against Motorola regarding Android-based smartphones; Paul Zegger, who secured a $98m damages award for AstraZeneca, upheld by the Federal Circuit; and Patricia Thayer, who acted for Gilead Sciences, Hoffmann-La Roche and Genentech in Hatch-Waxman litigation against Natco Pharma concerning the influenza drug Tamiflu. Thomas Rein can ‘boil extremely complicated issues down to their essence, completely understand them and explain them to a judge’, and Washington DC-based Jeffrey Kushan and Peter Choi are ‘technically oriented’ and ‘very strong before the patent review board’. All named lawyers are based in Chicago, except where otherwise stated.

Winston & Strawn LLP’s group is ‘very responsive, always determined to go the extra mile’, and provides ‘an impressive quality of written and oral products’. Highlights included securing a $30m jury verdict on behalf of plaintiff FieldTurf in a case against AstroTurf, which found willful infringement of synthetic turf patents, and successfully reversing a $28m jury verdict entered against Comcast in a suit brought by Spirit Communications. Leading attorney George Lombardi also represented Teva Pharmaceuticals in Hatch-Waxman litigation against plaintiffs UCB and UCB Manufacturing, obtaining a summary judgment of non-infringement and allowing the launch of generic drug Metadate, an ADD and ADHD treatment. Key figures Michael Brody and Kevin Warner are ‘both highly intelligent, determined and eager to win’. Sandoz and Dell are also notable clients.

Arnold & Porter Kaye Scholer LLP’s ‘incredibly responsive’ team ‘knows the industry well, anticipates the needs of general counsel, and gives the client 100% of its attention’. Silicon Valley-based Michael Malecek is a ‘strong and focused litigator who is driven to achieve an outcome’, and the team is co-headed by Aaron Stiefel in the New York office. Highlights included winning a jury verdict for Google in an infringement suit brought by ContentGuard, which sought more than $500m in damages over patents covering content protections technology; defeating Teva’s bid for approval to market generic versions of Pfizer’s Viagra drug; and representing Miotox in the enforcement of its license agreement with Allergan covering Botox use. Deborah Fishman and Jeffrey Miller joined the Silicon Valley office in February 2015 from the defunct Dickstein Shapiro. The above named lawyers were part of the legacy Kaye Scholer practice, the complexion of which changed considerably on January 1, 2017 thanks to the merger with Arnold & Porter. New names on this front include Matthew Wolf, Dr. David Marsh and Jin-Suk Park in Washington DC and Silicon Valley-based James Otteson.

Covington & Burling LLP’s ‘well-respected’ team represented Walter Chilcott in a suit against generic manufacturers Lupin and Watson, securing a rejection of invalidity claims against the patents covering the Lo Loestrin birth control pill. In Washington DC, Andrea Reister, Enrique Longton and Paul Berman acted for UCB in an IPR brought by a group of generic companies seeking FDA approval to market generic versions of Vimpat, successfully securing a rejection of the unpatentability claims. Christopher Sipes focuses on pharmaceutical and life science matters; George Pappas has handled numerous bet-the-company cases; and Silicon Valley-based Robert Haslam is the key figure in the technology space.

DLA Piper LLP (US)’s ‘responsive, attentive and committed’ team handled a number of competitor cases in 2015, and recently obtained a $12m trial victory for Isola USA against competitor Taiwan Union Technology, in which patents related to electronic product component production were found to be valid and infringed. The firm also represented Sophos, a network security provider, in infringement and trade secret misappropriation litigation against Fortinet, and acted for Invensys Systems in a seven-patent infringement case brought against Micro Motion and Emerson Electric. The department is co-chaired by John Allcock in San Diego, Mark Fowler in Silicon Valley and Claudia Frost in Houston. Richard Mulloy focuses on multi-patent, multi-jurisdictional disputes, and Chicago-based Paul Steadman has strong mechanical expertise.

Gibson, Dunn & Crutcher LLP’s client roster includes major names within the media, technology, pharmaceutical and chemical industries, and the firm has a strong trial record in various forums across the country. Josh Krevitt and Daniel Thomasch won a complete defense jury verdict for T-Mobile in a $100m patent case brought by Prism Technologies, obtaining a non-infringement ruling on both asserted patents. The firm is currently representing Fitbit, a major provider of fitness trackers, in litigation with competitor Jawbone in seven cases pending in district courts and at the ITC. Electronic Arts and Zynga are also key clients; Los Angeles-based Wayne Barsky secured the affirmation of a district court’s dismissal of an infringement suit against both entities at the Federal Circuit, ending a string of suits brought against the clients. Mark Reiter is the key contact in Dallas, acting for clients including Microsoft, Frito-Lay and IBM.

Jones Day acts on both the plaintiff and the defendant side, and has participated in numerous major competitor cases alongside NPE-related matters. The practice is co-chaired by Greg Lanier in Silicon Valley and Calvin Griffith in Cleveland; the latter successfully defended Celgene in an infringement case brought by Andrulis Pharmaceuticals, which alleged infringement of cancer drug related patents, and also handled a cross-border patent dispute with Gilead Sciences on behalf of Idenix Pharmaceuticals. In Washington DC, Blaney Harper represented Cree, an LED material and device manufacturer, in infringement litigation against plaintiff Honeywell International, obtaining a favorable settlement where all matters were dismissed with prejudice. John Normile is the key figure in New York, and is representing appellant Purdue Pharma in two separate Hatch-Waxman appeals.

At McDermott Will & Emery LLP, Sarah Columbia’s ‘outstanding’ team ‘knows the client’s business and the people of the company’, and is ‘practical, efficient and responsive’. The firm has a notably strong life sciences practice; Columbia and Silicon Valley-based William Gaede represented biopharmaceutical company Amgen in a suit against Sanofi and Regeneron Pharmaceuticals claiming infringement of its patents regarding a cholesterol drug; in March 2016, a jury found in favor of the firm’s client. The group also acted for Ambry Genetics in a test case on genetic diagnostics, in which Myriad sought a preliminary injunction against Ambry’s diagnostic tests; and it represented Biomet in an infringement action against an NPE, Bonutti Skeletal Innovations. On the tech side, the firm is representing Blackberry in an infringement action initiated by Mobile Telecommunications Technologies, and is handling a trade secret misappropriation and infringement claim on behalf of Diablo Technologies. Jay Reiziss and Fabio Marino are key contacts in Washington DC and Silicon Valley respectively.

Paul Hastings LLP saw significant team expansion throughout 2014/5, with a number of new attorneys joining from various major firms across the US. Key figures include Yar Chaikovsky in Palo Alto and Blair Jacobs in Washington DC, both of whom focus on high-stakes technology matters. Naveen Modi, who has notable experience in post-grant proceedings, and litigation partner Robert Masters, both of whom are based in Washington DC, are also recommended. The firm recently obtained a significant victory for Merck in a suit brought against Apotex, in which the patent covering Emend’s active ingredient was found to be valid and enforceable. Jacobs and Chaikovsky also acted for Fairchild Semiconductor, obtaining a full victory in an infringement suit against competitor Power Integrations, securing a $2.4m damages award and a non-infringement finding in a counterclaim. The group also has significant IPR expertise; New York-based Gerald Flattmann recently won two IPRs for Acorda Therapeutics related to its MS treatment Ampyra. IBM, VirnetX and Amgen are other notable clients.

Ropes & Gray LLP’s experience spans a wide range of industries, with the group having handled matters in electrical engineering, pharmacology, biochemistry and aerospace engineering, among others, and it provides strong expertise in cross-border patent matters. The firm successfully represented Spansion in a series of suits against Taiwanese company Macronix, obtaining several sanctions against the defendant and preventing the importation of the infringing flash memory chips. On the life sciences side, New York-based Bradford Badke is representing medical technology company Bio Telemetry (formerly CardioNet) in a series of patent infringement suits across various venues, and the firm is also acting for Purdue Pharma in its claims against several companies, asserting infringement of patents covering its OxyContin product. James Batchelder is the key contact in Silicon Valley; Washington DC-based Steven Baughman has notable cross-border experience; and New York-based Brian Biddinger is also recommended.

Weil, Gotshal & Manges LLP has notable strength in the technology sector, acting for various high-profile companies including Adobe, eBay, Oracle and Samsung. The group successfully defended Adobe in an infringement suit brought by Digital Reg of Texas, obtaining an invalidity finding on both asserted patents, and it represented Illumina at the Federal Circuit in a dispute with Columbia University regarding alleged infringement of each other’s patents covering DNA sequencing technology. Micron Technology is also a key client, for whom the group secured a complete victory in all patent claims asserted by Semcon Tech concerning semiconductor technology. Jared Bobrow and Brian Ferguson head the practice from Silicon Valley and Washington DC respectively. Anne Cappella, Anish Desai and Edward Reines are also recommended.

Baker Botts L.L.P.’s ‘dedicated, responsive and well-organized’ team has ‘a deep understanding of the client’s business and technologies’. Recommended individuals include ‘terrific lawyerRobert Scheinfeld, who ‘assembles excellent teams to handle litigation’, Dallas-based Jonathan Rubenstein, who is ‘especially good at handling the damages aspect of cases’, and Neil Sirota, who is a key contact in the New York office. The firm successfully defended AT&T Mobility in a $260m patent infringement case concerning two location privacy technology patents, securing a unanimous judgment of non-infringement, and it represented repeat client Samsung in Ushijima v Samsung Electronics, obtaining a full victory on all asserted patents relating to LCD and mobile phone products. The firm won another defense verdict for Samsung in ContentGuard Holdings v Amazon.com et al, securing a non-infringement finding on nine patents covering digital rights management technology. Bart Showalter heads the practice in Dallas.

Cravath, Swaine & Moore LLP’s key highlights include representing Alarm.com in a suit filed by Vivint, which alleges infringement of six patents covering remote monitoring systems, acting for Medinol in a number of disputes and arbitrations regarding its stent products, and representing Mylan subsidiary Dey in infringement litigation against Teva seeking to prevent the latter from marketing generic versions of Mylan’s respiratory drug Perforomist. Chairman Evan Chesler leads the team from New York, where Keith Hummel, David Kappos and Roger Brooks* are also leading figures. The lawyers handled cases across a range of sectors, including consumer products, pharmaceuticals, telecoms and media. David Marriott is recommended for litigation and alternative dispute resolution. *Since publication, Roger Brooks has retired from the firm's litigation practice.

Goodwin Procter LLP provides ‘highly practical advice’ and ‘strong ongoing support’ to its diverse client base, and has recently secured two significant Supreme Court victories, both of which had implication for the wider market. David Hashmall, Elizabeth Holland and appellate lawyer William Jay acted for Teva Pharmaceuticals in a series of cases before the district court, the Federal Circuit and the Supreme Court concerning its Copaxone product, winning a complete victory and successfully reversing a decision invalidating one of Teva’s patents. The firm also acted for B&B Hardware, successfully reversing the Federal Circuit’s rejection of B&B’s issue-preclusion argument; and successfully represented Veracode in an infringement suit brought against Appthority concerning static analysis tools. Jennifer Albert is a key figure in Washington DC along with ITC expert Marcia Sundeen, who recently joined from Kenyon & Kenyon LLP. Douglas Kline heads the team in Boston.

Keker & Van Nest, L.L.P.’s San Francisco-based team is headed by ‘terrific litigator’ Robert Van Nest, who handled a number of infringement cases across various sectors in 2015. Highlights included representing Skyhook Wireless in its infringement and anti-competitive conduct suit against Google, winning a pre-trial motion which led to a favorable settlement, and defending flash memory manufacturer SanDisk against Round Rock’s 15-patent infringement claim, successfully securing an invalidity and non-infringement verdict. Christa Anderson also defended Veeva Systems in a $100m infringement claim brought by competitor Prolifiq Software, successfully reducing the number of patents in question and securing a favorable settlement. Ashok Ramani is the other key figure, and has recently handled a number of ITC matters. Other key clients include Pure Storage, New Relic and Electronic Arts.

Kenyon & Kenyon LLP’s cross-sector client list includes names such as Hewlett-Packard, Sony, Lenovo and Toyota. Patrick Herman and counsel George Badenoch represented the latter in a three-year series of patent suits against American Vehicular Sciences, an Acacia Technologies subsidiary, and successfully obtained the dismissal of each litigation with prejudice in April 2015. Flock and Washington DC-based John Hutchins also acted for Lenovo as respondent in a suit brought by Optical Devices, and were granted a motion to terminate the investigation, subsequently affirmed by the ITC. Other key highlights included representing two Volkswagen affiliates in a six-patent claim initiated by Signal IP; securing a reversal of an IPR re-examination at the Federal Circuit on behalf of Airbus, and defending Sony against MONKEYmedia in multi-patent litigation concerning interactive video technology. European practice chair Michael Lennon is also recommended.

Latham & Watkins LLP is ‘excellent in all aspects - particularly with regard to response times, strategy development and industry knowledge’, and the firm provides ‘an efficient and strategic approach to all cases’. The group recently secured a favorable verdict for InterDigital Communications in which smartphones and mobile devices produced by ZTE Corporation were found to be infringing InterDigital’s 3G technology patents. Maximilian Grant also won a significant ruling in an en banc hearing at the Federal Circuit, which reversed an earlier ruling regarding the ITC’s authority in patent cases; the case centers around a patent dispute over fingerprinting technologies between the firm’s plaintiff client, Cross Match Technologies, and South Korean company Suprema. In San Francisco, Roger Chin achieved a trial victory and subsequent affirmance in Novartis’ suit concerning its dementia treatment product. Matthew Moore, Douglas Lumish and Kenneth Schuler co-chair the practice from Washington DC, Silicon Valley and Chicago respectively.

Norton Rose Fulbright US LLP saw the addition of Paul Keller to its New York office, bringing with him expertise in patent and trade secret litigation across various sectors, including medical devices, software and semiconductor technology. IP head James Repass acts for plaintiffs and defendants, and has a strong track record in appellate cases; and Charles Walker has been involved in numerous high-value disputes nationwide. Austin-based Mark Garrett represented Euro-Pro in an infringement suit concerning the sale of its cooking systems to large retailers, and also acted for the client in two IPR proceedings initiated by plaintiff Acorne Enterprises. Another key client is Shell Oil, which the group recently defended in a suit alleging infringement of a patent covering a benzene recovery process. Dan Davison, Richard Zembek and Dr. Eric Hall are recommended.

A key highlight for the team at Orrick, Herrington & Sutcliffe LLP was the successful representation of MobileIron in a suit brought by competitor Good Technology claiming infringement of four patents and false advertising. It has also been acting for Dow AgroSciences in multiple suits filed by Bayer against the client’s herbicide-tolerant Enlist product, and elsewhere, it achieved a summary judgment victory for LG Electronics and AT&T in the long-running series of suits brought by Adaptix against a number of mobile device manufacturers. Denise Mingrone heads the team in Silicon Valley, and has strong expertise in trade secret litigation and Section 337 proceedings. In New York, Alex Chachkes focuses on a broad range of technologies, including telecoms, microprocessors and wireless devices; Orange Country-based Mark Wine is also recommended.

Cooley LLP’s ‘highly knowledgeable’ team provides ‘excellent client service, good industry knowledge and a strong commercial approach’. Key figure Jim Brogan is ‘an excellent litigator’ and ‘great to work with’, and is currently representing computer technology company ACQIS in a patent enforcement action against EMC Corporation. Wayne Stacy is also a leading attorney, and is serving as lead trial counsel to Israel-based Camtek in infringement litigation with Rudolph Technologies; Rudolph asserts that Camtek’s circuit inspection machines infringe its patents. Orion Armon is the other name to note and is representing Dot Hill Systems in an infringement and breach of contract action brought by Crossroads Systems, as well as in related inter partes reviews.

At Knobbe Martens Olson & Bear LLP, managing partner Steven Nataupsky successfully represented mophie, obtaining a permanent injunction and $8.7m in damages in a case against Serve Global and Dharmesh Shah. John Sganga acted for consumer electronics retailer Monoprice, defending the client against infringement claims brought by Kreative Power concerning a utility patent and a design patent. The group also has strong experience in the medical devices sector, and Joe Jennings acted for start-up orthopedic device manufacturer KFx Medical, obtaining a verdict of infringement against the defendant along with $35m in damages. Joseph Re, meanwhile, represented Applied Medical Resources in an inventorship dispute filed by Covidien and Gaya, obtaining a favorable decision on all inventorship and ownership claims. William Zimmerman is a key figure in Washington DC. All named attorneys are based in Irving, except where otherwise stated.

