The Legal 500

Firms listed in this section work on patent licensing through the preparation and negotiation of joint development agreements, as well as being active in other patent fields. A license granted by the holder of a patent gives the license holder a limited right to reproduce, sell, or distribute the work. Patent licenses usually require that the licensee pay a fee to the licensor in exchange for use of the property.

FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, L.L.P.

PRACTICE: Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. excels at patent licensing. The practice handles a full range of work, including licensing programs and pooling arrangements related to spin-offs and acquisitions of companies. The practice numbers 41 partners and a dozen associates dealing with IP licensing issues.

Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. deals with large companies with in-house counsel, as well as smaller entities without an in-house legal representation, where the intellectual property group is responsible for all the licensing matters. ‘ Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. is the cutting-edge of intellectual property work’, say clients, providing ‘the most up-to-date intellectual property counseling’.

CLIENTS: The firm is at the forefront of many licensing agreements for large pharmaceutical companies such as AstraZeneca, but has also been involved in transactions and strategic counseling for Caterpillar, Philips, Toshiba and Wyeth.

INDIVIDUALS: With over 25 years’ experience in intellectual property licensing, John Paul has a strong focus on strategic planning and due diligence investigations for various leading technology companies. ‘He always leaves a very positive impression’, say clients.

William Pratt has vast expertise in licensing for international corporations, notably in the automobile industry.

‘Strong advocate’ Douglas Henderson has been involved in a big variety of negotiations relating to licensing, settlement and technical development agreements. All the lawyers are based in Washington DC.

KENYON & KENYON

PRACTICE: Licensing is a major part of Kenyon & Kenyon’s intellectual property activity, with the 200-lawyer IP practice providing advice on transactions, mergers and acquisitions, due diligence and preparing opinions. The practice promoted five associates to partner in January 2009 in a sign of its commitment to the area. Successfully blending technical and legal experience, the practice ‘meets the demands of its international clientele in an accessible fashion’ and produces ‘consistently good work, without oversimplifying matters’, say clients.

The practice establishes cross-licensing programs in order to maximize clients’ intellectual property portfolios, and represents clients from a wide number of industries. Clients say the practice provides ‘good practical advice’.

CLIENTS: Ticketmaster, Volkswagen, Alcatel-Lucent, Olympus and Tops Licensing are some of the firm’s clients for licensing matters.

INDIVIDUALS: New York-based Michael Lennon focuses on intellectual property litigation and licensing, and has more than 25 years of experience advising multinational corporations on technology transfer transactions, contracts and agreements.

Also based in New York, Charles Weiss and Deborah Somerville are ‘tremendous’ and have extensive expertise in counseling clients in the pharmaceutical, biotech, chemicals and medical device industries.

MORRISON & FOERSTER

PRACTICE: Morrison & Foerster has an active and diverse practice in adversarial patent licensing negotiations. Clients ‘highly recommend’ it for its ‘excellent capabilities’ in patent licensing. The practice has conducted a broad range of negotiations, from comprehensive cross-licences of hundreds of patents to specialized bilateral negotiations over a single patent.

For example, the licensing department was recently involved in setting up patent arrangements between Novell and Microsoft in order to offer inter-operability between open sources and proprietary software in mixed-source IT environments.

The practice also advised Yahoo! in its agreement with Miva concerning patent for internet searches. Following a settlement of a patent infringement lawsuit, the latter was required to pay ongoing royalties for Yahoo!’s licenses.

CLIENTS: Morrison & Foerster has negotiated licenses agreements and settlements for IBM, Smith & Nephew, AT&T, Nikon, British Telecom, Motorola, Samsung, Fujitsu and Hitachi.

INVIDUALS : Practicing in the field of patent prosecution, counseling and litigation, San Diego-based Peng Chen is a partner in the patent group. Chen’s expertise focuses on biotechnology and pharmaceuticals. Clients describe him as ‘phenomenal’.

Karen Hagberg in New York has been active in advising both domestic and international companies on IP-related issues, and is ‘a great issue spotter’.

Based in San Francisco, Paul Jahn has vast international counseling and licensing experience across the US, Europe and Asia.

WEIL, GOTSHAL & MANGES LLP

PRACTICE: Weil, Gotshal & Manges LLP has seen a steady increase in the number of licensing matters handled in 2008, protecting and advising relating to the IP rights of various financially troubled companies. For example, the practice has recently been appointed to advise Lehman Brothers on a wide range of intellectual property matters.

Clients turn to the firm for its ‘business-oriented’ approach to negotiations, together with the practice’s capacity to handle ‘extraordinarily complex issues’.

Weil, Gotshal & Manges LLP boasts an intellectual property department of 50 lawyers, representing a pool of clients from the technology and entertainment industries.

The firm has recently had success in the pharmaceutical sector, having represented Yeda Research and Development on a patent clearing the way for the commercial launch of Amgen’s Vectibix.

CLIENTS: The practice represents MarcTec, Ingenio, Disc Link, Nuance, Texas Instrument, CallWave, Genentech, Abbott, Apple, ATMI, Cisco Systems and eBay.

