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  1. Patent: prosecution (including reexamination and post-grant proceedings)
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Finnegan, Henderson, Farabow, Garrett & Dunner LLP‘s ‘very knowledgeable’ team fields a very active PTAB practice - the main focus of Reston’s Erika Harmon Arner and Atlanta’s Jason Stach - with a strong track record in covered business method reviews, post-grant reviews and inter partes reviews (IPR); the group is also exceedingly well versed in patent applications and portfolio strategy development, with experience including utility, plant and design patents and its large sectorial breadth renders possible a varied caseload that recently included strategic patent counselling for Vertex Pharmaceuticals regarding cystic fibrosis products. Washington DC-based managing partner Mark Sweet led advice for NanoFlex Power on its worldwide patent portfolio in relation to application drafting work and due diligence work regarding competitors, while Elizabeth Ferrill and Gregory Gramenopoulos, both also in Washington DC, assisted Google with design patent application preparation and counselling matters regarding graphical user interfaces and icons. Arkema engaged the team, here led by Sweet, Mark Feldstein and Brian Kacedon, for a representation in a post-grant review before the PTAB, challenging a Honeywell patent regarding automobile air conditioning chemicals. Other clients include AstraZeneca, Caterpillar and Toyota. Elliot Cook in Reston, Li Feng, Joshua Goldberg and Erin Sommers in Washington DC made partner and former Lead Administrative Patent Judge at the United States Patent and Trademark Office (USPTO) Trenton Ward joined the Atlanta office.

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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. has extensive experience in portfolio management for large multinationals and start-ups, assisting primarily with the filing of US and foreign utility and design patent applications, as well as an exceedingly strong track record in PTAB proceedings, acting for patent owners and petitioners alike. IPRs form a large part of the team’s workload, with covered business method reviews and post-grant reviews being other areas of strength. The large size of the team allows for a broad sector coverage, including the technology, life sciences and electronics sectors. Washington DC’s Karl Renner is a key contact. New York’s Samuel Borodach successfully represented petitioner Koito Manufacturing in an IPR against an Adaptive Headlamp Technology patent owner covering an automatic directional control system for vehicle headlights, thereby contributing to the later dismissal of several district court litigation proceedings. A recent example of the group’s prowess in portfolio management was assisting Avnet with the analysis of its IP portfolio before transferring the portfolio to new entity Avnet Technology solutions.

Foley & Lardner LLP is adept at developing patent portfolio strategies and demonstrates particular strength in PTAB work. The team regularly represents clients in IPRs, covered business method and post-grant reviews, acting for both patent owners and petitioners. Michele Simkin’s team possesses broad sector scope, as evidenced by a varied list of matters, ranging from Simkin’s work for 22nd Century Group in relation to transgenic tobacco products to the representation of Broadcom in portfolio development matters and advice for Daiichi Sankyo on the preparation and filing of an IPR against a therapeutic antibody patent owned by Alethia. The group also acted for Google in relation to portfolio development, application drafting and post-grant matters. The client list features BASF, Hitachi and Takeda Pharmaceuticals. Other main contacts include Stephen Maebius, Kristel Schorr and Pavan Agarwal in Washington DC, Mark Kassel in Madison, Wisconsin, Joseph Ziebert in Milwaukee, Christopher McKenna and John Lanza in Boston, as well as senior counsels Cliff Liu in Palo Alto, Meng Pua in Boston, Tianran Yan in Washington DC and Christopher Bolten in San Diego. Frederic Henschel left for Potomac Law Group while Marc Morley joined Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C..

Providing ‘invaluable foresight and guidance’, McDermott Will & Emery LLP has broad sector expertise across the technology, electronics, automotive, chemical and pharmaceutical industries, and is a popular choice for IPRs. The team’s main contacts are based in Boston, Chicago, Orange County, Silicon Valley and Washington DC and include US-Korean dual-qualified Hosang Lee, who led the filing of several hundred patent applications for Samsung, including applications in the electro-mechanical sector. For new prosecution client Carnival Cruises, the group advised on the prosecution of strategic patents covering the client’s Ocean Medallion, a wearable device to be used by passengers on-board cruiseships. Edward Gordon and Michael Dreznes led in assisting Google with prosecution and portfolio management issues in relation to, among others, online advertising technologies, productivity tools and cloud computing. The client list includes several Korean, Japanese and Taiwanese household names, such as Hyundai, Panasonic and Taiwan Semiconductor Manufacturing Company, alongside US giants including Apple. Washington DC’s Michael Fogarty and Ahsan Shaikh, the ‘shrewdRobert Underwood and Kristin Connarn in Boston are other attorneys to note. Bernard Knight left to become a member of the Public Policy Advisory Committee of the USPTO. Stephen Becker retired. Since publication, Mark Itri has moved to Morgan, Lewis & Bockius LLP.

