US > Intellectual property > Patent litigation: full coverage: National
Index of tables
Patent litigation: full coverage
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Leading lawyers
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- Henry Bunsow, Howrey LLP ‘Prompt and appropriately aggressive’
- Larry Carlson, Baker Botts, L.L.P. ‘An amazing communicator’
- Morgan Chu, Irell & Manella LLP ‘Think the world of him’
- Mark Davis, Weil, Gotshal & Manges LLP ‘Does an exceptional job’
- John Desmarais, Kirkland & Ellis LLP ‘One of the best patent litigators in the country’
- Peter Dichiara, WilmerHale ‘Great understanding of the issues and questions’
- Donald Dunner, Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. ‘The absolute leader in appellate work’
- John Gartman, Fish & Richardson P.C. ‘Responsive and sensitive’
- William Lee, WilmerHale ‘Superb litigator, with great knowledge and skills’
- Robert Masters, Paul, Hastings, Janofsky & Walker LLP ‘An outstanding patent litigator’
- Matthew Powers, Weil, Gotshal & Manges LLP ‘A litigator you don’t want to argue against in court’
- Claude Stern, Quinn Emanuel Urquhart Oliver & Hedges, LLP ‘Very bright and tremendous lawyer’
Firms listed in this chapter handle patent litigation in US district, federal and supreme courts, as well as before the International Trade Commission (ITC) and bring interference matters before the United States Patent and Trademark Office (USPTO).
Firms detailed in the full coverage table have significant expertise across industry sectors, broadly sub-divided into the hi-tech, life sciences, mechanical and energy fields. Please note that these tables are to be read in conjunction with each other, meaning that firms described in the full coverage table are deemed equally competent in all subsequent niche areas as well.
The world of patent litigation has seen various changes due to the introduction of the Patent Reform Act of 2007. The reform measures include provisions relating to the first-to-file rights and elimination of interference proceedings, limitations on patent value, and reforms to ease the filing of patent application without the inventor’s participation.
Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P.
PRACTICE: Delivering the ‘highest quality of intellectual property work’, Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. has a reputation, which is second to none. Headquartered in Washington DC, the firm boasts 375 ‘strong advocates’ who devote their entire time to intellectual property matters. The practice attracts the highest praise from clients. The patent litigation group is prominent in both bench and jury trials, at the trial and appellate levels, and in ITC proceedings.
Handling disputes across the spectrum of industries, ranging from pharmaceutical to biotechnology and mechanical, the practice attracts prominent clients with its intellectual property attorneys’ ‘in-depth, hands-on technical expertise and tremendous trial skills’. Although clients report that Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. is ‘extremely expensive’, and matters could be handled ‘on a more cost-effective basis’, they agree that this is a genuinely ‘excellent’ service.
Among the most recent highlights, the patent litigation department won a case on behalf of Abbott against Medtronic relating to the licence of drug-eluting stent Endevor. Following a successful jury trial in 2005, in 2008 the judge found that Medtronic did not have a license to sell its drug, resulting in a victory for client Abbott.
CLIENTS: AstraZeneca, LG Electronics, Toshiba, Boston Scientific, Philips, Sanofi-Aventis, Wyeth, Becton Dickinson, Syngenta, Elan and FedEx have all sought the firm for legal advice.
INDIVIDUALS: Washington DC-based Donald Dunner is ‘the absolute leader in appellate work’, having argued more Federal Circuit cases than any other litigator in the country. Dunner has over 40 years’ experience in litigating cases in the areas of chemical engineering, chemistry, biotechnology and pharmaceuticals. Also based in Washington DC, Douglas Henderson has been lead counsel in dozens of intellectual property litigations in US district and appellate courts and before the ITC. Clients value his ‘professionalism, vast expertise and legal know-how’.
Senior counsel Jerry Voight, in Palo Alto, is an ‘expert’ in patent interferences and has over 40 years’ experience in patent law, from infringement litigation to inter partes proceedings.
David Hill, based in Reston, Virginia, focuses his practice on the mechanical and electrical sectors, with his particular strengths lying in handling intellectual property matters in state and federal court as well as the ITC. Also in Reston, Virginia, Christopher Isaac ‘knows the intricacies of patent law like the back of his hand’, and is regarded as being ‘very energetic in court’. In the same office, Jeffrey Berkowitz heads the electrical and computer technology practice group and is praised for his ‘wise judgement’.