INDIVIDUALS: New York-based Jeffrey Osterman is a partner in the technology and intellectual property transactions practice, and focuses on matters involving technology transfer, outsourcing, content licensing and merchandising.

Based in Silicon Valley, Karen Ballack has extensive experience in negotiating alliances and transactions for companies in the computer, biotechnology and pharmaceutical industries. Clients praise Ballack for her ‘excellent drafting skills’.

WILMERHALE

PRACTICE: WilmerHale’s 21-attorney licensing and technology group is outstanding, offering interdisciplinary experience in technology transfer and licensing, and IP due diligence and audits. The practice advises clients on patent licensing relating to computer software, biotechnology, and pharmaceuticals.

Among recent highlights, the practice handled licensing aspects of Broadcom’s acquisition of the digital television business of Advanced Micro Devices. WilmerHale also acted for Eyetech Pharmaceuticals in its $750m collaboration and license agreements with Pfizer relating to ophthalmic products for the treatment of blindness.

CLIENTS: The practice’s clients include Google, Holistic, Procter & Gamble, Boston Scientific and Honda North America.

INDIVIDUALS: Clients describe Alfred Server as ‘a first-class lawyer’. Server has a PhD in neurological sciences, and his practice focuses on corporate partnering in the life sciences field. Clients are also ‘very happy’ with Michael Bevilacqua and Michael Diener’s service relating to patent licensing agreements and counseling. All the attorneys are based in the Boston office.

BAKER BOTTS, L.L.P.

PRACTICE: Houston-based Baker Botts, L.L.P. takes a ‘strongly client-oriented approach’ to its patent licensing practice, handling programs and investigations with the aim of increasing financial returns on clients’ assets. It has compiled an impressive list of transactions and due diligence investigations in 2008. The practice fields 51 licensing and IP transactional lawyers, who are supported by another 90 IP attorneys.

Among recent highlights, the department has been involved in negotiating licenses on behalf of Texas Instruments.

CLIENTS: In addition to Texas Instruments, the practice handles licensing matters for Cisco Systems, Dell and MasterCard.

INDIVIDUALS: Based in Palo Alto, ‘extremely talented’ Christopher Kennerly has extensive experience in all areas of intellectually property, with a particular focus on counseling, prosecution and licensing.

Based in Dallas, computer engineer Doug Kubehl has been involved in all aspects of patent law, including litigation and licensing and the development of intellectual property portfolios. Clients are ‘absolutely satisfied with his advice and knowledge of patent law’.

K&L GATES

PRACTICE: Headquartered in Pittsburgh, the practice has 40 lawyers handling IP licensing matters. The practice manages the portfolios of various biotechnology and medical device companies. In addition, K&L Gates has been conducting licensing work for a number of renowned academic institutions, handling technology transfer work for universities such as MIT and Carnegie Mellon.

CLIENTS: Licensing clients include Microsoft, Amazon, Instrumental Laboratory Company, T-Mobile and Novartis.

INDIVIDUALS: Michael Brodowski advises clients on the transfer and licensing of technology, including patent licensing and technology development agreements. He has a PhD in organic chemistry.

Thomas Turano focuses on intellectual property counseling, licensing and due diligence for international and US clients. Clients see him as a ‘very efficient lawyer, who never misses anything out’. Turano practices in the life sciences and the hi-tech industries. Karen Chan ‘gives great advice’, say clients. All the attorneys are based in Boston.

ORRICK, HERRINGTON & SUTCLIFFE LLP

PRACTICE: Orrick, Herrington & Sutcliffe LLP represents companies in a variety of industries, particularly in the technology and life sciences sectors.

The practice brings a ‘thorough approach and good business sense’ to licensing matters. It has handled complex adversarial patent cross-license negotiations for Fujitsu against a large US semiconductor company involving the two companies’ worldwide portfolios.

Orrick, Herrington & Sutcliffe LLP also advised one of the top five semiconductor foundry companies in licensing negotiations with a semiconductor and computer technology company.

CLIENTS: The practice represents UPEK, ProMOS Technologies, Foundry Networks and Varian Medical Systems.

INDIVIDUALS: Working in Silicon Valley, Jeffrey Miller has extensive experience in negotiating patent licenses with numerous technology companies. Clients describe him as ‘having very good judgement’.

PILLSBURY WINTHROP SHAW PITTMAN LLP

PRACTICE: Pillsbury Winthrop Shaw Pittman LLP’s intellectual property attorneys work across multiple disciplines, giving clients ‘exactly what they need, when they need it’. The licensing practice has established deep relationships in the banking industry, having handled long-term matters for the Bank of New York Mellon and Union Bank of California.

This ‘greatly responsive’ licensing practice ‘takes technical issues and makes them understandable to non-lawyers’, say clients. Despite admitting that ‘one could always wish for lower rates’, clients say the intellectual property attorneys at Pillsbury Winthrop Shaw Pittman LLP ‘give quality advice for those rates’.