Mayer Brown’s team is ‘an invaluable resource to clients’, providing ‘zealous and successful representation whilst keeping costs reasonable’, and maintaining ‘an excellent track record of efficient case resolution’. Highlights included representing plaintiff Airbus Helicopters in an infringement claim and protracted dispute with Bell Helicopter, obtaining a permanent injunction against the defendant for the remaining life of the plaintiff’s landing gear patent. The firm also secured a favorable settlement for Bristol-Myers Squibb in its suit against Genentech concerning infringement of patents covering melanoma medication, and acted for Marvell Semiconductor in a suit brought by Emulex, significantly reducing damages from $26m to $5m. Alan Grimaldi, Joseph Mahoney and John Mancini lead the practice from Washington DC, Chicago and New York respectively.

O’Melveny & Myers LLP provides ‘outstanding legal services in patent cases’, and the ‘attorneys are knowledgeable, experienced and professional, always considering the context of the immediate problem as well as the bigger picture’. Ryan Yagura provides ‘valuable advice and reasoning’, and recently acted for Samsung along with San Francisco-based George Riley, successfully settling a high-profile dispute with Microsoft concerning patents related to the Android operating system. Mark Samuels also represented TPV Technology before the Federal Circuit, successfully affirming a district court summary judgment concerning its computer monitors and televisions. Darin Snyder and David Eberhart are recommended in San Francisco, and John Kappos is a key figure in Newport Beach.

Paul, Weiss, Rifkind, Wharton & Garrison LLP’s ‘highly responsive’ team has strong experience in the life sciences sector. Highlights included acting for Amgen in infringement and unfair competition litigation against Sandoz, successfully obtaining an injunction preventing the launch of Zarxio, a biosimilar of Amgen’s Neupogen product. The group is currently representing Biogen in a suit against several competitors regarding a patent covering Avonex, an MS treatment. Practice chair Nicholas Groombridge is ‘a top-notch patent trial lawyer’ and ‘an excellent strategic adviser’, and Catherine Nyarady is ‘very focused on trial’, and has ‘a great work ethic’. Washington DC-based David Ball has notable tech expertise, and Kenneth Gallo is also recommended.

Baker & Hostetler LLP saw a significant increase in team strength following its merger with IP boutique Woodcock Washburn. In Washington DC, William Bergmann and Michael Anderson acted for Booz Allen Hamilton in patent infringement and trade secret litigation concerning healthcare management patents; Palo Alto-based John Donohue defended L-3 Communications in an infringement action brought by Power Survey Company; and Daniel Goettle is acting for Hewlett-Packard in a multi-patent suit brought by Audio MPEG. John Weber heads the national IP group, and Kevin Kirsch and Gary Levin are the leading figures in Ohio and Philadelphia respectively.

Cadwalader, Wickersham & Taft LLP’s ‘excellent’ group defended AT&T Mobility in a patent infringement case related to 4G wireless networks, successfully obtaining a summary judgment of non-infringement on four asserted claims. The firm also represented Freescale Semiconductor in a suit brought by MediaTek, which concerned patents covering semiconductor bus arbitration technology and power management technology. Senior counsel Christopher Hughes, ITC specialist Alexander Hadjis and technology expert John Moehringer are all key individuals. Other notable clients include Microsoft, AngioDynamics and ATEN.

Dentons’s ‘excellent’ team is ‘distinguished by its relationship management, rational billing practice and obtaining of superior outcomes’. Practice head Song Jung joined the group as a result of its combination with McKenna Long & Aldridge in 2015, and is ‘highly knowledgeable on IP litigation and prosecution matters’. Other arrivals include Gaspare Bono, who is ‘excellent at business litigation, business strategy and all matters involving conflict’, and Lora Brzezynski, who is currently representing Jaxon Engineering & Maintenance as defendant in a bet-the-company case against a major competitor. Other highlights included acting for Nistica in a six-patent infringement case involving fiber optic technology, a matter handled by practice co-head Robert Kramer, who is based in Silicon Valley. All other named attorneys are based in Washington DC.

Kasowitz, Benson, Torres & Friedman LLP secured a jury trial verdict in favor of Dr. David Jang against medical device company Boston Scientific, and obtained a per curiam affirmance on behalf of Google at the Federal Circuit in a suit brought by MasterObjects, which claimed infringement of patents related to intelligent search fields. The group also achieved an early resolution for Google in proceedings initiated by SuperSpeed Software, which alleged that the Google Docs and Google Drive storage devices infringed its data access patent. The team is based in Silicon Valley, the key figures being Jeffrey Toney, Jonathan Waldrop, Darcy Jones and Steven Carlson.

Jeffrey Ostrow’s ‘excellent’ group at Simpson Thacher & Bartlett LLP is ‘very responsive to client requests, very thorough in its follow-up on pending matters’ and provides ‘useful guidance when entering into negotiations with third parties’. Ostrow, Harrison Frahn and Patrick King obtained a successful Federal Circuit decision for Qualcomm, invalidating all infringement claims brought by Eon Corporation concerning software functions. The team is also defending Cisco Systems in an infringement suit initiated by Commil; the team initially won a favorable decision in district court, but following the judge’s order of a re-trial due to statements made to the jury by the Cisco’s local counsel, a second jury found infringement and awarded damages; in the subsequent appeal before the Federal Circuit, the court granted the client’s request for a new trial, a decision that was affirmed by the Supreme Court in a judicial review that led to a significant ruling for the tech industry regarding induced infringement. Other notable clients include Spotify, Eli Lilly and Daiichi Sankyo.

At Steptoe & Johnson LLP, Palo Alto-based William Abrams continues to act for Google in two 13-patent infringement cases against Skyhook involving location technology, and recently obtained a summary judgment of invalidity on two asserted patents. In Washington DC, Timothy Bickham represented Huawei in a seven-patent case brought by Acacia-owned entity Innovative Display Technologies, securing a favorable settlement in mediation following positive claim construction, and practice head John Caracappa obtained a settlement on behalf of Honda in an infringement action concerning operational systems, successfully representing the client in related IPR proceedings. Dr. Harold Fox is the other key figure.

Headed by Dimitrios Drivas, White & Case LLP provides ‘excellent ongoing guidance’, and ‘takes the time to understand the client’s business in order to provide better legal advice’. Leading attorney Kevin McGann is ‘a great court advocate’ who ‘goes very deep into the facts of cases, and is able to effectively put forward high-level arguments’. Shamita Etienne-Cummings and David Tennant are currently representing GlobalFoundries in a seven-patent suit concerning high-density plasma generation. The group also acts for American Express in concurrent district court and USPTO proceedings involving financial product patents, and is representing TPK Touch Solutions in an action against competitor Wintek that concerns touch panels for cell phones. Life sciences expert Jeffrey Oelke is also recommended.


Patent litigation: International Trade Commission

Index of tables

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

Leading lawyers

  1. 1

ITC boutique Adduci, Mastriani & Schaumberg, LLP is ‘a leading firm in this practice area’, with ‘an unbeatable track record of appearances before the Commission’. Tom Schaumberg has ‘a long history and an excellent reputation in relation to ITC work’; James Adduci is ‘smooth and effective in his approach’; and Louis Mastriani has ‘a head-on approach and solid litigation experience’. The group’s broad range of expertise includes domestic industry, importation and public interest, as well as practice and procedure before the ITC. Adduci is currently representing Soitec as respondent in a patent infringement case regarding silicon-on-insulator wafers, and Mastriani continues to act for plaintiff Otter Products, advising on Section 337 matters in its suit regarding protective cases for electronic devices and components thereof. Former ITC chair Deanna Tanner Okun is also recommended, as are Michael Doane and Sarah Hamblin.

Finnegan, Henderson, Farabow, Garrett & Dunner LLP provides a ‘top-notch service in ITC cases’. The group ‘is strong in the technology sector, interfacing well with the client’s internal teams’, and the attorneys have ‘a deep knowledge of the ITC forum and procedures’. Elizabeth Niemeyer recently acted for Beijing Nutrichem and Jiangxi Heyi Chemicals in a suit brought by FMC Corp alleging unlawful importation of sulfentrazone, securing a victory on multiple key terms and forcing the plaintiffs to drop claims against three products. Niemeyer and Doris Johnson Hines also represented LG Electronics, successfully defending it against claims brought by Enterprise Systems Technologies concerning the importation of smartphones, tablets, laptops and other computing devices. The group covers a diverse range of technologies, including GPS units, medical devices and LED systems. Other notable clients include Medtronic, Eli Lilly and Toshiba. Smith Brittingham and Christine Lehman co-head the Washington DC-based team.

Covington & Burling LLP’s team is ‘extremely responsive, and is excellent at developing winning strategies for patent claims’. Sturgis Sobin and Brian Bieluchcan see around every corner’, and ‘are excellent at gauging the extent to which arguments will succeed’. Highlights included representing Samsung in a claim brought by Enterprise Systems Technologies concerning the infringement of patents related to mobile devices, and obtaining a favorable summary determination and a dismissal of the plaintiff’s key patent from the ITC case. The group also successfully represented plaintiff Knowles Electronics in a competitor case involving MEMS microphones, obtaining a favorable global settlement, and acted for Samsung in Black Hills Media v Samsung Electronics, successfully dismissing the majority of asserted claims as invalid. Other key figures include the well-regarded Maureen Browne, as well as Alexander Chinoy and Shara Aranoff, all of whom are based in Washington DC.

Kirkland & Ellis LLP’s cross-office team has a strong presence in Chicago, New York and Washington DC, and continues to handle cases within a broad range of sectors, including technology, medical devices and retail products. In the Washington DC office, Gregg LoCascio and Sean McEldowney are representing BASF in an infringement investigation of patents asserted against Umicore and Makita Corp concerning NMC-based lithium-ion batteries; and in New York, Leora Ben-Ami and Patricia Carson secured a favorable settlement for Baxter International, ending parallel litigation filed by the client against Ethicon’s ‘Surgiflo’ hemostatic device product. Gregory Arovas has acted for various major technology clients, including IBM, Samsung and Xerox. Los Angeles-based Michael De Vries is also a key figure, who, along with Gianni Cutri, represented Lucky Brand Dungarees in a Section 337 investigation regarding laser-abraded denim products.

McDermott Will & Emery LLP is ‘well staffed for ITC matters’, and is now even more so thanks to the additions of Charles McMahon and ‘experienced ITC practitioner’ Jay Reiziss, who joined from Brinks Gilson & Lione in Chicago and Washington DC respectively. Reiziss and McMahon are acting for ZTE Corporation in three ongoing patent cases, and have successfully invalidated infringement claims against nine telecoms-related patents before the ITC. Orange County-based Daniel Foster achieved a significant victory for Panasonic against infringement claims brought by Black Hills Media, securing summary judgment on all six asserted patents, and he also represented Nintendo in an ITC investigation brought by Optical Devices, successfully arguing the plaintiff’s lack of standing and securing a favorable summary determination. Sarah Columbia heads the practice from Boston, where Melissa Nott Davis is also a leading figure.

Fish & Richardson P.C.’s group is led by litigator Ann Cathcart Chaplin and patent attorney John Hayden, and has a deep familiarity with the ITC’s rules and procedures. Key figures include the highly regarded Ruffin Cordell, who has handled numerous patent and trade secret cases before the ITC, and hi-tech expert Michael McKeon, who has strong experience in telecoms, semiconductors and various consumer electronics. Andrew Kopsidas is also a name to note, and has recently acted for Bose Corporation as plaintiff in a suit against Monster, successfully asserting infringement of patents covering an earpiece device. Other key clients of the firm include Samsung, LG Electronics, Kingston and Sling Media. The group is based in Washington DC.

Section 337 specialist Foster, Murphy, Altman & Nickel PC represents plaintiffs, respondents and third parties in litigation before the ITC, seeking remedies for unfair practices related to imports. Key attorneys include David Foster, who represented plaintiff Tessera in two investigations related to seminal technology in modern integrated circuit infrastructure, securing a violation finding against numerous defendants, including Qualcomm, Motorola and ST Micro; Barbara Murphy, who is currently acting for controller chip manufacturer MStar in Thomas Licensing SAS v MStar Semiconductor; and James Altman, who has a strong background in science and technology, and has handled numerous post-order enforcement issues. Other key highlights included representing respondents LSI and Seagate in a multi-patent infringement investigation brought by Rambus, and defending BDT in a competitor investigation against Overland Storage.

Morrison & Foerster LLP maintains a strong client base within the internet, consumer electronics and life sciences sectors, and the team is ‘composed of strong advocates with significant knowledge and experience’. ITC practice chair Brian Busey has notable expertise in high-stakes Section 337 cases, and successfully defended Kyocera Corporation in an infringement suit brought by Technology Properties Limited, obtaining a non-infringement verdict on the asserted microprocessor patent. Busey also acted for Huawei Technologies, defending against FlashPoint Technology’s assertion that Huawei infringed three patents related to electronic imaging devices. Other notable figures in the Washington DC office include Hector Gallegos and Daniel Muino, and IP co-chair Rachel Krevans is the key contact in the San Francisco office.

Acting primarily on the plaintiff side, Quinn Emanuel Urquhart & Sullivan, LLP provides ‘an excellent level of service’, and the group’s ‘ability to learn a business, industry, product or technology is astounding - in terms of value, you get what you pay for’. Raymond Nimrod and Washington DC-based Paul Brinkman acted for Cree in a Section 337 investigation before the ITC, alleging infringement of eight patents related to LED technology covering chips, packages and end products. The above attorneys, along with San Francisco-based Charles Verhoeven, represented Dow and Rohm & Haas against Organik Kimya, successfully obtaining a 25-year exclusion order and $2m in monetary sanctions. Toshiba is also a key client along with Epson and MediaTek; Alex Lasher represented the latter along with New York-based Eric Huang in a six-patent ITC investigation concerning optical disc drives, successfully terminating the proceedings due to lack of standing. All named lawyers are based in Washington DC, except where otherwise stated.

At Sidley Austin LLP, Brian Nester and David Pritikin head the practice from Washington DC and Chicago respectively, advising on every stage of ITC investigations and proceedings. The group is currently defending Summit AGRO North America Holding Corporation in a suit regarding sulfonamide preparation, and has successfully obtained an initial determination of invalidity on the patent asserted by FMC Corp. The firm acted for Microsoft in a series of high-profile cases against Motorola concerning Android-based smartphones, prevailing in two ITC proceedings and obtaining exclusion orders against the accused Motorola phones. Chicago-based Richard Cederoth is also recommended, and has recently participated in the defense of Nokia and Microsoft against InterDigital, successfully securing a non-infringement verdict.

Winston & Strawn LLP has ‘a great volume of expertise in ITC cases’, and the group is ‘responsive, well organized and effective’. Practice head Thomas Jarvis is ‘particularly good at domestic industry and public interest matters’, and has ‘a great institutionalized knowledge of the inner workings of the ITC’. Steven Anzalone is also a key figure, and is ‘especially good at handling the technical aspects of cases’. Highlights included acting for Ericsson in two parallel infringement cases at the ITC against Apple, initiating enforcement of patent rights following a failure to obtain a new license. Paul Goulet is ‘recommended for his great wealth of experience in all areas’.

Baker Botts L.L.P. provides ‘high-quality legal services’, and has ‘a strong team that knows what it is doing’. The practice is led by Mark Whitaker, who has ‘great depth of knowledge and diplomacy’ and is ‘excellent at articulating the key issues’. Austin-based Kevin Meek is also a key figure, bringing ‘a lot of energy and drive to the team’. Highlights included acting for The Manitowoc Company in an ITC case initiated against China-based Sany Heavy Industry seeking exclusion of infringing crawler cranes using position counterweight technology; and representing Dell in an investigation brought by NXP involving NFC technology and battery-powered device patents. The group is based in Washington DC.