PRACTICE: Kirkland & Ellis LLP’s strength lies in litigation. With approximately three-quarters of its IP lawyers having a science, engineering or computing background, the practice boasts depth of expertise to litigate across numerous fields. Thanks to the firm’s ‘good reputation and track-record of success’ clients ‘feel comfortable trying cases instead of settling’.
The practice litigates prolifically across numerous jurisdictions, including state and district courts, as well as the ITC, and in 2008 it achieved ‘tremendous’ results in patent infringement cases.
Among numerous victories, one was a defense case on behalf of Alcatel-Lucent. The jury ruled that the firm’s client did not infringe two patents owned by Dell relating to website and computer configuration technology.
In the field of medical imaging machines, the practice obtained a victory worth tens of millions of dollars on behalf of Siemens Medical Solutions in a patent infringement lawsuit against Saint-Gobain Ceramics & Plastics.
CLIENTS: The firm’s client roster includes 3M, Apple, BASF, Cisco Systems, GlaxoSmithKline, Honeywell, Hitachi, Intel, Motorola, Research in Motion, Sun Microsystems, GT Solar, Biedermann Motech and Amgen.
INDIVIDUALS: Based in New York, John Desmarais is considered by clients to be ‘one of the best patent litigators in the country’ and as ‘absolutely brilliant’. With a degree in chemical engineering and extensive trial experience, Desmarais has been described as ‘simply amazing’.
Splitting his time between the Chicago, Los Angeles and Washington DC offices, ‘top-notch’ Robert Krupka has over 30 years’ experience in trying intellectual property cases involving technologically complex subject matters before the ITC, and in obtaining appeals before the Court of Appeals for the Federal Circuit. William Streff in Chicago and Russell Levine, in Chicago, Washington DC and New York, are also recommended. Gregory Arovas in New York litigates intellectual property matters on behalf of Fortune 100 clients as well as small companies, particularly in the technology field.
PRACTICE: Boasting a ‘fantastic bench of top-notch partners and a group of talented young associates’, the intellectual property practice at Weil, Gotshal & Manges LLP has handled numerous high-stakes disputes and cutting-edge patent litigations across the US since the beginning of 2008.
Headquartered in New York, and with 100 intellectual property attorneys worldwide, the practice primarily handles patent litigation, for a range of leading companies, developing a particular strength in the pharmaceutical, technology and communication industries. The attorneys display ‘deep trial skills and understanding of the technology’, and are considered to be ‘innovators in the patent litigation field’ who are ‘always on top of the issue’.
In the software industry, Weil, Gotshal & Manges LLP recently defended Microsoft in a patent infringement case filed by Computer Acceleration Corporation in the Eastern District of Texas. Weil, Gotshal & Manges LLP’s team successfully persuaded the jury that Windows XP did not infringe because CAC’s patent was invalid.
CLIENTS: The practice represents leading hi-tech industrial groups, such as Oerlikon Balzers, but also biotechnology companies like Applera Corporation. In addition, it acts on behalf of Intel, Merck & Co, Oracle, Genentech, GlaxoSmithKline, Samsung, Taiwan Semiconductor Manufacturing Company and Yahoo!.
INDIVIDUALS: Based in Silicon Valley and in New York, ‘superstar’ Matthew Powers is a ‘litigator you don’t want to argue against in court’. He co-chairs the firm’s litigation department and has extensive experience in all key areas of technology. Washington DC-based Mark Davis litigates intellectual property matters before the ITC and in both district and federal appellate courts. With about 20 years’ trial experience, Davis does ‘an exceptional job’. Nicholas Groombridge in New York is the co-chair of the patent litigation practice and has 18 years’ bench and jury trial experience in various technical areas, with a focus on pharmaceutical and biotechnology matters. Vernon Winters and Douglas Lumish in Silicon Valley are both ‘responsive and focused’, say clients.
Fitzpatrick, Cella, Harper & Scinto
PRACTICE: Intellectual property boutique Fitzpatrick, Cella, Harper & Scinto provides ‘reliable and accurate advice’, ‘effective time-management’, and a ‘guarantee of success’, say clients. However, fees are ‘not quite as economical as one would like’. This large practice is staffed with 150 attorneys, of whom 65 are partners, based in New York, Washington DC and Costa Mesa.
One of the practice’s most significant recent matters was its defense of Canon, in a case initiated by plaintiff Nano-Proprietary. Canon obtained a verdict that no damages had been suffered to the company’s patent relating to flat-panel television displays.
In another matter, the practice won summary judgement of no inequitable conduct against generic drug makers Teva and Sandoz in a Hatch-Waxman Act lawsuit concerning AstraZeneca’s antipsychotic drug Seroquel.
