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Editorial

Overview

Who Represents Who

Find out which law firms are representing which Overview clients in United States using The Legal 500's new comprehensive database of law firm/client relationships. Instantly search over 925,000 relationships, including over 83,000 Fortune 500, 46,000 FTSE350 and 13,000 DAX 30 relationships globally. Access is free for in-house lawyers, and by subscription for law firms. For more information, contact david.burgess@legal500.com.

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The firms listed in the copyright table are assessed on their capabilities across advisory, transactional and litigation matters. Those firms that do most or all of these things well are ranked highest, although there is also room for specialists with niche expertise. Fashion and apparel copyright has had an unusually high degree of attention recently due to the Star Athletica v Varsity Brands case before the Supreme Court. There are strict limits on which aspects of a dress can be protected by copyright and these limits could become even stricter if the Supreme Court decides that the cheerleading apparel market-leader Varsity Brands can no longer protect certain decorations on its cheerleading uniforms by copyright. If such a decision is made, the fashion industry would most likely look for other means of IP protection, such as design patents or trade dress.

The opposite trend is already visible in the software industry: due to stricter limits on software patents, the demand for software copyright has increased. Beyond software, technology is another driving factor for the copyright legal market. New business models around digital content distribution often bring legal questions with them and the answers are regularly settled in the courtroom. In the wake of the 2014 Supreme Court decision against Aereo and its business model of capturing over-the-air television and retransmitting it over the internet, disputes over other internet television services have continued. Most prominent was the recent victory of Dish Network against an attempt by Fox to shut down its ad-skipping digital video recording service. Similar disputes exist in the music area, where litigation about royalty rates continues. Besides such high-profile cases, there is also a large volume of more traditional copyright work keeping practices busy.

Patents: licensing recognizes firms with strong track records assisting cutting-edge corporations, technology start-ups and leading universities in preparing and negotiating alliances and agreements, such as joint research, licensing, litigation settlement and technology transfers. Credit is given to firms that display broad licensing capabilities, handling both standalone licensing transactions and the licensing aspects of large M&A deals.

The patent litigation: full coverage table highlights firms with significant expertise in handling patent infringement cases at both trial and appellate level, and with a demonstrable presence across various forums including the International Trade Commission (ITC) and the US Patent and Trademark Office (USPTO). Many firms note that the rate of patent suit filings dropped significantly over 2016, potentially as a result of the many Section 101 decisions passed in the previous year, which has served to deter some non-practicing entities from filing infringement actions.

Inter partes reviews and post-grant proceedings continue to be a popular component of a defense strategy, and competitor cases remain prevalent among industry leading companies, most notably in the medical devices, pharmaceuticals and Abbreviated New Drug Application (ANDA) spaces. The technology and life sciences sectors remain the key areas of focus within this section.

The patents: litigation (International Trade Commission) table comprises a mix of specialist ITC firms, IP boutiques and full service firms. Firms are expected to evidence a strong track record in ITC Section 337 cases and will typically house specialist practitioners with demonstrable expertise in IP litigation and an excellent understanding of ITC regulations and procedures. Since ITC cases go to trial faster than cases tried in almost any other forum in the world, they can be the first to be resolved in multi-forum disputes and often spearhead the resolution of related cases.

The complexity of disputes brought to the ITC - which include not just patent but also trademark, trade secrets and copyright issues - is increasing. The investigation of imported steel products from China in 2016 included trade secret and antitrust claims; the ITC initially ruled that the antitrust claims cannot be pursued under Section 337, but in December 2016, the ITC decided to review an administrative law judge’s decision to reject the antitrust component of US Steel’s case against Chinese steel producers.

Other major sources of work for firms in 2016 included Advanced Silicon Technologies’ complaint against a large number of multinational automobile companies regarding certain computer or graphic systems and Creative Technology’s patent infringement disputes against several smartphone giants, including Samsung, Sony, LG, HTC, BlackBerry, ZTE and Lenovo Motorola.

The market for patent prosecution work has been unsettled in recent years as the practice has been reshaped by several factors: increased competition for IP boutiques from large firms, a refocusing of IP priorities by in-house counsel, and the creation under the America Invents Act of a quicker, cheaper way of resolving patent disputes through proceedings before the USPTO. This section includes firms with strong prosecution practices in a number of industry sectors and an excellent track record in handling various forms of proceedings before the USPTO.

The trade secrets areana has been shaken up by the long-awaited introduction of the Defend Trade Secrets Act, which created a civil federal cause of action for trade secrets misappropriation claims. This business-friendly legislation, combined with several related congressional initiatives, has expanded the trade secret protection available to corporate entities and made the law more uniform. However, this approach has yet to be followed by the lower courts, which continue to apply a stricter approach to plaintiffs filing offences pertaining to trade secrets breaches.

Following a prolonged period of inactivity, firms reported an uptick in several areas of work, particularly counseling (amending policies in light of new laws), non-litigation enforcement (identifying instances of misappropriation and effective counter-action) and intellectual property licensing. Dispute resolution is also on the rise, with clients increasingly willing to bring lawsuits to protect their intellectual capital and other information crucial to their businesses.

Firms featured in the ranking demonstrate both contentious and non-contentious expertise. Practitioners have an excellent grasp of intellectual property matters, as well as antitrust, employment law and technology issues, with technology advice crucial in light of the increasing risk of cybersecurity breaches. International expertise is also important, particularly for technology companies with servers and employees worldwide.

The trademarks: litigation section recommends firms for their breadth and depth of coverage in such litigation. While most emphasis is on cases before the federal courts, litigation in other forums is also taken into consideration, including the Uniform Domain-Name Dispute-Resolution Policy (UDRP) and the Trademark Trial and Appeal Board (TTAB) of the USPTO. It is observable that clients and firms pay more attention to TTAB proceedings and invest more resources there since the Supreme Court decided in 2015 (in B&B Hardware v Hargis Industries) that TTAB decisions can have preclusive effect on a court.

The most recent Supreme Court case regarding trademarks is Lee v Tam and concerns the protectability of the disparaging trademark ‘The Slants’ of an Asian-American band. This matter, however, is of limited relevance to the legal market since disparaging trademarks are not typically very sought after. The most prominent other case of this kind is the attempt of several Native American groups to cancel the trademark of NFL team The Washington Redskins.

The trademarks: non-contentious section recommends firms for their capabilities across portfolio management, prosecution, transactional and advisory work. Many of the listed firms also have significant experience in administrative proceedings, including cancelations and oppositions, as well as anti-counterfeiting and enforcement work. The market for non-contentious trademarks expertise is growing steady. Driving factors are registrations of non-traditional trademarks and trade dresses as well as advisory work on the use of trademarks in social media.


Copyright

Index of tables

  1. Copyright
  2. Leading lawyers

Who Represents Who

Find out which law firms are representing which Copyright clients in United States using The Legal 500's new comprehensive database of law firm/client relationships. Instantly search over 925,000 relationships, including over 83,000 Fortune 500, 46,000 FTSE350 and 13,000 DAX 30 relationships globally. Access is free for in-house lawyers, and by subscription for law firms. For more information, contact david.burgess@legal500.com.

CLICK HERE TO VISIT THE WHO REPRESENTS WHO SITE

The ‘excellent’ practice at Cowan, Liebowitz & Latman, PC in New York is best known for its strength in copyright advisory work, particularly in the music, book publishing and fashion industries, and is regularly involved in high-profile litigation. It has been representing Varsity Brands in its prominent dispute with competitor Star Athletica regarding the copyrightability of the client’s cheerleading uniforms; after a victory before the Sixth Circuit, the case has reached the Supreme Court. Also in the fashion industry, the team helped J Crew and Madewell register several jewelry designs and managed successful enforcement efforts against Walmart. Other highlights included the representation of Capitol Records in a dispute with ReDigi, which operated an online marketplace for secondhand digital music, and the defense of Rosen Book Works against Palmer/Kane regarding alleged unlicensed reproduction of photographs. Practice head Jonathan King, Richard Mandel and Eric Shimanoff are noted for their expertise in the music industry, while Richard Dannay and ‘copyright authorityThomas Kjellberg are especially strong in the book publishing area.

Jenner & Block LLP has an outstanding reputation for representing content owners in the music and motion picture industries and is regularly involved in litigation at the intersection of copyright and new technologies. Practice co-chair Andrew Bart in New York has a large number of recording companies as clients. He successfully represented Capitol Records in a long-running copyright infringement suit against now-defunct online music storage service MP3tunes. Co-chair Richard Stone in Los Angeles acts for many motion picture studios and TV broadcasters. He continues to represented Fox against several online services that retransmit TV content, such as FilmOn X and BarryDriller Content Systems. Kenneth Doroshow in Washington DC has been representing Getty Images in a dispute with photographer Carol Highsmith regarding the licensing of photographs that were donated to the Library of Congress. Other clients of the practice include the Recording Industry Association of America (RIAA), the Motion Picture Association of America, the Authors Guild, the Entertainment Software Association, Paramount Pictures and Universal Music.

The ‘excellent’ team at Kirkland & Ellis LLP provides ‘spot-on copyright advice’ and is regularly involved in high-profile cases. For example, it continues to represent Fox News in the prominent dispute with the media monitoring company TVEyes, which defends its provision of TV news broadcasts for subscribers as fair use. Other highlights included acting for Oracle in its long-running dispute with Google regarding the use of Oracle’s Java source code in Google’s Android operating system, representing Cisco Systems in a software copyright infringement suit against Arista Networks, and the defense of Damien Hirst against allegations by a Canadian artist in a jewelry copyright matter. Other clients include IBM, Limited Brands and Take-Two. ‘Smart and responsive’ practice head Dale Cendali, Johanna Schmitt and Claudia Ray, all of whom are based in New York, are recommended, as is Diana Torres in Los Angeles.

Loeb & Loeb LLP is recommended for copyright advisory work in the music, motion picture and television industries, and also frequently handles prominent contentious matters. Highlights included the representation of Paramount Pictures and CBS Studios in a copyright infringement suit against the producers of a crowdfunded, non-profit Star Trek fan film, as well as acting for Sony/ATV, Warner Chappell Music and others in a copyright infringement case against online music archive Wolfgang’s Vault. On the defendant side, the team successfully represented 21st Century Fox against two screenwriters who claimed that the Fox series New Girl infringed their screenplay Square One, and acted for BMG Rights Management in a suit filed over copyright termination rights. Other clients include MGM, Warner Bros, and NBCUniversal. Practice chair Barry Slotnick and Jonathan Zavin in New York as well as David Grossman in Los Angeles are recommended.

Weil, Gotshal & Manges LLP’s ‘top-notch’ team in New York has a ‘deep understanding of the issues that matter for tech clients’. It frequently represents distributors in first impression copyright litigation and has particular expertise in music licensing. Highlight included the representation of Sirius XM in music royalty rate-setting proceedings before the Copyright Royalty Board (CRB) against SoundExchange, Warner Music Group, Universal Music Group, Sony Music Entertainment, the Recording Industry Association of America, and others, as well as the representation of Pandora Media against the National Music Publishers Association (NMPA) and the Nashville Songwriters Association International (NSAI) in royalty rate proceedings before the CRB. In the book publishing sector, the firm continues to represent Oxford University Press, Cambridge University Press, SAGE Publications and the Association of American Publishers in a long-running dispute with Georgia State University regarding the digital distribution of book excerpts to students. On the defense side, it successfully represented Facebook and Instagram against copyright infringement claims by photographer Jennifer Rondinelli Reilly. Practice head Bruce Rich is recommended along with Benjamin Marks, Randi Singer and Todd Larson.

Newly merged firm Arnold & Porter Kaye Scholer LLP has a copyright team that regularly acts for motion picture studios, TV broadcasters and sports leagues, often handling major copyright disputes. Highlights included the representation of several TV broadcasters, including ABC, Disney and NBCUniversal, in a long-running series of disputes with the online streaming service FilmOn and the representation of Joint Sports Claimants, a consortium including Major League Baseball, the National Football League (NFL) and the National Basketball Association, in proceedings before the CRB. Other clients include CBS, Walt Disney and Machine Zone. Practice head Robert Garrett in Washington DC as well as John Ulin and James Blackburn in Los Angeles are recommended.

Boutique Fross Zelnick Lehrman & Zissu, P.C. in New York is highly regarded for its copyright advisory work in the entertainment industry. James Weinberger, Roger Zissu and David Donahue are particularly recommended. The team counsels major motion picture studios on copyright protection, handles music licensing deals and assists with enforcement actions against online infringements. It also advises on author-publisher agreements, e-book rights and has niche expertise regarding ownership of literary characters and related infringement issues. Clients include the Alexander and Mabel Bell Legacy Foundation, DC Comics, and Warner Bros Entertainment.

Trusted Advisor - with Finnegan

IP specialist Finnegan detail how their collaborative approach makes for a unique culture which is designed to allow them to work with clients in a way which is cognizant of the challenges facing all companies today.

Kilpatrick Townsend & Stockton’s broad practice handles a variety of advisory and contentious copyright matters. Recent work includes the representation of Sugartown Worldwide in a copyright infringement suit against Old Navy regarding the use of protected fabric designs and the representation of Sony Interactive Entertainment and its affiliates in music copyright litigation. On the advisory side of the practice, the team assisted Interface Inc with copyright protection of textile patterns and advised Dominion Enterprises on Digital Millennium Copyright Act (DMCA) matters. Silicon Valley-based practice head Joseph Petersen is recommended along with Larry McFarland in Los Angeles, Marc Lieberstein in New York and senior counsel Joseph Beck in Atlanta.

Mitchell, Silberberg & Knupp is well known for assisting clients in the motion picture, television, music, video game and publishing industries with copyright matters. Practice head Karin Pagnanelli is recommended along with Russell Frackman, Robert Rotstein and Marc Mayer, all of whom are based in Los Angeles, as is Christine Lepera in New York. Highlights included the defense of Lionsgate and others against claims of copyright infringement regarding the motion picture The Cabin in the Woods and the defense of Fox against actor Frank Sivero, who claims that the character ‘Louie’ from the television series The Simpsons is based on characters that Sivero played in the films Goodfellas and The Godfather II. Other clients include Capitol Records, Sony Music and Blizzard Entertainment.

The ‘excellent’ team at Proskauer Rose LLP is recommended for copyright matters in the entertainment industry, and particularly for contentious matters in the music industry. Highlights included the successful defense of Madonna and Warner Bros against a copyright infringement claim by VMG Salsoul regarding the use of a 0.23-second sound sample, which was considered de minimis by the Ninth Circuit. Other clients include BMG, Sony Music Entertainment, Reed Elsevier and the Authors Guild. Practice head Sandra Crawshaw-Sparks is ‘very knowledgeable, responsive and proactive’. Other recommended lawyers include music industry expert Alexander Kaplan and Charles Sims, who has particular expertise in fair use issues and matters at the intersection of copyright and First Amendment law.

Quinn Emanuel Urquhart & Sullivan, LLP’s litigation team regularly handles high-profile copyright disputes, particularly when it comes to defending online service providers against claims from copyright holders. For example, it successfully defended the video-sharing website Vimeo against copyright infringement claims brought by Capitol Records and others, and it continues to represent the media monitoring company TVEyes in its prominent dispute with Fox News. Other recent work includes the defense of Alibaba in a dispute with Freeplay Music involving music used for promotional videos, and the representation of Pharrell Williams, Robin Thicke and Clifford Harris Jr in a dispute with the heirs of Marvin Gaye. Practice head Robert Raskopf and Todd Anten in New York are recommended along with Rachel Herrick Kassabian in Silicon Valley.

Winston & Strawn LLP’s ‘excellent’ team is especially recommended for representing service providers in high-profile disputes at the intersection of copyright and new technologies. Highlights included the representation, respectively, of internet service providers Cox Communications and Charter Communications in multiple copyright lawsuits brought by Sony, Warner Bros, Universal Music Group and numerous other leading record labels alleging that the firm’s clients are liable for potentially billions of dollars in damages for allegedly turning a blind eye towards acts of alleged copyright infringement by their broadband customers. The team is also representing Bill Graham Archives (formerly Wolfgang’s Vault) in several matters, including another large-scale copyright infringement lawsuit involving sound and video recordings. Other clients include PepsiCo and Yahoo! Michael Elkin and Thomas Lane in New York are recommended, along with Jennifer Golinveaux in San Francisco and Erin Ranahan in Los Angeles.

Covington & Burling LLP’s practice is very experienced in online piracy and DMCA liability issues and regularly assists clients with their anti-piracy programs and targeted copyright enforcement. For example, it continues to assist the NFL in combatting the unauthorized re-transmission of game telecasts over the internet. Other recent work includes representing Microsoft in a software copyright infringement suit against Weidmann Electrical Technology and acting for PBS and its member stations in matters before the CRB regarding the distribution of statutory copyright royalties. The practice is chaired by Simon Frankel in San Francisco and of counsel Ronald Dove in Washington DC. Clara Shin, also in San Francisco, focuses on technology-related disputes.

Debevoise & Plimpton LLP’s team has ‘extensive experience in copyright counseling and litigation’. It has been defending the NFL against claims by retired NFL players, who sought payment for the NFL’s continued use of game action footage. In a software copyright matter, it has been representing Rimini Street in seeking a declaratory judgment that the software maintenance services it provides do not infringe Oracle’s copyrights. Other clients include Bridgestone, Symphony Space and the New-York Historical Society. Practice chair Jeffrey Cunard in Washington DC is ‘very knowledgeable’ and Jim Pastore in New York is a ‘skilled litigator’.

Durie Tangri LLP in San Francisco is well known for defending technology companies in high-profile copyright disputes. Highlights included the successful defense of CoreLogic, a technology provider for real estate websites, in a class action suit regarding the removal of copyright management metadata from photographs originally taken by professional photographers for real estate agents and brokers. The team also continues to represent Google and its navigation subsidiary, Waze, in its dispute with PhantomALERT, which claims copyright infringement of user-generated data on speed traps and other camera and safety locations. Daralyn Durie and Joseph Gratz are recommended.

