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The Legal 500 Hall of Fame highlights individuals who have received constant praise by their clients for continued excellence. The Hall of Fame highlights, to clients, the law firm partners who are at the pinnacle of the profession. Starting with the United States, the criteria for entry is to have been recognised by The Legal 500 as one of the elite leading lawyers for six consecutive years. Fewer than 500 partners across the entire United States have made it into the inaugural list. These partners are highlighted below and throughout the editorial.

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United States > Intellectual property > Overview > Law firm and leading lawyer rankings


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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 ‚ÄėThe Slants‚Äô 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.

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