On top of fielding a strong domestic and international patent application practice, Sterne, Kessler, Goldstein & Fox PLLC also excels in PTAB proceedings, has deep expertise in the life sciences and pharmaceutical sectors and also exhibits strength in semiconductor and technology-related work.Robert Sokohl, Donald Banowit and Jorge Goldstein direct the ongoing prosecution work for Taiwan Semiconductor Manufacturing, including devising strategies for PTAB proceedings. Design patent expert Tracy-Gene Durkin assists Apple with the development and implementation of its global design patent strategy, including the coordination of patent filings in over twenty countries worldwide. In a highlight from the biotech sector, Eric Steffe advised Bioverativ on the development of its patent portfolios for two hemophilia drugs, subsequently also representing Bioverative in ex-parte reexaminations. Other clients include Bristol-Myers Squibb, Broadcom and adidas. Richard Coller, Eldora Ellison, Michael Ray and Robert Greene Sterne are also noted. Lei Zhou left for Actavis Generis while Michael Messinger departed to co-found Shami Messinger and Kenley Hoover joined Nixon & Vanderhye PC.

Cantor Colburn LLP demonstrates strength in utility and design patents matters, with the life sciences and software sectors as core areas of expertise, and serves a multi-national client base, including clients from China, Japan and Brazil. With the addition of the Korea Institute of Science and Technology, the Korea Institute of Energy Research and the Korea Institute of Industrial Technology to the client roster, the practice considerably strengthened its connections with South Korea. In a recent highlight, the team successfully represented Epicor Software in two related covered business method reviews regarding cell-level encrypted database technology. Other clients include ZTE, Siemens and IBM. Co-managing partners Michael Cantor and Philmore Colburn are based in the Hartford office, but the firm also has presences in Atlanta, Washington DC, Troy and Houston. Key attorneys include chemical, materials and life sciences experts Leah Reimer and Pamela Curbelo as well as Dave Christensen and PTAB practice chair Andrew Ryan. William Cass as well as George Pelletier became of counsel and Grant Ehrlich, Krista Kostiew and Paul Rodriguez made partner.

Fenwick & West LLP provides ‘a deep team with strong subject-matter expertise, good industry knowledge’ and ‘high-end services’. The practice is particularly renowned for its prosecution work in open source-related mandates, but with its technology and life sciences expertise, the Silicon Valley-based team also provides multinationals and start-ups broad services across the computer science, molecular biology and chemistry sectors; electrical engineering-related work is another key strength. On the post-grant side, the practice acts for a number of household names, including Amazon and another standout feature is its work for academic and research institutes. Rajiv Patel directs the practice and regularly represents high-profile clients such as Twitter and GoPro. Robert Hulse and Antonia Sequeira are in charge of the ongoing prosecution work for Facebook that involves design patent work in addition to the more recent mandate to assist with securing virtual reality-related patents through acquisitions. Biopharmaceutical Venture GRAIL engaged the practice with the development of its patent portfolio.

Fitzpatrick, Cella, Harper & Scinto excels in the pharmaceutical sector where the team focuses on advising branded companies, but the group’s experience also includes high-profile work from the electronics and technology sectors. The practice successfully represented Canon in a PTAB proceeding against General Plastics Industrial regarding the rehearing of five prior decisions denying institution of IPRs where the group secured a favourable informative decision from an expanded judge panel. Other post-grant highlights included defending Novartis in an IPR proceeding requested by Roxane Laboratories. Sanofi, Merck and Johnson Outdoors are also on the client roster. PTAB specialist Justin Oliver and litigators Edmund Haughey in Washington DC and Michael Sandonato in New York were particularly active before the PTAB. Jonathan Berschadsky and Frank DeLucia joined Merchant & Gould PC.