The ‘very good’ team at Fenwick & West LLP is particularly strong in copyright matters regarding new technologies and handles both advisory work and litigation. Highlights included the successful defense of Giganews against claims brought by adult website operator Perfect 10 regarding alleged copyright infringement on the Giganews Usenet service. The team also continues to represent General Motors in a lawsuit brought by the Alliance of Artists and Recording Companies seeking royalties for entertainment systems that can store music files on a car’s hard drive. In San Francisco, litigator Andrew Bridges is very experienced in secondary liability disputes, while Jennifer Stanley chairs the non-contentious copyright practice, which advises clients such as Expedia, Airbnb and King.com.

Frankfurt Kurnit Klein & Selz PC in New York regularly advises clients in publishing, media, entertainment and advertising and is particularly noted for defending publishers and media companies against damage awards. Highlights included the defense of the educational publisher Scholastic against numerous copyright claims from photographers alleging the company used photographs in excess of license limits and the defense of Vice Media against copyright infringement claims brought by a music photojournalist. Other clients include Aaron Sorkin, Jenn Lee, Phil Johnston, Tom McCarthy and James Gunn. Practice chair Edward Rosenthal and Maura Wogan are recommended for litigation. Richard Heller is noted for his transactional and advisory work for authors.

King & Spalding LLP’s ‘excellent’ team is particularly recommended for matters at the intersection of copyright and new technologies. Highlights included the representation of Pandora Media, Netflix, Google and others in the Department of Justice (DOJ) investigation into the antitrust consent decrees of the American Society of Composers, Authors and Publishers (ASCAP) and Broadcast Music Inc (BMI) governing the licensing of public performance rights in musical compositions, and the successful representation of the American Society of Heating, Refrigeration and Air-Conditioning Engineers (ASHRAE) in a suit against Public.Resource.Org regarding copyright protection for safety standards. Kenneth Steinthal and Joseph Wetzel in San Francisco are recommended.

Morrison & Foerster LLP’s team is best known for contentious copyright matters in the technology sector. Highlights included helping Autodesk to stop ZWCad Software from selling a cloned version of the client’s AutoCAD software and acting for VMware in a software copyright and breach of license dispute with Phoenix Technologies. The team also successfully represented the internet service providers Verizon Communications, Cox Communications and Bright House Networks in a dispute with AF Holdings regarding the downloading of copyrighted adult material by their customers; a matter in which disciplinary state bar proceedings are underway against the opposing party’s lead counsel. Michael Jacobs in San Francisco and Benjamin Fox in Los Angeles are recommended.

O’Melveny & Myers LLP’s team is very experienced in copyright matters in the motion picture and music industries. Key client Warner Bros is represented in several matters, including the successful defense against Ryan Brooks, who claimed the movie Trouble with the Curve infringed his screenplay Omaha, and in a dispute with the Estate of JRR Tolkien and HarperCollins regarding merchandising rights to The Lord of the Rings and The Hobbit. The team also continues to represent Sirius XM in several disputes with major record companies involving infringement claims relating to pre-1972 sound recordings. Matthew Kline in Los Angeles and David Eberhart in San Francisco are recommended.

Orrick, Herrington & Sutcliffe LLP’s team has ‘excellent expertise’ in issues concerning copyrightability and fair use and is particularly strong in high-profile copyright disputes in the technology sector. It successfully defended Dish Network in its prominent dispute with several TV broadcasters and thereby preserved the client’s ad-skipping digital video recording service. The practice also counsels several clients on moving similar recording services into the cloud. Other highlights included acting for Oracle as plaintiff in a long-running dispute with Google regarding its use of parts of Oracle’s Java software in the defendant’s Android operating system. Annette Hurst and Gabriel Ramsey in San Francisco are recommended, as are New York-based Joshua Rosenkranz and Lisa Simpson.

Paul, Weiss, Rifkind, Wharton & Garrison LLP is especially noted for its litigation expertise in the music industry but also regularly handles copyright matters for clients across the wider media and entertainment sector. Key client ASCAP is being represented in several proceedings and negotiations over royalty rates. The team also represented Harlequin Enterprises Limited 90 in a class action brought by authors who published romance novels from 1990 to 2004 and claimed that they were unfairly compensated for the later e-book editions of their works. Other clients include Huffington Post and the National Music Publishers Association. Jay Cohen and Lynn Bayard in New York are recommended.

Pryor Cashman LLP’s practice is particularly noted for its work in the music industry but also regularly handles matters for motion picture studios. It successfully represented Jay Z, Mike Dean, UMG Recordings and others in appeal proceedings initiated by plaintiff Joel R McDonald, who claimed that the defendants’ song Made in America infringed his song with the same title. The team also represented the National Music Publishers Association in successfully brokering a $30m settlement between Spotify and the client’s constituents over unmatched and unpaid song royalties. Other clients including EMI, Sony, BMG, Lionsgate, and The Weinstein Company. New York-based litigators Donald Zakarin, Frank Scibilia, Tom Ferber and Brad Rose are recommended.

Newly merged firm Andrews Kurth Kenyon LLP brings together two copyright practices, creating a broad offering that covers the registration of works, licensing, enforcement and litigation. New York-based Jonathan Reichman, from the legacy Kenyon & Kenyon firm, has a focus on the entertainment industry and particular experience regarding fictional characters. Jeff Dodd in Houston, formerly of Andrews Kurth, is an expert in the digital space and licensing matters. Recent work includes defending Mattel against copyright infringement allegations regarding the American Girl book series.

Arent Fox LLP’s team is particularly known for its expertise in the music industry, but it also acts for a variety of clients in the entertainment, technology and fashion industries. Work highlights included the representation of Music Choice in royalty rate proceeding before the CRB, acting for Sirius XM in the DOJ’s investigation of the ASCAP and BMI antitrust consent decrees, and advising HBO on numerous copyright matters. Practice head Paul Fakler in New York and Anthony Lupo in Washington DC are recommended.

Baker & Hostetler LLP’s team has remarkable expertise in the music industry, but also regularly works for clients from the wider media and entertainment industry and the technology sector. Practice head Oren Warshavsky in New York successfully represented Freeplay Music in disputes with several multi-channel networks, while Dennis Loomis in Los Angeles has been engaged by ReDigi to handle its appeal to the Second Circuit challenging a summary judgment of copyright infringement in its dispute with Capitol Records.

Davis & Gilbert LLP’s team in New York has remarkable industry expertise in the advertising and marketing sector, where it regularly advises clients on copyrightability, licensing and protection of materials, as well as license-free fair use. The ‘detail-oriented, smart and responsiveAshima Dayal is particularly recommended for such advisory work, while Guy Cohen and Marc Rachman are recommended for litigation. Highlights included the representation of the heirs of the comedy duo ‘Bud’ Abbott and Lou Costello in a copyright dispute with the producers of Broadway play Hand to God.

At Greenberg Traurig LLP, Ian Ballon, who splits his time between the firm’s Los Angeles and Silicon Valley offices, focuses on litigation at the intersection of copyright and technology, including DMCA issues. Robert Rosenbloum in Atlanta regularly handles copyright counseling work for recording artists, record companies and motion picture companies, as well as digital media companies and service providers in the online space. Clients include Cafepress.com, Groupon, Jennifer Lopez and Katy Perry.

Hogan Lovells US LLP acts for a variety of arts, media and entertainment clients in copyright matters. It has defended Fox News in two suits filed by North Jersey Media Group regarding claims of copyright infringement based on photos posted on Facebook. Other clients include Bloomberg, Al-Monitor, Anne Frank Stichting and Walt Disney. Dori Ann Hanswirth in New York heads the practice.

Irell & Manella LLP in Los Angeles is noted for its work in the media and entertainment sector. Highlights included defending CBS against ABS Entertainment, which demands royalties for the playing of pre-1972 sound recordings, and representing GDC Technology in a software copyright dispute with Dolby Labs regarding digital theater systems. Robert Schwartz is recommended and of counsel David Nimmer is noted for his longstanding reputation as a thought leader in the copyright space.

Katten Muchin Rosenman LLP’s team is recommended for its industry expertise in the media and entertainment sector. Highlights included the defense of Cumulus Media in a copyright infringement suit brought by ABS Entertainment regarding pre-1972 music royalties. The team also defends Centric Group against copyright infringement claims by United Music Group regarding mix tapes in care packages for the incarcerated. Other clients include HBO, NBCUniversal and Universal Studios. David Halberstadter and Joel Weiner in Los Angeles are recommended along with Chicago-based Floyd Mandell.

Mayer Brown’s team has particular expertise in digital media copyright and regularly represents digital distribution companies in disputes with content owners, particularly from the music industry. Recent highlights include the defense of Spotify against two class actions by music composers claiming copyright infringement, and the representation of Google in a class action in which plaintiff Norman Blagman claimed that Google and other defendants failed to ensure that the music they make available for download is properly licensed. Practice head John Mancini in New York is recommended.

Morgan, Lewis & Bockius LLP’s team is particularly noted for its expertise in digital media and software copyright. Recent work includes successfully defending Amazon against copyright infringement allegations regarding CreateSpace, an Amazon subsidiary that allows authors to self-publish and distribute their works, and the successful representation of the American Society for Testing and Materials (ASTM) in a suit against Public.Resource.Org regarding copyright protection for safety standards. J Kevin Fee in Washington DC is recommended.

Sheppard, Mullin, Richter & Hampton LLP’s practice is noted for its expertise in the entertainment industry and regularly handles copyright matters for a variety of clients. Highlights included the successful representation of the hip-hop group the Beastie Boys in a copyright infringement suit against Monster regarding the unauthorized use of its music in a promotional video, and defending Televisa against copyright infringement claims by Codigo Music. Paul Garrity in New York is a name to note and Los Angeles-based Seong Kim strengthened the practice with his arrival from Steptoe & Johnson LLP.

Wiley Rein LLP’s team in Washington DC has expertise in music licensing and online infringement matters. It has represented the National Association of Broadcasters in proceedings before the CRB to establish license fees for the online streaming of sound recordings, and it advised numerous online service providers on questions of secondary liability. Other clients include the United States Telecom Association and CenturyLink. Thomas Kirby is recommended.


Patents: licensing

Index of tables

  1. Patents: licensing
  2. Leading lawyers
  3. Next generation lawyers

Next generation lawyers

  1. 1

Who Represents Who

Find out which law firms are representing which Patents: licensing clients in United States using The Legal 500's new comprehensive database of law firm/client relationships. Instantly search over 925,000 relationships, including over 83,000 Fortune 500, 46,000 FTSE350 and 13,000 DAX 30 relationships globally. Access is free for in-house lawyers, and by subscription for law firms. For more information, contact david.burgess@legal500.com.

CLICK HERE TO VISIT THE WHO REPRESENTS WHO SITE

IP powerhouse Finnegan, Henderson, Farabow, Garrett & Dunner LLP is routinely engaged in top-level transactional and contentious work for a large number of industry giants in the consumer products and pharmaceuticals space. Patent litigator Doris Johnson Hines is representing Toshiba Corporation and Toshiba America Information Systems in litigation initiated by MPEG LA alleging breach of contract with respect to two license agreements for two patent pools administered by MPEG LA. Among other highlights, seasoned litigators Laura Masurovsky and Houtan Khalili Esfahani in Washington DC successfully represented S3 Graphics, a subsidiary of HTC Corporation, in a patent license ownership dispute with Advanced Micro Devices, ATI Technologies and ATI International relating to high-performance graphics chips used in software and video game components, and Washington DC-based Michele Bosch advised Axon Neuroscience on IP issues related to licensing and cooperative research and development agreements. Atlanta-based Roger Taylor, who also operates from the firm’s Tokyo office, is also a key name to note, as is Washington DC-based Brian Kacedon, who focuses on patent and technology licensing and litigation. In addition to the locations mentioned already, the group has a presence in Boston, Palo Alto and Reston. It also regularly works with individuals from the firm’s Tokyo and Taipei offices.

Trusted Advisor - with Finnegan

IP specialist Finnegan detail how their collaborative approach makes for a unique culture which is designed to allow them to work with clients in a way which is cognizant of the challenges facing all companies today.

Foley & Lardner LLPpresents excellent value for money when quality is a key metric’. The team handles a broad range of IP transactions, from cross-licensing and joint development agreements, to due diligence relating to the purchase, sale and licensing of IP assets in M&A transactions. Among the recent impressive highlights, San Diego’s Richard Kaufman acted for DNAtrix in a collaboration and license agreement with Alcyone Lifesciences regarding the development and supply of a medical device; Beni Surpin in San Diego assisted biopharmaceutical company with a license-back agreement relating to ocular-related technology rights; and Washington DC-based Andrew Rawlins assisted with the licensing aspects of an M&A transaction and is advising a multinational manufacturing company on a joint development agreement. Milwaukee-based Jeffrey Gundersen and Joseph Ziebert are ‘excellent patent strategists’, and are recommended along with Chicago-based Aaron Tantleff. Other clients include Snapchat, Toshiba Corporation, New York University and iHealth Labs. In addition to the above mentioned locations, the group has a presence in Boston and Chicago.

Morrison & Foerster LLP’s diverse practice handles a broad spectrum of licensing matters, ranging from cross-licensing of patents between multinational electronics companies, to the negotiation of settlements with individual inventors, to bilateral negotiations over a single patent. A team led by Shannon Reaney assisted Gilead with the IP due diligence aspects of its $2bn licensing deal with, and investment in, Belgian biotech company Galapagos, to develop filgotinib for the treatment of rheumatoid arthritis. The highly regarded life sciences specialist Catherine Polizzi is acting for Genentech in the development of multibillion-dollar patent portfolios for a number of blockbuster cancer drugs, and assisted on its collaboration with BioNTech to develop, manufacture and commercialize cancer vaccines. On the contentious side, first-chair trial lawyer Bryan Wilson represented licensee Immersion Corporation in patent license arbitration proceedings against Samsung regarding the right to distribute products following the expiring of the license. San Francisco-based Michael Ward heads the patent practice and is well regarded for his expertise in the agricultural biotech space. Named attorneys are based in Palo Alto except where otherwise noted.

According to one client, Weil, Gotshal & Manges LLP provides ‘the highest level of service’, combining ‘deep patent expertise and great corporate support’; the team is also singled out for its responsiveness and its willingness to ‘complete tasks on very short timelines’. New York-based global head of the technology and IP transactions practice Michael Epstein is advising a number of technology and life sciences companies on their licensing agreements; representative clients include Adobe Systems, Applied Materials, Eli Lilly, and Intel Corporation. Also in New York, Jeffrey Osterman assisted Sanofi with its worldwide licensing agreement with Hanmi Pharmaceutical to commercialize a portfolio of diabetes treatments. Silicon Valley-based Karen Ballack is advising Yahoo! on the IP aspects of its pending $4.83bn sale of its operating business to Verizon. New York’s Charan Sandhu focuses on the technology-related aspects of private equity, M&A and licensing transactions.

Baker Botts L.L.P. is praised for its ‘practical approach to solving legal issues or litigation’, ‘understanding of the client’s needs’, ‘excellent legal and business judgment’, and ability to ‘staff an IP matter in a cost-efficient way’. The team, led by Dallas-based Barton Showalter, is highly recommended for conducting IP due diligence in relation to large M&A deals. 2016 saw a number of new client wins, including Square, Varian Medical Systems, NBA Media Ventures, and Comcast Corporation. Paul Ragusa is ‘a king of excellent client service’ and, along with biotech specialists Lisa Kole and Sandra Lee, is assisting Ethypharm with the negotiation of a patent license agreement with pharmaceutical manufacturers. Washington DC-based Luke Pedersen and Dallas-based Christa Sanford are also key contacts. Named attorneys are based in New York except where stated otherwise.

Covington & Burling LLP has an outstanding record in the life sciences space and advises numerous multinational pharmaceutical companies with their large global collaborations and cross-border licensing deals. The ‘knowledgeableJohn Hurvitz in Washington DC co-heads the life sciences industry team, which assisted AbbVie with its global collaboration with Boehringer Ingelheim to develop and commercialize BI 655066, an anti-IL-23 monoclonal biologic antibody for psoriasis in Phase 3 development, and acted for Allergan in a licensing and collaboration transaction with Heptares Therapeutics. Other names to note are Silicon Valley-based corporate and IP partner Emily Leonard, who focuses on advising pharmaceutical and biotech clients on licensing and technology transfer arrangements, and San Francisco-based Amy Toro, who specializes in technology transactions.

DLA Piper LLP (US) advises major technology clients on the patent licensing and related IP aspects of cross-border M&A transactions. It also assists clients with patent licensing arrangements in resolving litigation, including advising on settlement agreements related to litigation with non-practicing entities. Silicon Valley-based Jeff Aronson is ‘always up to date on the latest case law and state of the law’. In a typically prolific year, the highly recommended San Diego-based Mark Lehberg assisted Qualcomm with its $3bn joint venture with TDK Corporation, involving multiple cross-border patent licensing agreements and other IP and technology licenses. Senior counsel Knox Bell in San Diego acted for Sanford Burnham Prebys Medical Discovery Institute in its collaboration with GlaxoSmithKline involving related licensing for the commercial exploitation of the outcomes from research for specific fields of medical application. Boston’s Mike McGurk, Philadelphia-based Darius Gambino and life sciences expert Lisa Haile in San Diego are also highly recommended.

Fenwick & West LLP’s client roster features many technology and life sciences sector innovators, including GoPro, Facebook, Synopsys and LG Display. It also has experience working with universities and research institutes, advising on patent and other IP licensing issues. Mountain View-based Rajiv Patel is acting for Twitter in its patent portfolio development and has assisted with cross-license agreements following its acquisition of 900 patents from IBM. Patent attorney David Hayes and technology transactions group head Jake Handy in San Francisco are also recommended.

Knobbe Martens Olson & Bear LLP has particular expertise in licensing technology and medical devices as well as conducting due diligence and handling clearance issues for licensed properties. In an illustration of its strength, William Zimmerman and Michael Fuller, based in Washington DC and San Diego respectively, advised a biopharmaceutical company on a licensing collaboration deal with a leading pharmaceutical company. Irvine-based Salima Merani counts Pulse Therapeutics as a client, and is handling its international IP strategy as well as issues regarding IP licensing. Another name to note in Irvine is Gerard von Hoffmann, who has a focus on medical devices.

Leveraging in-depth technical knowledge of the life sciences and pharmaceutical sectors, WilmerHale’s team assists licensors and licensees on licensing, collaboration an=d other technology and IP-related transactions. It also has experience in ‘shrink wrap’ and ‘click-through’ agreements in the software space. Showcasing its strength, Boston-based Michael Bevilacqua is acting for Intel in patent license, acquisition and sale transactions, and Washington DC-based David Cavanaugh is defending a medical device company in an alleged breach of a patent license agreement, including filing three inter partes reviews in response.

