The Legal 500

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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