The IP specialists at Knobbe Martens Olson & Bear LLP deliver an ‘outstanding level of service’ and understand their ‘clients’ products on a deep level’. The very large team allows for broad sector coverage, with a focus on life sciences, including medical devices and biotechnology work; electrical engineering and computer science mandates are other core areas. Handling both a strong PTAB and patent application-related caseload, the team’s recent highlights include successfully representing Kamstrup in an IPR proceeding regarding ultrasonic fluid flow meters, and assisting Becton Dickinson with the application for a patent on a smart module that converts syringes into smart devices. The client list features Illumina, the Lawrence Berkeley National Laboratory and Faraday Future. Post-grant chair Brenton Babcock and prosecution committee chair John King in Irvine and San Diego’s Michael Fuller and Gerard von Hoffmann are the main contacts. Clients praise Salima Merani’s ‘business acumen and industry knowledge’ in the life sciences sector, particularly for start-ups.

In addition to its active PTAB practice, Baker Botts L.L.P. advises clients on patent application filings and portfolio management; core areas the group’s vast portfolio of expertise include the technology, chemical, electronics and pharmaceutical sectors. With offices in San Francisco and Palo Alto, the team services numerous high-profile technology clients such as Facebook for which the practice acts as portfolio development and management counsel. New York’s Robert Maier and Robert Scheinfeld are assisting Hitachi with patent applications involving, among others, semiconductor and mechanical systems patents and Dell is regularly relying on Kevin Meek in Austin and Roger Fulghum in Houston for its patent development needs involving inter alia servers and enterprise software. Other clients include Cisco, BASF and Aker Solutions. Dallas’ Barton Showalter heads the IP team, which also includes the Palo Alto-based Hogene Choi.

Based in Virgina, Birch, Stewart, Kolasch & Birch, LLP excels in patent application and portfolio management work as well as in IPRs and post-grant reviews. The team’s sector span includes the electronics, mechanical and technology sectors, but the life sciences sector is particularly visible in the caseload. In a recent highlight in the pharmaceutical sector, the group successfully represented BioMarin Pharmaceutical in several PTAB proceedings and related appeals before the Court of Appeals for the Federal Circuit concerning patents on enzyme replacement therapy. Other clients include LG, Honda Motor and Sumitomo Rubber Industries. Biotech, biochemical and pharmaceutical specialists Gerald Murphy, MaryAnne Armstrong and Craig McRobbie as well as James Eller, an expert in mechanical and electro-mechanical patents, are the names to note.

Morrison & Foerster LLP specializes in high-end prosecution work in the technology, life sciences and consumer product sectors. A standout feature is practice head Michael Ward’s expertise in agricultural IP involving patents on plants and plant products: the Regents of the University of California benefited from this expertise when entrusting the group with work involving new plant varieties. Biotech giant Genentech relied on Catherine Polizzi for its defence against an IPR filed by Arch Development and Dana Farber Cancer Institute as part of a patent infringement offensive regarding chemotherapy drug Tarceva. Dyson, Sanofi and Netlist are also clients. Jonathan Bockman in Northern Virginia complements the groups strong West Coast presence in San Francisco and Palo Alto and San Francisco’s Jie Zhou is another name to note. Former head of the electronics, software and telecoms group Peter Yim as well as Brian Ho and Christopher Eide joined Dentons.

Virginia-based IP boutique Oblon’s particular strengths include utility patent applications in the life sciences, chemical and electrical sectors, but the team is also well versed in post-grant work. The group acts for US household names as well as foreign clients, such as French ophtalmic lens manufacturer Essilor and the IMAM Abdulrahman Bin Faisal University in Saudi Arabia and in a strong domestic highlight, it advised Immunolight on its platform technology patents. An example of the group’s PTAB prowess is the representation of petitioner Safran Aircraft Engines in an IPR regarding various turbine technology patents. Other clients include Ericsson, Renault and Schneider Electric. The group around managing partner Bradley Lytle includes Todd Baker, Philippe Signore and new team member Alexander Hadjis who joined from Cadwalader, Wickersham & Taft LLP. Scott McKeown departed to Ropes & Gray LLP and Kirsten Grüneberg and Richard Chinn left for Grüneberg Myers.