Following the combination of Andrews Kurth LLP with Kenyon & Kenyon LLP in 2016, Andrews Kurth Kenyon LLP’s team now includes a number of well-regarded patent practitioners. It counts Teva Pharmaceuticals, Toyota Company and Sony among its clients, assisting with a range of patent portfolio and licensing matters. New York’s Gary Abelev is ‘a skilled negotiator in licensing transactions and an excellent patent litigator’; he is assisting a number of universities, including New York University, with patent portfolio counseling, licensing, patent procurement and infringement investigations. Washington DC-based healthcare specialist Ping Wang is advising a pharmaceutical company on its IP portfolio and corporate matters, including negotiating licensing agreements and regulatory issues. Edward Colbert and Jeff Dodd, based in New York and Houston respectively, jointly lead the team.

Cleary Gottlieb Steen & Hamilton LLP’s IP team draws on the firm’s strong capability in large corporate and commercial transactions, and advises on complex, cross-border transactions involving the acquisition and monetization of IP assets. In 2016, New York-based Daniel Ilan assisted Verizon with license arrangements and IP due diligence issues following its $2.4bn acquisition of Fleetmatics Group, and is advising OpenText on licensing issues regarding its acquisitions of certain customer experience software and services assets, as well as customer communications management assets, from HP. The group also handles contentious licensing matters and a recent highlight saw New York-based Lawrence Friedman representing UTAC (Taiwan) Corporation in a high-stakes patent licensing dispute brought by Tessera in a federal district court.

Cooley LLP has a strong corporate partnering and licensing practice, particularly regarding life sciences, which makes it a popular choice for a range of established and start-up pharmaceutical and medical devices companies. Recent highlights include assisting Senomyx with its international patent portfolio, including advising on partnerships and licensing revenues, and assisting CytomX Therapeutics with its partnership agreements with Pfizer and Bristol-Meyers Squibb. In another highlight, Reston-based Scott Talbot assisted BrightSpec with the development of its patent portfolios licensed from Harvard and the University of Virginia. San Francisco-based Nan Wu, Boston-based Mika Reiner Mayer, who joined from Morrison & Foerster LLP in 2016, and New York-based patent counseling and prosecution practice head Ivor Elrifi are the key names to note.

Kirkland & Ellis LLP is noted for advising on patent licensing issues related to corporate, private equity, financing and restructuring transactions. As an example, it advised a private equity firm with research and advice relating to a patent license agreement in the software space. New York-based David MacDonald advised Sun Pharmaceutical Industries on its licensing agreement with Almirall for the development and commercialization of tildrakizumab, and handled Purdue Pharma’s worldwide collaboration with Eisai to develop and commercialize Lemborexant. In another highlight, Chicago-based Neil Hirshman assisted a leading semiconductor company with its potential patent cross-licensing agreement with a global technology company.

A key client of Orrick, Herrington & Sutcliffe LLP is technology giant Microsoft, which the firm recently advised on the IP transactional and due diligence aspects of the client’s acquisition of Solair. The firm also successfully represented Microsoft in a breach of patent license dispute with Yulong Computer Telecommunication Scientific involving the client’s Android and Exchange ActiveSync technology-licensing programs. Menlo Park-based Daniel Yost heads the technology transactions and licensing practice, and advised SideCar and Cruise Automation on the IP transactional and due diligence aspects of their respective acquisitions by General Motors. The group also operates from the firm’s Washington DC office, where patent litigators Vann Pearce and Steven Routh are the main contacts.

Ropes & Gray LLP’s ‘outstanding’ team is ‘responsive and knowledgeable’ and its ‘client services are impeccable’. The group has particular strength in the life sciences space and is highly active in large IP-driven M&A and restructuring transactions. In recent work, the team advised Pfizer on a global alliance agreement with Merck to develop and commercialize MSB0010718C, Merck’s anti-PD-L1 antibody, and advance Pfizer’s anti-PD-L1 antibody into Phase 1 clinical trials. The ‘experienced and intelligentDavid McIntosh advised Sarepta Therapeutics on its exclusive license and collaboration agreement with Summit Therapeutics, granting Sarepta rights to its utrophin modulator pipeline, including its clinical candidate ezutromid. Edward Black heads the mainly Boston-based group, which also includes the ‘practical and smartMark Bellomy and the newly promoted partner Megan Baca.

Fish & Richardson P.C. handles a broad type of IP licensing and technology agreements, for companies ranging from start-ups, to university technology transfer offices to multinational corporations. Recent highlights include negotiating a collaboration agreement between a global provider of security services and a global technology company. Dallas-based Kevin Gray is the main contact.

Jones Day’s team is focused on IP matters related to major M&A transactions. San Diego-based Thomas Briggs recently assisted Procter & Gamble with the sale of its Duracell personal power business to Berkshire Hathaway, and advised BioMarin Pharmaceutical on its acquisition of the global rights to Kuvan and pegvaliase from Merck Serono. The team further bolstered its offering in the life sciences space when, in July 2016, it hired John Wehrli in San Diego from Latham & Watkins LLP. In another highlight, Boston-based Warren Nachlis advised City of Hope on its worldwide license of AAV-based gene editing technology to Homology Medicines. The group also has a presence in New York, Washington DC and Silicon Valley.

McGuireWoods LLP’s strength lies in its particular expertise advising start-ups on international IP strategy and licensing matters. New York-based Safet Metjahic is assisting Hampton Roads Sanitation District with licensing agreements following its joint venture with DC Water, as well as handling patent applications for the client spanning 14 countries. Dallas-based Darren Collins, who focuses on advising private equity firms, start-ups and multinational technology companies, is also a main contact.

Pillsbury Winthrop Shaw Pittman LLP manages a large number of domestic and international patents and handles licensing arrangements for clients in the electrical, mechanical engineering, chemistry, computer sciences, chemical engineering and biotech spaces. McLean-based Jack Barufka counts UBS as his client and handles its worldwide IP issues, including licensing, due diligence, monetization and litigation. Patrick Doody, also in McLean, is experienced in assisting medical devices and life sciences companies with licensing and transactional matters, patent prosecution and patent-related opinions.

Wilson Sonsini Goodrich & Rosati advises start-ups and Fortune 100 companies on licensing agreements, including patent portfolio licenses, cross-licensing and litigation settlements, as well as the licensing aspects of large technology collaborations. New York-based Daniel Glazer has ‘superb interpersonal skills’.


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Finnegan, Henderson, Farabow, Garrett & Dunner LLP’s ‘top-tier’ group provides ‘an excellent level of service and business-oriented advice, and has strong knowledge of IP topics’. Reston-based Charles Lipsey successfully represented Forest Laboratories in Hatch-Waxman litigation against generics manufacturer Mylan concerning the Savella fibromyalgia treatment; all asserted patents were found to be valid and infringed. In Palo Alto, Erik Puknys and Lily Lim represented ABBYY and Lexmark International in a case brought by Nuance Communications, obtaining a unanimous defense verdict in US district court and a successful affirmation at the Federal Circuit. Washington DC's Michael Jakes handles technology and medical devices-related cases; he recently acted for PPC Broadband in two related appeals to a Patent Trial and Appeal Board (PTAB) decision which adversely affected the client’s coaxial cable connector patents, and represented Philips Electronics in three cases against ZOLL Medical concerning various medical device technologies. Also in Washington DC are firm chair James Monroe, managing partner Mark Sweet and litigation head Gerald Ivey.

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Fish & Richardson P.C.’s ‘responsive, thorough and personable’ team has ‘superior bench strength and top technical acumen’, and the attorneys ‘continuously impress with their commitment to understanding the client’s products’. A Washington DC-based team including Ahmed Davis, Linda Liu Kordziel and ‘first-rate trial counsel’ Ruffin Cordell recently won a $29m jury verdict for Paice and The Abell Foundation in a suit against Hyundai and Kia Motors, where five hybrid vehicle technology patents were found to be valid and infringed. On the pharma side, life sciences expert Jonathan Singer is currently handling two Hatch-Waxman cases on behalf of Allergan; one regarding its glaucoma drug Combigan, in which an injunction was successfully obtained at the Federal Circuit, and one concerning the dry-eye drug Restasis. Kurt Glitzenstein in Boston heads the firm’s litigation practice, Michael McKeon is a go-to figure for technology-related cases, and the ‘highly competent’ Matt Samuel is a prominent member of the firm’s Japan practice.

Kirkland & Ellis LLP’s group of ‘terrific communicators’ provides ‘a uniformly first-class service’, offering clients ‘effective oral advocacy and solid courtroom work’ along with ‘excellent advice on strategy, research and investigations’. Leora Ben-Ami is a key contact in the New York office, as is ‘great problem-solverGregory Arovas, who is ‘hard working and always prepared’. Highlights included securing a $94m verdict in favor of AbbVie in an infringement and breach of contract case brought by MedImmune and representing Cisco Systems in a suit brought against Arista Networks alleging infringement of 12 technology networking patents. The first matter was led by Chicago-based James Hurst, and the latter by San Francisco’s Adam Alper and Michael De Vries in Los Angeles. The firm also acted for CR Bard before the US Supreme Court, where a $1bn judgment awarded to the client in a long-running dispute with WL Gore & Associates was upheld. Energy Labs, Medtronic, IBM and Capital One are also clients. In early 2017, New York's Steven Cherny departed for Quinn Emanuel Urquhart & Sullivan, LLP.

Led by San Francisco’s Charles Verhoeven, Quinn Emanuel Urquhart & Sullivan, LLP’s ‘outstanding’ practice is ‘recommended for defensive and affirmative patent litigation of all levels of importance’. The firm recently obtained a unanimous victory for Samsung at the Supreme Court in the so-called ‘smartphone wars’ against Apple, where the court reversed a Federal Circuit decision upholding a $399m judgment against Samsung. On the life sciences side, highlights included representing Forest Laboratories in Abbreviated New Drug Application (ANDA) litigation against 15 filers seeking FDA approval to market generic versions of Namenda XR, Forest’s anti-Alzheimer’s drug; and acting for Merck in Hatch-Waxman litigation against Xellia Pharmaceuticals, successfully prohibiting the defendant from selling its generic product until the expiration of Merck’s patents. Chicago-based electrical engineering specialist David Nelson is recommended, as are practice co-chair Edward DeFranco, who handles a broad range of electronics, biotech and medical device cases, and Dominic Cerrito, who focuses on Hatch-Waxman litigation, in New York. David Perlson is another key figure in San Francisco. In early 2017, Steven Cherny joined the firm's New York office from Kirkland & Ellis LLP.

WilmerHale’s ‘top-notch’ practice provides ‘valuable advice on complex issues and knows the client’s business and understands their priorities’. William Lee is a well-regarded figure in the market and recently secured a significant victory for Cisco Systems, where the Federal Circuit reversed a $74m judgment against the client in an infringement suit brought by Commil. ‘Excellent adviser’ and ‘experienced trial attorney’ Michael Summersgill defended Intel Corporation in a case filed by Memory Integrity, which alleged infringement of five memory systems and cache technology; he successfully secured a summary judgment of non-infringement. Donald Steinberg chairs the IP practice and other key figures include Lisa Pirozzolo, who has significant experience handling Hatch-Waxman cases, Mark Selwyn, who has handled numerous high-profile cases for California-based companies, and technology expert Joseph Haag. Haag and Selwyn are based in Palo Alto; all other named attorneys are based in Boston.

The ‘exceptional’ group at Fitzpatrick, Cella, Harper & Scinto is noted for its capabilities in the life sciences area and frequently handles ANDA and Hatch-Waxman litigation on behalf of major industry leaders. Dominick Conde heads the pharmaceuticals practice and recently represented Daiichi Sankyo in ANDA litigation brought by three generic drug makers, a case involving the application of a Supreme Court precedent. Other key figures include Justin Oliver (Washington DC) and John Murnane, who successfully represented Amgen in inter partes review (IPR) proceedings before the PTAB; Michael Sandonato, who acted for Sirona Dental in a series of actions asserting its digital impression and X-ray technology patents; and William Solander, who is well regarded for his capabilities in high-stakes ANDA cases. Administrative partner Christopher Borello is a key contact. Named attorneys are based in New York, except where indicated otherwise.

At Irell & Manella LLP, practice head Morgan Chu is a heavyweight in the patent litigation space and has handled numerous high-profile cases across the technology and life sciences areas. Other key figures include David Gindler and Andrei Iancu, who recently secured a complete victory for Ariosa Diagnostics at the US Supreme Court, which denied Sequenom’s petition for a writ of certiorari in a case concerning a non-invasive prenatal test. Chu and Iancu also represented B/E Aerospace in a multi-venue dispute with MAG Aerospace over aircraft toilet patents, successfully securing three summary judgments of non-infringement. On the life sciences side, Gary Frischling acted for Gilead Sciences in a suit brought by the AIDS Healthcare Foundation over various HIV medicines, obtaining a dismissal of an action claiming antitrust violations and patent invalidity. Other key clients include Immersion, Genentech and T-Mobile. All named attorneys are based in Los Angeles.

Jones Day provides ‘a great service in all respects’ and is ‘highly recommended for complex patent matters’. San Diego-based IP chair Anthony Insogna is well regarded as a pharmaceutical and biotech patent lawyer; Washington DC-based Gregory Castanias has extensive appellate experience, including in Federal Circuit and Supreme Court cases; and David Maiorana in Cleveland is ‘flexible, friendly and easy to work with’ and is ‘highly skilled in matters before the USPTO and in ITC issues’. Castanias recently represented Avid Technology in a court of appeals case against Harmonic, successfully securing the reversal of a US district court non-infringement verdict. The firm also won an appeal for Celgene in a suit related to brand bone cancer drugs and represented GreatCall in a bet-the-company case against two of its founders and their incubator company, Dyna. The group was strengthened by the arrival of Christopher Harnett in New York from Ropes & Gray LLP and Thomas Vitt in Minneapolis from Dorsey & Whitney LLP.

The ‘outstanding’ practice at McKool Smith is known for its strength in plaintiff-side cases and has solid experience acting for clients across numerous venues, including the ITC, PTAB, district courts and the Federal Circuit. Dallas-based Mike McKool heads the practice, and along with Douglas Cawley and Theodore Stevenson, recently acted as lead counsel to Ericsson in infringement actions against Apple concerning standard essential technology. In another highlight, Samuel Baxter represented IT systems management provider BMC Software in a suit brought by ServiceNow, where challenges to several of the client’s patents were argued before the PTAB. Courtland Reichman is managing partner of the firm’s Los Angeles and Silicon Valley offices; Robert Cote is a key figure in New York; and Houston-based William LaFuze is a dean of the Texas IP bar.

Morrison & Foerster LLP provides ‘a great, highly efficient service’ and recently expanded its offering with the additions of Mark Whitaker and Greg Chopskie in Washington DC, and life sciences expert David Manspeizer in New York. Washington DC-based Deanne Maynard co-chairs the appellate and Supreme Court practice and recently secured a major victory for Sandoz in a high-profile dispute concerning the interpretation of the Biologics Price Competition and Innovation Act (BPCIA), which was enacted as part of the Affordable Care Act. Maynard also obtained a second appellate win for NuVasive in its long-running dispute with Warsaw Orthopedic, thus vacating a $101m verdict brought against the client. In San Francisco, Michael Jacobs and Richard Hung successfully prevented Chinese company ZWCad Software from marketing a cloned version of Autodesk’s ‘AutoCAD’ computer-aided design software. Harold McElhinny retired from the practice in 2016.

Sidley Austin LLP’s ‘excellent’ team is ‘strong from top to bottom’ and ‘fully values its clients relationships’. According to clients, Chicago-based Thomas Rein is ‘the absolute best for bet-the-company patent litigation’ and ‘knows how to put a case together’. Other key individuals include David Pritikin in Chicago, who has notable experience applying FRAND requirements to standard essential patents and has argued numerous matters before the Federal Circuit; San Francisco’s Mike Bettinger, who focuses on International Trade Commission (ITC) matters; and Washington DC’s Jeffrey Kushan, who handles Hatch-Waxman litigation, patent appeals and administrative proceedings. Highlights included representing Bayer Healthcare in an appeal brought by Glenmark Pharmaceuticals, which sought to market generic versions of Bayer’s branded rosacea treatment, and acting for Microsoft in an infringement case brought by SurfCast alleging the client’s Windows 8 and Windows Phone products infringed its patents. Amazon, Gilead Sciences and Amgen are also clients.

Winston & Strawn LLP provides ‘strong, quality advice, great knowledge and a solid work product’, and is ‘well placed to handle specialized biotech matters’. A team led by Washington DC-based Thomas Jarvis recently acted for Ericsson in two parallel patent infringement cases at the ITC, which concerned an expired patent license agreement with Apple. Leading figure George Lombardi in Chicago handles matters related to telephone and computer technology, medical devices and pharmaceuticals, and recently secured a victory for Warner Chilcott allowing it to obtain FDA approval to market a generic version of Merck’s NuvaRing product. Michael Brody and David Enzminger co-chair the IP practice from Chicago and Los Angeles respectively.

At the newly merged Arnold & Porter Kaye Scholer LLP, key figures include Washington DC-based Matthew Wolf, who has handled various patent matters for a range of technology clients; San Francisco-based Michael Berta, who specializes in patent and trade secret litigation; and Washington DC’s John Nilsson, who has notable medical device and biotech expertise. Highlights included representing plaintiff Boston Scientific in a high-stakes case against Edwards Lifesciences concerning transcatheter aortic valve replacement, and acting for Samsung in numerous cases against several plaintiffs - including ProMOS, FastVDO and Advances Touchscreen - which alleged infringement of various semiconductor and haptic feedback technologies. Other clients include General Electric, Google and Barnes & Noble.

Covington & Burling LLP’s ‘responsive’ team has ‘a deep bench of technical and non-technical IP attorneys’ and the firm is ‘very capable in the policy, trade and pharma spaces’. In Washington DC, George Pappas handles major bet-the-company litigation and Christopher Sipes specializes in all aspects of pharmaceutical litigation under the Hatch-Waxman act; and in San Francisco, Michael Plimack is recommended for technology-related cases and ITC investigations. The group has handled a number of IPR proceedings in the technology and life sciences areas; its cross-sector client list includes AstraZeneca, Huawei and Amarin Corporation.

