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Finnegan, Henderson, Farabow, Garrett & Dunner LLP has in-depth expertise and experience in patent office examinations, from prosecution, reexamination and reissue proceedings, to appeals before the Patent Trial and Appeal Board (PTAB) at the US Patent and Trademark Office (USPTO), where the group is highly recommended for representing petitioners and patent owners from a broad range of industries. The prosecution team files US and foreign patent applications for utility, design and plant inventions, and its patent office trials practice handles inter partes reviews (IPRs), post-grant proceedings and covered business method (CBM) reviews. The ‘phenomenal team’ includes the highly recommended Reston-based Erika Harmon Arner, who was appointed president of the PTAB Bar Association; Washington DC-based Charles Van Horn, who is ‘a luminary in his field’; chemical and biotech specialist Adriana Burgy, also based in Washington DC, who ‘provides exceptional thinking in terms of navigating patent prosecution in light of competing technology’; Atlanta’s Virginia Carron, who has ‘exceptional legal and practical business sense’; and, also in Atlanta, PTAB trial practice head Jason Stach, who represents clients before the PTAB and in Federal Circuit appeals stemming from reexaminations and court actions. Managing partner Mark Sweet (Washington DC) counts NanoFlex Power Corporation as his client, which he assists with its worldwide patent portfolio related to organic photovoltaic devices. Sweet and Reston-based Christopher Isaac are acting for Caterpillar in prosecuting several hundred utility and design patent applications in the US and elsewhere, assisting with opinions involving issues of patent validity and infringement, and handling IPR proceedings.

Fish & Richardson P.C. combines a well-established prosecution practice with excellent patent litigation capability, which makes it a popular choice for various forms of post-grant proceedings. The highly recommended Karl Renner co-chairs the post-grant practice and has solid experience advising emerging companies and Fortune 50 companies, particularly in the electronics, physics and mechanical arts spaces, on prosecution and portfolio management matters. In a typically prolific year, the team successfully assisted Lifefactory with defending an IPR petition filed by Leapfrog Product Development challenging the patentability of innovations relating to protective silicon sleeves for glass containers. Biogen, Bose Corporation, Amazon.com, Medical Care Corporation and Prophet Equity are among the impressive client list. Boston-based Jeffrey Barclay and Silicon Valley-based Christopher Bowley focus on patent prosecution and counseling, patent strategy and analysis and management of patent portfolios. Attorneys are based in Washington DC unless stated otherwise.

Foley & Lardner LLP has a solid track record representing patent owners and petitioners in IPRs, where it benefits from its deep bench of patent prosecution attorneys and its well-regarded patent litigation practice that frequently works on major cases. Stephen Maebius led a team which successfully defended three IPR challenges by generic manufacturer Dr Reddy’s Laboratories against Galderma Laboratories’ Orange Book-listed Oracea patent. The ‘fantastic’ Michele Simkin heads the intellectual property group and is singled out for her ability to handle ‘critical portfolios with significant volumes of drafting, filing and prosecution worldwide’. A cross-office team including Pavan Agarwal, ‘excellent patent strategist’ Joseph Ziebert in Milwaukee and Boston-based Christopher McKenna are assisting longstanding client Broadcom with its patent portfolio for technologies such as wireless communications and enterprise networks. Other key names include Mark Kassel in Madison, Wisconsin; Milwaukee-based Jeffrey Gundersen; Boston-based John Lanza and Paul Pua; San Diego’s Christopher Bolten (senior counsel); Palo Alto’s Cliff Liu (senior counsel); and Kristel Schorr and senior counsel Tianran Yan. Unless otherwise indicated, named attorneys are based in Washington DC.