CLIENTS: Multinational pharmaceutical clients include Sanofi-Aventis, GlaxoSmithKline and Merck & Co. The practice also represents INA-Schaeffler KG, IBM, Mars, Philips-Van Heusen and Calvin Klein.
INDIVIDUALS: Robert Baechtold has vast trial expertise in the pharmaceuticals, biotechnology and chemistry fields. Scott Reed focuses his practice on complex patent litigations and has served as lead trial counsel in numerous pharmaceuticals, electronic and computer technology cases. Clients describe Dominick Conde, Raymond Mandra and Bruce Haas as ‘excellent’. Chair of the licensing and transactions practice group Robert Fischer has over 25 years’ experience in patent and other IP litigation matters. Clients regard former electronic systems engineer Douglas Sharrott as a ‘real expert in the field of electronics and mechanics, and a brilliant patent attorney’. Ha Kung Wong specializes in patent litigation with a particular focus on pharmaceutical matters. All the lawyers mentioned above are based in New York.
PRACTICE: Howrey LLP is increasingly prominent in this practice area, with particular strength in the hi-tech sector, having handled a number of cases in 2008.
The firm exceeds clients’ expectations and ‘continues to be a responsive, competent litigator partner’. With a combination of trial experience, particularly on the defense side, and creativity, the practice has achieved a number of notable results, one of them being a defense lawsuit on behalf of Mega Lift Systems against MGM Well Services. In this case, it won lost profits damages and a permanent injunction prohibiting Mega Lift from making, using, or selling products that infringed MGM’s patent.
The practice has a strong track record of trials in the eastern district of Texas and, in 2008, won a case on behalf of M-I against Halliburton Energy Services regarding a patent for fluids used in deepwater drilling. Howrey LLP obtained a summary judgement of patent invalidity, a decision affirmed on appeal.
CLIENTS: In the general electronics and communication sectors, the firm represents Motorola, Philips, Verizon, Qualcomm, Research in Motion and O2Micro, but also clothing stores such as Abercrombie & Fitch and the diversified manufacturer of consumer goods, Procter & Gamble.
INDIVIDUALS: Based in San Francisco, Henry Bunsow is ‘prompt, having a full knowledge of complex cases and being appropriately aggressive’. As managing partner of the firm’s Northern California offices, Bunsow has extensive trial experience before juries and the Court of Appeals for the Federal Circuit.
Co-chair of the firm’s intellectual property practice group Alan Grimaldi has vast experience in litigating cases in the consumer goods, electronics and drug industries. Washington DC-based Grimaldi is praised by clients for his ‘excellent deposition skills, and effective delegation and leverage of the firm’s resources’. Matthew Moore, also in Washington DC, specializes in patent litigation and has acted as counsel for various Fortune 100 companies.
PRACTICE: With one of the largest contingents of intellectual property lawyers for a general practice firm, Jones Day’s cross-border IP capability ‘stands out’. The practice remains best known in the US, but has recently enlarged its presence in Asia, particularly in the life sciences industry. It represents numerous Fortune 500 companies in licensing and transactional matters.
The practice is well-versed in the patent litigation arena, covering a wide spread of subject matters from pharmaceuticals to technologies, where it has ‘strong trial capability’. More than one-third of the group’s lawyers focus exclusively on patent litigation, often appearing in court on the plaintiff side. Clients perceive them as ‘knowing how to try cases’ and in ‘spending a lot of time in court’.
Seeing no signs of decline due to the economic downturn, Jones Day has handled a number of significant matters over the course of 2008. In the wireless communication field, the firm is representing plaintiff Dell in a declaratory judgement action brought by Acer America against Wi-Lan and others.
Among recent highlights, the firm’s appellate and ITC lawyers obtained a victory in a case on behalf of Foxconn International Holdings and other importers of cellular telephone handsets and devices.
CLIENTS: The practice attracts a number of companies from the computing, telecommun-ication and pharmaceutical industries, including Superior Essex and LS Cable, King Pharmaceuticals, Celgene, Purdue Pharma, DIRECTV and General Electric.
INDIVIDUALS: Robert Kahrl in Cleveland focuses his practice on litigation of technologically complex cases, particularly in the fields of semiconductors, electronic systems and medical devices.
Brian Poissant in New York chairs the intellectual property practice and has served as lead counsel in litigation involving patents covering a wide range of subject matters.