DLA Piper LLP (US) provides ‘high-quality legal services in an effective and efficient way’ and ‘fully understands the management and decision-making processes in large corporations’. Washington DC-based Joseph Lavelle is ‘bright, responsive and well versed in patent litigation’ and ‘evaluates the merits of a case at the very beginning, developing a strategy based on its strengths and weaknesses’. Key figures in the Chicago office include technology expert Matthew Satchwell, who is ‘highly reliable for clients and formidable to opponents’, and Paul Steadman, who has a strong engineering background and is ‘an outstanding trial lawyer’. San Diego-based John Allcock currently represents Sophos, a network security provider, in an eight-patent infringement action brought by Finjan.

At Gibson, Dunn & Crutcher LLP, practice co-chair Wayne Barsky in Century City acts for clients in the biotech, computer and software sectors, and has strong trial and appellate experience across various forums. Work highlights for the team included winning a complete defense victory for T-Mobile in an infringement case brought by Prism Technologies; defending Fitbit in an ongoing dispute with Jawbone, where the latter’s patents were successfully invalidated; and representing Depomed in an infringement litigation against three generic companies regarding the opioid drug Nucynta, where all three patents were found to be valid and enforceable. Palo Alto’s Mark Lyon handles patent, trade secret and other IP-related disputes, and William Rooklidge and Jeffrey Thomas are the key contacts in Orange County. Brian Rosenthal joined the New York office from Mayer Brown.

Boston-based Sarah Columbia heads the practice at McDermott Will & Emery LLP, which provides patent litigation and prosecution advice as part of an integrated platform, and has a strong track record in handling matters in the healthcare, pharmaceutical, chemical and technology sectors. In a recent highlight, the team secured a trial victory for Amgen in a patent suit brought against Sanofi regarding a new generation of cholesterol lowering drugs, where Amgen’s three patents were found to be valid and infringed. The firm also obtained a string of trial wins for BlackBerry, including a victory over Mobile Communications Technologies in the Northern District of Texas. William Gaede and David Henry Dolkas are the key figures in Silicon Valley; Washington DC-based Joel Freed is also recommended.

Orrick, Herrington & Sutcliffe LLP’s ‘outstanding’ practice is ‘well able to accommodate complex technical matters’ and ‘has a profound background in US patent law’. The team saw a significant number of arrivals in 2016; among them, former DLA Piper LLP (US) patent litigation co-chair Claudia Frost and, from the now defunct Kenyon & Kenyon, technology expert Elizabeth Gardner, who ‘has a sound understanding of the game and is able to formulate the best line of argument in a clear and concise manner’. Frost is based in Houston, Gardner in New York. The firm recently achieved a summary judgment victory for AT&T and LG Electronics in a case against non-practicing entity Acacia, and also represented Synopsys in a six-patent appeal to the Federal Circuit challenging a $600m verdict in favor of Mentor. Silicon Valley-based Denise Mingrone chairs the IP practice, which also includes Sten Jensen in Washington DC and Mark Wine in Orange County.

The team at Paul Hastings LLP has ‘a strong technical background and sound legal acumen, which allows for solid results’, and provides ‘advice which is well thought out, researched and clearly explained’. New York-based Joseph O’Malley and Palo Alto-based Yar Chaikovsky are ‘highly knowledgeable and skilled IP litigators’, and Naveen Modi in Washington DC provides ‘strong analytical analysis which puts him ahead in arguments’. The firm handles matters across a broad spectrum of sectors and is noted for its strength in post-grant proceedings; highlights included representing Helsinn Group in two post-grant review petitions, where Dr Reddy’s Laboratories sought to invalidate patents covering the client’s Aloxi drug product. The group also acted for Trend Micro in a suit brought by Intellectual Ventures, successfully securing a verdict of invalidity and non-infringement.

Ropes & Gray LLP provides ‘an excellent service’ and the group has ‘sound business acumen and deep industry knowledge’. The ‘responsive and personableAndrew Thomases in Silicon Valley is currently representing three computer gaming companies - Electronic Arts, Activision Blizzard and Take-Two Interactive - in a patent suit brought by non-practicing entity Acceleration Bay, which claims infringement of its network-related patents. Thomases represented SmartThings in an infringement action filed by Clean Energy Management Solutions, successfully securing a dismissal. Richard McCaulley heads the practice from Chicago; Silicon Valley-based James Batchelder focuses on major technology-related cases; and Steven Baughman heads the post-grant trial group from Washington DC.

Weil, Gotshal & Manges LLP’s ‘superb’ team has ‘exceptional legal skills across the board’ and provides ‘advice which reflects strong business acumen and industry knowledge’. Washington DC-based Brian Ferguson co-chairs the practice with Jared Bobrow in Silicon Valley, who ‘deftly manages all aspects of patent litigation matters and is particularly impressive in oral advocacy’. Also in Silicon Valley, Edward Reines focuses on technology litigation matters; recent highlights included securing a preliminary injunction against Qiagen on behalf of Illumina in a suit regarding its GeneReader NGS system, and obtaining an appellate victory for Adobe, where an invalidity verdict on two digital rights management patents was successfully upheld. Other individuals include Anne Cappella, who is part of the Silicon Valley team focusing on complex technology matters; Washington DC-based Anish Desai, whose areas of expertise include consumer electronics, semiconductor technology and renewable energy; and Doug McClellan, who is the key contact in Houston.

Baker Botts L.L.P. provides ‘exceptional client service; the team responds to all requests in a timely manner, offers creative pricing proposals and is always available to assist on urgent matters’. Dallas-based practice head Bart Showalter has notable electronics, software and telecoms expertise, and recently defended Cisco Systems in an infringement suit filed by a bankruptcy trustee representing the defunct At Home Network Company. New York’s Robert Scheinfeld is also a key figure, and other noteworthy individuals include Dallas-based Douglas Kubehl, who focuses on patent litigation and licensing, and Austin’s Kevin Meek, who ‘sees all the ramifications in a given situation and provides counseling which is in the best interest of the client’. The firm represented Genband in multiple patent cases against competitor Metaswich Networks, successfully securing $8.2m in damages and three invalidity rulings on the opponent’s asserted patents.

Cravath, Swaine & Moore LLP acts for a range of clients at both trial and appellate level, and the firm’s cross-sector client list includes Avon Products, Merck and Amgen. Keith Hummel and David Greenwald are currently acting for Amgen in a suit brought by AbbVie, which alleges that the client’s biosimilar of the Humira drug infringes ten of its patents. The firm continues to represent Alarm.com in an action filed by Vivint, which alleges infringement of patents covering remote monitoring, equipment control and location-based alerting systems technology, and is also handling multiple infringement appeals for Mylan, following an unfavorable trial court decision handled by alternate counsel.

Goodwin’s ‘responsive’ team ‘always employs a common-sense approach to solving problems’ and has a strong track record in handling major competitor vs competitor litigation. In a recent highlight, David Hashmall represented Cephalon in several Hatch-Waxman cases arising from the defendants’ ANDA filings to the FDA, which sought approval to market a generic version of Cephalon’s Treanda product. A team led by Marcia Sundeen also secured a victory for Hewlett-Packard at the Federal Circuit in a case concerning a flash memory patent, where the defendant’s inter partes reviews were found to be unconstitutional as they deprived the patent owners of the right to a jury trial. William Jay heads the appellate practice and Ira Levy is a key contact in New York.

Robert Van Nest heads the San Francisco-based team at Keker, Van Nest & Peters LLP, which has a strong track record in handling sophisticated, high-stakes patent litigation and has a solid client base of major technology companies. Highlights included representing Google in a $9bn patent and copyright battle concerning use of the Java programming language in Google’s Android platform, in which the firm successfully secured a full dismissal of the suit brought by Oracle. The group also represented Qualcomm in an ITC investigation initiated by Nvidia, which sought to prevent the importation of Samsung Galaxy phones containing Qualcomm’s Adreno technology. Other notable clients include Netflix, Arista Networks and SanDisk.

Latham & Watkins LLP’s team is praised by clients as ‘very responsive and experienced’, providing ‘extremely good counsel in an efficient and timely manner’. Matthew Moore in Washington DC, Kenneth Schuler in Chicago and San Diego-based Jennifer Barry co-head the IP litigation practice, for which highlights included representing AbbVie in its suit against Amgen regarding the blockbuster Humira product. The group also acted for Nvidia in an eight-patent infringement suit brought by Samsung related to graphics processing units in cell phones and tablets, and represented Seoul Semiconductor in its suit against Enplas Display Device. In the Chicago office, David Callahan is ‘incredibly skilled and intelligent’ and has ‘decades of experience and great judgment’, and Ann Marie Wahlscan easily take care of thorny issues’.

Norton Rose Fulbright US LLP has ‘a straightforward approach, a good sense of how to handle each matter and deep patent-related knowledge’. Houston-based Richard Zembek represented Qualcomm as respondent in an ITC investigation filed by Nvidia, which alleged that Samsung phones contained infringing technology covered by seven asserted patents. In another highlight, Dallas’ Brett Govett and Jonathan Skidmore acted for Reflectix, securing a full defense win against Promethean Insulation Technology in a case regarding four insulation material patents. Houston-based practice head Charles Walker has recently secured victories for clients in the drilling technology and luxury fashion industries, and, in Dallas, Dan Davison has notable experience in the entertainment and professional sports sectors.

Paul, Weiss, Rifkind, Wharton & Garrison LLP’s range of sector expertise includes pharmaceuticals, biotech, electronics and telecoms, among others, and the group frequently handles high-stakes patent litigation for major companies. Practice chair Nicholas Groombridge represents Amgen as plaintiff in numerous biosimilar matters against Sandoz, Apotex and Hospira, and also acts for Biogen in suits filed against several competitors regarding a patent covering Avonex, its blockbuster multiple sclerosis treatment. The New York-based team also includes Eric Alan Stone, who focuses on pharmaceutical and medical device-related cases, and Catherine Nyarady, who represented Edwards Lifesciences in a high-stakes trial against Medtronic regarding transcatheter heart valves. Kenneth Gallo is the key contact in Washington DC.

The ‘responsive’ team at Andrews Kurth Kenyon LLP provides ‘clear advice and regular feedback’. Key individuals include co-chair of the IP practice Edward Colbert, who splits his time between New York and Washington DC; technology-focused Jeff Dodd, who is a key contact in Houston; and New York’s Gary Abelev, who is ‘clever, efficient and business-oriented’, and is currently representing Saverglass in a design patent infringement action. In another highlight, Houston’s Gregory Porter acted for Fast Felt in an infringement suit before the PTAB, winning a complete patent owner victory against Owens Corning following an inter partes review. Staples, Phigenix and AT&T are also clients.

At Cooley LLP, notable work included defending start-up manufacturer Amplidata in a patent case filed by Cleversafe; obtaining a PTAB and district court victory for Boku in all claims asserted by Xilidev; and representing Facebook in two infringement cases filed by Bascom Research regarding various computer-based technology. Broomfield, Colorado lawyer Jim Brogan represents a mix of technology and life sciences companies in high-stakes patent trials; Michael Rhodes has strong privacy and data protection expertise; and Orion Armon focuses on IPRs and covered business method review proceedings. Other clients of the firm include Certusview, Gevo and King.com.

Dentons’ ‘consistently excellent’ team ‘creates a comprehensive strategy based on patent knowledge, the industry landscape and opposing counsel’. ‘Top strategist’ Song Jung (Washington DC) co-leads the group with Robert Hanson (Dallas), and ‘always thinks of the client’s business needs’. San Francisco and Silicon Valley based Robert Kramer and Washington DC’s Lora Brzezynski are ‘fabulous trial lawyers’ and recently won a complete victory for defendant Nistica in a six-patent case against plaintiff Finisar Corp, which alleged infringement of patents covering cellular telecom network technology. Kramer also represented Silver Spring Networks in a case brought by Eon Corp in the Eastern District of Texas regarding three complex network patents, successfully securing a verdict of non-infringement and a dismissal of $57m worth of damages. Other notable clients include LG Electronics, Flextronics and GoWireless.

At Knobbe Martens Olson & Bear LLP, Irvine-based Joseph Re represented Masimo in its long-running patent dispute with Philips Electronics, successfully settling all outstanding litigation regarding Masimo’s pulse oximetry technology, and also acted for the same client in a suit brought against Shenzhen Mindray Bio-Medical Electronics. Washington DC’s William Zimmerman is the other key figure and has significant experience handling litigation in the pharmaceuticals space; Zimmerman recently acted for Illumina Cambridge in an appeal before the Federal Circuit, which upheld a federal district court’s decision confirming that the client’s DNA sequencing method patents are valid and enforceable. Steve Jensen and Brenton Babcock are key figures in Orange County and focus on hi-tech IP disputes.

Mayer Brown’s ‘excellent’ team is ‘always very interested in the client’s company and products, and is very practical when it comes to services’. Notable work included representing Marvell Semiconductor in an indemnification suit brought by Emulex, which sought damages of $26m for defense and settlement costs incurred in underlying patent litigation; and acting for Sanofi and Regeneron in an infringement suit brought by Genentech regarding its monoclonal antibody product. The group is led by Alan Grimaldi in Washington DC, Joseph Mahoney in Chicago and John Mancini in New York. Other key figures in New York include Theresa Gillis, who is ‘a strong litigator with huge passion and great skills’, and life sciences expert Lisa Ferri; Washington DC’s Gary Hnath is noted for his Section 337 expertise.

Headed by ‘brilliant attorney’ Ryan Yagura in Los Angeles, O’Melveny & Myers LLP’s ‘deep bench of talented attorneys’ offers ‘responsive, forward-thinking and comprehensive advice’ at both trial and appellate level, and also has significant experience handling proceedings before the USPTO, including reexaminations and IPRs. San Francisco-based Darin Snyder recently represented Google in a suit brought by ART+COM Innovationpool regarding its Google Earth product, successfully securing a summary judgment of non infringement. Mark Miller splits his time between the New York and San Francisco offices, and recently obtained an appellate victory on behalf of Mentor Graphics in an attempt by Synopsis to invalidate patents owned by the client. The firm also handled various matters on behalf of AstraZeneca, Top Victory Electronics and Samsung.

Baker & Hostetler LLP’s ‘group of skilled attorneys’ has a strong track record in courts across the US and has notable expertise in ANDA litigation. Daniel Goettle co-heads the practice from Philadelphia, focusing on computer science and electrical engineering-related cases, and USPTO practitioner Kevin Kirsch is the key figure in Cincinnati. In one highlight, Goettle represented Microsoft in an eight-patent infringement case filed by Global Touch Solutions alleging infringement on various tablet devices and Nokia smartphones. The firm also defended Caterpillar against a suit brought by ESCO Corp, which alleged infringement of tools used in large mining equipment.

At Cadwalader, Wickersham & Taft LLP, highlights included successfully defending AT&T Mobility in an infringement case related to 4G wireless networks, in which it obtained a favorable summary judgment on the majority of claims, and defending AngioDynamics against charges of infringement of three patents, in which it prevailed in three inter partes proceedings against all asserted patents. Senior counsel Christopher Hughes heads the IP practice group, advising on patent, trade secret and trademark litigation. Dorothy Auth is another key practitioner along with John Moehringer, who focuses on electrical engineering and computer science-related cases brought to the ITC. All named attorneys are based in New York.

Kasowitz, Benson, Torres & Friedman LLP has a strong track record of handling plaintiff- and defendant-side litigation across a range of sectors, including pharmaceuticals, biotech, software and chemical processes. Jonathan Waldrop, Jeffrey Toney and Darcy Jones secured a complete dismissal for Google in a challenge brought by Data Engine Technologies, which alleged infringement of patents covering the Quattro Pro for Windows spreadsheet program. Waldrop also represented Google in a suit filed by Eolas Technologies regarding interactive web browser technology, successfully securing a full dismissal of the plaintiff’s motions. Steven Carlson focuses on patent and trade secret disputes in the technology space. All named attorneys are based in Silicon Valley.

Jeffrey Ostrow is the lead practitioner at Simpson Thacher & Bartlett LLP, which recently represented saliva collection kit maker Spectrum in an infringement action filed by Genotek in which the federal district court denied the plaintiff’s motion for a preliminary injunction. Other highlights included acting for Merck in a suit seeking to invalidate Genentech’s ‘Cabilly’ patents covering recombinant DNA technology, which have a long-running history of litigation and patent office review; defending Cisco Systems in an infringement case initiated by Commil at the Federal Circuit; and pursuing two reexamination proceedings against Skullcandy’s patents on behalf of CSR. Harrison Frahn and Patrick King are also notable individuals, focusing on high-stakes technology litigation. All named attorneys are based in Palo Alto.

Washington DC-based John Caracappa and Harold Fox co-head the practice at Steptoe & Johnson LLP, which has been notably active in the pharmaceutical and automotive sectors. Recent work includes representing VTech Communications in two patent infringement suits regarding telecom and wireless communications technology, successfully obtaining a combination of dismissals and favorable settlements; and acting for Huawei Technologies in a case involving memory chips used in consumer electronics, a matter pending at court of appeals. Other clients include Continental Automotive Systems, MonoSol, Sanofi and Regeneron.

White & Case LLP’s ‘excellent’ team ‘takes the time to fully understand the client’s company, which makes it easy to proceed with negotiations’. Key figures include David Tennant in Washington DC, who ‘provides suitable business solutions’; Jeffrey Oelke in New York, who has significant experience representing companies in the pharmaceutical, chemical and biotech sectors; and - also in New York - Kevin McGann, who focuses on electrical device-related litigation. The firm acted for American Express in three inter partes reviews seeking to invalidate three of Maxim Integrated Products’ patents, and also represents Altergon and Institut Biochimique in ongoing Hatch-Waxman litigation concerning the Flector Patch, an anti-inflammatory drug. Washington DC’s Shamita Etienne-Cummings is the key contact for Section 337 cases.


Patent litigation: international trade commission

Index of tables

  1. Patent litigation: international trade commission
  2. Leading lawyers
  3. Next generation lawyers

Leading lawyers

  1. 1

Who Represents Who

Find out which law firms are representing which Patent litigation: international trade commission clients in United States using The Legal 500's new comprehensive database of law firm/client relationships. Instantly search over 925,000 relationships, including over 83,000 Fortune 500, 46,000 FTSE350 and 13,000 DAX 30 relationships globally. Access is free for in-house lawyers, and by subscription for law firms. For more information, contact david.burgess@legal500.com.