DLA Piper LLP (US) is ‘excellent at handling public interest and domestic industry issues’, and the group’s ‘response times are surprisingly fast, especially in cross-border matters’. The firm has a strong Silicon Valley presence, and its client roster includes numerous major technology companies including CSR/Zoran, GSI Technology and Toshiba. In recent highlights, Mark Fowler obtained a termination of plaintiff claims on behalf of Toshiba, securing injunctive relief on three patents related to optical disc drives. Fowler also acted for Silicon Labs and Samsung in a suit brought by Cresta Technology, successfully obtaining a finding of non-infringement on all asserted patents. In Chicago, Matthew Satchwell and Paul Steadmangrasp the nature of the case at a very early stage’, and ‘quickly create an effective strategy for their client’. Joseph Lavelle is the key contact in Washington DC, and San Diego-based Erin Gibson is also recommended.

Section 337 specialist Foster, Murphy, Altman & Nickel PC represents plaintiffs, respondents and third parties in litigation before the ITC, seeking remedies for unfair practices related to imports. Key attorneys include David Foster, who successfully obtained a summary judgment of violation for plaintiffs Segway and Deka Products in a suit against numerous Chinese manufacturers and US distributors; Barbara Murphy, who is currently defending Skechers USA against infringement claims brought by Converse; and James Altman, who has a strong background in science and technology, and who has handled numerous post-order enforcement issues. Other key highlights included representing Advanced Research Corporation in an infringement case involving high-density storage tapes, and acting for Novo Nordisk in an investigation brought by Baxter Healthcare regarding replacements for deficient proteins in hemophilia A patients.

Goodwin Procter LLP’s practice was recently bolstered by the arrival of Marcia Sundeen, who has brought a number of clients to the firm including The Gap and Hewlett-Packard. Sundeen represented The Gap in an ITC infringement action brought by RevoLaze and TechnoLines concerning laser treatment of denim garments, and acted for Lenovo in a case regarding optical disc drive related patents. Jennifer Albert and Mark Abate are also leading figures, and recently acted for respondent Menard, accused of violating a cease and desist order, along with intervener Pass & Seymour in a parallel enforcement action. Ce Li’s key clients include Sinowell Shanghai and ZTE Corporation.

Latham & Watkins LLP’s ‘responsive and competent’ team handled numerous infringement suits in 2015, and was particularly active in a number of sectors, including aircraft, electromechanical devices, LEDs and wireless communication systems. Bert Reiser and Maximilian Grant acted for NVIDIA Corporation in an ITC investigation brought against Samsung and Qualcomm alleging infringement of seven patents related to mobile phones and tablets. The group is also defending NVIDIA against graphics processing unit related patent claims brought by Samsung. Other key figures include Matthew Moore, who participated in the ITC investigation against Suprema on behalf of Cross Match Technologies, and Richard Bress, who represents InterDigital Communications in an infringement case against Nokia, Huawei Technologies, ZTE Corp and LG regarding 3G technology.

Mayer Brown has ‘a deep technical knowledge and mastery of practicing before the ITC’, and provides ‘expert technical analyses of asserted patents in the infringement and validity contexts’. Jamie Beaber is ‘an excellent first-chair litigator’, who is ‘clearly involved in the day-to-day management and decision-making of his cases’. Gary Hnath is also a key figure, and recently represented a group of respondents, including Ninestar Image Tech, Nano Pacific and Zhuhai Seine Technology, in an investigation brought by Canon concerning toner cartridges. The firm is currently acting for BMC Medical, defending it against ResMed’s bid to exclude sleep apnea products, including CPAP units and masks, from entering the US. Alan Grimaldi and New York-based John Mancini are also recommended.

Orrick, Herrington & Sutcliffe LLP acts for US and international companies across various sectors, and has recently represented Fujifilm in an ITC investigation alongside parallel district court proceedings, asserting four patents against respondent IBM concerning magnetic tape formatting. The group also acted for Yamaha in an infringement investigation brought by Freescale Semiconductor, defending it against claims that it infringed circuitry-related patents. Other key clients include Canon, Brocade Communications Systems and Dish Network. Denise Mingrone chairs the IP group, and Alex Chachkes and Mark Wine are the key contacts in New York and Orange County respectively. Menlo Park-based Amy Van Zant joined in 2015 from Covington & Burling LLP, and has strong experience in litigating before the ITC.

Steptoe & Johnson LLP’s practice is led by Charles Schill and Steven Adkins, both of whom have handled numerous patent and trade secret cases before the ITC and US Customs and Border Protection. Department head John Caracappa currently represents Realtek in an ITC action brought by Andrea Electronics concerning five patents related to noise, interference and echo cancellation technologies. The case is running alongside six inter partes review petitions against the same patents before the PTAB. Harold Fox co-heads the department, and counsel Matthew Bathon is also recommended.

WilmerHale continues to act for a broad range of tech companies, securing significant victories at the ITC and following investigations through to federal appeal. Donald Steinberg chairs the IP practice in Boston, which is co-chaired by litigator Lisa Pirozzolo. The group also includes the highly regarded William Lee in Boston and James Quarles in Washington DC; the latter has extensive trial experience before the ITC and has handled cases involving a range of technologies, including GPS chips and semiconductor technology. Other notable lawyers include Wayne Stoner and Palo Alto-based Mark Selwyn.


Patents: portfolio management and licensing

Index of tables

  1. Patents: portfolio management and licensing
  2. Leading lawyers

Finnegan, Henderson, Farabow, Garrett & Dunner LLP’s ‘outstanding’ US team acts for some of the world’s leading technology and pharmaceutical companies, including AbbVie, Caterpillar and Toshiba, on a broad range of IP-related matters. James Monroe and Paul Browning are part of a team that is assisting Otsuka Pharmaceutical with the management of its worldwide patent portfolio for its key products, as well as the sale and purchase of IP. The group continues to act for Toyota Motor, Toyota Motor Engineering & Manufacturing North America and Toyota Motor Sales USA in a wide array of patent and technology license agreements, research agreements with government laboratories, university licensing, and various types of complex commercial transactions involving IP, as well as advising on export control matters and giving opinions. Other recent representative matters include various freedom to operate analyses of cross-border acquisitions. Gregory Gramenopoulos heads the electrical and computer technology practice and advises Axis Communications on patent acquisition and licensing matters. In addition to transactional counseling, the team also advises on pre-litigation strategies. Boston-based Leslie McDonell takes ‘a holistic view making sure that a client’s actions in one case doesn’t create problems elsewhere in the portfolio’. William Pratt, Thomas Irving and Reston-based Anthony Gutowski are further names to note. All individuals are based in Washington DC unless otherwise stated.

Morrison & Foerster LLP’s patent group operates from seven of its US offices and fields a number of well-regarded practitioners who have strength in the biotechnology sector. It also has substantial experience acting for clients involved in electronics and nanotechnology. Otis Littlefield, who splits his time between San Francisco and London, is recommended, as is Palo Alto-based Catherine Polizzi, who has particular expertise in the life sciences field. Polizzi is assisting Genentech with IP protection, negotiating complex services, licensing and outsourcing agreements in its establishment of relationships with Chinese medical institutions and service providers. Palo Alto-based Mika Reiner Mayer and James Mullen work regularly with Gilead Sciences and are advising on its HIV patent portfolio (including conducting due diligence in connection with potential acquisitions) and its oncology patents. Peter Yim and Michael Ward are also recommended.

Weil, Gotshal & Manges LLP’s practice, led by the well-regarded Michael Epstein, advises a broad range of technology companies from various industries. It regularly advises on cross-border standalone technology and IP transactions, including patent acquisitions, licensing agreements, e-commerce agreements, and research and development collaborations, and it also handles the management of patent portfolios. Highlights saw Epstein advising Array BioPharma on a number of technology and IP-related matters, including the acquisition of two oncology drugs from Novartis. Jeffrey Osterman counts Sanofi, Eli Lilly and Intel among his clients and, in 2015, he assisted Sanofi with its $4.2bn worldwide licensing agreement with Hanmi Pharmaceutical to commercialize a portfolio of diabetes treatments, and he advised Intel in relation to its $16.7bn acquisition of Altera. Charan Sandhu and Silicon Valley-based Karen Ballack and John Brockland are also highly recommended. All individuals above are based in New York except where otherwise stated.

Baker Botts L.L.P.’s strength in IP was reinforced in 2015 when the firm welcomed a team of IP attorneys from Vinson & Elkins LLP in September and then followed this up by opening a new San Francisco office in October. The group is recommended for conducting IP due diligence in relation to M&A deals, for clients from a variety of industries. Dallas-based Bart Showalter heads the firm-wide IP practice and has particular expertise in procurement and licensing matters in the electronics, telecoms and software fields. Showalter is part of a team that has been advising Cisco Systems on various patent licensing and portfolio development matters, including numerous cross-licensing agreements with other multinational technology companies. Palo Alto-based Travis Thomas has been assisting Facebook with the development and management of its worldwide patent portfolio. Sandra Lee in New York is recommended in the biotechnology area, acting for major pharmaceutical companies in their development and management of worldwide patent portfolios. Luke Pedersen and Robert Scheinfeld, in Washington DC and New York respectively, are also recommended. New clients for the firm include Hitachi, Johnson & Johnson and Yellowpages.com.

Covington & Burling LLP has extensive expertise in the life sciences sector, and regularly assists pharmaceutical, biotech and e-health clients with strategic patent licensing matters, including development, manufacturing and marketing rights agreements. It also assists clients with IP asset and licensing due diligence regarding M&A transactions in the IT and life sciences sectors. Recent highlights include acting for Microsoft in its acquisitions of Nokia and Skype, assisting AbbVie with its R&D collaboration with Calico, and handling various other transactions for the likes of Gilead Sciences, Sanofi, and Johnson & Johnson. Life sciences expert Sarah Hoagland assisted AstraZeneca with its collaborations with Celgene and Valeant, and in its agreement with Kyowa Hakko Kirin for an exclusive option to commercialize benralizumab in Japan. John Hurvitz leads the team, which also includes Silicon Valley-based Emily Leonard, of counsel Edward Dixon, San Francisco-based Ingrid Rechtin and James Snipes. All individuals are based in Washington DC unless otherwise stated.

DLA Piper LLP (US) has a strong US and global practice in patent licensing, sales and acquisitions, patent due diligence, patent counseling and strategic patent asset management. Life sciences remains a core part of the practice, and this was further enhanced in 2015 with the recruitment of Boston-based Mike McGurk from Finnegan, Henderson, Farabow, Garrett & Dunner LLP. McGurk manages all aspects of Nanotherapeutics’ patent portfolio, including responding to US and foreign patent office actions and assisting with monetizing certain patents. He is also assisting Geneius Biotechnology build its patent portfolio in the personalized oncology therapeutic platforms space, including the identification, preparation and filing of patents covering globally. Lisa Haile is another name to note in the life sciences field, and manages the patent portfolios of Histogen and Synthetic Genomics. On the patent licensing front, Philadelphia-based Darius Gambino advised private equity firm Wind Point Partners on the patent licensing aspects of the acquisition by its portfolio company, Vertellus, of Dow’s sodium borohydride business. Silicon Valley-based Mark Radcliffe is recommended for his experience in software matters, including open-source and cloud computing. Key individuals include practice head Mark Lehberg in San Diego and Jeffrey Aronson in Silicon Valley.

Fenwick & West LLP has an impressive client list that features numerous household-name technology companies, such as Spotify, Twitter and Facebook. On behalf of these and other clients, the firm regularly handles global portfolio management issues and IP counseling. The team also has extensive experience working with leading universities and research institutes, advising globally on patent and other IP licensing issues. San Francisco-based David Hayes advises Nike on the ownership of its international IP rights, and he assists the client with domestic patent issues and technology transactions. Rajiv Patel, Robert Hulse and recently acquired life sciences specialist Daniel Becker - who arrived from Dechert LLP - are also names to note; all three are based in Mountain View. The team has worked with Twitter on patent portfolio development and strategy since 2007, filing its first-ever technology patent, and has advised on the acquisition of approximately 900 patents from IBM and various cross-licensing agreements.

Led by Kevin Gray in Dallas, the team at Fish & Richardson P.C. handles all types of IP licensing, as well as due diligence, portfolio management and strategic counseling. Boston-based Jeffrey Barclay has notable experience in building global patent portfolios, licensing technologies and assisting with litigation. The team recently advised a healthcare sector client on its global IP policy, and assisted a software and service company with its platform as a service agreement. Representative clients include Fortune 100 companies, mid-sized companies, and early-stage and venture-backed companies. New York-based Christopher Bowley is also recommended.

Foley & Lardner LLP is a popular choice for manufacturing, hi-tech and healthcare clients, and is regularly called upon to advise on the IP aspects of acquisitions and sales. IP group chair Michele Simkin, based in Washington DC, is regularly retained by life sciences clients, and assists with patent procurement and portfolio management, licensing agreements, due diligence related to IP acquisitions and sales, and freedom to operate analyses. Also in Washington DC, Pavan Agarwal has experience in licensing negotiations and portfolio management, and Andrew Rawlins is recommended in the fields of life sciences, medical devices and automotives. John Lanza in Boston has particular expertise in electronics and technology and regularly assists Google with patent portfolio development. San Diego-based transactional lawyer Richard Kaufman is also a key member of the life sciences practice and is recommended, as are Chicago-based Aaron Tantleff and Milwaukee-based Jeffrey Gundersen.

IP boutique Knobbe Martens Olson & Bear LLP handles IP matters for clients from a broad range of industries, from growing start-ups to Fortune 500 companies. The full-service practice covers licensing, transactions, IP due diligence and portfolio management, and it also handles clearance issues and brand and product line extensions. Gerard Von Hoffmann successfully built patent portfolios for medical device start-up companies Direct Flow Medical and Claret Medical. Other representative clients include Relievant Medsystems, Sienna Labs and Ulthera. The practice is based in Orange County, where Salima Merani is a key contact.

Pillsbury Winthrop Shaw Pittman LLP’s excellent reputation is built upon its expertise in a number of key sectors, including electrical and mechanical engineering, biology, chemistry and physics. In 2015, the team was strengthened further by the arrival of six key individuals from Bracewell LLP and Goodwin Procter LLP; among the new intake is the highly recommended Josh Tucker, who splits his time between Austin and Silicon Valley. McLean-based Jack Barufka co-heads the IP practice and is a key name to note for IP counseling and prosecution matters. Patrick Doody has extensive experience in due diligence and regularly counsels clients in licensing and transactional matters, patent prosecution and patent-related opinions.

Noted for its knowledge of the life sciences and pharmaceutical sectors, WilmerHale also provides notable expertise in relation to ‘shrink-wrap’ and ‘click-through’ agreements in the software arena. It also handles collaborations, licensing, and other technology and IP-related transactions. The team recently assisted a leading medical technology and service company on portfolio analysis, freedom to operate and an infringement investigation. Denver-based Benjamin Fernandez and Natalie Hanlon Leh are assisting new client Crocs with its entire worldwide IP portfolio, including IP clearance, protection strategy and risk assessment. Michael Bevilacqua, Mary Rose Scozzafava, Colleen Superko and Michael Twomey, all based in Boston, are key names to note.

Cleary Gottlieb Steen & Hamilton LLP’s patent team leverages the firm’s corporate and commercial expertise in handling complex, cross-border transactions involving the acquisition and monetization of IP assets. It has particular experience acting for technology companies and private equity firms in their acquisitions of, and investments in, start-ups. Recent work includes acting for Viking Global Investors in its investment in Adaptive Biotechnologies, and assisting América Móvil with its investment in Mobli. Google is another key client and, in 2015, lawyers from the New York office teamed up with colleagues in Brussels, Hong Kong, London and Washington DC to assist the client with its high-profile $1bn investment in SpaceX. The core IP transactional practice is based in New York, where Leonard Jacoby and Daniel Ilan are the key contacts. Lenovo Group, Medtronic and Allergan are also notable clients.

Kenyon & Kenyon LLP’s client list features household names such as Sony, British Airways and Volkswagen. New York-based Michael Lennon focuses on IP rights, technology transfer transactions, and the negotiation of patent contracts and agreements. Managing partner Edward Colbert in Washington DC and George Badenoch and Deborah Somerville in New York are among the other names recommended.

Kirkland & Ellis LLP is experience in patent licensing and portfolio management, and provides particular expertise in relation to private equity, corporate, financing and restructuring transactions, as well as patent settlement agreements. Neil Hirshman is assisting a leading semiconductor company regarding potential licensing arrangements with a number of technology companies. Gregg Kirchhoefer, Vladimir Khodosh and Matthew Lovell are also active in patent licensing transactions. All individuals mentioned are based in Chicago.