John Normile, also in New York, litigates both on behalf of plaintiffs and defendants in IP matters involving pharmaceutical products and computer equipment. Chicago-based Krista Schwartz is ‘an expert in the computer technology field’, while Gregory Castanias in Washington DC is ‘a great issue-spotter and a skilled advocate’.
Blaney Harper in Washington DC is a ‘top-notch lawyer’, while Jeffrey Butler in New York has vast domestic and international experience and is praised by clients for his ‘good business sense’.
Kenneth Adamo in Dallas and Cleveland is ‘highly regarded’.
PRACTICE: General practice firm WilmerHale boasts a ‘well-established and successful’ intellectual property department spanning a range of areas, from patents on computer products to medical devices. The attorneys’ trial experience in federal and district courts, and in the ITC, combined with technical knowledge and training means that the practice ‘continues to impress’ clients. The group offers interdisciplinary experience in technology transfer and licensing, litigation and collaborative research agreements, and clients are happy with the attorneys’ ‘understanding of the issue and thorough analysis of the subject matter’.
Recent litigation highlights include a patent infringement case on behalf of Medtronic Sofamor Danek in which the jury returned a favorable verdict on all five asserted patent claims.
Another success relates to client Targus Information in a patent suit involving technology used to route calls to toll-free telephone numbers. In this case, a federal circuit court overturned the $49m verdict against 800 Adept by the district court for the middle district of Florida.
CLIENTS: The firm acts for long-term client Broadcom, for which it brought a recent patent litigation case before the ITC. In addition, the practice represents Google, Boston Scientific, Emporis, Intel, Procter & Gamble and Honda.
INDIVIDUALS: William Lee is a co-managing partner of the firm and has extensive trial experience in federal courts and before the ITC. Clients view him as ‘a superb litigator, with great knowledge and skills’. Peter Dichiara is praised for his ‘great understanding of the issues and questions’. Michael Summersgill litigate patents and trade secrets relating to communication systems, computer software and storage systems. These three lawyers are based in Boston. Clients view S Calvin Walden in New York as ‘professional and thorough’.
PRACTICE: Clients praise Houston-headquartered Baker Botts, L.L.P.’s 140 IP lawyers for being ‘able to convert legal knowledge into effective strategies’. The practice has been representing well-known software and telecommunication companies in significant patent infringement claims, one of them being a lawsuit on behalf of American Calcar against Honda. In this matter, the jury found two of AC’s patents relating to vehicle navigation systems, valid and enforceable, and awarded the company damages worth $24m.
Another of the practice’s strength lies in the biotechnology field, where the firm acts for various university-based research institutions and various specialized biotechnology companies. In addition, Baker Botts, L.L.P. is seen as ‘setting a trend’ in the nanotechnology industry, having obtained a $55.2m jury victory on the first patent infringement case on behalf of Elan Pharma International in federal district court in Delaware brought against Abraxis BioScience. The jury decided that Abraxis’ Abraxane product infringed a patent for stable nanoparticle formulations of cancer drugs. The drug is used intravenously for the treatment of metastatic breast cancer.
CLIENTS: In addition to the ones mentioned above, the firm acts for telecommunication companies such as AT&T, Ericsson and Verizon Wireless, but also for IT and electronics companies including Samsung Electronics, Cisco Systems, Fujitsu, Whirlpool and Dell.
INDIVIDUALS: Bart Showalter, based in Dallas, is the firmwide chair of the intellectual property department. He is praised for his ‘great presence in courtroom and for bringing clients into the loop’.
Also in Dallas, Larry Carlson is a senior partner in the litigation department who has vast trial experience with a focus on patent infringement lawsuits. Clients describe him as ‘an amazing communicator’.
Clients consider Scott Partridge to be as ‘extremely knowledgeable and highly experienced’. As head of the intellectual property department in the Houston office, Partridge focuses on patent, copyright and trade secret litigation for technologies in the computer, telecommunication and mechanical industries. Also, Christopher Kennerly in Palo Alto and Douglas Kubehl in Dallas both have extensive experience in patent litigation and licensing.
PRACTICE: Fish & Richardson P.C. boasts the largest patent litigation practice in the country and, with over 300 patent litigators plus another 100 intellectual property attorneys, it ‘deserves to be recognized’, say clients. Operating from multiple offices and with ample internal resources, the patent litigation practice has ‘the flexibility to cater the needs of clients across the spectrum of industries’, including electrical engineering, IT and pharmaceutical arenas.
Fish & Richardson P.C.’s attorneys are ‘trial lawyers who understand technology’, say clients. The group gets results, and is ‘consistent with the levels of responsiveness and quality of work product’.