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ITC boutique Adduci, Mastriani & Schaumberg, LLP has exceptional credentials in Section 337 matters and is especially well versed in the hi-tech industries, including semiconductors, smartphones, GPS and biotech. Deanna Tanner Okun is representing complainant Cisco Systems in a patent infringement investigation relating to network devices and related software and components. In another case, Okun and Tom Schaumberg acted for respondent Qualcomm in a patent infringement investigation regarding RF integrated circuits. 3B Medical, Anshan Iron and Steel Group, and Virtus Pharmaceuticals are among its newly acquired clients. Managing partner James Adduci, who previously served as legal counsel to the ITC, is a well-regarded lawyer; Paul Bartkowski and Louis Mastrianiare also prominent practitioners.

Covington & Burling LLP’s depth of ITC expertise is ‘second to none’; it also stands out for its ability to handle patent infringement investigations in conjunction with federal district court proceedings. The firm’s China presence makes it a popular choice for multinational clients with cross-border IP issues involving China. In a typically prolific year, the team obtained a finding of no violation for respondent Samsung in a ‘100-day’ 337 proceeding filed by Creative regarding a patent relating to displaying playlists, and is representing respondent Baosteel before the ITC in high-profile antitrust-related claims. Sturgis Sobin, Maureen Browne, Alexander Chinoy and Shara Aranoff are the key team members.

Finnegan, Henderson, Farabow, Garrett & Dunner LLP’s Washington DC-based ITC Section 337 team handled a large number of investigations, representing both complainants and respondents in cases involving parallel district court litigation. The team includes practitioners with ITC experience in the chemical, pharmaceutical and mechanical fields. In 2016, John Livingstone (Atlanta) and Mareesa Frederick represented Ajinomoto in US district court and before the ITC in proceedings against CJ CheilJedang to prevent the importation of certain L-tryptophan and L-tryptophan products. Among other high-profile matters, Elizabeth Niemeyer, Qingyu Yin and Smith Brittingham are representing respondents BMC Medical in an ITC investigation regarding four patents of ResMed’s breathing machines and accessories. Christine Lehman, who previously served as an investigative attorney at the ITC, is another main contact.

Trusted Advisor - with Finnegan

IP specialist Finnegan detail how their collaborative approach makes for a unique culture which is designed to allow them to work with clients in a way which is cognizant of the challenges facing all companies today.

Excellent’ specialist firm Foster, Murphy, Altman & Nickel PC regularly works alongside IP co-counsel in representing domestic and foreign companies pursuing and defending against Section 337 investigations, including in relation to patent, trademark and copyright infringement, and misappropriation of trade secrets. James Altman and Barbara Murphy acted for respondent Sony against allegations of patent infringement involving the interfaces for music and other content on smart electronic devices, and in a separate case, represented Sony against Fujifilm’s allegations of patent infringement regarding magnetic data storage tapes. Murphy and David Nickel are representing complainant Immersion in two cases of alleged patent infringement involving certain mobile and portable electronic devices incorporating pressure-enabled haptic feedback technology. The group also includes the highly recommended ITC expert David Foster and counsel Susan Koegel.

Kirkland & Ellis LLP’s team includes a number of ‘excellent IP trial lawyers’, who ‘speak the language of IP and business’; it has particular expertise in the technology, electronics, software and retail products space. Gregg LoCascio and Sean McEldowney successfully represented BASF and Argonne National Laboratory in a patent infringement case against Umicore before the ITC. Among other impressive highlights, the team represented Cisco Systems in proceedings involving multiple patent infringement claims against Arista Networks; the ITC issued a final determination in favor of Cisco Systems and issued a limited exclusion and cease and desist order prohibiting the entry of the infringing products. It is also acting for Energetiq Technology in an ITC investigation regarding patents related to laser-driven light sources. New York-based Gregory Arovas has notable experience in handling ITC and US district court cases involving software and medical-related technologies. It also has strength in San Francisco and Los Angeles. Sean Trainor joined O’Melveny & Myers LLP in January 2017.

McDermott Will & Emery LLP’s highly regarded ITC litigation specialists Jay Reiziss and Chicago-based Charles McMahon represented ZTE in a number of matters, including securing victories before the ITC relating to nine patents declared essential to telecoms standards as well as ongoing cases before the PTAB and various federal district courts. The team also defended Bestway in a patent infringement case filed by Intex Technologies regarding inflatable products. Orange County-based Daniel Foster counts Panasonic, Nintendo and Qualcomm among his clients. The group expanded with the hire of Paul Schoenhard from Ropes & Gray LLP in January 2017.

IP boutique Fish & Richardson P.C.’s team includes the highly recommended trial and litigation attorney Michael McKeon, who has experience in representing clients from the electrical technologies and consumer electronics industries in matters before US district courts, the ITC and the Federal Circuit. McKeon represented LG in ITC investigations against complainants TPL, Patriot Scientific and Phoenix Digital System and their assertion of a patent infringement related to variable speed system clocks in microprocessors. Ruffin Cordell and Andrew Kopsidas are also key contacts. Other clients include Samsung, Sony, Bose, InvenSense and ViXS Systems. Ann Cathcart Chaplin left to take the position of deputy general counsel at General Motors in December 2016.

Morrison & Foerster LLP’s ITC practitioner Brian Busey represented Honda and Fujitsu Ten and their affiliates as respondents in an ITC matter involving graphics and display system technologies for automobiles. In another illustration of its solid expertise, the team successfully settled an ITC patent investigation for respondent BlackBerry, which was initiated by Creative Technology and related to displaying music tracks on portable media players. Lynn Levine, Daniel Muino and the recently hired Mark Whitaker, who joined from Baker Botts L.L.P. in 2016, are also key names to note.

Litigation powerhouse Quinn Emanuel Urquhart & Sullivan, LLP often represents plaintiffs, including multinational technology companies, in high-profile IP disputes at the ITC. Paul Brinkman has notable success in handling patent infringement, false advertising and misappropriation of trade secrets cases. Brinkman and San Francisco-based David Eiseman and Charles Verhoeven are representing R2 Semiconductor in patent infringement litigation against Intel and its customers Dell and Hewlett-Packard relating to technology allegedly infringed by Intel’s microprocessors. The highly recommended Sean Pak in San Francisco is handling a patent litigation for Varian Medical Systems against Elekta. Samsung, SawStop, Cree and Epson also feature in its client list.

Sidley Austin LLP’s recent standout ITC cases include defending Nokia and Microsoft Mobile Oy in a number of infringement actions brought by InterDigital at the ITC and in federal court, and representing respondent LG Electronics in a patent infringement claim regarding the baseband processors used in its smartphone products, initiated by ParkerVision. Brian Nester and David Pritikin head the team from Washington DC and Chicago respectively; Washington DC-based Paul Zegger and Chicago-based Richard Cederoth are also key names.

Steptoe & Johnson LLP’s highly regarded Washington DC-based group represents both complainants and respondents and has handled patent and trade secret cases before the ITC and US Customs and Border Protection. Practice head John Caracappa is representing Umano Medical against claims asserted by Stryker Corporation alleging infringement of four patents involving hospital beds; Michael Allan is assisting respondent Shougang Group against allegations brought by US Steel regarding antitrust violations resulting in injury to US Steel’s domestic industry, and Steven Adkins and Matthew Bathon are representing Nano Tech against a patent infringement allegation brought by Aspen Aerogels regarding improper importation of aerogel insulation materials.

Winston & Strawn LLP’s team is led by Thomas Jarvis, who is ‘well regarded within the ITC patent litigation community’. Jarvis ‘works well with clients’ and ‘has assembled a team of lawyers and experts that has a great track record’. It is representing Comcast in ITC patent litigation brought by Rovi alleging infringement of 14 patents relating to electronic programming guides and their related set-top boxes, and is assisting Ericsson with patent litigation at the ITC against Apple regarding wireless and smartphone license agreements. Steven Anzalone is singled out for his expertise in the electrical engineering and computer science space.

Lisa Kattan joined the team at Baker Botts L.L.P. in 2016; Katten arrived from the ITC’s Office of Unfair Import Investigations and replaced Mark Whitaker as practice head following his move to Morrison & Foerster LLP. Recent highlights include representing Oxford Nanopore Technologies in a case initiated by Illumina relating to DNA sequencing products and, in a separate matter, defending the same client in a case filed by Pacific Biosciences of California. The group’s client roster also features Fujifilm and Dell.

DLA Piper LLP (US)’s ITC practice stands out for its expertise in public interest and domestic industry issues, and its impressive client list includes a number of consumer electronics and engineering sector clients, such as Samsung, Toshiba and Netlist. The team successfully defended Silicon Laboratories and Samsung in an ITC investigation following a patent infringement claim by Cresta Technology relating to the components used in the respondents’ television products. Silicon Valley-based Mark Fowler is a well-regarded first-chair trial lawyer and chairs the firm’s US patent litigation practice. Chicago-based Matthew Satchwell and Paul Steadman, San Diego’s Sean Cunningham and Joseph Lavelle in Washington DC are also key contacts.

Latham & Watkins LLP continues to represent Nvidia in a series of direct competitor offensive and defensive investigations at the ITC. In 2016, practice head Bert Reiser and Maximilian Grant defended the client in a case brought by Advanced Silicon Technologies relating to graphic processing and memory management in automotive applications. Reiser and Douglas Lumish are representing Arista Networks in an enforcement action filed by Cisco Systems regarding the network switching devices that allegedly infringe Cisco’s patent related to SysDB technologies. The group is predominantly based in Washington DC, with individuals also stationed in Silicon Valley, New York and San Francisco.

Mayer Brown’s strength lies in its particular experience in the life sciences and technology sectors. Recent highlights include successfully representing Zhejiang Medicine in a patent infringement case filed by Kaneka Corporation involving Coenzyme Q10. LG Electronics, Philips and CRU Acquisition Group also feature on its client list. First-chair litigator Jamie Beaber also has experience handling patent litigation before federal district courts and inter pares reviews before the USPTO. ‘Knowledgeable and responsiveGary Hnath is a former president of the ITC Trial Lawyers Association and chair of AIPLA’s ITC Committee.

Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. has notable expertise and experience in assisting claimants with ITC cases. The team represented Advanced Silicon Technologies in asserting four patents relating to 3D video graphics processing and memory control against a number of leading automobile and original equipment manufacturers in an investigation before the ITC, and filed concurrent cases against a number of respondents in district courts. In Boston, practice head Michael Renaud and James Wodarski are highly recommended.

The highly recommended group at WilmerHale represented respondent Harman in Section 337 proceedings initiated by Advanced Silicon Technologies relating to automobile navigation systems, and in a parallel patent infringement case in a federal district court. Trial lawyers William Lee in Boston and Natalie Hanlon Leh in Denver are the main contacts.


Patent: prosecution (including reexamination and post-grant proceedings)

Index of tables

  1. Patent: prosecution (including reexamination and post-grant proceedings)
  2. Leading lawyers
  3. Next generation lawyers

Next generation lawyers

  1. 1

Who Represents Who

Find out which law firms are representing which Patent: prosecution (including reexamination and post-grant proceedings) clients in United States using The Legal 500's new comprehensive database of law firm/client relationships. Instantly search over 925,000 relationships, including over 83,000 Fortune 500, 46,000 FTSE350 and 13,000 DAX 30 relationships globally. Access is free for in-house lawyers, and by subscription for law firms. For more information, contact david.burgess@legal500.com.

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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.

Trusted Advisor - with Finnegan

IP specialist Finnegan detail how their collaborative approach makes for a unique culture which is designed to allow them to work with clients in a way which is cognizant of the challenges facing all companies today.

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.


Trade secrets (litigation and non-contentious matters)

Index of tables

  1. Trade secrets (litigation and non-contentious matters)
  2. Leading lawyers
  3. Next generation lawyers

Leading lawyers

  1. 1

Next generation lawyers

  1. 1

Who Represents Who

Find out which law firms are representing which Trade secrets (litigation and non-contentious matters) clients in United States using The Legal 500's new comprehensive database of law firm/client relationships. Instantly search over 925,000 relationships, including over 83,000 Fortune 500, 46,000 FTSE350 and 13,000 DAX 30 relationships globally. Access is free for in-house lawyers, and by subscription for law firms. For more information, contact david.burgess@legal500.com.

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Trusted Advisor - with Finnegan

IP specialist Finnegan detail how their collaborative approach makes for a unique culture which is designed to allow them to work with clients in a way which is cognizant of the challenges facing all companies today.

San Francisco-based litigation boutique Keker, Van Nest & Peters LLP has a prominent trade secrets practice, counting Pinterest and TrueBlood Network as clients. Rachael Meny handles employee mobility and trade secret disputes for corporate and individual clients, particularly in the technology sector. Meny successfully defended Instacart against a putative class action, which challenged the distinction between employees and contractors at ‘sharing economy’ entities. Other highlights included settling a $12.2m class action for Lyft. John Keker, Jeffrey Chanin and Brian Ferrall are also noted.

At Kirkland & Ellis LLP, New York-based Dale Cendali led a team defending Virgin Group against claims of misappropriation of ideas, allegations of breach of contract and unjust enrichment brought by the former CEO of Norwegian Cruise Line; the case settled. Cendali is also acting for IBM in a case against Teraproc that includes allegations of theft and distribution of confidential and proprietary source code. Diana Torres in Los Angeles is representing LifeLock’s subsidiary Lemon in a Sixth Circuit appeal pertaining to a dispute with its former executives, former general counsel and technology entrepreneur Wenceslao Casares, which includes allegations of breach of fiduciary duty. At state court level, Washington DC-based Craig Primis is acting for Hercules Capital in an alleged trade secrets misappropriation lawsuit against Tennenbaum Capital Partners in California and is defending Honeywell against allegations of trade secret misappropriation brought by DSM Dyneema in North Carolina. SolarCity and Akorn are also clients. Chicago-based Reed Oslan, Daniel Bress and Katharine Burke in Washington DC, and New York’s Joshua Simmons are also recommended.

At Orrick, Herrington & Sutcliffe LLP, the ‘responsive and practical’ team is led by Silicon Valley-based Denise Mingrone. The group’s enviable list of clients includes Facebook, JMP Securities, Brocade Communication Systems and eBay. San Francisco-based duo Robert Shwarts and Michael Weil successfully defended 10x Genomics and its founders against allegations of trade secret misappropriation based on alleged violation of non-compete and confidentiality clauses. James McQuade in New York is representing Continuity Logic in claims of misappropriation of trade secrets and breaches of non-compete and non-solicitation clauses filed in the District Court of New Jersey against the client’s former employees. McQuade is also defending EY and a former employee of FTI Consulting against allegations of employee raiding and contractual breaches. Antony Pfeffer joined the New York office from the now defunct Kenyon & Kenyon. Annette Hurst in San Francisco is also noted and Irvine-based Christina Von der Ahe made partner.

Paul Hastings LLP’s ‘exceptional’ group is jointly headed by Victoria Cundiff in New York and Palo Alto-based Bradford Newman, who is the founder of the firm’s international employee mobility and trade secrets practice. Newman is experienced in prosecuting data theft cases for Fortune 100 companies and is representing Thermo Fisher Scientific in proceedings against a Fluidigm executive pertaining to alleged retention of confidential data and employee raiding. Other highlights included acting for Veeco in a trade secrets dispute against a former executive regarding metal organic chemical vapor deposition technology, and defending Goldman Sachs Group in a breach of contract case in the New York Supreme Court brought by Netologic. Los Angeles-based Jennifer Baldocchi is acting for AeroVironment in a dispute alleging data theft and breaches of non-compete clauses against former employees. Mark Pollack in Chicago and Carson Sullivan are representing Harvest Power in a dispute alleging data theft by former employees. Allan Soobert defended Samsung in a RICO-based action under the Economic Espionage Act. Attorneys are based in Washington DC unless otherwise stated.

Quinn Emanuel Urquhart & Sullivan, LLP’s team is led by Charles Verhoeven, Claude Stern and Edward DeFranco from San Francisco, Silicon Valley and New York respectively. Verhoeven and Washington DC-based Paul Brinkman are part of a team acting for Dow Chemical and Rohm and Haas in an investigation related to opaque emulsion polymers at the Federal Circuit. Diane Doolittle in Silicon Valley and Bruce Van Dalsem in Los Angeles successfully defended Pfizer against trade secret misappropriation claims filed in a California state court. Stern settled a lawsuit filed by Lilith Games for alleged misappropriation of source code used for mobile game Heroes Charge for uCool. Other highlights included securing a reversal at the Ninth circuit of a $172.5m judgment against Mattel arising from a trade secrets misappropriation claim filed by MGA Entertainment. New York-based duo Robert Raskopf and Michael Carlinsky, and Rachel Herrick Kassabian in Silicon Valley are recommended.

Seyfarth Shaw LLP’s Chicago-based practice co-head Michael Wexler secured a victory on all claims of wilful and malicious trade secret misappropriation brought by Stryker against a former employee and a competitor; he also defended the client against a $165m counterclaim. Co-head Robert Milligan in Los Angeles and Atlanta-based Daniel Hart serve as national trade secrets counsel to US Foods, providing ongoing advice on the company’s internal policies as well as handling litigation against former employees and competitors. Other highlights included securing a victory in a violation of a non-compete claim filed by Survey Sampling International against its former vice president of sales. Boston-based Erik Weibust acted for Howmedica and its sales representative against allegations of non-compete violation brought by CDC Medical. Worldpay and Intel are also clients. Chicago-based Scott Humphrey and Katherine Perrelli in Boston are other names to note.

Daniel Johnson chairs Covington & Burling LLP’s group, which also includes George Pappas, Kurt Calia in Silicon Valley and San Francisco-based Michael Plimack. Daniel Spiegel, Richard Hertling and Gina Vetere assisted the Protect Trade Secrets Coalition with its effort to obtain passage of federal civil trade secrets legislation, the Defend Trade Secrets Act. Anthony Herman and Ralph Voltmer secured a victory for Kancor in trade secret litigation against ATC Ingredients. Other highlights included acting for Baoshan Iron & Steel and Baosteel America against US Steel’s allegations of trade secret misappropriation and defending McKesson against a $190m claim of non-disclosure breach and trade secrets misappropriation filed by Devon Robotics and Devon Health Services. Jaxon Engineering & Maintenance is also a client. Attorneys are based in Washington DC unless otherwise stated.