Recent developments at McDermott Will & Emery LLP include the arrival of Boston-based Edward Gordon from Foley & Lardner LLP, and the acquiring of a number of new clients, including Juno Therapeutics, General Electric, Hisense and Ascend Performance Materials. The firm’s client list also features tech giant Google, on behalf of which it has filed thousands of patents in recent years, and electronics multinational Panasonic, on behalf of which it manages a large quantity of patents covering a wide range of technologies and products. In Boston, Robert Underwood and Kristin Connarn assisted Pulmatrix and Takeda Pharmaceutical Company with their global patent prosecution and IP strategies. The group’s recent IPR highlights include representing Qiagen in filing five petitions relating to the vitro diagnostic tests for the detection of tuberculosis, and securing two victories in IPRs for Ericsson regarding two patents owned by Intellectual Ventures. Other notable names include Orange County’s Mark Itri and Michael Dreznes, Chicago-based Ahsan Shaikh and the Washington DC trio of Hosang Lee, Stephen Becker and Bernard Knight.

IP boutique Fitzpatrick, Cella, Harper & Scinto is singled out for its ‘consistently and reliably high quality level of service’. In recent post-grant matters, it successfully acted for Novartis in an IPR concerning its Zortress product, and it represented Amgen in an IPR involving a challenge brought by Complex Innovations to Amgen’s patent related to pharmaceutical compositions containing cinacalcet. Sanofi, Canon, Daiichi Sankyo and Medtronic are among the firm’s clients, as are a number of start-ups. Justin Oliver in Washington DC, patent litigator Dominick Conde and of counsel Anthony Zupcic focus on proceedings before the PTAB; Frank DeLucia is praised for his ‘skill, performance, client focus and dedication’; Jonathan Berschadskyexplains matters simply and practically’; and Alicia Russo has particular expertise in the pharmaceutical, nanotechnology and chemical industries. Named attorneys are based in New York except where stated otherwise.

Large IP firm Knobbe Martens Olson & Bear LLP handles a broad range of IP matters, including portfolio management, prosecution proceedings and due diligence. Brenton Babcock heads the USPTO trials and post-grant proceedings practice group and has notable experience in patent interferences and reexaminations; Gerard von Hoffmann focuses on the medical device industry and is assisting AcuFocus with its patent portfolio and IP due diligence; San Diego-based Michael Fuller is praised for his ‘broad-based knowledge and deep technology expertise’ and assisted Bionomics with successfully obtaining three patents covering BNC-101, an antibody-based therapeutic drug for treating cancer; Salima Merani and Steven Nataupsky are singled out for their ‘tremendous attention to detail’. Named attorneys are based in Irvine, Orange County except where otherwise stated.

Morrison & Foerster LLP is immersed in the technology, consumer products and life sciences sectors. The group obtained a string of IPR successes before the PTAB over the past year, including securing two IPR victories for Genentech against Phigenix regarding the use of Kadcylal; securing a victory for Hulu, which found a video streaming patent asserted by Intertainer against Hulu to be invalid; and representing Dyson in a case with LG in which both parties asserted vacuum patents against each other. Palo Alto-based Catherine Polizzi and San Francisco’s Jie Zhou are key names to note in the life sciences field and count a number of multinational pharmaceutical giants amongst their clients, including Sanofi and Medivation. Northern Virginia-based Jonathan Bockman has experience in a wide variety of technology areas and is assisting Novadaq Technologies with its global patent strategy and in IPR matters. Michael Ward heads the patent practice from the San Francisco office, which also houses the electronics, software and telecoms patent group head Peter Yim. IPR and post-grant group co-head Mehran Arjomand is based in Los Angeles.

Washington DC-based Sterne, Kessler, Goldstein & Fox PLLC has, according to peers and clients, one of the leading post-grant proceedings practices in the country; it was the first law firm in the US to have handled over 500 America Invents Act (AIA) proceedings before the USPTO. It ‘delivers a high-quality work product in a very timely manner’ and is also ‘great for helping clients grow their patent portfolios and maximize protection’. Eldora Ellison assisted Kite Pharma with patent prosecution and acted on a petition for inter partes review of a patent held by Sloan Kettering Institute that is exclusively licensed to Juno Therapeutics. In another highlight, Ellison and Eric Steffe successfully defended ImmunoGen in an IPR filed by Phigenix against its patent covering Kadcyla. Commended for his ‘excellent patent skills and very analytical thinking’ is David Cornwell, who has expertise in design patents and mechanical devices; Robert Sokohl continues to manage a portfolio of over 7,000 patents and patent applications for its longstanding client Broadcom. Robert Sterne, Mark Rygiel, Michael Ray and Richard Coller are also highly recommended.