Among its highlights, the practice secured a multimillion-dollar settlement with ImClone Systems in the lawsuit against ImClose for patent infringement of cancer drug Erbitux on behalf of Repligen and The Massachusetts Institute of Technology (MIT).
CLIENTS: Clients include Power Integrations, AVID Identification Systems, Hynix Semi-conductor, Microsoft, LG Electronics, Texas Data Control and Adobe Systems.
INDIVIDUALS: John Gartman, based in San Diego, focuses his trial practice on cutting-edge technology, and has particular experience in semiconductors and telecommunications. ‘Responsive and sensitive’ Frank Scherkenbach divides his time between Boston and Silicon Valley. His greatest expertise lies in computer software and medical devices. Also in Silicon Valley, Howard Pollack litigates in the electronics, semiconductor and software fields. Gregory Madera in Boston and Minneapolis focuses on patent, trademark and copyright litigation and mediation. John Gagel in Boston is admired for his patent infringement counseling.
PRACTICE: Full-service intellectual property group Kenyon & Kenyon is ‘well respected for its depth of knowledge and motion practice expertise’, and fields 200 lawyers, most of whom have technical backgrounds. ‘The quality of service provided meets and exceeds expectations’, say clients.
Headquartered in New York, and with teams in Washington DC and Silicon Valley, the practice recently promoted five new partners and continues to thrive in the electronic, pharmaceutical and computing fields. Clients ‘would always like to have lower costs’, but are happy with the service provided and admit that the attorneys achieve ‘very cost-effective results, on an overall basis’.
In 2008, the practice obtained summary judgement of non-infringement on behalf of Sony Electronics in IS&T v Sony Electronics. In this case, the court held that two patent claims and two representative Sony products were not infringing.
CLIENTS: Lovate Health Sciences, Fisher-Price, Mattel, MuscleTech, Applera, Bosch, Mercedes-Benz, Goss International and Teva USA.
INDIVIDUALS: Michael Lennon has over 25 years’ experience representing multinational corporations in intellectual property lawsuits and transactions. Mark Hannemann, Richard DeLucia and Richard Gresalfi ‘understand precisely what needs to be done and proceed to get it done effectively’, say clients. John Flock and James Galbraith are admired for their ‘deep understanding of technology’. All the lawyers are based in New York, with the exception of Marcia Sundeen, who heads the ITC practice in Washington DC.
PRACTICE: About half of Morrison & Foerster’s 270 intellectual property attorneys are litigators. The practice handles contentious matters in the automobile, software, computing and electronics fields, and attends courts across the US. It has offices on both coasts and is strongly positioned in the patent litigation market.
The practice has an ‘impressive track record of successful cases’, and clients laud it for ‘providing a high standard of service’ and for ‘leaving a very positive impression’.
In the technology industry, Morrison & Foerster recently won a patent dispute involving plasma display-panel technology, brought in the eastern district of Texas on behalf of Pioneer against Samsung Electronics. A jury decided that Samsung had infringed three patents and awarded about $60m in compensatory damages.
CLIENTS: Morrison & Foerster acts for Abbott Laboratories, Intel, MHL Tek, Advanced Micro-Fabrication Equipment, Sanyo, Sharp, Toshiba and Funai Electronics.
INDIVIDUALS: Based in San Francisco, Harold McElhinny is the co-chair of the intellectual property group and represents both plaintiffs and defendants in patent litigation, copyright and trade secret violations. Also in San Francisco, Rachel Krevans is viewed by clients as ‘highly technically trained and extremely professional’. James Pooley, in Palo Alto, has extensive trial experience in IP matters in both state and federal courts and before the ITC. Steven Comer and David Doyle in San Diego are regarded as ‘smart and skilful’.
PRACTICE: Better known for corporate and general litigation matters, Gibson, Dunn & Crutcher LLP has developed a solid intellectual property practice. Clients praise the attorneys for ‘their pragmatic approach’ in solving issues, and for being ‘great litigators, who are focused on winning cases’.
The practice has registered a number of recent successes in the computer, software, pharmaceutical and biotech industries, leveraging the resources and reputation of the wider litigation department.
One of the practice’s recent wins in the biotech field involved a patent infringement action on behalf of Serono against Amgen, Wyeth and Immunex in relation to a treatment for rheumatoid arthritis, Enbrel. The district court granted summary judgement in favor of Serono, a ruling later affirmed at the federal circuit.