Pillsbury Winthrop Shaw Pittman LLP marries a strong patent application and portfolio management practice to a wide-ranging PTAB offer that includes expertise in IPRs, covered business method reviews and post-grant reviews. The team behind Jack Barufka, wo co-chairs the IP practice with Callie Bjurstrom and litigator and PTAB specialist Patrick Doody, shows broad sectorial breadth, covering the electrical, life sciences, mechanical and chemical engineering, and computer science industries: in a recent highlight, it successfully represented Kroger in an IPR against NexusCard regarding product discount application technology as part of a broader litigation initiated by NexusCard. The client list contains both domestic and international corporations such as AOL, UBS and Stanley Black & Decker.

The ‘efficient’ team at WilmerHale provides ‘excellent quality’ and ‘really listens to its clients’ priorities’. As a litigation powerhouse, the practice’s prosecution strength lies mainly in PTAB proceedings, although the group also demonstrates expertise in patent application and portfolio management. Technology-, life sciences- and automotive-related work is particularly frequent. David Cavanaugh in Washington DC directs the prolific PTAB group that includes Boston-based intellectual property department chair Donald Steinberg and Monica Grewal. A recent success was obtaining the final written PTAB decision on behalf of Unified Patents in an IPR against Acacia Research based on an airbag patent. Clients include Akamai Technologies, GlaxoSmithKline and Ford. James Hill joined FisherBroyles while Michael Twomey left for Wolf Greenfield & Sacks.

Banner & Witcoff, Ltd. especially stands out through its particularly prolific design patent practice, but also impresses with strong work on the utility patent side and its track record before the PTAB. The electrical, computer science and mechanical engineering sectors are particularly busy areas of work. The Washington DC-based Robert Katz and Darrell Mottley continue to assist household names such as Nike and Microsoft with the development of their design patent portfolios and the group also represented Nike in several IPRs against petitioner adidas. Bank of America and Brother Industries regularly entrust the team with the prosecution of utility patents and other clients include Bayer, Comcast and NASA. Chicago litigators Christopher Renk and Michael Harris as well as Christopher McKee in Washington DC are key contacts.

Buchanan Ingersoll & Rooney’s Alexandria team guides clients through patent application filings and PTAB proceedings, both domestically and internationally. The group has extensive experience in mainstream post-grant work including IPRs, post-grant reviews and covered business method reviews, but is also adept at representing clients in the rarer interference and derivation proceedings. The sectorial scope of the practice ranges from the electrical, mechanical and computer science sectors to matters for biotechnological, chemical and material science clients. Erin Dunston, Matthew Schneider, Travis Boone and Patrick Keane are the main contacts.

Hunton Andrews Kurth LLP‘s ‘responsive’ team delivers ‘thorough work’ and ‘is willing to go the extra mile’. With experience in devising offensive and defensive patent portfolios, the team regularly assists large corporates, start-ups and non-profit entities. Washington DC partners Ping Wang and Daniel Shanley as well as Houston’s Gregory Porter are the main contacts. Apple engaged the team with the representation in an IPR involving a semiconductor memory device and in the electro-mechanical sector, the group assisted the University of Tennessee Research Foundation with the prosecution of domestic and international patents. Nichia recently joined Toyota, Sony and Image Processing Technologies on the client roster. Michael Levy is now in-house counsel at Bayer HealthCare, Douglas Rommelmann left for Bracewell LLP and Sean Wooden joined Katten Muchin Rosenman LLP. Michael Ye joined Morris, Manning & Martin, LLP.

The ‘highly engaged team’ at Kilpatrick Townsend & Stocktondelivers fantastic work’ and covers myriad industry sectors. Practice head Vaibhav Kadaba’s ‘technical knowledge and his creativity, especially in defence work, is fantastic’. Standout recent work includes assisting adidas with the development of its patent portfolio and advising Oracle on the strategic expansion of its global patent portfolio in relation to a diverse range of patents, including cloud computing patents. Clients such as Color Genomics and the Laboratory Corporation of America attest the practice’s life sciences expertise while the presence of Celanese and Fine Agrochemicals on the client list points to its experience in the chemical field. GoPro, Applied Materials and SAS Institute are also clients. The Washington DC-based Justin Krieger and Silicon Valley’s Arrienne Lezak are the main contacts, adding geographical scope to the Atlanta-focused group.