The newly formed Andrews Kurth Kenyon LLP is a result of the combination of Houston-headquartered Andrews Kurth LLP and New York-based IP boutique Kenyon & Kenyon LLP. The new team includes 37 partners with expertise ranging from aerospace, electronics and engineering to pharmaceutical and life sciences, and has a strong track record in post-grant proceedings, patent procurement and portfolio counseling. New York-based Gary Abelev is ‘an accomplished patent prosecutor’; Houston’s Gregory Porter recently assisted Fast Felt Corporation with securing a complete patent owner victory against Owens Corning before the USPTO following an IPR. New York-based Michael Lennon handled the defense of patent infringement litigation for Volkswagen Group of America, including challenging the validity of the asserted claims before the USPTO in IPRs and reexaminations. Other key names to note include Washington DC-based Edward Colbert, Ping Wang and Daniel Shanley; Houston-based Jeff Dodd; and New York’s Walter Hanley.

Barton Showalter’s team at Baker Botts L.L.P. bolstered its IP practice with the hire of two former Cooley LLP partners; Wayne Stacy joined Showalter in Dallas and Sarah Guske joined the recently established San Francisco office. It has a robust post-grant practice which achieved multiple victories at the PTAB, as well as a solid patent prosecution group that advises clients include Facebook, Cisco Systems, Hitachi, Oxford Nanopore Technologies and Columbia University. The ‘exceptionally responsive and insightful’ Eliot Williams, who splits his time between San Francisco and Palo Alto, and New York-based Robert Scheinfeld are representing MasterCard International in three patent infringement matters, including filing two IPR petitions following D’Agostino’s allegation of infringement of two patents relating to the systems and methods for performing secure credit card transactions; the PTAB concluded that both asserted patents were unpatentable. Palo Alto-based Hogene Choi is also highly recommended.

Birch, Stewart, Kolasch & Birch, LLP, operating from Falls Church, Virginia, is singled out for its representation of US as well as foreign clients, particularly Korean and Japanese electronics companies, in prosecuting both utility and design patents. The team is also active in post-grant proceedings and recently represented BioMarin Pharmaceutical in a series of successful trials before the PTAB and in related appeals before the Federal Circuit. Gerald Murphy, MaryAnne Armstrong and Craig McRobbie are key names for biotech and pharmaceuticals; James Eller is a mechanical and electro-mechanical specialist; and Eugene Perez and Richard Anderson focus on post-grant proceedings.

Cantor Colburn LLP’s team is led from its Hartford office by name partners Michael Cantor and Philmore Colburn, and in 2016 the team further enhanced its offering with a number of hires in Hartford as well as its Houston and Atlanta offices. It files a large number of domestic and international utility and design patent applications, for clients that include manufacturing companies, universities, hi-tech start-ups and Fortune 500 companies. Another standout feature is its strong Asia practice, and the group acts for clients such as Samsung in preparing and prosecuting patent applications. Leah Reimer and Pamela Curbelo are recommended for their expertise in the chemical, material and life sciences industries, Dave Christensen has particular expertise in advising start-ups and medium-sized clients in preparing patent portfolios for investment financing, while trial lawyer and chair of the post-grant practice group Andrew Ryan has notable experience in IPR and other adversarial proceedings at the USPTO.

Fenwick & West LLP’s Silicon Valley-based practice fields 34 patent prosecution attorneys and a large number of patent agents, and advises an impressive list of leading technology and life sciences clients, including Airbnb, Juno Therapeutics, LG Display, Dropbox and Auris Surgical Robotics. Among its highly recommended attorneys, patent group chair Rajiv Patel is ‘knowledgeable and well connected’ and assists clients including GoPro and Twitter with patent portfolio development and strategy; Stuart Meyer has ‘insights into key areas of the software market and IP’ and is a key name to note for post-grant proceedings; the highly recommended Robert Hulse and Antonia Sequeira manage the bulk of Facebook’s patent portfolio and defend it against third-party-initiated reexaminations; David Ahn and Jae Won Song ‘provide excellent client-service and high-quality advice’.