Latham & Watkins LLP’s enviable client base includes American Airlines, craigslist, Goop, Pandora and Evie. Perry Viscounty in Orange County, Kenneth Schuler in Chicago and Jennifer Barry in San Diego are the practice co-heads. Daniel Schecter in Los Angeles, Orange County-based Dean Dunlavey and Kathryn Ruemmler in Washington DC secured a unanimous defense jury verdict for Emirates NBD in a $1.6bn trade secrets case concerning a technology platform for stored value cards and its use by Middle East-based unbanked workers as salary cards and an international remittance tool. Silicon Valley-based duo Douglas Lumish and Matthew Rawlinson are defending Arista Networks in a trade secrets and contractual breach action brought by OptumSoft; Lumish is also part of a team representing Codexis in a trade secrets misappropriation, unfair competition and patent infringement suit against EnzymeWorks and its founder. Charles Sanders joined the Boston office from Goodwin.

McDermott Will & Emery LLP’s team is acting for Seagate in a dispute with Convolve, which includes claims of trade secret misappropriation, patent infringement and other contractual and business tort claims totaling over $1bn. Fabio Marino in Silicon Valley acted for Diablo Technologies in a misappropriation of trade secrets claim brought by Netlist. Other highlights included filing a complaint and preliminary injunction motion for NaturaLawn against Peaceful Valley. Dalmatia Import Group is also a client. Michael Morgan and Mark Schreiber joined the firm’s Los Angeles and Boston offices from Jones Day and Locke Lord LLP respectively. Daniel Alberti and Judy Mohr in Silicon Valley head the practice. Eric Hagen in Los Angeles is another name to note.

Bryan Wilson and Eric Tate are key contacts in Morrison & Foerster LLP’s ‘knowledgeable and strategic’ team. Kenneth Kuwayti acted for Nevro in various trade secret and contractual disputes arising from employee mobility, with several claims pertaining to alleged data theft and non-compete breaches. Michael Jacobs advised Autodesk on preventing ZWCad Software from merchandising a cloned version of computer-aided design software AutoCAD and represented Nucap Industries in an alleged data theft and trade secret misappropriation claim against three Bosch entities. Mark Zebrowski is managing a trade secret action for Obalon Therapeutics against a former employee and his new employer. Litigator Mark Whitaker joined from Baker Botts L.L.P.. Harold McElhinny retired. Named attorneys are based in Palo Alto, San Francisco, San Diego and Washington DC.

O’Melveny & Myers LLP’s practice is chaired by Ryan Yagura. Mark Miller led a team defending 24/7 Customer in a dispute that included claims of trade secret misappropriation and unfair competition filed by LivePerson. Eric Amdursky was part of a team pursuing claims against former sales managers of Extreme Reach who had access to confidential data shortly before their resignation; the group secured a temporary restraining order and subsequent preliminary injunction to prevent the defendants using information gathered during their employment. Amdursky also represented Coldwell Banker in pursuing litigation alleging that competitors induced its employees to reveal confidential information about associates, who were then approached to join rival companies; the case subsequently settled. Other highlights included Darin Snyder representing Artifex Software in a copyright case against Bigtincan pertaining to the unlawful possession, use and distribution of source code. David Almeling is also recommended and Melody Drummond-Hansen made partner. Named attorneys are based in Los Angeles, San Francisco, New York and Silicon Valley.

Proskauer Rose LLP’s interdisciplinary team is led by Joseph Baumgarten and Gregory Rasin, who are based in New York. Anthony Oncidi in Los Angeles and Guy Brenner in Washington DC are acting for Creative Artists Agency in pursuing a punitive damages claim against several of its former agents and United Talent Agency. New York-based Steven Kayman is representing Endurance in a dispute arising from the hire of 13 Chubb executives following ACE’s acquisition of Chubb. Other highlights included representing US Foods in litigation and arbitration proceedings against former executives concerning misappropriation and misuse of confidential information. Nicole Eichberger in New Orleans and Evandro Gigante and Patrick Lamparello in New York made partner.

Weil, Gotshal & Manges LLP has notable strength in the financial sector, but also advises consulting and entertainment companies on the trade secret aspects of technology and employment matters. Jeffrey Klein and Nicholas Pappas are representing Perella Weinberg Partners in a dispute against three former partners and a former managing director of its restructuring group, which includes allegations of conspiracy to form a new firm from the existing group and breaches of fiduciary duty. Klein is also acting for JLT Specialty, its affiliate and a number of its executives in a lawsuit filed by Aon alleging breaches of restrictive covenants, as well as tort and related claims. Gary Friedman represented Kroll in a dispute against its former senior managing director pertaining to a breach of restrictive covenants and other obligations. Celanese and Ullink are also clients. Christopher Cox in Silicon Valley is another name to note. Paul Genender joined the Dallas office from K&L Gates. Bruce Meyer moved to an in-house position with the National Hockey League Players’ Association. Attorneys are based in New York unless otherwise stated.

Dentons stands out for its strong trial capability and efficient strategic planning for trade secret protection. Mark Hogge defended Flextronics against a confidential patent and trade secret claim brought by Jawbone before the International Trade Commission. Lora Brzezynski led a team representing Jaxon Engineering & Maintenance in a bet-the-company lawsuit, including allegations of trade secret misappropriation, brought by L3. Brzezynski and Cass Christenson acted for Oceaneering International in a case that alleged breach of confidentiality and sought a restraining order against a former employee. Los Angeles-based Michael Bierman is also noted. Attorneys are based in Washington DC unless otherwise stated.

Finnegan, Henderson, Farabow, Garrett & Dunner LLP’s Washington DC-based team handles consulting, counseling, non-litigation enforcement and dispute resolution. Gerson Panitch secured a victory in a summary judgment for Macrocure in a longstanding dispute with Cognate BioServices arising from alleged theft of data concerning human and veterinary cell therapy products. Eric Fues represented Flexsys America in a misappropriation of trade secrets claim filed against Process Engineering Associates concerning the manufacturing of insoluble sulfur; the case is one of the first complaints filed under the new federal Defend Trade Secrets Act. Other highlights included defending RichWave Technology and its president against claims of trade secrets misappropriation filed by Epic Communications. John Williamson is also recommended.

Greenberg Traurig LLP’s team is led by Kurt Kappes in Sacramento and Richard McCrea in Tampa, and includes Atlanta-based David Long-Daniels. Long-Daniels acted for Bartlett Holdings and its subsidiary in a $30m action against its competitors and former employees, including claims of tortious interference, misappropriation of trade secrets, breach of employee duties and restrictive covenants. Paul Ranis in Fort Lauderdale and Ian Ballon, who splits his time between Silicon Valley and Los Angeles, are also recommended.

Debbie Berman and Rick Richmond head the practice at Jenner & Block LLP from Chicago and Los Angeles respectively. Richmond led a team which secured a $940m jury verdict for Epic Systems arising from a trade secret misappropriation claim against Tata Consultancy Services. Los Angeles-based duo Richard Stone and Brent Caslin were part of a team representing a subsidiary of News Corporation, as well as the National Association of Realtors and its subsidiaries, in claims including trade secret misappropriation and contractual interference filed against Zillow. The group also acted for Methode Electronics and its subsidiary Hetronic in a claim against two former senior employees pertaining to alleged misappropriation of confidential and proprietary information.

Houston-based Edward Friedman and Joyce Ackerbaum Cox in Orlando lead Baker & Hostetler LLP’s group, which acts for corporates and individuals in employment-related matters. Highlights included representing M-I Swaco in a case of first impression under the Texas Uniform Trade Secrets Act and handling misappropriation of trade secrets and non-compete claims for employees.

Boston-based Choate, Hall & Stewart’s clients include New England BioLabs and AvePoint. Eric Marandett led a team representing Alnylam Pharmaceuticals in pursuing a trade secrets misappropriation claim against Dicerna Pharmaceuticals concerning RNAi data following Alnylam’s acquisition of Sirna Therapeutics. Paul Popeo is representing EMC in trade secrets litigation against Pure Storage. Michael Bunis, Daniel Winston and associate Anita Spieth are also recommended. Paul Pysher joined from Fish & Richardson P.C..

FisherBroyles, LLP’s leading trial attorney Mark Halligan has notable intellectual property litigation expertise, representing clients in state and federal courts across the US. Highlights included representing Soarus in a lawsuit against Bolson Materials, which included claims pertaining to a breach of secrecy agreement, violation of the Illinois Trade Secrets Act and unjust enrichment. Bradley Nelson is a name to note. Alastair Warr joined the firm. Attorneys are based in Chicago.

At Gibson, Dunn & Crutcher LLP, Washington DC-based Jason Schwartz is defending Capital One and two of its employees against claims of trade secret misappropriation filed by KeyBank; the case is being litigated under the new federal legislation, the Defend Trade Secrets Act. New York-based Alexander Southwell defended American General against allegations of trade secret misappropriation and breach of confidentiality agreements in a $5bn lawsuit brought by Bancorp Services and Addle Management. Martin Hewett in Washington DC and Jeffrey Thomas in Irvine are noted.

At Jones Day, Dallas-based practice co-chair Robert Kantner successfully represented Wellbeing Genomics in a jury trial against PLLG involving various claims, including trade secret misappropriation. Richard Grabowski and Cheryl O’Connor, who are based in Irvine, acted for Experian in a successful attempt to prevent its former employees from further disclosing confidential information related to a new e-commerce platform. Randy Kay co-chairs the team from San Diego. Dexcom, SAP America and Goodyear are also clients.

At Kilpatrick Townsend & Stockton, Daniel Taylor and Susan Boyles, both based in Winston-Salem, are acting for Neusoft USA in a dispute filed against Neuisys and are defending the client against counterclaims of trade secret misappropriation and unfair and deceptive trade practices brought by the distributor. James Bogan defended Cree’s employee against breach of restrictive covenant claims filed by a former employer. Joel Bush is also noted.

John Mancini, Dale Giali and Alan Grimaldi are the key contacts at Mayer Brown. The group merges its intellectual property expertise with its knowledge of employment and antitrust regulations to handle contentious and non-contentious trade secret matters. It is adept at obtaining injunctions, representing clients in litigation and applying preventative measures to avoid future conflicts.

Robert Weikert, who splits his time between Los Angeles and San Francisco, heads Nixon Peabody LLP’s interdisciplinary practice. Weikert and Shawn Hansen in Los Angeles are representing Karl Heinz Priewasser in a trade secret misappropriation and fraud lawsuit concerning technology used in the manufacturing of semiconductors. David Rosenthal in Boston is acting for Boston Beer Company in a dispute with a former employee alleging breach of contractual duty pertaining to the retention of confidential data. SolarCity and WB Mason are also clients. Chicago-based duo Ethan Trull and Frank Saibert, alongside Jason Kravitz in Boston, are also recommended.

Schiff Hardin LLP’s team is led by Linda Stevens and Matthew Prewitt, who are based in Chicago. It assists clients with obtaining and defeating requests for emergency injunctions, drafting trade secret protection strategies, liability risk minimization, litigation avoidance and dispute resolution.

William Abrams in Palo Alto heads Steptoe & Johnson LLP’s team. Highlights included defending Huawei in two trade secret disputes, one brought by T-Mobile arising from the development of a testing robot used for handset quality control, and the other filed by Quintel pertaining to a patent for antenna technology. Washington DC-based John Caracappa and Harold Fox co-chair the intellectual property group.

At Winston & Strawn LLP, John Keville, Sheryl Falk and John O’Neill secured a $24.5m jury verdict for Suncoast Post-Tension in a case against a former manager and engineer pertaining to trade secrets misappropriation, tortious interference, contractual breaches and unfair competition. Keville and O’Neill are representing Total Rod Concepts in a trade secret misappropriation dispute with Glasforms pertaining to the defendant allegedly disclosing trade secrets to the plaintiff’s competitor. Named attorneys are based in the firm’s Houston office.


Trademarks: litigation

Index of tables

  1. Trademarks: litigation
  2. Leading lawyers

Who Represents Who

Find out which law firms are representing which Trademarks: litigation clients in United States using The Legal 500's new comprehensive database of law firm/client relationships. Instantly search over 925,000 relationships, including over 83,000 Fortune 500, 46,000 FTSE350 and 13,000 DAX 30 relationships globally. Access is free for in-house lawyers, and by subscription for law firms. For more information, contact david.burgess@legal500.com.

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Debevoise & Plimpton LLP is ‘one of the finest law firms in the country’ for complex trademark disputes. The ‘outstanding’ team is praised as ‘committed, thoughtful, experienced and extremely responsive’. It represents Havana Club Holding and the Cuban state-owned Empresa Cubana Exportadora de Alimentos y Productos Varios in the long-running dispute over the ownership of the ‘Havana Club’ trademark with Bacardi, which purchased the rights from a company that used the mark before the Cuban revolution. Other highlights included representing Merck KGaA Darmstadt in its multi-jurisdictional dispute with Merck & Co regarding the use of the name Merck, specifically how the 1970 coexistence agreement is applied on the internet, and acting for the Snyder’s-Lance subsidiary Princeton Vanguard before the Trademark Trial and Appeal Board (TTAB) of the United States Patent and Trademark Office (USPTO) regarding the registration of the client’s ‘Pretzel Crisps’ trademark. Other clients include Snap, Highline Capital Management and GlaxoSmithKline. David Bernstein, Michael Schaper and Jyotin Hamid in New York are recommended.

Finnegan, Henderson, Farabow, Garrett & Dunner LLP is a highly regarded boutique with remarkable litigation expertise; it has been handling a large number of trademark disputes in a broad range of industries and has particular expertise in survey research. Recent highlights include the successful representation of PNC Bank in a dispute with mobile application developer Keith Alexander Ashe regarding the use of the ‘Spendology’ mark, and obtaining a preliminary injunction for LG against 18 companies that sold counterfeit LG TONE Bluetooth headsets. The team also handled several contentious matters for Under Armour, including a recent defense against a trademark infringement claim by Healthbox Global Partners regarding the client’s newly launched connected fitness product under the name ‘Healthbox’. Recommended experts include practice head Douglas Rettew as well as Mark Sommers, Danny Awdeh and Julia Anne Matheson, all of whom are based in Washington DC.

Trusted Advisor - with Finnegan

IP specialist Finnegan detail how their collaborative approach makes for a unique culture which is designed to allow them to work with clients in a way which is cognizant of the challenges facing all companies today.

The practice at Kilpatrick Townsend & Stockton impresses with its large team of high-profile trademark litigators, which spans many locations and has expertise in a broad range of industries. Particularly recommended are practice head William Brewster, Judith Powell and Charles Henn in Atlanta, Dennis Wilson, Larry McFarland and David Caplan in Los Angeles, and Lisa Pearson in New York. Highlights included the successful defense of FX Networks and Fox in a trademark lawsuit filed by ExxonMobil, which alleged that the stylized ‘FXX’ mark used by a new Fox television network was likely to infringe and dilute Exxon’s ‘interlocking X’ mark. The team also successfully defended Instagram against developer Michael Swanson, who claimed common law trademark rights for his mobile app ‘Layout’ after the client launched an app with the same name; the claim was denied based on the genericness of the term. On the plaintiff side, the firm represented adidas in an action against competitor Skechers regarding several trademark and trade dress infringements.

Cooley LLP is particularly recommended for handling contentious trademark matters in the technology sector and also regularly acts for clients in a variety of other industries. The highly regarded team litigated several cases for key client Google, including a long-lasting dispute with VIA Technologies regarding rights to the ‘Chrome’ mark and an action to prohibit the internet marketing firm Local Lighthouse Corp from using Google’s trademarks. The team also assisted Sazerac to protect its ‘Fireball’ brand of cinnamon-flavored whiskey with a trademark infringement suit regarding an online search advertising feature against competitor Jack Daniels and with another action against Stout Brewing Company regarding its ‘Fire Flask’ malt liquor. Practice chair Peter Willsey in Washington DC is recommended along with Janet Cullum in New York and John Crittenden in San Francisco. The Los Angeles office of the firm has been strengthened with the arrival of Bobby Ghajar from Pillsbury Winthrop Shaw Pittman LLP.

The ‘excellent’ boutique Fross Zelnick Lehrman & Zissu, P.C. in New York covers the full spectrum of trial, appellate and TTAB litigation and has experience across a broad range of industry sectors. Recent work includes representing Aquazzura Italia in a trade dress infringement suit against Ivanka Trump regarding two shoe designs, acting for Robert Kirkman as plaintiff in a trademark infringement and dilution action against Phillip Theodorou regarding the defendant’s use of the mark ‘The Walking Dead’, and the successful defense of The Gap against a claim by Hoop Culture regarding alleged infringement of its ‘Eat...Sleep...Ball.’ trademark. The team also represents Royal Crown and Dr Pepper/Seven Up in an ongoing dispute with Coca-Cola regarding the latter’s right to register ‘Zero’ and various Zero-formative marks for soft drinks. Other clients include Becton Dickinson, Cartier, Chanel, Hewlett-Packard, Fatboy, Estee Lauder, Tiffany and Warner Bros. Barbara Solomon, Richard Lehv, James Weinberger and Laura Popp-Rosenberg are recommended.

Jones Day regularly handles high-profile disputes for big brands. Procter & Gamble is a key client, for which the team recently secured a consent judgment and permanent injunction against Onuge Personal Care, which infringed P&G’s trade dress packaging and trademarks for its Crest Whitestrips line of products. On the defense side, it has been representing P&G in a trade dress dispute with Hard Candy regarding the client’s Katy Perry cosmetics line. A new client of the firm is vacuum cleaner manufacturer SharkNinja, which it is representing in a trademark and false advertising dispute with competitor Dyson. Other clients include Avid Technology, BMW, eos Products and Wendy’s. Washington DC-based practice co-head John Froemming is particularly recommended for non-traditional trademark and trade dress matters. Other recommended lawyers include practice co-head Meredith Wilkes in Cleveland and Susan Kayser in Washington DC.