Orrick, Herrington & Sutcliffe LLP has a strong IP team with practitioners stationed across its office network, including in New York, Washington DC and across California. It regularly advises buyers and sellers on the IP aspects of mergers and acquisitions, including performing due diligence and negotiating IP terms in such transactions. Los Angeles-based James Brooks is a key name to note and successfully advised Fujitsu in a complex negotiation with a major semiconductor company regarding patents covering a wide range of technologies, from microprocessor design, to disk drives, to semiconductor processes. William Wright in Los Angeles, Steven Routh in Washington DC, Mark Wine in Orange County and Joseph Calvaruso in New York are also key contacts.

Ropes & Gray LLP’s IP practice fields a number of transactional attorneys who regularly handle M&A and restructuring transactions involving crucial IP considerations. It has been particularly active in the healthcare space, advising a number of key players in the sector. As an example, Mark Bellomy assisted Pfizer with its headline immuno-oncology collaboration with Merck. Anita Varma is acting for longstanding client Bayer HealthCare in a wide variety of IP matters, including portfolio management, licensing and due diligence relating to IP asset targets. Boston-based Edward Black co-heads the IP transactions and technology, media and telecoms practice; his clients include Dunkin’ Brands and the National Football League.

Buchanan Ingersoll & Rooney’s team, led by Patrick Keane, advises clients such as Bayer HealthCare, Tetra Pak and a number of universities. In a recent highlight, the team assisted a well-known financial services provider on the development of its worldwide IP portfolio, IP transfer and licensing, and defense against non-practicing entities. Christine Hansen and Ralph Fischer are the key names to note. The practice has a presence in Alexandria, Philadelphia, Pittsburgh and Wilmington.

Leveraging its strength in the life sciences sector, Cooley LLP’s patent team handles patent portfolio management and licensing matters for clients such as Auris Medical, Abaxis and CytomX Therapeutics. San Francisco-based Nan Wu assisted Senomyx with building its international patent portfolio, and conducted a patent due diligence review for a number of patent portfolios licensed by Ultragenyx. New York-based Ivor Elrifi is also highly recommended.

Davis Polk & Wardwell LLP regularly advises on its domestic and international clients on joint technology development agreements and strategic alliances. It advises prominent companies and institutions in a range of industries, including BioReference Laboratories, Lockheed Martin and Mercer. Frank Azzopardi heads the IP and technology group from New York, and is the key contact for IP issues arising from corporate transactions. A recent highlight was assisting Comcast NBCUniversal with the IP aspects of its acquisition of 51% of Universal Studios Japan in a recapitalization transaction. Another highlight saw Azzopardi advise PwC on its global collaboration with Google in the enterprise solution area.

Kilpatrick Townsend & Stockton’s team develops and manages patent portfolios for clients such as Terapio, SAS Institute and Belkin International. Charles Calkins is assisting PPG Industries with third-party patent analysis and counseling, strategic counseling on in-licensing and out-licensing, and the IP licensing aspects of acquisitions. Wab Kadaba heads the team from Atlanta, but it also has boots on the ground in Denver, San Francisco, Silicon Valley and Washington DC.

Jones Day’s team is most notable for handling IP matters relating to major M&A transactions. As an example, the team advised Lam Research on its $10.6bn acquisition of KLA-Tencor, and it advised City of Hope on an exclusive license granted to LA Cell, a company formed by Sorrento Therapeutics to focus on the development of cell-penetrating antibody therapies. San Diego-based Thomas Briggs and Boston-based Warren Nachlis are the main contacts.


Patents: prosecution (including re-examination and post-grant proceedings)

Index of tables

  1. Patent: prosecution (including re-examination and post-grant proceedings)
  2. Leading lawyers

Leading lawyers

  1. 1

Finnegan, Henderson, Farabow, Garrett & Dunner LLP’s ‘outstanding’ IP practice includes experienced patent attorneys with deep knowledge of the complexities of patent office processes, from prosecution and re-examination, to reissue proceedings and appeals to the Patent Trial and Appeal Board (PTAB) at the USPTO. Since being the first to file a petition for and subsequently argue a post-grant review of a covered business method (CBM) case following the implementation of the America Invents Act (AIA), the team has acted for petitioners and patent owners in a number of high-profile post-grant proceedings. In 2015, it acted for clients such as Fidelity National Information Services, Biogen and Neste Oil in petitions for inter partes reviews (IPRs). Erika Harmon Arner heads the patent team from its Reston office and is a key contact for post-grant proceedings, as are of counsel James Boyle and PTAB specialists Michael Flibbert and Maureen Queler. Washington DC-based Mark Sweet leads a team in assisting NanoFlex Power Corporation with its worldwide patent portfolio relating to organic photovoltaic devices, including invention capture, drafting and prosecution of new applications in the US and abroad, and conducting due diligence regarding competitor activity. Boston-based Leslie McDonell is ‘one of the best in the field’ and handles a portfolio of several hundred patent applications for AbbVie filed around the world relating to dual-variable domain antibodies. Michele Bosch and Adriana Burgy are also recommended attorneys by clients.

Leveraging its strong patent litigation capabilities, Fish & Richardson P.C.’s dedicated full-service post-grant team has handled 147 post-grant proceedings, including a number of high-profile matters. Among its recent work, Karl Renner and Andrew Patrick successfully acted for InComm in an ex parte re-examination case. It also has a strong reputation for patent prosecution and providing opinions and strategic advice. Areas of particular expertise include IT, pharmaceuticals, life sciences and media. In Boston, Jeffrey Barclay and computer hardware and software expert Paul Pysher are recommended; in New York, Christopher Bowley has particular expertise in a variety of optical technologies. LG Electronics, 3M and Google are among its key clients.

Foley & Lardner LLP impresses with its ability to handle complex patent prosecution as well as re-examinations, interference, IPRs, and other PTAB proceedings. Washington DC-based Michele Simkin heads the IP department, which also includes George Quillin, Kristel Schorr and Chicago-based Michael Houston, who are key names for counseling, post-grant work and interference proceedings. Boston-based John Lanza is a member of the electronics practice and technology industry team; along with Matthew Lowrie, Lanza assisted a household-name client on a significant IPR re-examination, including an appeal to the PTAB. Stephen Maebius assisted United Therapeutics procure the product-by-process patent at issue in United Therapeutics v. Sandoz, which was found valid and infringed. Pavan Agarwal handles licensing and patent procurement in the hi-tech space, with a focus on electronics. Madison-based Mark Kassel, whose patent practice emphasizes biotechnical and chemical arts is another name to note. All individuals are based in Washington DC unless otherwise stated.

McDermott Will & Emery LLP is singled out for its ‘unique combination of strong technical background, brilliant legal skills specific to IP, and strong business acumen’, which ‘greatly facilitates business aspects of the entire set of IP ownership issues’. It has strong expertise in healthcare, life sciences and nanotechnology and is very accomplished in patent prosecution and post-grant proceedings. Carey Jordan, Iona Kaiser and Jeremy Harrison in Houston secured a favorable IPR settlement on behalf of Halliburton, which resulted in the dismissal of concurrent litigation against a subsidiary of Acacia. A longstanding client is Google, which it has advised on patent protection, dealing with potential infringement by competitors, patent validity and patentability issues, and prosecuting and managing its patent portfolio. The firm also has an established Asia practice, advising clients such as Takeda, Panasonic and Taiwan Semiconductor Manufacturing Company. The team is represented in the firm’s Washington DC, Chicago, New York, Los Angeles, Boston, Houston and Silicon Valley offices, and is led by Orange County-based Mark Itri. Stephen Becker and Robert Underwood are also key contacts.

IP boutique Cantor Colburn LLP’s clients are drawn from the US, Europe, Japan, South Korea and elsewhere, and range from hi-tech start-ups, mid-sized manufacturing companies, and universities, to Fortune 500 companies such as General Electric, Samsung and Baker Hughes. It also has a growing pharmaceutical practice, and advises the likes of Achillion Pharmaceuticals and Allergan. Name partners Michael Cantor and Philmore Colburn head the practice, which operates from five offices across the US. Leah Reimer and Pamela Curbelo are the main contacts for chemical, material and life sciences sector clients. Atlanta-based Jeffrey Waters has experience in GPS, internet, e-commerce, semiconductors and telecoms. Korea practice head James Merrick and post-grant proceedings specialist Andrew Ryan are further names to note. All individuals are based in Hartford unless otherwise stated.

Excellent on all counts’, Fitzpatrick, Cella, Harper & Scinto has over 50 attorneys in its patent prosecution team, which is led out of New York by Anthony Zupcic. The group includes many former USPTO examiners and has prosecuted patents across a wide range technologies, including electronics, biotechnology and mechanical arts. Its clients range from Fortune 100 companies to start-ups. Demonstrating its skill in post-grant proceedings, Raymond Mandra and litigators Dominick Conde and William Solander secured four IPR defense wins before the PTAB on behalf of drug company Ikaria. Electronic and computer technologies expert Michael Sandonato and Frank Delucia are also recommended, as are Washington DC-based Steven Warner, Justin Oliver and Brian Klock.

Knobbe Martens Olson & Bear LLP’s patent prosecution team works closely with its litigation attorneys to provide clients with assistance on broad range of IP issues. Salima Merani has notable experience in building patent portfolios for life sciences clients, including medical and biotech companies. Relievant Medsystems, Insera Therapeutics and Metavention are a few of its representative clients. Gerard Von Hoffmann focuses on the medical device industry and is assisting start-up companies Claret Medical and Direct Flow Medical on building patent portfolios. Brenton Babcock heads the post-grant proceedings practice and handles interference, re-examination, IPR and CBM review proceedings before the PTAB. Recent highlights include successfully defending patent owner Skyworks Solutions in three separate IPR petitions regarding integrated circuits and protecting all claims in all challenged patents. Steve Jensen is another name to note for post-grant proceedings work and, in 2015, Jensen and Jared Bunker successfully defended Gentherm against an IPR bought by IGB Automotive.

Morrison & Foerster LLP has a strong practice, with over 100 PTO-admitted trial lawyers and patent prosecutors, and it experienced representing both patent owners and petitioners in various types of proceedings. Its core strength is in California, with practitioners in San Francisco, Palo Alto, Los Angeles and San Diego counseling and representing clients drawn mainly from the hi-tech, life sciences, cleantech and consumer products sectors, including the likes of Genentech, Netlist and Yamaha. Los Angeles’ Mehran Arjomand co-heads the firm’s inter partes review and post-grant practice, and regularly handles adversarial proceedings at the PTO, including PTO proceedings co-pending with litigation. San Francisco-based Otis Littlefield counts Novartis among his clients and advises the company on a wide range of matters, including development of patent strategies, drafting and prosecuting patent applications, and performing IP due diligence assessments, as well as developing IP strategies for several of its vaccines and handling all of its personalized medicine IP work. Mika Reiner Mayer heads the medical device patent practice from Palo Alto, and is acting for Gilead Sciences on its high-profile oncology and HIV portfolios. James Mullen, Catherine Polizzi, Peter Yim, Michael Ward and Jie Zhou are also recommended.

Sterne, Kessler, Goldstein & Fox PLLC’s Washington DC-based team has been preparing and prosecuting patent applications for over 35 years, and is experienced working with clients ranging from startups to companies with large and active portfolios. A team led by Michael Specht and the firm's managing director Michael Ray, is assisting GTL on developing and implementing a strategy to file post-grant reviews (PGRs), IPRs and CBMs against Securus patents. Robert Sterne has been advising ParkerVision since 1998 on patent prosecution and, more recently, on IPRs, both domestically and internationally. Recent work highlight saw Sterne handling IPRs covering the patents in an on-going dispute between ParkerVision and Qualcomm. Eldora Ellison has extensive experience in post-grant proceedings, building on a strong foundation in patent prosecution; in 2015, Ellison led a team defending two IPRs that were filed against ImmunoGen’s patents relating to a breast cancer drug. Eric Steffe and Robert Sokohl are also key attorneys.

Baker Botts L.L.P. has an impressive roster of clients in the patent prosecution arena, including MasterCard International, Halliburton, Hitachi and Columbia University. The team has been particularly active in post-grant proceedings, having handled over 130 IPRs and over ten CBMs. Dallas-based Bart Showalter is the firm-wide chair of IP department, and has particular expertise in the electronics, telecoms and software fields. Showalter was part of a cross-office team that advised Cisco Systems on a number of patent matters, including worldwide patent portfolio management, licensing and transactional matters. Palo Alto-based Travis Thomas continues to provide a wide range of IP services to Facebook, including the development and management of its worldwide patent portfolio, which continues to grow through the patenting of its own innovations and the acquisition of key patent portfolios. Hopkins Guy and Eliot Williams in Palo Alto, Robert Scheinfeld in New York and Roger Fulghum in Houston are further names to note.

Birch, Stewart, Kolasch & Birch, LLP operates a broad patent prosecution and review practice out of Falls Church, Virginia, covering both utility and design patents. In addition to working on behalf of major US-based clients, it also frequently works for non-US clients with international operations, and especially electronics companies based in Japan and Korea. Other industry expertise includes life sciences, biotechnology, cleantech and mechanical engineering, with clients including the likes of Google, Honda, LG and Mitsubishi Electric. Recent highlights include its successful representation of BioMarin in IPR proceedings at the PTAB challenging three patents relating to the treatment of Pompe disease. MaryAnne Armstrong and Michael Mutter are further names to note for IPR matters. Michael Cammarata, Gerald Murphy, Charles Gorenstein and Richard Anderson are also main contacts.

Headquartered in and focused on Silicon Valley, Fenwick & West LLP’s 36-strong team of patent prosecution attorneys has particular experience acting for technology companies, which span the life cycle from start-up to publicly traded, household names, such as GoPro, Spotify, Amazon and Xiaomi Technology. Robert Hulse continues lead advice to key client Facebook, and assists the social media giant with patent applications in jurisdictions throughout the world, including, recently, obtaining patents for Sponsored Stories type of ad units and a design patent on the Facebook ‘friend’ icon. Rajiv Patel is another name to note, and counts Twitter and Basic Science among his clients. The practice also has a strong post-grant proceedings practice and, in 2015, Stuart Meyer successfully invalidated 14 claims of a patent asserted by well-known ‘patent troll’ MPHJ Technology Investments against a large number of users of Hewlett-Packard’s multi-function devices. Litigator Michael Sacksteder and Michael Farn are also keys names to note.

The technically savvy team at Kenyon & Kenyon LLP is strong across the gamut of post-grant proceedings, and has filed numerous requests for ex parte and inter partes re-examination, and post-grant and inter partes review on behalf of a range of clients, including Volkswagen Group of America. Within the team, Patrick Birde handles portfolio development and disputes involving commercially significant patents, including re-examinations, reissues and interferences, as well as foreign opposition and invalidity proceedings; Clifford Ulrich focuses on the mechanical, electrical and electro-mechanical fields, as well as design patents, and has substantial experience in various post-grant proceedings, including IPRs and ex parte re-examinations. Washington DC-based Daniel Shanley has expertise in automotives, medical devices, oil and gas, marine engines and consumer products. Other notable clients include Toyota Motor Corporation, Nippon Steel & Sumitomo Metal, and ExxonMobil. All individuals are based in New York unless otherwise stated.

Kilpatrick Townsend & Stockton is praised for its ‘well-rounded patent practice’, which covers the prosecution of patents and post-grant work for both patent owners and petitioners. It has an impressive geographical reach to its practice, with a sizeable team spread across ten offices. Atlanta-based Wab Kadaba chairs the IP department and is a key name for post-grant proceedings, as is electronics and software specialist William Shaffer in San Diego. A recent highlight was acting for Motorola in IPR proceedings before the USPTO involving two related patents for displaying website content on mobile devices, which are also the subject of litigation in Delaware. Charles Calkins in Winston-Salem, Darin Gibby in Denver and Babak Sani in San Francisco are also recommended.

IP boutique Oblon provides deep technical expertise and operates a very active patent prosecution service as well as a highly capable and growing review practice from its single US office in Alexandria, Virginia, which is supported by an overseas office in Tokyo. The post-grant proceedings practice, led by the well-regarded Stephen Kunin and Scott McKeown, regularly recovers patent portfolios made subject to post-grant disputes as a result of high-profile concurrent litigation. In 2015, the team filed 14 IPRs for Google against Rockstar Consortium relating to telecoms methodologies and interfaces. LG Display, L’Oréal, eBay and Paypal are all clients. Todd Baker and Greg Gardella are further names to note.