CLIENTS: SanDisk, Cablevision, Medtronic, Genentech, T-Mobile, Tessera, Jabez Networks, CNET Networks, St Jude Medical and North American Scientific all use the practice for legal advice.
INDIVIDUALS: Wayne Barsky in Los Angeles has a national practice specializing in patent litigation for companies in the software, computer and life sciences industries.
Denis Salmon in Palo Alto has more than 25 years’ experience litigating patent, trade secret, trademark and antitrust cases, while Josh Krevitt, in Palo Alto and New York, is ‘responsive and focused’. Glenn Beaton in Denver and Mark Reiter in Dallas are also recommended.
PRACTICE: Famously associated with high-tech electronics and IT matters, the patent litigation practice at Irell & Manella LLP spans other industries as well. For example, the practice has a sizeable presence in the medical sector, handling matters for research institutions, hospitals and medical centers, and successfully represented Elan in defending claims of patent infringement asserted by Bayer relating to drugs used to treat high blood pressure. Clients praise the lawyers’ ‘depth of quality of lawyers’ and their particularly strong expertise in representing the defense side.
Among other highlights, the practice represented Juniper Networks in a lawsuit brought against Toshiba America in relation to a method for controlling access to computer memory. Toshiba agreed to a settlement after the court imposed severe sanctions following disputes during the discovery phase, including barring Toshiba from giving expert witness testimony on infringement and limiting its opening statement.
CLIENTS: The practice’s stable of clients from the technology sector include TiVo, AmberWave, Tessera, ASM Lithography, Texas Instruments, Stac Electronics, Immersion, Western Digital Corporation, Novellus Systems, Hewlett-Packard, Lucasfilm and Lucas Digital.
INDIVIDUALS: Clients cannot praise Morgan Chu enough. Chu has over 30 years’ experience in litigating patents and ‘thinks the world of him’. Gary Frischling focuses on intellectual property litigation and counseling. Alan Heinrich and Alan Iancu are also viewed as ‘rising stars’ in intellectual property litigation. Jonathan Kagan and Jason Sheasby focus on patent litigation and counseling, and are described as ‘knowledgeable and talented’. Clients praise Jonathan Steinberg for his extensive experience in complex litigation in federal and state courts. All the recommended lawyers are based in Los Angeles.
Orrick, Herrington & Sutcliffe LLP
PRACTICE: Orrick, Herrington & Sutcliffe LLP is ‘strong’ on the patent litigation side, with about 120 IP attorneys, handling high-stakes disputes and complex contentious matters.
Predominantly located in the Silicon Valley office, with some presence in New York and Washington DC, the lawyers are admired by clients for being ‘very thorough, timely and responsive’, despite hinting at the fact that ‘they could work harder to keep bills down’.
Recently concluded matters include a significant victory for client Acer in the settlement of all the company’s outstanding patent litigation against Hewlett-Packard in three separate cases in federal courts and two ITC investigations.
CLIENTS: Representations include Foundry Networks, eHarmony, ABTOX, Intel, Applied Materials, Nvidia, and Cannon Avent.
INDIVIDUALS: Neel Chatterjee concentrates his practice on patent, trade secrets and technology transactions litigation. Robert Freitas ‘has good business sense and judgement’, say clients. Matt Poppe has vast experience in litigating complex matters involving patents, trade secrets and false advertising. All of the lawyers are based in Silicon Valley.
Quinn Emanuel Urquhart Oliver & Hedges, LLP
PRACTICE: Quinn Emanuel Urquhart Oliver & Hedges, LLP has 80 lawyers, all of whom devote their entire time to litigation. The practice thrives on handling contentious patent matters, achieving significant results across a range of industries, such as electronics, food, pharmaceuticals and computing.
Quinn Emanuel Urquhart Oliver & Hedges, LLP adopts a ‘team approach’ to its patent disputes, pulling together the strengths of its entire intellectual property practice and trying cases for plaintiffs and defendants. The firm lacks a corporate group, but its IP attorneys nonetheless ‘have an entrepreneurial touch’ and ‘a remarkable depth of experience’, plus relevant degrees in science and technology.
Among recent highlights, the practice obtained a legal victory, worth $100m in damages, on behalf of Mattel against MGA relating to its Bratz dolls. A federal court judge issued an order permanently barring rival MGA from making and selling the Bratz dolls, which had posed a costly problem for Mattel, by undercutting sales of Mattel’s Barbie line.