Excellent’ boutique Kelly IP LLP in Washington DC handles a large number of TTAB and Uniform Domain-Name Dispute-Resolution Policy (UDRP) matters as well as some high-profile litigation at trial and appellate levels. David Kelly, Robert Litowitz and Stephanie Bald have been representing Philips in a long-running dispute with Hunt Control Systems regarding claims that the former Philips tagline ‘sense and simplicity’ created reverse confusion with Hunt’s mark ‘Simplicity’. The team also has remarkable expertise regarding unconventional marks, as was shown in their successfully defense of the purple color mark for AstraZeneca in a dispute with Camber Pharmaceuticals and Dr Reddy’s Laboratories. Former TTAB judge Linda McLeod handles numerous opposition and cancelation proceedings, including the successful representation of Fox in an opposition against the mark ‘Miltonduff’ for wines, spirits and liqueurs based on the mark ‘Duff’ from The Simpsons television series.

Kirkland & Ellis LLP’s ‘excellent’ practice is regularly involved in high-profile trademark litigation and has particular expertise in trademark dilution and reverse confusion cases. It successfully defended AT&T, defeating a preliminary injunction motion brought by Citigroup alleging that the defendant’s new customer appreciation program ‘AT&T Thanks’ infringes the mark of its customer loyalty program ‘Thankyou’. On the plaintiff side, the team has been representing SoulCycle in a dispute with Soul Pose to protect its ‘Soul’ family of marks. The practice also continues to assist Nike subsidiary Converse in a trade dress dispute with Walmart, Skechers and several other companies regarding the plaintiff’s ‘Chuck Taylor All-Star’ shoe design; currently in an appeal against an ITC decision. Other clients include Accenture, California Credit Union, Droga5, Facebook and Oracle. Practice head Dale Cendali and Claudia Ray in New York are recommended, as is Diana Torres in Los Angeles.

Quinn Emanuel Urquhart & Sullivan, LLP benefits from its exceptional all-round commercial litigation capabilities in handling high-stakes trademark disputes. Highlights included representing football team The Washington Redskins in a very prominent dispute with several Native American groups, who seek to cancel the client’s trademark on grounds that it is offensive, and acting for the Russian government agency Federal Treasury Enterprise Sojuzplodoimport in its dispute with Yuri Shefler regarding ownership of the Stolichnaya vodka brand. In a reverse confusion case, the practice defended Tinder against a lawsuit brought by WildFireWeb, which had a prior registration in a ‘Tinder’ trademark, and managed to settle the case. The team also defended Alibaba against several contributory trademark infringement claims, for example in a case brought by Spy Optic regarding the use of its trademarks in posts by third-party sellers on Alibaba’s e-commerce platforms. Robert Raskopf and Todd Anten in New York and Margret Caruso in Silicon Valley are recommended.

Newly merged firm Andrews Kurth Kenyon LLP houses several highly regarded trademark litigators. Particularly recommended are James Rosini in New York and Edward Colbert and Susan Smith in Washington DC. Recent work includes representing Jim Beam Brands in a dispute with a competitor regarding the use of non-traditional decorative elements and the question of whether they serve as trademarks. The team also continues to act for Dish Network in its dispute with Digital Satellite Connections regarding the ‘DishNet’ trademark. Other clients include Constellation Brands, Horizon Group, Jewelry Channel, Olympus, Pintrips, and the United States Olympic Committee.

Recently merged firm Arnold & Porter Kaye Scholer LLP combines the strengths of two trademark practices. Louis Ederer and his team, formerly of Arnold & Porter, have particular expertise in design and trade dress protection and regularly handle litigation for clients from the luxury goods sector, including Gucci, LVMH and Richemont. Recent work includes representing Sweet People Apparel in a trademark infringement suit against Phoenix Fibers regarding the defendant’s resale of jeanswear products that were intended for destruction and recycling. Paul Llewellyn, formerly of Kaye Scholer, has been handling several contentious matters for Hershey, including a suit against Maryland senator Steve Hershey, who replicated the client’s trade dress for his political campaign material. All mentioned attorneys are based in New York.

Cowan, Liebowitz & Latman, PC’s ‘excellent’ practice in New York handles contentious trademark proceedings for clients from a broad range of industry sectors. Jonathan King and Richard Mandel successfully represented the National Tobacco Company in a dispute with DRL Enterprises, obtaining a decision that 1.0, 1.25 and 1.2 are generic designations for cigarette rolling papers. Eric Shimanoff and William Borchard successfully represented Empire State Building and obtained a decision that the building’s image is a famous mark to be protected against dilution by a beer logo featuring an image of the building. Mary Kevlin regularly handles contentious trademark matters brought by Major League Baseball Properties and recently succeeded in having the TTAB find that ‘World Series’ has a high level of fame, preventing a registration of ‘High School World Series’.

The ‘very knowledgeable’ team at Katten Muchin Rosenman LLP regularly handles contentious trademark matters for well-known brands in a variety of industries. It is particularly recommended for settlement agreements, where it provides ‘practical solutions to complex problems’. Recent work includes the defense of longstanding client Microsoft against claims by the National Grange of the Order of Patrons of Husbandry regarding the client’s use of the term ‘Grange’ in its State of Decay video game. The team has also been defending Forever 21 against allegations by Robert Lopez that garments bearing the phrase ‘Lower East Side’ infringe his trademark ‘LES NYC’. Recommended lawyers include Floyd Mandell and Kristin Achterhof in Chicago, Roger Furey in Washington DC and Karen Artz Ash in New York.

Latham & Watkins LLP draws on its wider commercial litigation capabilities to handle notable trademark disputes. The ‘very efficient’ practice provides ‘high-quality’ legal services, is particularly strong in the technology sector and has niche expertise in contentious trademark matters in the non profit sector. It has handled several matters for craigslist, including a successful trademark infringement, dilution and cybersquatting lawsuit against TheTreasury.Com regarding its use of the ‘Craigpay’ mark and the craigpay.org domain name for online payment services. The team also successfully represented Yucaipa, the owner of the Aloha Airlines trademark portfolio, in a dispute with Hawaiian Airlines over the use of the ‘Aloha’ mark. Practice head Jennifer Barry in San Diego is ‘exceedingly intelligent, thoughtful, responsive and approachable’. Orange County-based Perry Viscounty is praised for his ‘strategic insight and management skills’.

McDermott Will & Emery LLP is well known for its work in the food and beverages industry and is particularly strong in the alcoholic beverages sector. The team has been handling several matters for The Absolut Company and many other Pernod Ricard companies, including Chivas Brothers, Martell and Perrier-Jouët. Recent work includes the successful representation of Absolut subsidiary Kahlua Coffee Liqueur in a trademark infringement suit against Happy Hearts Wine, which had to stop selling a ‘Kahfua’ branded coffee liqueur. The team also successfully defended Tyson Foods subsidiary Hillshire Brands against trademark infringement claims by Parks regarding the defendant’s launch of ‘Park’s Finest’ hot dogs. Other clients include Brooklyn Brewery, Heineken, Lotte Confectionery, and Sunrise Senior Care. Practice head John Dabney and fellow Washington DC lawyer Robert Zelnick are particularly recommended.

Morrison & Foerster LLP’s practice ‘has the depth and breadth to handle complex trademark cases’ and acts for clients from a broad variety of industries. The team has particular expertise in trademark dilution and reverse confusion cases as well as in matters regarding third-party liability on the internet. Highlights included the representation of Restoration Hardware in a trademark infringement suit against Houzz regarding the appearance of third-party products in search results on the defendant’s marketplace website, and assisting One World Foods with the protection of its Stubb’s BBQ sauce brand by filing a trademark infringement suit against Stubb’s Austin Restaurant. The team also handled several contentious matters for Ubiquiti Networks, including a recent trademark dispute with AstroNova. Jennifer Lee Taylor in San Francisco and Benjamin Fox in Los Angeles are recommended.

The ‘excellent’ boutique Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP in Chicago regularly handles high-profile trademark litigation for clients from various industries. Phillip Barengolts and Bradley Cohn successfully represented Bayer in a suit against Belmora before the Fourth Circuit regarding the cancelation of the defendant’s ‘Flanax’ trademark for pain relief medicine. Cohn and Thad Chaloemtiarana successfully represented Robert Bosch in a trademark infringement suit against North Shore Imports regarding its sale of counterfeit Bosch canister purge valves for automobiles. On the defense side, Ashly Boesche acted for David Ward Advanced Lubrication in a trademark infringement dispute with Royal Purple and managed to settle the case, and Belinda Scrimenti successfully protected the mark ‘Crossfire’ for AMD in litigation with several defendants.

Proskauer Rose LLP’s ‘very good’ practice is particularly noted for its industry expertise in alcoholic beverages. Diageo is a longstanding client of the firm and has been represented in many contentious trademark proceedings; recent work includes a suit against competitor Mexcor regarding a conflict between the client’s ‘Crown Royal’ whiskey brand and the defendant’s ‘Crown Club’ whiskey brand, and a defense against a suit by Allied Lomar regarding alleged infringement of its ‘Stitzel’ trademark by references to the defendant’s Stitzel-Weller Distillery in Kentucky. The team also defends Madonna against trademark infringement claims by beauty and fashion brand Hard Candy over the use of the mark ‘Hard Candy’ for fitness clubs and related products. Practice co-chair Brendan O’ Rourke and Sandra Crawshaw-Sparks in New York are recommended.

Weil, Gotshal & Manges LLP’s ‘excellent’ team in New York is particularly noted for its expertise regarding secondary liability of intermediaries in trademark infringements. It has been handling several such matters for eBay, including a recent defense against a suit by Wimo Labs, which alleges that eBay permits the sale of counterfeit versions of the plaintiff’s phone cases on its e-commerce marketplace. The team also defends Alibaba against contributory trademark infringement and counterfeiting claims from a group of luxury brand owners, including Gucci, Bottega Veneta and Yves Saint Laurent. In the offline world, the firm successfully defended Core-Mark, a provider of marketing and distribution services for retail stores, against allegations of having unknowingly distributed counterfeit 5-HOUR Energy products. Practice chair Bruce Rich and Randi Singer are recommended.

Covington & Burling LLP’s practice handles a broad range of contentious trademark proceedings before the federal courts and the TTAB. Highlights included the defense of Expedia against a putative class action by several hotels, which claim that Expedia included them in its search without permission and inaccurately listed them as having no vacancies, constituting trademark infringement and false advertising. On the plaintiff side, the team acts for John Deere in pursuing trademark infringement and dilution claims against a company that is using the widely recognized Deere colors on its towed agricultural equipment. Simon Frankel in San Francisco as well as Neil Roman and of counsel Ronald Dove in Washington DC are recommended.

Fish & Richardson P.C.’s practice has extensive experience in trademark litigation before various courts and is especially known for its representations on the defendant side. It has been handling several contentious trademark matters for New Balance Athletic Shoe, including a recent successful defense before the ITC against trade dress claims by Converse regarding its ‘Chuck Taylor’ sneaker. The team also defended Samsung against trademark infringement allegations by Milk Studios regarding the client’s music application ‘Milk’ and the matter was resolved in a settlement. Mark Puzella and David Hosp in Boston are recommended.

Foley & Lardner LLP’s team is noted for its experience representing clients from various industries before federal courts and the TTAB. Highlights included the successful representation of Herman Miller in trade dress litigation against Office Star regarding the Eames chair design, while another dispute regarding the Aeron design is still ongoing. The team has also been representing Citigroup in several proceedings against multiple parties to protect the client’s customer loyalty program brand ‘Thankyou’, and it continues to act for home security specialist SimpliSafe in a trademark infringement action against ArcSoft regarding the defendant’s launch of a home monitoring camera under the name ‘Simplicam’. Jonathan Moskin and Robert Weisbein in New York are recommended.

Greenberg Traurig LLP’s team is particularly noted for handling trademark disputes in the technology and fashion industries. Daniel Schloss in New York has been defending Ralph Lauren against an appeal brought by Rolex against a TTAB decision that found no likelihood of confusion between the Rolex brand and the client’s marks Ralph Lauren RLX and RLX Ralph Lauren. Steven Wadyka in Washington DC has been representing Underwriters Laboratories in numerous anti-counterfeiting disputes.

Kelley Drye & Warren LLP’s ‘smart’ Andrea Calvaruso in New York leads a very broad practice, with a particular strength in the fashion industry. She successfully defended WME-IMG against a temporary restraining order and preliminary injunction seeking to enjoin the client and the Council of Fashion Designers of America from using the name New York Fashion Week and NYFW. She also continues to represent Ralph Lauren in its long-running disputes with the US Polo Association regarding the use of the polo player logo. Michael Zinna has been representing Mansur Gavriel in trade dress litigation regarding handbags against an Italian company and two of its retail outlets.

Loeb & Loeb LLP is especially noted for its trademark litigation work in the entertainment, consumer products and financial services industries, but the broad practice extends beyond these sectors. Highlights included an appellate victory on behalf of Viacom at the Ninth Circuit against Gibson Guitar, which claimed that the client’s licensed toy ukulele featuring SpongeBob SquarePants infringed its protected ‘flying V’ guitar body shape. On the plaintiff side, the team has been representing POM Wonderful in a trademark infringement action against Pur Beverages regarding the sale of Pur Pom energy drinks. Douglas Masters in Chicago and David Grace in Los Angeles are recommended.

Mayer Brown’s team is experienced in handling contentious trademark matters for clients from a variety of industry sectors. It has represented key client Nestlé in several disputes, including a recent victory against Africa America Coffee Trading in a trademark and trade dress infringement action regarding its marketing of Nespresso-compatible capsules. The team also successfully represented the lifestyle magazine publisher DM Luxury in a suit against Celebrity Cruises regarding the ‘Modern Luxury’ trademark. Other clients include Goya Foods and LastPass. Practice head John Mancini and Allison Levine Stillman in New York and Richard Assmus in Chicago are recommended.

The ‘extremely intelligent and diligent’ team at Norton Rose Fulbright US LLP is particularly recommended for its industry expertise in the pharmaceuticals sector, but has also handled contentious trademark matters for clients from a variety of other industries. Highlights included the successful representation of Nestlé Health Science-Pamlab in a false advertising dispute with Method Pharmaceutical and its manufacturer J&D Laboratories. The team also represents Jarabes Veracruzanos, distributor of the Delicia brand of health conscious beverages, in trademark litigation against a Mexican manufacturer of Deliciosa branded drinks. Practice head Timothy Kenny in Minneapolis, Saul Perloff in San Antonio and Michael Metteauer in Austin are recommended.

The ‘excellent’ team at O’Melveny & Myers LLP is noted for handling high-stakes trademark disputes. Highlights included the successful representation of Trader Joe’s before the Ninth Circuit in a dispute with Michael Norman Hallatt, who does business as ‘Pirate Joe’s’ in Canada, setting a precedent on the extraterritorial reach of the Lanham Act, and successfully defending 20th Century Fox against a trademark infringement claim by Empire Distribution regarding the Empire television show. The team also defends eBay against third-party liability claims by Wimo regarding the sale of counterfeit goods on its marketplace. Daniel Petrocelli and Drew Breuder in Los Angeles are recommended.

Orrick, Herrington & Sutcliffe LLP’s ‘excellent’ team is particularly noted for its work in the alcoholic beverages and apparel industries, but it also handles trademark litigation outside of these key areas. It has been handling several matters for the wine and spirits company Chatham Imports, including a recent victory against Bomberger’s Distillery, Thistle Finch Distilling and Heritage Spirits regarding the use of the designation ‘Bomberger’s Distillery’. Another highlight was the successful representation of Coorstek Medical and C5 Medical Werks in challenging the registration of the pink color mark for hip replacement products by competitor Ceramtec. Practice head Peter Vogl and Lisa Simpson in New York are recommended.

Sheppard, Mullin, Richter & Hampton LLP draws on its wider commercial litigation capabilities to handle contentious trademark matters in a variety of industries. Highlights included successfully defending Walmart, as co-counsel with Finnegan, Henderson, Farabow, Garrett & Dunner LLP, before the ITC against trade dress infringement allegations by Converse regarding its ‘Chuck Taylor’ sneaker. The team also successfully represented Paletería La Michoacana in a dispute with Productos Lácteos Tocumbo regarding an image of an Indian girl on packaged Mexican ice cream products sold in the United States. Recommended lawyers include co-practice head Laura Chapman in San Francisco, Carlo Van den Bosch in Orange County and Paul Garrity in New York.

Steptoe & Johnson LLP’s practice is especially known for its work in the luxury goods sector, but it also handles trademark litigation for clients from a variety of other industries. It has represented key client Burberry in several contentious matters, including a recent victory in a trademark infringement and counterfeiting suit against Beyond The Rack Enterprises, in which the court awarded statutory damages of $16m. The team has also been acting for LVMH in several matters, including the successful defense of Moët Hennessy against an attempt by ACCA Global to cancel a trade dress for a sparkling wine bottle. Practice chairs Michael Allan and William Pecau in Washington DC are recommended.

Stroock & Stroock & Lavan LLP’s team is noted for handling high-stakes trademark disputes for clients from various industries. Highlights included the successful representation of PODS as plaintiff in a long-running trademark infringement dispute with U-Haul, protecting the ‘PODS’ mark for portable moving and storage containers and securing a $41.4m settlement for the client. The team has also been representing ProSight Global in a trademark infringement claim against Amimon regarding the sale of aftermarket cameras under the name ‘ProSight’, and it represented Saint Laurie in its trademark dispute with Yves Saint Laurent, which was settled in 2016. Steven Pokotilow and Laura Goldbard George in New York are recommended. Since publication Charles Cantine has moved to King & Spalding LLP.


Trademarks: non-contentious (including prosecution, portfolio management and licensing)

Index of tables

  1. Trademarks: non-contentious (including prosecution, portfolio management and licensing)
  2. Leading lawyers

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Specialist firm Finnegan, Henderson, Farabow, Garrett & Dunner LLP has remarkable expertise in managing large domestic and international trademark portfolios as well as prosecution work. For example, the team assisted new client Illumina with a comprehensive inventory of its trademark holdings around the world, has been handling its international trademark portfolio, and provided assistance for the launch of the new ‘Basespace’ product. Another new client is Charming Charlie, for which it handles its international trademark portfolio and assists with expanding into new markets. Longstanding clients of the firm include Bridgestone Firestone, Caterpillar, Fuente Cigar, Head USA, Starbucks and Subaru. On the transactional side of the practice, the team provided trademark due diligence to XO Communications regarding its acquisition by Verizon. Recommended lawyers include Julia Anne Matheson and Brett Heavner, in Washington DC, and Christopher Foley in Reston, while the practice also has resources in Boston and Atlanta.