Pillsbury Winthrop Shaw Pittman LLP’s client roster features both individual inventors and large corporations headquartered in US and overseas. Jack Barufka, co-head of the firm-wide IP practice, has extensive experience in prosecution and post-grant proceedings, and has handles matters for several Fortune 500 companies. Recent highlights include successfully representing MotionPoint in invalidating a patent that a district court had previously found valid and infringed. The team saw the arrival of a number of patent attorneys and IP litigators in 2015, further boosting its post-grant proceedings practice. Josh Tucker, who splits his time between Austin and Silicon Valley, was among the new arrivals, and he earns praise as an attorney who ‘drafts and prosecutes patent applications with an eye towards how patents issuing from those applications may be viewed in future litigation’. Bryan Collins and Patrick Doody are also recommended. James Gatto, Ben Esplin and Bradford Blaise departed for Sheppard, Mullin, Richter & Hampton LLP in June 2015, and Mark Danielson went to Foley & Lardner LLP in August 2015. Named attorneys are based in Northern Virginia unless otherwise stated.

Renowned for its high-volume patent filing practice, especially for foreign clients, Sughrue Mion has a wealth of industry-specific expertise, including in relation to nanotechnology, software, electrics and biosimilars. John Callahan focuses on post-grant proceedings and district court litigation. The US practice is based in Washington DC, but the firm has a significant presence in Tokyo also. Within the team, Richard Turner, Andrew Taska, Brett Sylvester, Abraham Rosner, Travis Ribar and former patent examiner John Bird are the main contacts.

A market leader in patent litigation, WilmerHale is very active also in post-grant proceedings, and earns praise for its ‘excellent quality of work and responsiveness’. The team is spread across the firm’s nationwide network of offices, and is led out of Washington DC by David Cavanaugh. Cavanaugh and fellow Washington DC lawyer Amy Wigmore achieved a significant victory for Permobil in two IPRs cancelling all the claims of two asserted patents. Another highlight saw the team assist Genentech and City of Hope as patent owner in an IPR filed against the Cabilly 415 patent by Sanofi-Aventis and Regeneron. Boston-based Monica Grewal has ‘outstanding mastery of technical details’ and is acting for General Electric in strategic re-examination proceedings. The practice also has a presence in New York, Denver and Palo Alto.

Banner & Witcoff, Ltd. is a ‘powerhouse for design patents’ and acts for Fortune 500 companies as well as smaller companies and individual inventors. The group has a specialized design team led by Robert Katz, a highly regarded figure who leads the way in the procurement and enforcement of design patents. The prosecution team counts Nike and Microsoft as its longstanding clients and, in 2015, it procured a number of design patents for both clients. It has also been increasingly active in AIA post-issuance review and, in 2015, acted for Seagate Technology in four IPRs challenging two of Enova Technology’s patent relating to disk drive data encryption. Michael Cuviello, Bradley Wright and Joseph Potenza are further names to note. All individuals are based in either Washington DC or Chicago.

Clients of Buchanan Ingersoll & Rooneyrely on its work with respect to its knowledge of the technology, its accuracy and its consideration of the time limits’. The group’s expertise covers a wide range of industry sectors, including medical devices, financial services, automotive components and consumer products. Representative clients include Bayer HealthCare, Alstom Technology, MasterCard Worldwide and a number of universities. Practice head Todd Walters focuses on IPRs, and has experience in the biotechnology, chemical, electrical, mechanical and pharmaceutical fields. Erin Dunston also focuses on IPRs, as well as interferences, opinions, and prosecution, primarily in the fields of biotechnology, pharmaceuticals and medical devices. Travis Boone, Patrick Keane, Matthew Schneider, James LaBarre and Robert Mukai are also names to note. All attorneys are based in Alexandria, Virginia.

Leydig, Voit & Mayer Ltd. focuses on advising clients from the pharmaceutical, software and telecoms sectors, including the likes of Huawei Technologies, Fresenius Medical Care and Caterpillar. Charles Mottier is a key contact, as are John Conklin, who is experienced in computer engineering sector, and John Kilyk, who specializes in IPRs, interferences, and oppositions. Walnut Creek-based John Gase has extensive experience in formulating patent strategies and managing patent portfolios, as well as in counseling and rendering opinions on patent validity and infringement. All individuals are based in Chicago unless otherwise stated.

Headquartered in Minneapolis, IP boutique Merchant & Gould PC covers a number of different industries, including electrical, software, mechanical and biotechnology, and is highly recommended for its experience in IPR proceedings. Andrew Lagatta is experienced in all aspects of post-grant proceedings, as well as PTAB appeals and reissue applications; mechanical specialist Steven Bruess and chemical engineering expert Jefferson Boggs are also recommended. On the prosecution front, Robert Kalinsky focuses on the electrical and mechanical arts, with an emphasis on software and biomedical device patents; Washington DC-based Joseph Gess and Denver-based Gregory Leibold are further names to note. Representative clients include Lush Fresh Handmade Cosmetics, ATopTech and BMC Medical.

Arent Fox LLP’s practice was strengthened in February 2015 by the arrival of two highly regarded partners, Steven Weisburd and Richard LaCava, from the now defunct Dickstein Shapiro. The team, which is led by the Washington DC-based James Bindseil and Los Angeles-based Craig Gelfound, is assisting Qualcomm, Western Digital and Vale on patent prosecution work. It also has a presence in New York, where Marylee Jenkins is the key contact.

Although particularly renowned within the life sciences sector, Arnold & Porter Kaye Scholer LLP’s team also acts for clients from the aerospace, semiconductor and chemicals sectors. David Marsh and litigator Matthew Wolf head the IP practice from its Washington DC office, and both have notable experience in patent prosecution matters, especially interferences, inter partes and ex parte reviews, and European opposition proceedings. San Francisco-based Ginger Dreger focuses on advising companies in the biotechnology, medical device and pharmaceutical industries. Kristan Lansbery is another name to note and assisted Boston Scientific with a number of contentious matters, including initiating IPRs of five patents. Other representative clients include Monsanto, Genentech and Biogen.

Barry Bretschneider at Baker & Hostetler LLP is recommended for his experience in all forms of post-grant proceedings. The team acted for Saudi Basic Industries Corporation in a number of matters before the PTAB, including patent appeals and an IPR proceeding. On the patent prosecution front, a recent highlight saw Steven Samuels handling the worldwide patent prosecution for one Microsoft patents and applications portfolio, related to its exFAT file system technology. Seattle-based Michael Stein and Philadelphia-based Joseph Lucci are also key names to note. The group has a presence in Atlanta, Chicago, Cincinnati, Orange Country and Washington DC.

Baker McKenzie LLP’s patent team advises US and foreign clients on prosecution and post-grant matters, and, in 2015, it has handled numerous IPRs. In a recent highlight, it acted for Kinik Company in an IPR petition, including the final oral argument before the PTAB, and successfully obtained a final decision holding all instituted claims unpatentable. It also successfully defended RealD against institution of a series of IPR petitions. Dallas-based Brian McCormack and William McSpadden, and Houston-based Lisa Meyerhoff are the key contacts.

Brinks Gilson & Lione has particular technical expertise in areas including telecoms, pharmaceuticals, semiconductors and medical devices. From its Ann Arbor office, Jon Beaupré heads the firm’s post-grant patent practice, while John Nethery in Chicago co-chairs the patent group and is a leader in prosecuting complex electrical and computer technology patents. Recent highlights include handling a petition for IPR filed for a client in the automobile industry, and successfully invalidating the majority of claims of a patent covering tire pressure monitoring systems for automobiles. Its client roster also features Yahoo!, LG Electronics and BASF.

Cooley LLP’s patent counseling and prosecution team has particular strength in the healthcare sector, where it advises clients such as Abaxis, Auris Medical and CytomX Therapeutics. The team also advises and represents clients in all types of post-grant proceedings, and in particular IPRs, and is currently acting for industry leading companies such as Facebook, Google and Gevo in IPR and CBM proceedings. San Francisco-based Nan Wu is ‘savvy and highly skilled, both in terms of understanding complicated scientific issues and designing and executing complex patent strategies’. Ivor Elrifi in New York and Joe Teja in Boston are also main contacts.

Jones Day has particular experience acting for pharmaceutical companies and is regularly retained by household-name clients to assist with patent prosecution and post-grant reviews. San Diego-based Anthony Insogna chairs the global IP practice and is experience in biotech and pharmaceutical patents. His team assists Celgene with global patent strategies for the entire range of the company’s small molecule and biopharmaceutical drug therapies. Cleveland-based David Cochran and John Biernacki represent Jazz Pharmaceuticals in post-grant matters involving attacks by generic pharmaceutical companies and hedge funds hoping to undermine Jazz Pharmaceuticals’ patent portfolio related to Xyrem. Adriane Antler and recently promoted partner Michael Bruner, based in New York and Atlanta respectively, are also names to note in the life sciences sector. Tamera Weisser has experience in IPR proceedings and has successfully defended AbbVie in two IPRs brought by Amgen in connection with patents related to AbbVie’s blockbuster antibody therapeutic, Humira.

Ropes & Gray LLP acts for cutting-edge companies in electronics, pharmaceuticals, medical devices, finance and branded product, including the likes of Bayer HealthCare, Altera and Rovi Corporation. The team is led by Anita Varma and Joseph Guiliano, based in Boston and New York respectively. James Haley is another name to note and has notable experience in US and worldwide patent prosecution in all areas of biotechnology and biopharmaceuticals. Washington DC-based Steven Baughman chairs the firm’s post-grant patent office invalidity challenge practice, and has handled more than 100 CBM and IPR proceedings, including in more than 20 proceedings that have been argued through to final oral hearing before the PTAB.


Trade secrets

Index of tables

  1. Trade secrets
  2. Leading lawyers

Leading lawyers

  1. 1

Keker & Van Nest, L.L.P.’s leading IP group is particularly strong in trade secrets matters, including issues involving alleged wholesale theft of technology as well as individual employee mobility. San Francisco-based Rachael Meny is recommended for litigation, regularly handling civil and criminal proceedings. John Keker and Jeffrey Chanin, both based in San Francisco, also enjoy a strong reputation. Pinterest and TrueBlood Network are flagship clients.

A leading player in this field, Kirkland & Ellis LLP draws on its extensive litigation practice and highly regarded IP group to service its international client base. The department has a good standing in several industries, notably food and beverage, where Michael Slade defended Natural American Foods and its employee Arlen Penner in a case brought by Barkman Honey alleging breach of a non-compete agreement and tortious interference with a contract. Craig Primis and Daniel Bress are representing multinational conglomerate Honeywell in a North Carolina lawsuit alleging that Honeywell misappropriated trade secrets when it hired an employee who previously worked at DSM Dyneema, a competitor in the manufacture of ballistic materials for the US military. Another focus is the pharmaceutical industry; Nader Boulos and Jay Lefkowitz are defending Akorn in a case brought by Fera Pharmaceuticals regarding a manufacturing and supply agreement alleging that Akorn breached the parties’ contract by failing to manufacture certain products and misappropriating trade secrets.

Orrick, Herrington & Sutcliffe LLP’s trade secrets group, headed by Robert Shwarts, gained considerably in strength with the arrivals of Patrick Ellisen from Greenberg Traurig, LLP and Amy Van Zant from Covington & Burling LLP. The practice, which Shwarts leads from San Francisco, acts for some of Silicon Valley’s biggest players, such as Apple, eBay and Microsoft. Los-Angeles-based William Molinski and Mark Parris obtained a complete victory on behalf of Microsoft and one of its employees after they were sued by Cheap Stuff in a trade secret misappropriation case; the lawsuit was filed after the employee, a former employee of Cheap Stuff, uncovered what was determined to be a ‘click fraud’ being engaged in by Cheap Stuff in relation to a contract it had with Yahoo! In another trade secret misappropriation case, Denise Mingrone successfully obtained, on behalf of Synopsys, an expansive temporary restraining order against two senior former employees who left the company earlier this year to join competitor Cadence. James McQuade from the New York office is highly regarded and Neel Chatterjee, based in Silicon Valley, is another name to note.

Bradford Newman is founder and chair of Paul Hastings LLP’s international employee mobility and trade secret practice. He served as lead counsel for Zynga in the largest trade secret case in the history of social gaming. New York-based Victoria Cundiff, one of the key practitioners in this space, has particular experience in high-stakes cloud technology litigation and serves numerous clients in the fashion industry. Carla Walworth is another notable name in New York.

Quinn Emanuel Urquhart & Sullivan, LLP’s distinguished position in the market is illustrated by its impressive client list. The group, which is led by Charles Verhoeven in San Francisco, Claude Stern in Silicon Valley and Edward DeFranco in New York, has represented clients such as Google, Samsung, Motorola, General Motors and Shell Oil in trade secret misappropriation cases. A team including Verhoeven, successfully represented Dow and Rohm & Haas as plaintiffs against Organik Kimya in US International Trade Commission (ITC) proceedings related to opaque emulsion polymers, which, through uncovered evidence of massive spoliation, ended in a default judgment on trade secret misappropriation claims. Michael Carlinsky and Rachel Herrick Kassabian represented social networking service Pinterest in a trade secret misappropriation action filed by an alleged former business partner of Pinterest’s first investor, which ended with Pinterest being dismissed from the case (and that dismissal was affirmed on appeal). Another client is Pfizer, which the team represented in the retrial of a misappropriation of trade secrets case. Robert Raskopf is also a name to note.

Drawing on the strength of its sizeable employment department, Seyfarth Shaw LLP is a highly regarded player in the trade secrets space. The group, jointly led by Michael Wexler in Chicago, assists clients in all areas of trade secrets, including the prevention of trade secret theft or misappropriation, violations of non-competes, computer fraud, as well as trade secrets audits. Los Angeles-based Robert Milligan, the team's other joint head, represented Novartis Institute for Functional Genomics in a case before a San Diego court, obtaining a preliminary injunction and a temporary restraining order against a former employee who took prized company trade secrets and was planning on starting a competing biotech business in China. Milligan also served as counsel to Berlin Packaging, one of the largest packaging suppliers in the US, providing both litigation and transactional advice on its disputes with employees, contractors and competitors. Active key clients include Kia Motors America and Ferrari North America.

Covington & Burling LLP has a strong track record in trade secret cases. The group has a broad offering and is well versed on the contentious side as well as in cybersecurity issues and economic espionage. Washington DC-based George Pappas has considerable experience in the field, Silicon Valley-based Kurt Calia serves as vice chair for the trade secrets committee of the Intellectual Property Owner’s Association, and Michael Plimack is a significant figure in the firm’s San Francisco office. Key clients include Monsanto and Manheim Auctions.

McDermott Will & Emery LLP’s trade secrets group is well versed in every stage of the trade secrets cycle, from identification of trade secrets, to implementation of protection measures, employee education, exit interviews and litigation. Los Angeles-based Eric Hagen leads the practice, which is spread across seven US offices. Its track record includes obtaining temporary restraining orders, preliminary injunctions and winning jury trials, including awards of punitive damages. A team including Fabio Marino successfully acted for Diablo Technologies in its dispute with Netlist, a former development partner, which sued Diablo on eight counts of trade secret misappropriation, breach of contract and claims of trademark infringement and false advertising under the Lanham Act. Daniel Alberti and Judy Mohr, both in the Silicon Valley office, are additional names to note.

Morrison & Foerster LLP’s sizeable trade secrets group, led by Northern Virginia-based Daniel Westman and Bryan Wilson in Palo Alto, spans the firm’s IP, employment and commercial litigation practices. It assists clients in every aspect of trade secrets protection, the implementation of information security programs and tailoring of company policies. The team is well versed in trade secret arbitration and litigation; Palo-Alto-based Kenneth Kuwayti represented EnergySolutions in Utah state court in a case against Kurion alleging that the defendant and two of its key executives misappropriated technologies relating to the treatment of radioactive nuclear waste that were owned by the plaintiff. In another important matter, San Francisco-based Harold McElhinny and Louise Stoupe from the Tokyo office assisted Toshiba win a multimillion-dollar settlement in its trade secret misappropriation claim against South Korea-based SK Hynix.