IP boutique Oblon has ‘a solid structure and a program which continuously educates the attorneys in the group to keep abreast of the relevant case law’. The Alexandria, Virginia-based practice is best known for its prosecution practice for a wide range of domestic and foreign technology clients; it is also a significant player in the post-grant proceedings space, led by the highly regarded Scott McKeown and Stephen Kunin. Illustrating its strength, McKeown represented petitioner eBay in CBM proceedings initiated by MoneyCat relating to electronic payment systems, and acted for Square in reexaminations and IPR proceedings before the PTAB. Electrical patent specialist Bradley Lytle is ‘one of the most well versed attorneys in the US in the software and IP space’ who ‘prosecutes patent applications effectively to obtain the broadest reasonable protection for his clients while considering the impact to the business’. Lytle and Andrew Harry count Fujitsu and Broadcom among their clients, and on behalf of which have handled a large quantity of patent applications. Richard Treanor, Derek Mason and Philippe Signore are also highly recommended. The firm has an international office in Tokyo.

Pillsbury Winthrop Shaw Pittman LLP files a large number of patent applications and assists a broad range of individual inventors and Fortune 500 companies with patent portfolio management. Patrick Doody recently assisted Nymox Pharmaceuticals with the development of its patent portfolio and enforcement strategy for a drug currently in clinical trials. The group is also active in post-grant proceedings, and in 2016 Bryan Collins successfully represented Schrader Electronics in having several patent claims ruled invalid in an AIA review before the PTAB, as well as in co-pending district court patent infringement litigation. Jack Barufka co-heads the IP practice and has notable experience in post-grant proceedings, typically involving patents subject to concurrent litigation. Other representative clients include AOL, UBS, LG Electronics Mobilecomm USA, HTC, Chevron and Stanley Black & Decker. Named attorneys are based in Northern Virginia.

WilmerHale’s team is praised for its ‘excellent skills and expertise and its deep bench for post-grant proceedings at the USPTO’. Leveraging its highly recommended trial and appellate strength, the firm is a popular choice for the full range of post-grant matters. David Cavanaugh chairs the post-grant proceedings group from Washington DC and has particular experience in developing strategies for using IPRs as a vehicle toward the settlement of related district court cases. In 2016, Cavanaugh and fellow Washingtion DC lawyer Amy Wigmore successfully represented Bristol-Myers Squibb Company in an IPR proceeding filed by the Coalition for Affordable Drugs relating to Apixaban. Palo Alto-based Jason Kipnis, and Boston-based Donald Steinberg, Monica Grewal and Colleen Superko are further names to note.

Banner & Witcoff, Ltd.’s team is praised for its ‘deep knowledge and pragmatic approach’. It handles a high volume of design patents for household names, including Microsoft and Nike, which the group has been assisting for decades in procuring a large number of design patents. A team from Chicago including Christopher Renk, Erik Maurer and Michael Harris successfully represented Nike in defending five IPRs filed by Skechers regarding design patents owned by Nike. The ‘excellent’ Joseph Berghammer, also in Chicago, is acting for YETI Coolers in four IPRs filed by RTIC Coolers and a parallel district court proceeding for patent and trade dress infringement. In Washington DC, Robert Katz is highly recommended for his expertise in procuring and enforcing design patents, and Christopher McKee and Joseph Potenza are recommended for post-grant proceedings.

Buchanan Ingersoll & Rooney’s Alexandria-based patent team has expertise across a number of industry sectors, particularly medical devices, financial services, automotive components and consumer products. Its client list features domestic and international clients, ranging from large companies and universities to individuals and start-ups. The ‘responsive and thorough’ litigator Todd Walters is recommended for representing clients before the USPTO and the federal courts; and Erin Dunston, Matthew Schneider, Travis Boone and Patrick Keane are also key contacts.