The ‘excellent’ boutique Fross Zelnick Lehrman & Zissu, P.C. in New York is highly regarded for its US trademark prosecution expertise. The team has extensive experience protecting global brands and does anti-counterfeiting work for clients in a variety of industries, including the entertainment, luxury goods, pharmaceuticals and financial services sectors. It also has particular expertise in the registration of non-traditional marks. For example, the firm assisted Lego to obtain a trademark registration for the 3D configuration of the Lego toy figure and subsequently recorded it with US Customs for actions against the importation of knock-offs. Other clients include DC Comics, Hewlett-Packard, Forbes, IBM, Chanel, Estee Lauder, Spectrum Brands, Tiffany, Honeywell and Warner Bros. The team also provides pro bono IP services to Lawyers Without Borders. Recommended lawyers include David Ehrlich, Mark Engelmann, David Donahue, James Weinberger and Cara Boyle.

Trusted Advisor - with Finnegan

IP specialist Finnegan detail how their collaborative approach makes for a unique culture which is designed to allow them to work with clients in a way which is cognizant of the challenges facing all companies today.

The large team at Kilpatrick Townsend & Stockton has expertise that spans clearance and prosecution, anti-counterfeiting and grey market strategies, as well as ex parte and inter partes reviews at the Trademark Trial and Appeal Board (TTAB). Highlights included assisting the Coalition for the Advancement and Protection of Sports Logos, which includes the National Football League, National Basketball Association, National Hockey League and Major League Baseball, with the enforcement of their trademarks. The team also assists Facebook with the global trademark strategy for key brands, including Facebook, Instagram, and LiveRail, handles the global trademark portfolio of Levi Strauss & Co and assists the same client with enforcement matters. On the transactional side, the practice assisted Expedia with IP due diligence regarding the client’s acquisition of HomeAway. Anthony Malutta and Gregory Gilchrist in San Francisco, Tywanda Lord and Christine James in Atlanta and David Mayberry in Washington DC are recommended.

Recently merged firm Andrews Kurth Kenyon LLP combines the strengths of two trademark practices. James Rosini in New York, formerly of Kenyon & Kenyon, is noted for his emergency rebranding expertise. His team has handled complex rebranding work for several clients, including Abbott Laboratories, AIG and Citigroup. Michele Schwartz in Dallas, formerly of Andrews Kurth, has extensive experience in trademark prosecution and transactional matters. Her recent work includes assisting ArcBest with the rebranding from the previous name, Arkansas Best. The firm also provides ongoing portfolio management for major brands such as Unilever, Walmart, and William Grant & Sons. Further names to note are Edward Colbert and Susan Smith in the firm’s Washington DC office.

The ‘excellent’ team at Arent Fox LLP provides ‘easy-to-understand advice’ with ‘good value for money’. It is especially known for its work in the media and entertainment industry, but also has many clients in the technology, fashion and food industries. Mars is a key client of the practice, receiving services such as portfolio management and trademark advice on transactional matters in the Americas. Another key client is Discovery Communications, which is being advised on various trademark matters, including global branding initiatives and licensing deals. Other clients include Burger King, LG, Warner Brothers and Zara. Practice head Ricardo Fischer, Cristina Carvalho, Anthony Lupo and Michael Grow, all based in Washington DC, are recommended, as is Sarah Bruno in San Francisco.

Cowan, Liebowitz & Latman, PC in New York has an ‘excellent’ team with many ‘real subject matter experts’, who deliver ‘a fantastic service’. Mary Kevlin has been assisting key client Major League Baseball Properties and its 30 constituent clubs with the management and enforcement of their brands. The ‘knowledgeable and detail-orientedJeffrey Epstein has particular expertise in the fashion industry and has counseled several companies owned by LVMH. The ‘outstandingWilliam Borchard has been assisting Empire State Realty Trust with the protection of its Empire State Building brand, including obtaining a recent decision that the building’s image is a famous mark, and Deborah Squiers is noted for her work in the financial, beverage and education sectors.

The ‘excellent’ team at DLA Piper LLP (US) has ‘a strong understanding of worldwide trademark prosecution’. It manages trademark portfolios for clients in a variety of industries, has been advising many clients on the IP aspects of corporate and commercial transactions, and has niche expertise regarding certification marks. A key client is Dannon, which the team is advising on trademark selection and filing strategy, clearance and registrability, prosecution and enforcement, and issues surrounding product packaging, advertising and marketing strategy in compliance with industry regulations. Other clients include ESPN, Hyatt, Mark W Cross, Philip Morris and UL. ‘Outstanding’ practice head Ann Ford in Washington DC is recommended, as are the ‘very knowledgeableMark Feldman and Keith Medansky in Chicago.

Dechert LLP’s ‘very good’ team handles trademark clearance, registration and enforcement for several longstanding clients in a variety of industries. A highlight was handling prosecution and enforcement work for several Swiss luxury watch brands, including Breitling, Ebel and TAG Heuer. The team has also been assisting The Ivy League with the prosecution and enforcement of its brand, including actions against several apparel producers, and it has represented Apple in several opposition and cancelation proceedings before the TTAB. Other clients include Aetna, DirecTV, Towers Watson and Zara. Practice head Glenn Gundersen in Philadelphia is highly regarded.

K&L Gates manages global trademark portfolios for domestic and international clients in a variety of industries and is particularly strong in the fashion and sports sectors. As primary counsel to Polartec, the firm manages the client’s global portfolio of over 1,000 marks, assists with all enforcement activities and has been guiding it through product launches and rebranding campaigns. Other recent work includes assisting Dan Post Boot with the negotiation of a license agreement with John Deere to use the latter’s brand for a new line of boots. Other clients include National Beverage Corp, TripAdvisor, Quest Diagnostics, Valve Corporation and Zulily. Practice head Frank Politano in Newark and Susan Hollander in San Francisco are recommended.

The ‘excellent’ Kelly IP LLP in Washington DC, led by the highly rated David Kelly, has been handling numerous prosecution, opposition and cancelation proceedings for a broad range of clients. It is particularly noted for its work in the media and entertainment sector, with clients including the BBC, Disney, Fox and US News & World Report. The practice recently gained Hershey’s as a new client, taking over the management of its trademark portfolio, which consists of more than 5,300 trademark applications around the world. Other clients include Amazon, Aston Martin, AstraZeneca, BMW, Expedia, Harley-Davidson, Travelers, and the Consumer Financial Protection Bureau. Robert Litowitz, Stephanie Bald, Linda McLeod and Lynn Jordan are recommended.

McDermott Will & Emery LLP’s team regularly provides trademark counseling, prosecution and licensing services to clients from a variety of industries, and is particularly known for its industry knowledge in the alcoholic beverages sector. Richard Kim in Washington DC assists The Absolut Company and many other Pernod Ricard subsidiaries, including Chivas Brothers, Martell and Perrier-Jouët, with trademark portfolio management, licensing and enforcement. Chicago-based practice head Jennifer Mikulina acquired Catalina Marketing as a new client for the management of it global trademarks portfolio and for counseling on clearance, prosecution and enforcement. Jorge Arciniega in Los Angeles serves as brand management and transactional counsel for Saban Brands and its trademarks ‘Paul Frank’, ‘Power Rangers’ and ‘Luna Petunia’.

The ‘excellent’ Chicago-based trademark boutique Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP provides ‘very good advice’ to clients from a variety of industries. The team of ‘very knowledgeable’ lawyers includes Jonathan Jennings, Phillip Barengolts, Thad Chaloemtiarana and Robert Sacoff. Highlights included assisting the automotive industry parts supplier BorgWarner with prosecution and enforcement for its worldwide trademark portfolio, including anti-counterfeiting raids and seizures in numerous countries. The team also acts for Eli Lilly in grey market matters and recently expanded its enforcement work to cover new brands acquired for the Elanco pet care division. Other clients include Acer, Kohler, PepsiCo and Zebra Technologies.

Baker McKenzie LLP’s practice manages the domestic and global trademark portfolios of clients from a wide range of industries and has expertise in rebranding projects and transactional due diligence. Recent work includes taking over the trademark portfolio management for Lumileds, advising Brooks Brothers Group on licensing issues and filing strategies, and counseling Scholastic on trademark issues arising from the sale of its Educational Technology and Services Business to Hougton Mifflin Harcourt. Practice head Dave Davis in Chicago is recommended, as are Lisa Rosaya and Pamela Church in New York.

Bracewell LLP is noted for its strong prosecution and enforcement practice and also regularly advises on the branding and advertising issues of product launches. It assists key client HTC with trademark clearance for all new HTC mobile devices, with enforcement matters in North and South America, and recently with cancelation and opposition proceedings before the TTAB. The team also took over the portfolio management for San Antonio Shoes and handles enforcement matters for the client. Practice head Erin Hennessy is based in New York and Seattle.

The ‘efficient and pragmatic’ team at Cooley LLP is well known for its work in the technology sector, but also regularly acts for clients in a variety of other industries. Peter Willsey in Washington DC manages prosecution and enforcement of Mozilla’s trademarks, including new trademark applications for Firefox in numerous jurisdictions. Janet Cullum in New York assists LinkedIn with assessing, developing, implementing and enforcing its international trademark strategy. John Crittenden in San Francisco acts as primary trademark counsel to Lonely Planet, Tesla Motors, RadPad, and Kamut International.

Covington & Burling LLP’s practice is particularly noted for its transactional trademark practice and also handles prosecution matters for a broad variety of clients. The National Geographic Society is a longstanding client of the prosecution practice and has recently been advised on negotiating an expanded joint venture and trademark licensing agreement with 21st Century Fox that combines television channels with other media and consumer-oriented assets. Other clients include the American Automobile Association and the Business Software Alliance. Of counsel Kathleen Gallagher-Duff and of counsel Marie Lavalleye in Washington DC are recommended.

Particularly noted for its strength in anti-counterfeiting, Dentons’ team assists a variety of clients with the management of their global trademark portfolios and provides IP advice in relation to corporate and commercial transactions. Recent work includes assisting Cassava with trademark searching, acquisition and protection regarding its entry into the US market, advising Pacific Sunwear of California on trademark matters regarding marketing activities and assisting Morgans Group with the worldwide protection of its brands. Monica Richman in New York is recommended.

Foley & Lardner LLP’s practice regularly provides strategic advice to clients in the sporting, fashion, financial services and automotive industries. Recent highlights include advising the US Olympic team on licensing and advertising matters. The team also manages the worldwide trademark portfolio of Caterpillar, including several enforcement actions, and continues to assist Citigroup with foreign and domestic trademark searches as well as filing and prosecuting trademark applications. Other clients include 7-Eleven, Harley-Davidson and Hermès. Milwaukee-based practice chair Mark Diliberti is recommended. Jeffrey Greene moved to Fenwick & West LLP in April 2017.

Greenberg Traurig LLP’s brand management practice is noted for its work in a variety of industries, particularly technology, entertainment, fashion and luxury goods. The team assisted Western Digital with the expansion of its global trademark portfolio, acts for Electronics For Imaging in monitoring, prosecuting and enforcing its brands, and has been advising H&M on trademark filing regarding upcoming product and brand launches. Other clients include Ralph Lauren, Katy Perry and Jennifer Lopez. Practice chair Susan Heller in Los Angeles and Steven Wadyka in Washington DC are recommended.

The ‘very strong’ team at Jones Day is recommended for ‘efficient’ trademark prosecution services. It works for many big brand owners, including Abercrombie & Fitch, BMW, Coty, VF Corp and Wendy’s. The practice recently acquired LeSportsac as a new client and now manages its trademark portfolio, advises it on brand launches and handles enforcement matters. Other highlights included assisting the Wikimedia Foundation with an enforcement program regarding mobile applications, websites and social media. Meredith Wilkes in Cleveland is recommended, as are Washington DC-based John Froemming and Susan Kayser.

Kelley Drye & Warren LLP’s Andrea Calvaruso in New York leads a very experienced team that regularly advises clients in the luxury goods, fashion and beverage sectors, conducting clearance, licensing and trademark enforcement. Highlights included assisting Miss Universe Organization with the management of its worldwide trademark portfolio, licensing agreements and enforcement matters. The practice also assists Gucci with clearance, filing, strategic management, enforcement and several opposition proceedings before the TTAB. Other clients include Avon, Bacardi, Foot Locker and Ralph Lauren.

King & Spalding LLP’s team assists a diverse range of clients with domestic and international trademark protection, including enforcement matters and cancelations and oppositions. Richard Groos in Austin assists Home Depot with trademark prosecution and enforcement. Kathleen McCarthy in New York successfully registered ‘Zero’ as a mark for several soft drinks of The Coca-Cola Company, after facing an opposition based on the genericness of the mark. Other clients include Mary Kay, Ignite Restaurant Group and Mac Parent.

Knobbe Martens Olson & Bear LLP’s practice is experienced in handling brand protection matters for clients from a variety of industries, including fashion, and food and beverage. Recent work includes assisting Revolve Clothing with developing and implementing a worldwide brand protection and enforcement strategy. The firm has also assisted Monster Energy in building a portfolio of more than 5,200 registered trademarks, and represents the client in cancelation and opposition proceedings before the TTAB. Practice head Jeff Van Hoosear and Diane M Reed in Orange County are recommended.

Norton Rose Fulbright US LLP is particularly noted for its transactional trademark practice, which covers due diligence investigations and advising on licensing and joint venture agreements. The practice also has a strong client base for domestic and international portfolio management and is regularly involved in opposition and cancelation proceedings before the TTAB. Highlights included assisting online and catalogue retailer Bluestem Brands with the acquisition of competitor Orchard Brands, including trademark portfolio management, clearance and prosecution. Practice head Timothy Kenny in Minneapolis and Alicia Morris Groos in Austin are recommended.


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  • EU and Malta Securitisation Market

    Following the US subprime crisis that began in 2007, the notion of securitisation has suffered from bad press that tainted its reputation. However, securitisation is still considered as an essential component to continued economic recovery and for well-functioning financial markets.
  • PATENTABILITY OF SOFTWARE IN SINGAPORE

     leading_lines_newsletter_dec_2017
  • DOJ Makes the Pilot Program Permanent and Announces FCPA Corporate Enforcement Policy

    The US Department of Justice ("DOJ") had announced a pilot program [1] ("Pilot Program") on April 5, 2016, which created new mitigation opportunities for companies that (i) voluntarily self-disclosed, (ii) cooperated fully, and (iii) took timely and appropriate remedial actions in FCPA matters that fell within the Fraud Section's mandate. The Pilot Program was to remain in effect for 1 year, starting from the day of its announcement. On March 10, 2017, the Acting Assistant Attorney General, Kenneth A. Blanco, announced in a speech that the Pilot Program would continue in full force until the DOJ reached a final decision on whether to extend it, and what revisions, if any, should be made to it. [2] The evaluation period of the Pilot Program ended on November 29, 2017, when Deputy Attorney General Rod Rosenstein announced the new FCPA Enforcement Policy ("Policy"), which effectively makes the Pilot Program permanent with some revisions. According to Deputy Attorney General Rosenstein, the FCPA Unit received 30 voluntary disclosures during the time period that the Pilot Program was in force, as opposed to 18 voluntary disclosures that were received during the previous 18-month period. The Policy has been incorporated into the United States Attorneys' Manual in order to "be readily understood and easily applied by busy prosecutors" as opposed to being promulgated in memorandum format. [3]
  • Effects of State of Emergency Law in Turkey On Prison Sentences Under Criminal Execution Laws

    With the Statutory Decree No.671 dated August 17, 2016, and the recent changes with Regulations No.29987 and No.29824 on Regulation Regarding an Amendment on Placement to Open Punishment Execution Facilities effecting execution of the Law No.5275 on Punishment Execution Law has introduced significant changes.
  • [SOUTH KOREA] Supreme Court Affirms Lower Decision, Finding Invalid the Regulations on Foreign ...

    Supreme Court Affirms Lower Court Decision, Finding Invalid the Regulations on Foreign Exchange Report on Incorporation of Offshore Subsidiary by an Offshore Company
  • Disputes on Health-Related Commercial Advertisements under Consumer Law

    Introduction
  • [SOUTH KOREA] New Administration’s Key Environmental Policies

    To step forward as an environment-friendly government, the Moon Jae-in Administration has announced its key environmental policies, including improving safety in chemical substances and household chemical products, and reinforcing implementation measures of the Paris Agreement.  Under the “sustainable development” paradigm, the new administration will continually promote new regulations to protect the environment and strengthen its enforcement of environmental regulations.
  • [SOUTH KOREA] Lower Court Issues Favorable Decision for 27,000 KIA Motors Employees in an ...

    Lower Court Issues Favorable Decision for 27,000 KIA Motors Employees in an Ordinary Wage Case 
  • SyCipLaw TMT Bulletin: “More Philippine Data Privacy Act: Are you Ready for Phase II?”

    Controllers and processors who have completed Phase I registration with the National Privacy Commission (NPC) will now have to gear up for Phase II. Phase II involves providing the NPC certain information on the organization’s compliance with the Data Privacy Act (DPA).
  • Crowdfunding - The Path towards a regulatory Framework

      The importance and feasibility of crowdfunding platforms is increasing in stature and importance for current and future the entrepreneurs. Malta has recently acceded to the rising trend by creating its first crowdfunding platform, ZAAR, a reward-based crowdfunding platform who has recently been awarded with the first prize in its section at the National Enterprise Support Awards 2016 also as well as being one of the local projects that have represented Malta at the European Enterprise Promotion Awards 2016, held in Slovakia. Nonetheless start-ups based in Malta with global aspirations often rely on international platforms. An increase in interest has emerged amongst the art and culture community as well in social entrepreneurship projects. Crowdfunding in Malta is still at the early stages of development. Despite this, there are endless opportunities for local entrepreneurs and the local business community. Research has shown that through international crowdfunding platforms, monies have been raised for projects in the field of gaming consoles, apps and software as well as for artistic projects.  Testimony to this is a new game design studio in Malta, that launched its first game, Politicks, raised financing through the crowdfunding platform Indiegogo.

Press Releases worldwide

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