Ryan Yagura chairs the IP and technology practice at O’Melveny & Myers LLP, which includes key figures in the trade secrets space, such as San Francisco-based Darin Synder and David Almeling. A team including Synder achieved a jury victory for plaintiff Triune Systems, a solar energy equipment supplier, in Texas state court proceedings involving more than 70 asserted trade secrets. A team including Mark Miller, also based in San Francisco, represented (24/7) in two disputes with LivePerson in which LivePerson alleged, among other things, that (24/7) misappropriated and infringed LivePerson’s software and proprietary information to create and refine its own competing live-interaction technology. Synder also represented Artifex Software in a motion to dismiss copyright infringement and trade secrets claims filed in the Northern District of California against BigTinCan and related entities. Nicholas Whilt in Los Angeles was made partner, while Ken Nissly departed to an in-house position at SK Hynix. George Riley from the San Francisco office is highly regarded.

Joseph Baumgarten and Gregory Rasin in New York lead Proskauer Rose LLP’s interdisciplinary non-compete and trade secrets group, which has a particular focus on the intersection of trade secret protection and employee movement. The group handles matters ranging from day-to-day counseling on the hiring and firing of employees possessing confidential information to drafting confidentiality, to non-compete and equity based compensation arrangements, policy manuals on information ownership and protection and litigation involving claims of employee raiding and theft of trade secrets. Los Angeles-based Anthony Oncidi is advising Creative Artists Agency in the pursuit of claims against United Talent Agency and a group of defecting agents in Creative Artists Agency. The prestigious client roster includes Citizens Financial Group, McKinsey & Company, AT Kearney, MetLife and Credit Suisse. Guy Brenner from the Washington DC office was promoted to partner.

There are a number of trade secret experts among Weil, Gotshal & Manges LLP’s employment and litigation practice groups, including employment litigation chair Jeffrey Klein in New York, Christopher Cox, who leads the California commercial litigation group, and senior partner Bruce Meyer in New York. Cox successfully represented Genstar Capital in arbitration against CHT-P&W Software, a subsidiary of Consumer Health Technologies, which sued Genstar in the Los Angeles Superior Court for trade secret misappropriation, unfair competition, trade libel and other business torts. Cox also represented Health Management Systems (HMS) in litigation against former employees and its teaming partner and competitor Public Consulting Group (PCG) in which HMS alleged that PCG solicited several HMS employees to breach their respective contracts and steal trade secrets. Cox obtained a temporary injunction and preliminary injunction in Texas and a sweeping sanctions order for spoliation of evidence, which included adverse jury instructions and an award of attorneys’ fees.

Bartlit Beck Herman Palenchar & Scott LLP is a strong player in the trade secrets space. The group operates from offices in Denver and Chicago and retains a superb reputation in trade secrets litigation. Chicago-based Sean Gallagher has deep experience in complex litigation and Lindley Brenza in Denver has a strong track record in trade secrets cases.

Cravath, Swaine & Moore LLP acts for both defendants and plaintiffs in trade secrets litigation, and also regularly handles investigations. The group, which includes key figures Roger Brooks* and George Zobitz, has litigated trade secrets cases in a variety of industries, including computer technology, insurance and reinsurance, telecoms and finance. In addition, it frequently advises clients on methods of protecting proprietary information, including confidentiality and non-competition agreements with employees, and conducts due diligence with respect to unpatented proprietary information in connection with mergers and acquisitions and other transactions. *Since publication, Roger Brooks has retired from the firm's litigation practice.

Washington DC-based John Williamson leads Finnegan, Henderson, Farabow, Garrett & Dunner LLP’s IP specialties practice, which is well regarded in the trade secrets space. Williamson is an experienced counsel in trade secrets actions before US district courts, arbitration panels and the ITC. The 18 partners assist clients with the full scope of trade secrets matters, from non-disclosure contracts with employees and third parties to litigation, with particular strength in energy, pharmaceuticals and manufacturing.

Perry Viscounty, who splits his practice between Orange County and Silicon Valley, is one of the key figures for trade secrets matters at Latham & Watkins LLP. The group serves an impressive roster of clients, including Allianz, Allergan, Arista, craigslist and Goop. San Francisco-based James Lynch and Jennifer Barry in San Diego represent Lyft, a San Francisco-based peer-to-peer ridesharing company, in litigation against the company’s former COO for breach of written contract and confidentiality agreement by allegedly taking materials such as Lyft’s financial information, marketing and product plans, consumer lists and data, international growth documents and private personnel information, and subsequently joining Lyft’s chief rival Uber. Chicago-based Kenneth Schuler, Matthew Walch and Maximilian Grant in Washington DC are representing Market Track, a provider of market intelligence solutions for the advertising and promotional industry, in litigation asserting trade secret misappropriation claims against a competitor.

Mayer Brown retains a strong reputation in the trade secret space, not least because of the renowned John Mancini in New York, Dale Giali in Los Angeles and Alan Grimaldi in Washington DC. The group, which is known for its trial and appellate courtroom expertise and global reach into Europe and Asia, is active in a broad range of industries, including biotechnology, food products and pharmaceuticals. Clients include Faiveley Transport and Avago Technologies.

Schiff Hardin LLP’s practice is led by Linda Stevens and Matthew Prewitt in Chicago. Stevens is experienced in emergency injunctive relief in trade secrets, while Prewitt has a strong record in multi-year trade secrets litigation.

Boston-based Choate, Hall & Stewart represents public and private companies in all aspects of trade secret protection and litigation, from plaintiffs seeking to protect proprietary information to defendants accused of misappropriation, across a broad range of industries and technologies. Paul Popeo and Michael Bunis are the names to note. Clients include New England BioLabs, EMC and AvePoint.

Following its merger with McKenna Long & Aldridge, Dentons’ ‘go-to’ trade secrets group has gained considerably in strength. The ‘very responsive’ team is led by Lora Brzezynski and Cass Christenson, both based in Washington DC. Clients note that ‘there are a wide range of specialists within the firm, so whenever a niche area comes up, they have someone with experience in that niche’. One of the specialist areas is government contracts. Michael Bierman in Los Angeles successfully represented LinQuest, which had been in the process of bidding on lucrative government contracts with the Space and Missile Systems Center, in suing a former employee who had been hired to work on the bidding process and who then went to work for a competitor, Modern Technology Solutions, which was also bidding on some of the contracts. Joshua Curry and Petrina Hall McDaniel, both in the Atlanta office, were made partners.

The key figures at Dorsey & Whitney LLP are Minneapolis-based Joseph Hammell, who has extensive class action, trial and appellate expertise, as well as broad experience with jury research and jury consultants on major litigation, and New York-based Nick Akerman, who has notable experience in the Computer Fraud and Abuse Act. David Murphy, previously of the Palo Alto office, left the firm to join Silicon Valley Law Group.

FisherBroyles, LLP’s trade secret practice gained considerably in strength with the hire of Chicago-based Mark Halligan from Nixon Peabody LLP. Halligan is particularly well versed in developing best practices and methods for the identification, classification, protection and valuation of trade secret assets, and is serving as trial counsel to bankruptcy attorney Peter Geraci in trade secret litigation involving the alleged misappropriation of a software source code.

Jason Schwartz and Martin Hewett in Washington DC and Alexander Southwell in New York are the key figures at Gibson, Dunn & Crutcher LLP. Schwartz is representing AlixPartners in a trade secret misappropriation case against leading management consulting firm McKinsey. The group also defended Fitbit, a leading provider of health and fitness trackers, against rival device maker Jawbone, which filed trade secrets claims in state court as well as patent claims in district court and at the ITC. The impressive client list also includes UBS Securities and Nippon Steel.

Greenberg Traurig, LLP’s trade secret group is jointly led by Kurt Kappes in Sacramento/San Francisco and Richard McCrea in Tampa. A team including Atlanta-based David Long-Daniels represented Bartlett Holdings and its affiliates in an action against competitors and former employees for misappropriation of trade secrets, tortious interference with business and contractual relations, breach of the employee duty of loyalty, and breach of various restrictive covenants. Paul Ranis in Fort Lauderdale represented U.S. Metal Buildings in the enforcement of a non-compete agreement against a former sales executive, resulting in the entry of a final judgment for injunctive relief in favor of the client, a national distributor of prefabricated steel buildings.

Kilpatrick Townsend & Stockton’s key figures in the trade secret space include James Bogan and Joel Bush in Atlanta and Susan Boyles in Winston-Salem. The group serves an impressive mix of clients, including mature businesses, joint ventures, and Fortune 50 companies. Winston Salem-based Daniel Taylor represented Branch Banking & Trust Company in a two-week trial in Forsyth County Superior Court against a former employee for misappropriation of trade secrets and the failure to repay a substantial loan due upon the termination of employment. Taylor successfully argued a motion for directed verdict, dismissing all counterclaims asserted by the former employee and obtained a verdict for the amount owed.

Nixon Peabody LLP draws its trade secrets expertise from the firm’s IP, labor and employment, government investigations and commercial litigation practices, which handle a range of trade secret matters involving revision of corporate trade secret policies, audits and ITC matters. The firm’s broad ranging client base in this space includes SolarCity and Prezio Health. Ethan Trull, Frank Saibert and Brittany Bogaerts, all based in Chicago, are representing Prezio Health in a lawsuit that involves preventing a departed employee from using trade secret information, as well as a tortious interference claim against this employee. Jason Kravitz and Troy Lieberman, both based in Boston, are representing Compass iTech in a case involving allegations of trade secret misappropriation, deceptive and unfair trade practices, tortious interference and violations of the Computer Fraud and Abuse, and Electronic Communications Privacy acts.

John Caracappa, Harold Fox and William Abrams are the names to note at Steptoe & Johnson LLP. The group is particularly active in the technology sector; California-based William Abrams defended SK Hynix, one of the leading memory chip makers, in trade secrets litigation brought by SanDisk and Toshiba. Abrams is also defending Huawei Technologies and Huawei Device USA in litigation brought by T-Mobile relating to Huawei’s development of a testing robot used for the quality control of handsets which are to be sold by T-Mobile. Also for Huawei Technologies, Abrams is representing the client in a litigation brought by Quintel.

Boston-based Donald Steinberg, New York-based Jane Love and Joseph Haag in Palo Alto are some of the key figures in WilmerHale’s trade secrets group. The group assists clients in improving their internal technology, proprietary information and trade secret protection programs, as well as evaluating and structuring their internal and online data security programs and dealing with security breaches and intrusions. The impressive client base includes Braintree Laboratories, Cisco Systems, Ford Motor Company, GlaxoSmithKline and Hewlett-Packard. Natalie Hanlon Leh joined the Denver office from Faegre Baker Daniels, while Michael Diener retired.

Winston & Strawn LLP’s cross disciplinary group, led by John Keville in Houston, advises clients on the full range of legal issues involving the theft of company critical data, including trade secrets, non-competes, unfair competition, data security and data breach. After a three year battle involving a conspiracy on two continents, Winston secured a $24.5m jury verdict on behalf of Suncoast Post Tension. In another important lawsuit, the group is representing Yahoo! in a case brought by prize insurer SCA Promotions over Yahoo!’s decision to discontinue a promotion for the 2014 NCAA men’s basketball tournament; Yahoo! has counterclaimed for breach of contract, breach of fiduciary duty, misappropriation of trade secrets, fraud and fraudulent inducement, and negligent misrepresentation. Korula Cherian left the firm to set up his own practice.


Trademarks: litigation

Index of tables

  1. Trademarks: litigation
  2. Leading lawyers

Debevoise & Plimpton LLP is ‘among the very best for the most complex trademark disputes’. The team is praised as ‘very responsive, business-oriented, and dedicated to the interests of the client’. Work highlights included the successful representation of Snyder’s-Lance subsidiary Princeton Vanguard in a Federal Circuit appeal against a decision by the Trademark Trial and Appeal Board (TTAB) of the United States Patent and Trademark Office (USPTO) to cancel the client’s ‘Pretzel Crisps’ trademark on the grounds that it was generic; the Federal Circuit found in the client’s favor, ruling that the ‘genericness’ of a multi-word trademark cannot be decided based on the genericness of its component words. The team also represented Swiss Watch International as defendant in a trade dress dispute with Audemars Piguet. Other clients include Pernod Ricard, KIND and Kate Spade. ‘Excellent trademark litigatorDavid Bernstein is recommended along with Michael Schaper and Jyotin Hamid in New York. Bruce Keller became an assistant US attorney in New Jersey.

Finnegan, Henderson, Farabow, Garrett & Dunner LLP is an ‘excellent’ boutique with ample trademark litigation experience across a broad range of industries, and has particular expertise with survey research. Recent highlights included the successful representation of PNC Bank as defendant in a dispute with mobile application developer Keith Alexander Ashe before Maryland District Court, which, referring to the Supreme Court decision in B&B Hardware v Hargis Industries, gave preclusive effect to an earlier TTAB decision regarding the defendant’s use of the Spendology mark and dismissed the plaintiff’s infringement claim. The team has also been handling several trademark disputes for Under Armour, including a trademark and trade dress infringement suit against Skechers, and defending an infringement claim brought by Hydro Clothing. Other clients include Bridgestone, Caterpillar, Giant Bicycle and Starbucks. Recommended lawyers include the ‘outstandingDouglas Rettew, the ‘experienced and pragmaticMark Sommers, the ‘responsive and accurateDanny Awdeh, and the ‘brilliant strategistJulia Anne Matheson, all of whom are based in Washington DC.

The ‘outstandingFross Zelnick Lehrman & Zissu, P.C. is experienced in the full spectrum of trial, appellate and TTAB litigation across a broad range of industry sectors. ‘Excellent litigatorBarbara Solomon has handled several matters for the luxury goods company Chanel, including a successful opposition before the TTAB to a real estate developer’s attempt to register the mark CHANEL for real estate services. Richard Lehv successfully represented Jack Wolfskin before the Federal Circuit, which reversed a TTAB decision to reject the client’s paw print trademark application for clothing based on likelihood of confusion with New Millennium Sports’ Kelme trademark for soccer shoes. James Weinberger and Laura Popp-Rosenberg represented Gap and successfully defeated a motion for preliminary injunction brought by Hoop Culture regarding alleged infringement of its ‘Eat...Sleep...Ball.’ trademark. All mentioned attorney are based in New York.

Kilpatrick Townsend & Stockton’s practice is praised for its ‘excellent legal and industry knowledge’ and ‘very short response times’. The widely recognized William Brewster, based in Atlanta, leads a large team that includes many ‘excellent’ litigators, including Dennis Wilson, Larry McFarland, and David Caplan in Los Angeles, Lisa Pearson in New York, and Judith Powell and Charles Henn in Atlanta. The team represented Flowers Bakeries Brands in a trademark infringement suit against its competitor Bimbo Bakeries regarding the similarity of the plaintiff’s Nature’s Own trademark with the defendant’s Nature’s Harvest trademark. On the defense side, it successfully represented Instagram against infringement claims regarding the photo-editing mobile application Layout, and it continues to act for Adidas in a dispute with Skechers. Other clients include Chrysler, FN Herstal, Energizer, Yahoo!, and Ikea.

The ‘efficient, practical and results-focused’ team at Cooley LLP is particularly noted for its work in the technology sector. San Francisco-based John Crittenden is especially recommended for online-related trademark disputes. Work highlights included his defense of Global Personals, creator of an online dating platform, in a suit filed by Avid Life Media alleging trade dress and trademark infringement. Practice chair Peter Willsey in Washington DC and the ‘remarkable’ Janet Cullum in New York successfully defended Google against two individuals who challenged the Google trademark based on its generic use to describe internet searches. Other work came from Facebook and RedPad.

The ‘excellent’ team at Jones Day often handles high-profile disputes for big brands. Washington DC-based practice co-head John Froemming is a ‘diligent, professional and knowledgeable trademark litigator’ and has particular expertise in non-traditional trademarks. He successfully represented eos Products in a trade dress dispute with Oralabs, which agreed to stop selling egg-shaped lip balm. The ‘phenomenal’ Cleveland-based practice co-head Meredith Wilkes continues to represent Victoria’s Secret in several cases throughout the US aimed at shutting down the sale of merchandise that infringes the client’s PINK trademark and trade dress, and she also acted for Avid Technology in a trademark infringement suit against competitor Media Gobbler. Washington DC-based Susan Kayser obtained multiple wins for several Richemont luxury brands, including Chloé, Cartier, Montblanc, and A. Lange & Söhne, in a contributory infringement case against the B2B website operator TradeKey.