Kilpatrick Townsend & Stockton has a diverse patent practice that provides ‘outstanding legal services’. Its 50-attorney post-grant proceedings team focuses on patent reexaminations and IPRs; recently it acted for longstanding client Motorola Mobility in an IPR challenge relating to a reader adapted for a portable computer, and in a separate matter on behalf of the client, it successfully instituted five IPRs against Intellectual Ventures. Managing partner of the San Diego office William Shaffer has particular expertise in software, semiconductors and electronics, and has handled a number of reexaminations, including IPRs and ex parte matters. The IP team is led by the Atlanta-based Vaibhav Kadaba; other notable names include Raleigh-based John Alemanni, Jason Gardner and Steven Gardner.

Arent Fox LLP is praised for its ‘very responsive and flexible approach’ and its ‘ability to tailor the solution to clients’ needs’. James Bindseil has ‘very high technical knowledge in IP’ and heads the patent group from Washington DC. Bindseil and Los Angeles-based Craig Gelfound are assisting Qualcomm with managing its patent portfolios, including technologies related to fifth generation mobile networks (5G). The group also has a strong presence in New York: Marylee Jenkins ‘understands clients’ needs and finds the best way to sort out a solution in a cost-effective way’, and Alexander Speigler and Richard LaCava are also highly recommended. Other representative clients include Western Digital, Cardinal Health, Murata Manufacturing and Inspirion Delivery Technologies.

Arnold & Porter Kaye Scholer LLP’s team combines the expertise of two legacy practices, following the combination of Arnold & Porter and Kaye Scholer. The team is led jointly by Palo Alto-based Michael Malecek and Washington DC-based Matthew Wolf and has strength in both patent prosecution and post-grant proceedings. In New York, Aaron Stiefel and Daniel DiNapoli represented Cephalon in three IPR proceedings concerning a lyophilized formulation of the Treanda injection product. In Washington DC, David Marsh is assisting Monsanto with the prosecution of patent portfolios critical for the protection of key DNA breakthroughs and is representing it in several appeal and multi-party opposition proceedings in the US and abroad. In San Francisco, pharmaceutical and medical devices specialist Ginger Dreger is assisting Biogen Idec with the prosecution and management of a patent portfolio covering Tysabri and is advising on obtaining patent term extensions on patents covering the same products outside the US. Other representative clients include Genentech, New Health Science, Regents of the University of California and Elcelyx Therapeutics.

Baker & Hostetler LLP has a multi-skilled patent group handling prosecution for clients in industries ranging from pharmaceuticals and medical devices to manufacturing and telecoms; it also represents clients such as Saudi Basic Industries Corporation in patent appeals and IPR proceedings before the PTAB. Washington DC-based Kenneth Sheehan and Robert Hails, Seattle-based Michael Stein, and Philadelphia-based David Farsiou are the main contacts.

Baker McKenzie LLP handles a mix of design and utility patent prosecution and IPR proceedings for a range of well-known US and foreign clients. The team, led by Dallas-based Brian McCormack, is particularly active in the electrical, software, chemical and life sciences sectors. Washington DC-based Richard Wells is assisting a leading industrial company with its patent prosecution and counseling work and is representing a consumer electronics manufacturer as petitioner in IPR proceedings involving patents related to peer-to-peer communication. The group also has a presence in Houston and Chicago.

IP boutique Brinks Gilson & Lione has a tremendous patent prosecution practice, which is well positioned to assist US and foreign clients in the telecoms, semiconductors, pharmaceuticals and medical devices industries. Jon Beaupré and Miyoung Shin co-chair the post-grant patent practice from Ann Arbor and Chicago respectively. Other key names include Durham-based litigator Allen Baum; chemical and pharmaceutical patent specialist Ryan Marshall in Salt Lake City; Chicago-based Heidi Dare, who focuses on patent prosecution in the molecular biology, medical device and medical diagnostics space; and Joseph Hetz, also in Chicago, who has notable experience in reexamination, reissue and IPR proceedings.