On behalf of Information Planning and Management Services, the firm successfully revived a patent application that had previously been abandoned due to a bankruptcy filing, and then licensed out the patent.

CLIENTS: The practice also advises The Stanley Works, and numerous clients from the energy, real estate, technology and financial sectors.

INDIVIDUALS: James Gatto, based in McLean, Northern Virginia, is the section leader for the intellectual property group and is seen by clients as ‘scrupulously responsive’.

Also in McLean, Jack Barufka ‘knows when to lay low during negotiations and let the business side work through a problem’, say clients. Barufka has vast expertise in counseling, patent prosecution, dispute resolution, licensing and technology transactions.

Clients describe Bryan Collins in McLean as ‘an extremely talented patent attorney’ with ‘strong advocacy skills and excellent strategic judgement’. One client adds that ‘he is probably the strongest all around intellectual property counselor I have ever worked with’. John Wetherell in San Diego is also well regarded for his patent licensing work.

BLAKELY, SOKOLOFF, TAYLOR & ZAFMAN

PRACTICE: Blakely, Sokoloff, Taylor & Zafman has a ‘solid presence’ in patent licensing, despite being better known for its prosecution work, and its intellectual property attorneys work across a whole spectrum of technologies.

The practice has a ‘respectable’ international client base, and its services include drafting and negotiations of licenses for both market leaders and start-up companies.

CLIENTS: The practice represents numerous companies in the software, communications, medical and chemical industries.

INDIVIDUALS: Based in Denver, Gordon Lindeen focuses on patent counseling, prosecution and licensing and patent portfolio management.

With a background in the computer industry, Sue Holloway in Sunnyvale, California, is ‘an expert’ in patent licensing, opinions and counseling in the areas of computer hardware and software.

KNOBBE MARTENS OLSON & BEAR LLP

PRACTICE: Knobbe Martens Olson & Bear LLP’s licensing group has a ‘huge number of knowledgeable people’, and clients are ‘impressed by the attorneys understanding of the key legal analysis and technological details’. The practice numbers about 40 partners working on licensing matters, mainly located in Irvine and San Diego.

The intellectual property group devotes its time to computer, pharmaceutical and biotechnology clients, managing patent portfolios and counseling.

CLIENTS: Licensing clients include Masimo, Illumina, Hitachi and various US institutional corporations.

INDIVIDUALS: Based in Irvine, California, Steven Nataupsky focuses on all aspects of intellectual property protection and enforcement. He has extensive experience with clients in the medical device and mechanical fields and is ‘does a very good job’ in patent licensing. Irvine-based John Sganga is ‘extremely knowledgeable’, and clients also recommend Stephen Jensen. Michael Fuller, in San Diego and San Francisco, ‘is relentless at solving complex problems. He is very responsive, and adds tremendous value by suggesting the best approach for the client’, say clients. ‘He asks the right questions, is friendly, and is never late with work’, add clients.

ROPES & GRAY LLP

PRACTICE: Ropes & Gray LLP advises many patent holders in the technology field, negotiating agreements and closing deals in the US, Japan and Europe.

About a quarter of the firm’s 100 intellectual property attorneys spend a substantial amount of time working on licensing disputes, and in establishing joint development and joint venture relationships. Clients say, ‘the practice’s IP attorneys are able to understand the clients’ business goals, and they also give user-friendly advice’.

CLIENTS: Representative clients include Aisin AW, British Telecommunications, Casio, Plasma Physics, Ricoh, Sanyo Electric, and Solar Physics.

INDIVIDUALS: Patricia Martone is the co-head of the international practice group, and leads the licensing and enforcement activities for major patent holders. Clients also recommend Robert Morgan. Both lawyers are based in New York.

SNELL & WILMER

PRACTICE: With six offices located on the West Coast, Snell & Wilmer represents companies in the electronics, software and life sciences sectors, leveraging its attorneys’ technical backgrounds.

As well as representing clients in Arizona and California, Snell & Wilmer has established a busy network of clients based in Germany and Japan.

CLIENTS: Clients include Panasonic, Minolta, American Express and TRS.

INDIVIDUALS: Based in Orange County, Joseph Price works on patents relating to telecommunications, computer network systems and optics. He is ‘very capable to navigate through the legal issues’.

In Phoenix, Charles Hauff has ‘deep technical expertise’ in the area of patent counseling, litigation and licensing.

TOWNSEND and TOWNSEND and CREW

PRACTICE: Headquartered in San Francisco, Townsend and Townsend and Crew numbers 15 intellectual property attorneys practicing in the technology transactions group, ten of whom dedicate their time to handling licensing matters, particularly in the electronics sector. It added East Coast capabilities when it opened a Washington DC office in 2007.

Among recent highlights, the IP practice negotiated strategic patent cross-licenses for a publicly traded medical device company.

CLIENTS: IBM, Hitachi, Boeing, Business Objectives and Baxter International are among the firm’s patent licensing clients.

INDIVIDUALS: Richard Hsu in Palo Alto leads the technology licensing practice and is ‘always on top of the game’, say clients.