Washington DC-based boutique Kelly IP LLP provides ‘high-quality and efficiency’ in its work and is ‘good value for money’. The team is skilled across the spectrum of trial, appellate and TTAB litigation and has particular expertise regarding unconventional marks. The ‘outstandingDavid Kelly and Robert Litowitz successfully defended the purple color mark for AstraZeneca and obtained temporary restraining orders and preliminary injunctions against Camber Pharmaceuticals and Dr. Reddy’s Laboratories. Kelly and Stephanie Bald successfully represented Aston Martin in a dispute with its former design director Henrik Fisker, who then agreed not to build an automobile he had shown at an automotive show in Florida. Former TTAB judge Linda McLeod handles numerous opposition and cancellation proceedings, including the successful representation of Disney subsidiary Playdom in a cancellation against David Couture’s registration for the mark PLAYDOM. Other clients include Harley-Davidson, Philips, Yahoo! and the BBC.

Kirkland & Ellis LLP’s ‘exceptionally savvy and talentedDale Cendali in New York is frequently involved in high-profile trademark litigation and has particular expertise in trademark dilution and reverse confusion cases. Other notable partners are Claudia Ray, who is also based in New York, and Los Angeles-based Diana Torres. Cendali and Ray successfully represented Nike-subsidiary Converse before the International Trade Commission (ITC) in a trade dress infringement suit against Walmart, Skechers and other companies regarding the plaintiff’s Chuck Taylor All-Star shoe design. Cendali and Torres continue to represent the smartphone case manufacturer LifeProof in a trademark infringement suit against Seal Shield and KlearKase regarding the defendants’ use of the LIVEPROOF mark. On the defense side, Ray is representing the advertising company Droga5 against trademark infringement and unfair competition claims brought by Dov Seidman and LRN.

Morrison & Foerster LLP’s team ‘is very effective in handling complex trademark matters’, according to a client. San Francisco-based Jennifer Lee Taylor is a ‘levelheaded and effective negotiator and litigator’ and has particular expertise in non-traditional marks, trademark dilution and reverse confusion cases. Recent highlights include representing NOVADAQ, which uses the SPY mark for medical fluorescence imaging, in a reverse confusion case against competitor Karl Storz regarding its launch of a product under the name SPIES. She also acted for MI Technologies in obtaining a temporary restraining order against Electrified Discounters regarding infringement of the OSRAM trademark for projection lamps. Los Angeles-based Benjamin Fox represented the Swiss jewelry and watch maker Philippe Charriol in litigation against its former US distributor A’lor, after the defendant launched a competing brand.

Quinn Emanuel Urquhart & Sullivan, LLP draws on its excellent commercial litigation capabilities in handling high-stakes trademark disputes. New York-based practice head Robert Raskopf is praised as a ‘very experienced and knowledgeable litigator’, and he continues to defend the football team Washington Redskins against attempts by different Native American groups to cancel its trademark on grounds that it is offensive. Margret Caruso in Silicon Valley has handled several disputes for Google, including a successful defense against trademark infringement claims by Hangingout regarding Google’s use of the term ‘Hangouts’ in connection with video-conferencing and communication services. On the plaintiff-side, New-York-based Todd Anten represented IMS to protect its OneKey trademark for healthcare database services against Veeva Systems, which launched a competing service under the name OpenKey.

Arnold & Porter Kaye Scholer LLP’s practice is especially prominent in the luxury goods sector, where it has handled contentious trademark matters for clients such as Gucci, LVMH, Pernod Ricard and Richemont. New York-based Louis Ederer often leads in such matters and has particular expertise in design and trade dress protection. Work highlights included his successful representation of Bottega Veneta before the TTAB in a dispute with Marc Fisher regarding the registration of the client’s weave design for leather goods. He also acted for jewelry brand David Yurman in a trademark infringement suit against warehouse retailer Sam’s Club. The firm also acts for the Washington Redskins in defense of attempts by different Native American groups to cancel its trademark on grounds that it is disparaging.

The ‘excellent’ team at Cowan, Liebowitz & Latman, PC in New York handles federal court and TTAB litigation across a broad range of industry sectors. Jonathan King successfully represented Car-Freshner in a trade dress infringement suit against Exotica Fresheners. Eric Shimanoff and William Borchard have been assisting Empire State Building with the protection of its brand, including the recent opposition against a registration of a beer logo featuring an image of the building. Richard Mandel handled several disputes for candy manufacturer Promotion in Motion, including a trade dress infringement suit against Aldi regarding its Welch’s Fruit Snacks brand. Mary Kevlin regularly handles contentious trademark proceedings brought by Major League Baseball Properties as well as its constituent clubs.

The team at Katten Muchin Rosenman LLP is ‘extremely responsive and very business-oriented’ and acts for well-known brands in a variety of industry sectors. Highlights included the defense of ArcBest subsidiary Panther Premium Logistics against trademark infringement claims by Jaguar Land Rover over its leaping feline logo, acting for electronic cigarette manufacturer PAX Labs in a trade dress dispute with Philip Morris, and representing bicycle parts manufacturer ENVE Composites in a trademark infringement suit against Giant Bicycle. Other work came from Mattel and Kimberly-Clark. Recommended lawyers include ‘very skilled litigatorFloyd Mandell and the ‘client-focusedKristin Achterhof in Chicago, as well as the ‘very experiencedRoger Furey in Washington DC and the ‘pragmaticKaren Artz Ash in New York.

The very experienced team at Kenyon & Kenyon LLP has handled many trademark cases over the years. Work highlights include the successful defense of online travel planning service Pintrips against trademark infringement claims by online service provider Pinterest regarding the term ‘pin’, acting for the distiller William Grant & Sons in the dispute with Federal Treasury Enterprise Sojuzplodoimport over the Stolichnaya vodka trademark, and representing Dish Network in its dispute with Digital Satellite Connections regarding the DishNet trademark. Recommended lawyers include practice head James Rosini in New York as well as Edward Colbert and Susan Smith in Washington DC. Michelle Mancino Marsh went to Arent Fox LLP in September 2015.

Latham & Watkins LLP’s skilled and wide-ranging litigation practice incorporates a significant number of trademark disputes, particularly in the technology sector, and it has a niche in contentious trademark matters in the nonprofit sector. Practice head Perry Viscounty in Orange County and San Diego-based Jennifer Barry successfully represented craigslist in several trademark and copyright suits against 3Taps and its apartment listing websites. The firm also represented Yucaipa, the owner of the Aloha Airlines trademark portfolio, in a dispute with Hawaiian Airlines over the use of the ‘Aloha’ mark. In the nonprofit sector, the team successfully represented The Heroes Project in a trademark infringement suit against Fitco Cares Foundation and Fitco Fitness Center Outfitters regarding the defendants’ use of the HEROES PROJECT mark.

The team at McDermott Will & Emery LLP is praised for its ‘great industry knowledge’ in the alcoholic beverages sector. Recent work highlights in this area included acting for Kahlua Coffee Liqueur in a trademark infringement suit against a competitor selling ‘Kahfua’ branded coffee liqueur, assisting Brooklyn Brewery with several TTAB and UDRP proceedings, as well representing Heineken before the TTAB in opposition of Marcon’s registration of the Heineken mark for ‘meat juices’, such as chicken broths. The team also handles disputes for clients in a variety of other industries. For example, it has been defending Tyson Foods subsidiary Hillshire Brands against trademark infringement claims by Parks regarding the defendant’s launch of ‘Park’s Finest’ hot dogs. Other clients include Korean Air Lines and Sunrise Senior Living. Practice head John Dabney and Robert Zelnick in Washington DC are particularly recommended.

Chicago-based boutique Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP has a long history of handling contentious trademark matters for clients from various industries. Bradley Cohn and Phillip Barengolts represented Bayer in a dispute with Belmora before the Fourth Circuit regarding the cancellation of the defendant’s Flanax trademark for pain relief medicine. Cohn and Thad Chaloemtiarana successfully represented Robert Bosch in a trademark infringement and false advertising dispute with Euro-Star Industries; Robert Sacoff represented Belgian company Donnay International in a dispute with its trademark licensee Donnay USA regarding the termination of a tennis racket license; and Jonathan Jennings acted for Icelandair in a dispute with Delta Air Lines before the TTAB over the Economy Comfort trademark.

Proskauer Rose LLP’s trademark practice is praised for providing ‘value for money’ and is noted for its industry expertise in alcoholic beverages as well as the entertainment and sports. Practice co-chair Brendan O’Rourke is recommended as an ‘outstanding’ litigator. He has been handling several contentious matters for longstanding client Diageo, including defending against a suit filed by Allied Lomar regarding alleged infringement of the plaintiff’s Stitzel trademark by references to the defendant’s Stitzel-Weller Distillery in Kentucky. Sandra Crawshaw-Sparks has been defending Madonna and her manager against trademark infringement allegations by beauty and fashion brand Hard Candy over the use of the trademark Hard Candy in association with fitness clubs and related products.

The practice at Sheppard, Mullin, Richter & Hampton LLP draws on its wider commercial litigation capabilities to handle high-stakes trademark disputes. The ‘very experienced and practicalCarlo Van den Bosch in Orange County successfully represented Hana Bank in a long-lasting dispute with Hana Financial regarding the question of who used the Hana mark first in US commerce, with the final victory before the US Supreme Court in 2015. Jill Pietrini in Los Angeles successfully represented Life Alert Emergency Response in a trademark infringement suit against LifeWatch, and New York-based Paul Garrity acted for Walmart in a trade dress dispute with Converse before the ITC. Lisa Martens in San Diego joined the practice from Fish & Richardson P.C..

The ‘excellent’ team at Weil, Gotshal & Manges LLP in New York has outstanding expertise regarding secondary liability of intermediaries for trademark infringements and has been handling such matters for eBay and Facebook. A highlight was the defense of Alibaba against contributory trademark infringement and counterfeiting claims from a group of luxury brand owners, including Gucci, Bottega Veneta and Yves Saint Laurent. The firm is also defending Core-Mark, a provider of marketing and distribution services for retail stores, against allegations of having unknowingly distributed counterfeit 5-HOUR Energy products. Practice chair Bruce Rich has ‘a wealth of experience’ and Randi Singerhas remarkable knowledge of all aspects of trademark law’ and is praised for her ability to ‘bring cases to a close before they get to court’.

Covington & Burling LLP handles a range of trademark litigation before federal courts and the TTAB. San Francisco-based Simon Frankel has been representing Fitbug, a maker of exercise tracking equipment and software, in its trademark infringement suit against competitor Fitbit. Neil Roman and of counsel Ronald Dove in Washington DC have been defending A.T. Kearney in a dispute with Toffler Associates over the service trademark ‘future proof’ for strategic consulting. Roman also continues to act for the SPI Group in its dispute with the Russian agency Federal Treasury Enterprise Sojuzplodoimport regarding the Stolichnaya vodka trademark.

Fish & Richardson P.C.’s team has extensive experience in federal and state court as well as TTAB proceedings. Boston-based Mark Puzella and David Hosp have been handling several contentious trademark matters for New Balance Athletic Shoe, including securing the favorable settlement of a dispute with Karl Lagerfeld regarding the trade dress for the 574 shoe. New York-based Kristen McCallion and John Johnson successfully represented Full Circle United, organizer of the Brewskee-Ball league, in a dispute with the skee-ball machine manufacturer Skee-Ball Inc. Lisa Martens moved to Sheppard, Mullin, Richter & Hampton LLP.

The ‘very strong’ team at Foley & Lardner LLP has a wealth of experience representing clients from various industries before federal courts and the TTAB. Highlights included acting for Herman Miller in trade dress litigation against Office Star regarding the Eames and Aeron chair designs. The team has also been representing home security specialist SimpliSafe in a trademark infringement suit against ArcSoft regarding the defendant’s launch of a home monitoring camera under the trademark Simplicam. Other clients include Citigroup, Kayak Software, and the New York Jets. Jonathan Moskin and Robert Weisbein in New York are recommended.

Greenberg Traurig, LLP’s practice, led by Susan Heller in Los Angeles, is particularly noted for trademark disputes in the technology and fashion industries. Steven Wadyka in Washington DC successfully represented TracFone Wireless in a trademark infringement and dilution suit against American Wireless. Alan Sutin in New York has been defending Ralph Lauren in an action brought by Rolex concerning the proposed use of the marks Ralph Lauren RLX and RLX Ralph Lauren.

Kelley Drye & Warren LLP’s team handles trademark disputes for a variety of clients and has a particular strength in the fashion industry. It has been representing Ralph Lauren in several disputes with the U.S. Polo Association, including in litigation before federal courts and the TTAB and in arbitration proceedings. Practice chair Andrea Calvaruso in New York is praised for her ‘smart approach to dispute resolution - fighting the fights that need to be fought and settling disputes where appropriate’. The practice has recently grown with the integration of New Jersey-based boutique Ward & Zinna and its principals John Ward and Michael Zinna.

Loeb & Loeb LLP’s team is especially noted for its trademark litigation work in the entertainment, consumer goods and financial services industries, but the broad practice extends beyond these sectors. Douglas Masters in Chicago successfully represented POM Wonderful before the Ninth Circuit, which reversed the district court’s order denying a preliminary injunction in a trademark infringement action against Pur Beverages over the sale of Pur Pom energy drinks. David Grace in Los Angeles represented Fidelity Investments in a dispute with Fidelity Atlantic Investments regarding the client’s Fidelity trade name and service mark.

The ‘extremely capable’ team at Mayer Brown is led by John Mancini in New York. Further notable trademark litigators include Richard Assmus in Chicago and New York-based Allison Levine Stillman. It has been handling several contentious matters for Nestlé, including a dispute with HiLine Coffee regarding trademark and trade dress infringement of the client’s Nespresso capsules. It also continues to represent the lifestyle magazine publisher DM Luxury in a suit against Celebrity Cruises regarding the defendant’s alleged use of the plaintiff’s Modern Luxury trademark and its application to register the mark ‘That’s Modern Luxury’.

Norton Rose Fulbright US LLP’s team has handled contentious trademark matters for a variety of clients before federal courts and the TTAB. The team is led by Timothy Kenny in Minneapolis. Other notable trademark litigators are Saul Perloff in San Antonio and Michael Metteauer in Austin. Work highlights included the representation of Nestlé Health Science-Pamlab in a dispute with Virtus Pharmaceuticals. Other mandates came from The Men’s Wearhouse, Mary Kay, NRG Energy, and Fair Isaac Corporation.

Orrick, Herrington & Sutcliffe LLP is especially strong in trademark litigation in the apparel and alcoholic beverages sectors, but it also handles disputes outside of those key areas. Practice head Peter Vogl has been handling several matters for the wine and spirits company Chatham Imports, including a recent dispute with Bomberger’s Distillery, Thistle Finch Distilling and Heritage Spirits. He is also acting for Coorstek Medical in challenging the registration of the pink color mark for hip replacement products by competitor Ceramtec. Lisa Simpson is noted for her work in the fashion industry. The mentioned attorneys are based in New York.

Pillsbury Winthrop Shaw Pittman LLP’s team has been handling several high-stakes court disputes and appeals, as well as TTAB proceedings. Practice chair Bobby Ghajar in Los Angeles acted for Facebook in multiple contentious trademark matters, including the successful defense of Facebook subsidiary Oculus VR against a trademark infringement claim brought by video hosting service Oculu, LLC. ‘Strong and relentless litigator’ Callie Bjurstrom in San Diego successfully represented HM Electronics as plaintiff in a trademark infringement and unfair competition suit against R.F. Technologies.

Steptoe & Johnson LLP’s practice is particularly strong in the luxury goods sector, but also handles contentious trademark matters for clients from a variety of other industries. The Washington DC-based practice chairs Michael Allan and William Pecau have been representing LVMH in several contentious trademark matters. Highlights include the successful representation of Louis Vuitton Malletier in a suit against Sunny Merchandise Corporation regarding counterfeit products and infringing Louis Vuitton trademarks in connection with sunglasses and eyewear, and the representation of Moët Hennessy in a dispute with La Maison Du Vigneron regarding the infringement of the client’s Ice Imperial trademark and trade dress for champagne.