Cooley LLP’s IP capability was strengthened in 2016 when it hired the highly regarded medical devices and life sciences specialist Mika Reiner Mayer and 11 other attorneys and patent agents from Morrison & Foerster LLP. The group is led by New York-based Ivor Elrifi, who advises clients such as Exosome Diagnostics and Flexion Therapeutics on global patent strategies. Other healthcare sector clients include Auris Medical, Abaxis, SciFlour Life Sciences and Epizyme. San Francisco-based Nan Wu focuses on developing patent strategies and portfolios for investors as well as private and public companies in the biotech industry, and Boston-based Joe Teja is ‘extremely knowledgeable and approachable’. The group also regularly handles patent litigation in district court and parallel PTAB proceedings.

Eversheds Sutherland (US) LLP’s team, led by Atlanta-based Peter Pappas, saw a large number of new clients obtained from industries ranging from automotive and manufacturing to healthcare, software and telecoms. The team also includes seasoned litigator Ann Fort, who represents petitioners and patent owners in IPRs and CBMs. Malvern Griffin is advising, respectively, a Fortune 50 healthcare corporation, a Fortune 100 multinational semiconductor manufacturer and a large internet-based retailer on patent counseling, prosecution and portfolio management.

Jones Day has a strong and growing presence, as illustrated by the hiring of Cary Miller from Morrison & Foerster LLP in 2016. Leveraging its strong patent litigation and transactional capabilities in the life sciences sector, it handles a large number of post-grant proceedings and assists with the development of clients’ global patent portfolios. Recent highlights include successfully representing Google before the PTAB in an IPR challenge to an internet-related patent, which was also asserted in a district court action; successfully defending AbbVie in connection with an IPR petition brought by Coherus Biosciences; and assisting Apsara Therapeutics with the establishment of a global patent portfolio relating to aquaporin-4 antibodies for the treatment of Neuromyelitis optica. Clients praise the team’s ‘strong legal and scientific capabilities’ and its ‘proactive, responsive and innovative approach’. The team is led by San Diego-based Anthony Insogna and includes IPR specialist Tamera Weisser, Cleveland-based PTAB litigation head David Cochran and New York-based biotech expert Adriane Antler.

Leydig, Voit & Mayer Ltd. advises clients from the biotech, life sciences, electrical, software and mechanical fields in all aspects of protecting and enforcing IP rights. Representative clients include Google, Mitsubishi Electric, Teva Pharmaceuticals USA and Whirlpool. Within the Chicago-based team, Charles Mottier and Wesley Mueller continue to assists Caterpillar with IP counseling, whilst John Conklin acts for Huawei Technologies in its patent prosecution and contentious matters. John Kilyk specializes in IPRs, post-grant review proceedings, interferences and oppositions; Walnut Creek-based John Gase is experienced in formulating patent strategies and managing patent portfolios.

Ropes & Gray LLP’s client roster features a number of pharmaceutical giants, which the group assists with worldwide prosecution and portfolio management. The group is led by Boston-based Anita Varma and New York-based Joseph Guiliano, and has an active post-grant proceedings practice that is representing a number of consumer technology companies in IPRs and CBM reviews. It successfully defended Nevro’s patent from two IPR challenges filed by Boston Scientific Neuromodulation. Other representative clients include TiVo Corporation, Bayer Healthcare and Samsung Electronics. Former post-grant proceedings head Steve Baughman joined Paul, Weiss, Rifkind, Wharton & Garrison LLP in January 2017.

The Washington DC-based IP firm Sughrue Mion is noted for its high-volume patent filing practice, particularly on behalf of foreign clients such as Fujifilm, Fuji Xerox, Toyota Motor Corporation and Apotex. The team’s expertise and experience also covers nanotechnology, chemicals, software, electronics and biosimilars. John Callahan, John Bird and Steven Gruskin are notable practitioners.

Boston-based IP boutique Wolf Greenfield & Sacks has ‘a deep bench of excellent patent practitioners’, who ‘proactively suggest actions for clients to take’. The team is led by Timothy Oyer and also includes the ‘very bright’ Richard Giunta, who heads the post-grant proceedings team and has a successful track record representing clients in inter partes, ex parte reexamination and CBM reviews before the USPTO. Chemical and materials technologies practice chair Robert Walat is singled out for his ‘sound strategic advice’. Representative clients include Sony Corporation, Lockheed Martin, Shire and Harvard Medical School.

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