CLIENTS: The firm has a strong presence in the technology industry, having recently represented mobile handset manufacturers such as Nokia, Samsung and Sony Ericsson plus Bally Technologies from the gaming field. In addition, Bancorp Services, Kraft Foods Global, RealNetworks and IBM use Quinn Emanuel Urquhart Oliver & Hedges, LLP’s services.
INDIVIDUALS: Claude Stern in Silicon Valley chairs the firm’s national intellectual property litigation practice and is viewed by clients as a ‘very bright and tremendous lawyer’. Also in Silicon Valley, Victoria Maroulis litigates on trade secret, copyright and trademark matters, and has extensive trial experience in complex patent matters. Charles Verhoeven, in Palo Alto, and Thomas Pease, in New York, are seen by clients as ‘thorough and dynamic’. San Francisco-based David Eiseman is also recommended.
Knobbe Martens Olson & Bear LLP
PRACTICE: Irvine, California-based Knobbe Martens Olson & Bear LLP’s 150 patent litigators impress clients with ‘their understanding of technology and legal analysis’. The practice represents a diverse group of clients in matters relating to a wide range of technologies, such as computer hardware and software, electronics, biotechnology and pharmaceuticals.
Among recent highlights, the practice represented its client Ranbaxy Pharmaceuticals before the US court of appeals for the federal circuit on two atorvastatin patents held by Pfizer. The ruling invalidated one patent, which had been set to expire in June 2011, but affirmed the portion of the district court judgement regarding Pfizer’s other atorvastatin patent, expiring in March 2010. This decision makes generic versions of Pfizer’s Lipitor available to the public 15 months earlier than would otherwise have been the case.
CLIENTS: Representative clients include Masimo, Nobel Biocare USA, Mustek Systems, Tosco, Gart, Samsung and Toshiba.
INDIVIDUALS: Joseph Re, also in Orange County, handles patent cases at trial and appellate level, as well as arbitration. Irvine, California-based John Sganga and Darrell Olson are also recommended.
Paul, Hastings, Janofsky & Walker LLP
PRACTICE: ‘One of the big players’ in patent litigation, according to clients, Paul, Hastings, Janofsky & Walker LLP fields 125 IP attorneys whose primary activity is patent litigation, supported by another 150 general litigators and trial attorneys from around the firm. Key elements of the group’s success are ‘excellent attorneys, thorough investigations and good technical equipment’, together with the ‘ability to pursue complex highly-valued matters’.
The practice’s client roster includes companies from the wired and wireless telecommunications industry, and the computer hardware and software sectors. The practice is also ‘strong’ in the pharmaceutical and biotechnology industries, representing companies such as Pfizer, Eisai and Wyeth Pharmaceuticals. In this field, Paul, Hastings, Janofsky & Walker LLP won an important patent ruling for Biovail, allowing the pharmaceutical company to proceed with patent infringement claims protecting one of its top-selling drugs.
CLIENTS: Clients include MediaTek, Kyocera Wireless, Samsung SDI, MRV Communications, Lincoln Electric and Sony Ericsson Mobile Communications, Bridgestone, Ropak and Honeywell.
INDIVIDUALS: Stephen Korniczky in San Diego chairs the global intellectual property practice, and focuses on patent litigation and strategic counseling. With over 20 years’ litigation experience, Korniczky has been involved in large multi-patent infringement actions and his advice is described as ‘resonant and thorough’.
Robert Masters in Washington DC has vast experience in patent and trade secret litigation, handling trials before federal and district courts and the ITC. Clients describe him as ‘an outstanding patent litigator’.
Also based in Washington DC are Lawrence Gotts and Michael Bednarek, who are described by clients as ‘providing the highest level of technical skills’. Bruce Wexler in New York focuses on litigating patent cases in the pharmaceutical and technical industries.
Pillsbury Winthrop Shaw Pittman LLP
PRACTICE: Pillsbury Winthrop Shaw Pittman LLP’s 30 IP litigators have a track record of success on both sides of the courtroom, litigating in various jurisdictions both in the US and abroad. It offers a spread of offices on both coasts.
Pillsbury Winthrop Shaw Pittman LLP attracts clients across multiple intellectual property disciplines, addressing needs in areas such as real estate and technology sectors. Clients comment that attorneys ‘give practical advice on potential litigation scenarios keeping the budgeting needs in mind’.
Among recent highlights, the practice secured a permanent injunction on behalf of Digital Assurance Certification against its primary competitor, the Municipal Advisory Council of Texas, in relation to a business method patent.
CLIENTS: Clients include the Bank of New York, Fellowes, Polaris Ventures Partners, Pressure Products Medical Supplies and AT&T.