Stroock & Stroock & Lavan LLP has been handling several high-stakes disputes for clients from various industries. Charles Cantine successfully represented PODS as plaintiff in a trademark infringement suit before the Middle District of Florida, which decided that defendant U-Haul cannot use the term ‘pods’ for portable moving and storage containers and awarded PODS $60.7m in damages. Laura Goldbard George and Steven Pokotilow have been representing Deutsche SiSi-Werke in a trade dress infringement suit against Faribault Foods regarding the defendant’s alleged copying of the client’s Capri-Sun packaging. Pokotilow also represents Saint Laurie in its trademark dispute with Yves Saint Laurent. All mentioned attorneys are based in New York.


Trademarks: non-contentious (including prosecution, portfolio management and licensing)

Index of tables

  1. Trademarks: non-contentious (including prosecution, portfolio management and licensing)
  2. Leading lawyers

The ‘top-notch’ boutique Finnegan, Henderson, Farabow, Garrett & Dunner LLP is highly rated for its domestic and international trademark portfolio management and prosecution expertise. The ‘very responsive’ team ‘knows the law inside out’ and provides ‘very business-oriented advice’. The ‘brilliant strategistJulia Anne Matheson continues to handle the domestic trademark portfolio management for Starbucks and its affiliated companies, and supports the client with its pre-acquisition due diligence investigations. Christopher Foley acts for Caterpillar regarding a wide range of trademark matters for its international brands, including the prosecution of more than 1,400 pending applications worldwide. Brett Heavner assists Xiaomi with the management of its trademark portfolio in more than 100 countries, and has been advising on enforcement strategies to deal with gray market imports. Other clients include Bridgestone Firestone, Charming Charlie, Forum Pharmaceuticals, and Fuente Cigar. Mentioned lawyers are based in Washington DC, and the practice also has practitioners in Boston and Atlanta.

The ‘outstanding’ boutique Fross Zelnick Lehrman & Zissu, P.C. is recommended for its US trademark prosecution expertise and has extensive experience protecting global brands. The practice also does anti-counterfeiting work for clients in a variety of industries, including entertainment, luxury goods, pharmaceuticals and financial services. Work highlights included assisting Michael Kors with its brand expansion project into Chile, acting for Tiffany & Co regarding its global brand protection, including the coordination of prosecution work in China and Russia, as well as defending the Batman family of trademarks for DC Comics, including opposition proceedings before the TTAB. The team also provides pro bono IP services for Lawyers Without Borders. David Ehrlich handles trademark portfolios for clients in the electronics, life sciences and retail sectors. Other recommended lawyers include Mark Engelmann, David Donahue, James Weinberger and Cara Boyle, who are all based in New York.

The ‘very strong’ practice at Kilpatrick Townsend & Stockton is praised for ‘excellent legal and industry knowledge’ as well as ‘valuable advice with very short response times’. San Francisco-based Anthony Malutta heads a large team, whose expertise spans clearance and prosecution, anti-counterfeiting and gray market strategies, as well as ex parte and inter partes reviews at the TTAB. David Mayberry in Washington DC acts as Marriott’s primary outside trademark counsel, including in the management of its portfolio of international hotel and hospitality brands. Atlanta-based Tywanda Lord and Christine James represent UPS in matters of trademark protection and enforcement. Gregory Gilchrist in San Francisco provides trademark counseling and enforcement for Levi Strauss. Other clients of the practice include Amazon, Bank of America, Dolby, Expedia, Instagram, Snapchat, and the InterContinental Hotel Group.

The ‘extremely responsive and commercial’ team at Arent Fox LLP is particularly noted for its work in the media and entertainment industry, but it also has many clients in the technology, fashion and food sectors. Practice head Ricardo Fischer and Cristina Carvalho and San Francisco-based Sarah Bruno assist key client Mars with portfolio management and other trademark matters in the Americas, including advice on the client’s acquisition of the Iams and Eukanuba pet food brands. Anthony Lupo acts for Discovery Communications regarding various trademark matters, including global branding initiatives and licensing deals. Michael Grow assists Warner Bros. with various trademark matters, including licensing programs and opposition proceedings before the TTAB. All named lawyers are based in Washington DC except where otherwise stated.

The ‘very strong’ team at Cowan, Liebowitz & Latman, PC in New York ‘combines legal expertise with an excellent understanding of the underlying market issues, providing smart and pragmatic advice’. The ‘very experiencedWilliam Borchard acted for several fashion companies, including J. Crew and Ann Taylor, and assisted Empire State Realty Trust with the protection of its Empire State Building brand. The ‘pragmatic problem-solverMary Kevlin assists Major League Baseball Properties as well as its constituent clubs with the management and enforcement of their brands for use on a wide variety of merchandise and services. Jeffrey Epstein has particular expertise in the fashion industry and Deborah Squiers is noted for her work in the financial, beverage and educational sectors.

DLA Piper LLP (US)’s practice group has ‘a clear understanding of complex trademark laws, helping clients make informed decisions concerning their IP assets’. It manages the trademark portfolios of clients in a variety of industries, has niche expertise regarding certification marks, and has been advising many clients on the IP aspects of corporate and commercial transactions. Chicago-based Mark Feldman and Keith Medansky are ‘extremely focused and proactive, with excellent legal acumen and practical knowledge’. Practice head Ann Ford in Washington DC assists Dannon with trademark portfolio management, prosecution, licensing and enforcement. Other clients include Accenture, ESPN, Hyatt, Jamba Juice, Nike, and safety organization UL.

Dechert LLP’s team handles trademark clearance, registration and enforcement for several longstanding clients in a variety of industries. The ‘very talented’ practice head Glenn Gundersen in Philadelphia has been acting for many well-known Swiss luxury watch brands, including Breitling, Ebel, and TAG Heuer. He has also assisted The Ivy League with the prosecution and enforcement of its brand, including actions against several apparel producers. In addition, the practice has represented Apple in several opposition and cancellation proceedings before the TTAB. Other clients include Zara and Towers Watson.

K&L Gates handles global trademark portfolios for domestic and international clients in a variety of industries, including food and beverage, and retail. The team assists Tri-Union Seafoods with the protection of its Chicken of the Sea brand, and is primary trademark counsel to B&G Foods, managing its portfolio of more than 700 trademarks worldwide. It also assists TripAdvisor with trademark searching, clearance, prosecution and enforcement matters, and has provided IP due diligence and analysis regarding two recent acquisitions of non-US entities. Other clients include AT&T, The Coppola Companies, and Wrigley. Frank Politano in Newark and Susan Hollander in San Francisco are the names to note.

The ‘outstandingDavid Kelly leads the team at Kelly IP LLP in Washington DC, which provides ‘clear, commercial advice’ and is ‘highly knowledgeable, friendly and client focused’. Robert Litowitz, Stephanie Bald, Linda McLeod and Lynn Jordan have been handling numerous prosecution, opposition and cancellation proceedings for an impressive cross-sector client roster. Their work in the media and entertainment sector is particularly notable, with clients including Disney, Fox and the BBC. The team also has notable experience within the automotive, financial services, and pharmaceutical sectors, working with clients such as Aston Martin, Harley-Davidson, Travelers, and AstraZeneca.

Kenyon & Kenyon LLP’s practice head James Rosini in New York is noted for his emergency rebranding expertise. His team has handled complex rebranding work for several clients, including Abbott Laboratories, AIG and Citigroup, conducting trademark clearance and filing across multiple jurisdictions. The firm also provides ongoing portfolio management to major brands such as Walmart, Olympus and SAP. In the Washington DC office, Edward Colbert and Susan Smith are the names to note.

McDermott Will & Emery LLP is praised for its ‘fantastic service’ and ‘great industry knowledge’, particularly in the alcoholic beverages sector. Richard Kim in Washington DC acts for The Absolut Company and other Pernod Ricard subsidiaries regarding trademark portfolio management, licensing, enforcement and dispute resolution. Jorge Arciniega in Los Angeles has been counseling XIX Entertainment on several branding, licensing and marketing matters. Chicago-based practice head Jennifer Mikulina assists Allrecipes.com with the protection of its brand around the world, and handles the trademark prosecution and enforcement matters for outdoor brand Granite Gear. Other clients of the practice include Hitachi, Univision Communications and Lockheed Martin.

Baker McKenzie LLP’s team, led by Dave Davis in Chicago, is praised for ‘combining IP expertise with a multi-jurisdictional outlook and a wide global footprint’. It handles the full array of trademark matters, including global trademark portfolio management, major rebranding projects and transactional due diligence. Lisa Rosaya and Pamela Church in New York have been assisting key client Unilever with trademark prosecution, opposition and cancellation proceedings, as well due diligence. Rosaya also handle Pinterest’s global trademark portfolio and advises on the enforcement strategy. Other clients include Dita Eyewear, the C.S. Lewis Company, and Brooks Brothers.

Bracewell LLP has strong clearance, prosecution and enforcement capabilities, and regularly advises on branding and advertising issues related to product launches. Practice head Erin Hennessy, who is based in New York and Seattle, acts for HTC regarding trademark clearance for all new HTC mobile devices, and handles enforcement matters in North and South America. She also assists D’Angelico Guitars with the building of its brand equity through the development of brand protection and enforcement programs across the globe.

The team at Cooley LLP provides advice that is ‘prompt, commercially focused, and tailored to client’s needs’. It earns many mandates from clients in the technology sector, for which it handles a number of global portfolios and advises on matters related to international brand protection, including trademark selection, registration and enforcement. San Francisco-based John Crittenden acts as primary counsel to Lonely Planet, Tesla Motors, RadPad and Kamut International, including in relation to trademark prosecution and representation in disputes. Further names to note are Peter Willsey in Washington DC and Janet Cullum in New York.

Covington & Burling LLP’s practice, led by San Francisco-based Simon Frankel and of counsel Ronald Dove in Washington DC, has particular expertise advising on the trademark aspects of corporate transactions, and handles trademark prosecution matters for a variety of clients. Of counsel Kathleen Gallagher-Duff manages the trademark portfolio of the National Geographic Society and assisted with the IP and licensing aspects in the negotiation of a joint venture agreement with 21st Century Fox. Of counsel Marie Lavalleye manages the trademark portfolios of Spirits International and the Business Software Alliance, and acted for Merck Sharp & Dohme in TTAB proceedings regarding the Deca Durabolin trademark.

Dentons’ team provides a ‘high-quality service in a speedy and cost-efficient manner’. It assists clients with the management of their global trademark portfolios, has a strong anti-counterfeiting practice, and supports corporate and commercial transactions with IP advice. A highlight was assisting BCL-ED with the establishment of the new brand ED by Ellen DeGeneres, including advising on a worldwide trademark filing strategy, an online protection strategy, an anti-counterfeiting program, a licensing program, and agency and distribution agreements. Other clients include Opera Software, Schwartz & Benjamin, and the Hain Celestial Group. Monica Richman in New York is praised as ‘very knowledgeable, highly responsive, thoughtful and practical’.

Fitzpatrick, Cella, Harper & Scinto’s ‘client-focused and business-oriented’ team undertakes the full spread of trademark work, from searching and clearance, to IP due diligence, to handling opposition proceedings before the TTAB. New York-based practice head Timothy Kelly has been the assisting the bearing manufacturer Schaeffler Group with the protection of its brands, including anti-counterfeiting work. Nina Shreve, who is also based in New York, is noted for her work in the pharmaceutical and fashion industries. Other clients include PVH Corp, Bear USA and Cluett Peabody & Co.

Foley & Lardner LLP’s ‘exceptionally talented, efficient and responsive’ team provides strategic advice to clients in the sporting, fashion, financial services and automotive industries. Practice chair Jeffrey Greene in New York assists Citigroup with foreign and domestic trademark searches, filing and prosecuting trademark applications, enforcing and defending trademark rights, and oppositions and cancellations. Milwaukee-based co-chair Mark Diliberti has been advising Harley-Davidson on sponsorships, licensing and advertising strategies, and also assists the Milwaukee Brewers Baseball Club with trademark clearance and enforcement, as well transactional matters. Andrew Baum in New York assist Hermès with brand protection, including the successful registrations for the designs of its Kelly and Birkin handbags.

Greenberg Traurig, LLP’s brand management practice, led by Susan Heller in Los Angeles, is particularly noted for its work in the technology, entertainment, fashion, and luxury industries. A longstanding client is Ralph Lauren, which it assists with trademark clearance, prosecution, enforcement, and transactional matters. Other clients include Katy Perry, Jennifer Lopez, Nikon, and Godiva Chocolatier.

Jones Day provides ‘high-quality’ trademark prosecution services for many big brands. The ‘very strong’ team is praised as ‘fast and efficient’. Cleveland-based Meredith Wilkes is praised for her ‘practical strategy advice’. She has been assisting fast-food company Wendy’s and wire and cable manufacturer General Cable Corporation with trademark prosecution and licensing matters. Washington DC-based John Froemming and Susan Kayser have been acting for Abercrombie & Fitch regarding its trademark portfolio management and enforcement. Other clients include L Brands, Kind Group, Educational Testing Service, and the Wikimedia Foundation.

Kelley Drye & Warren LLP’s ‘very good’ team regularly advises clients in the luxury goods, fashion and beverage sectors, conducting clearance, licensing and trademark enforcement for numerous well-known brands. Practice chair Andrea Calvaruso in New York is praised for her ‘pragmatic approach that avoids over-lawyering matters that do not warrant it’. She acts for Avon, Bacardi, Foot Locker, Gucci, Miss Universe and Ralph Lauren in matters including portfolio management, trademark enforcement and proceedings at the TTAB. The practice has recently grown with the integration of New Jersey-based boutique Ward & Zinna and its principals John Ward and Michael Zinna.

King & Spalding LLP’s team advises clients on domestic and international trademark protection and also has a robust anti-counterfeiting practice. New York-based Kathleen McCarthy and Bruce Baber, who is based in New York and Atlanta, have been assisting Coca-Cola on its trademark needs for many years. Other clients include Kimberly-Clark, Home Depot and Madison Square Garden.

The ‘very good’ team at Knobbe Martens Olson & Bear LLP acts for clients in a variety of industries, including entertainment, fashion, and food and beverage. Highlights included assists NBCUniversal in numerous rush trademark clearance projects, such as for the Fast and Furious movie franchise and the renaming of existing productions in the client’s theme parks. The firm has also assisted Monster Energy in building a portfolio of more than 5,200 registered trademarks to protect its valuable brands in the US and internationally, and represents the client in cancellation and opposition proceedings before the TTAB. Recommended partners include Jeff Van Hoosear, Salima Merani and Diane M. Reed in Orange County.

Norton Rose Fulbright US LLP regularly assists clients with the trademark matters associated with corporate transactions, including conducting due diligence investigations and negotiating licensing and joint venture agreements. It also handles domestic and international portfolio management and is also involved in numerous opposition and cancellation proceedings before the TTAB. Minneapolis-based practice head Timothy Kenny has been advising FICO on global strategy, trademark prosecution and enforcement, and opposition and cancellation proceedings. Austin-based Alicia Morris Groos has been assisting NRG Energy with the management and enforcement of its global trademark portfolio. Other clients include Yorktown Technologies and Georgia-Pacific.

The ‘very good’ trademark boutique Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP in Chicago acts for clients from a variety of industries. Jonathan Jennings and Phillip Barengolts are praised as ‘very talented and efficient’. Thad Chaloemtiarana assists the automotive industry parts supplier BorgWarner with prosecution and enforcement for its worldwide trademark portfolio, including anti-counterfeiting raids and seizures in numerous countries. Robert Sacoff acts for Acer with regard to trademark prosecution and opposition proceedings before the TTAB. Other clients include AMD, BP America, and Medline Industries.

Steptoe & Johnson LLP’s team in Washington DC covers the full range of trademark and trade dress protection services and is frequently involved in cancellation and opposition proceedings before the TTAB. William Pecau and of counsel Rachel Hofstatter assist the Federation of the Swiss Watch Industry with the protection of its trademarks, including handling an opposition before the TTAB against the registration of the mark SWISS REIMAGINED for watches by Reflexion Research. Other clients include LVMH, Regions Bank, and Cleveland Indians Baseball Company.


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