The Legal 500

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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