INDIVIDUALS: James Gatto works on a range of IP matters, and is seen by clients as ‘practical and efficient’. Bryan Collins has ‘vast knowledge and good business sense’. Jack Barufka and Benjamin Kiersz have ‘tremendous intellectual property counseling experience’, say clients. All four of these recommended lawyers are based in McLean, Virginia.
Houston-based Claudia Wilson Frost is admired by clients for ‘her substantive understanding of the law’.
PRACTICE: With over 100 ‘excellent and professional’ lawyers involved in patent litigation, Sidley Austin LLP provides the focused command of an intellectual property boutique with the broad-based resources of a general practice firm. The practice’s comprehensive capabilities include expertise in computer software, electronics and other related technologies, as well as in life sciences, pharmaceuticals, biotechnology and medical devices. For example, Sidley Austin LLP was retained as co-counsel to represent Genentech in litigation with one of its licensees, MedImmune, which had both challenged its obligation to pay royalties under the license and questioned the validity and enforceability of Genentech’s patent. The patent relates in part to methods used to make certain antibodies or antibody fragments. The case was settled in June 2008.
CLIENTS: In addition to Genentech, the practice represents Wyeth, Cardica, Synthes, Spine Solutions, Atmel, STMicroelectronics, Samsung, Microsoft and AT&T.
INDIVIDUALS: Clients regard David Pritikin in Chicago as ‘skilful, intelligent and adept at efficient case management’. Chicago-based Richard Cederoth is ‘courteous and extremely responsive’, focusing his practice on patent and trade secret matters involving computers, software and semiconductors.
PRACTICE: Texas giant Fulbright & Jaworski LLP has 130 ‘enthusiastic and dynamic’ IP lawyers whose trial skills and expertise ‘deserve to be recognized’, say clients. The practice excels in the hi-tech sector, representing companies in the telecommunications, electronics and computing industries. Its IP lawyers are also experienced in matters concerning chemicals and pharmaceuticals, as well as chemical and mechanical engineering.
Among recent highlights, the practice represented Interplast in a lawsuit against plaintiff Superbag relating to plastic bags. Following the hearing and mediation, a favorable settlement was reached.
CLIENTS: Clients include Antor Media, Fenner Investments, WebTech Wireless, Luminex, ITT, QPSX Developments 5, Introgen Therapeutics, Total, and Valero Energy.
INDIVIDUALS: Terry Tottenham in Austin has broad litigation experience and clients regard him as ‘very knowledgeable, and with an invaluable understanding of the law’. Joseph Zammit in New York is an experienced trial lawyer and ‘the person I want, when I go to litigation’, says one client.
PRACTICE: With 70 IP attorneys, Kaye Scholer LLP has depth of expertise in presenting complex patent cases to juries. Many of its litigators are former federal prosecutors or patent examiners, who work together with full-time scientific advisors in the pharmaceutical, biotechnology and chemical industries. Kaye Scholer LLP’s attorneys demonstrate ‘good attention to detail’ and ‘vast courtroom experience’. In 2008, the practice represented defendant Thomas & Betts in a patent infringement case against Cooper Industries. It resulted in a jury verdict that the two Cooper patents in question were invalid, and that Thomas & Betts did not infringe any rights.
CLIENTS: Other clients include Barnes & Noble, Boart Longyear, Ceridian, Costco Wholesale, Danaher, General Dynamics, IDT, and Juniper Networks.
INDIVIDUALS: With extensive litigation experience, Washington DC-based Alan Fisch is ‘absolutely brilliant’, say clients. Richard Greco in New York is also recommended.
PRACTICE: Latham & Watkins LLP handles complex patent litigation, representing plaintiffs and defendants, and is a group that ‘impresses’ clients. The practice has a strong focus on technology matters, bringing together the strengths of its intellectual property litigators across multiple jurisdictions. Operating within firm’s collaborative structure, the practice is able to undertake litigation, licensing and transactions and to leverage its numerous offices.
Latham & Watkins LLP successfully acted on behalf of defendant Quanta against LG Electronics in a patent infringement case relating to computer memory.
CLIENTS: Clients include Alcatel-Lucent, Allergan, Broadcom, C. R. Bard, Electronic Integrated Systems, FLIR Systems, Monolithic Power Systems and Qualcomm.
INDIVIDUALS: Recommended attorneys are Robert Steinberg in Los Angeles and Silicon Valley, who is the global chair of the intellectual property practice group, and Orange-County-based Perry Viscounti, who is ‘competent and smart’.