Arent Fox LLP has proven experience in the semiconductor and software sectors and fields a strong practice in the electronic, technology, and life sciences industries. The Washington DC-based James Bindseil heads the patent practice and jointly handles the portfolio management work for Qualcomm with Craig Gelfound, who splits his time between Los Angeles and San Francisco. Microsoft has included the practice in its Strategic Partnership Program, where the group assists with prosecution work in relation to operating systems, laptops and graphics processing patents. General Electric, Becton Dickinson and Astra Zeneca subsidiary ZS Pharma also engage the team.

Arnold & Porter’s main focus is the life sciences sector where the team not only undertakes a significant amount of PTAB work, but also excels in patent application and portfolio management mandates. Recent examples of PTAB matters include the successful representation of Hologic in two IPRS filed by Minerva to challenge a patent on uterine ablation devices and, as part of a wider litigation, the defence of Boston Scientific against IPRs filed by Edwards Lifesciences relating to replacement heart valves. Long-standing client Monsanto profits from the team’s expertise in plant patents, in particular in transgenic and traditionally bred plants. Clients include Biogen-Idec, Samsung and Google. David Marsh and PTAB specialist Matthew Wolf in Washington DC shoulder the majority of high-profile work. Ginger Dreger left.

Baker & Hostetler LLP places strong emphasis on work in the electrical, mechanical and computer science sectors, but also has a dedicated biotechnological, chemical and pharmaceutical practice. Highlights included advising Apple on prosecution of graphics and video coding patents, and assisting DePuy Synthes with numerous medical device patents. Other clients include Teva, Johnson & Johnson and Avigilon. The arrival of Pierre Yanney from Stroock & Stroock & Lavan LLP in the New York office has strengthened the group’s PTAB expertise. Kenneth Sheehan in Washington DC, Michael Stein in Seattle and Philadelphia’s David Farsiou are other key contacts.

The life sciences, electrical, chemical and software sectors are Baker McKenzie LLP’s key areas of expertise and the group is adept at patent application, portfolio management and post-grant work, with particular strength in IPR representation. The team assists Coflex, Schlumberger and Sentiens with prosecution matters. Other clients include Brooks Brothers, Harsco and Zippo Manufacturing. New York’s Pamela Church heads the North American Intellectual Property Group, while Brian McCormack in Dallas and the Washington DC-based Richard Wells and Matt Dushek shoulder most of the caseload. Harry Hyunho Park joined the Washington DC office from Mayer Brown.

Jones Day’s team of ‘legal and scientific experts’ stands out through its strong PTAB practice and services a number of high-profile clients from the life sciences and technology sectors, with particular expertise in organic, medicinal and biochemistry, immunology and biology on top of a strong electrical engineering track record. San Diego’s Tamera Weisser and New York’s Adriane Antler co-chair the prosecution group which also includes PTAB lead David Cochran in Cleveland. Notably, the group represented AbbVie in an IPR proceeding against Coherus Biosciences in relation to the antibody therapeutic Humira®. Clients include SAP, Genentech and BioMarin Pharmaceutical.

Outstanding’ Boston IP boutique Wolf Greenfield & Sacks combines ‘expertise in a broad variety of industry sectors’ with the ‘ability to understand its clients’ business objectives’ and ‘highly tailored advice’. The team’s representation of the University of Florida Research Foundation in three IPRs filed by Covidien helped shape new law regarding protection against IPRs for state universities and related entities through extending the sovereign immunity defense. Keurig Green Mountain, Oxford Nanopore and the Massachussetts Institute of Technology are also clients. Timothy Oyer heads the practice, which also includes post-grant chair Richard Giunta as well as biotech expert Michael Twomey and counsel Zachary Piccolomini, who both joined from WilmerHale. Robert Jensen and Andrew Tibbetts made partner and Robert Abrahamsen joined Pierce Atwood LLP.

Brinks Gilson & Lione exhibits particular strength in the pharmaceutical and medical device sectors, but also has a strong track record in the technology, automotive, chemical and alternative energy sectors. Recent highlights include advising Dynamic Food Ingredients, Hyundai and Kia, and BASF on prosecution matters, and acting for Continental Automotive Systems in an IPR regarding a tire pressure monitoring patent. The client list also features Accenture and Gilead Life Sciences. William Boudreaux in Ann Arbor and Andrew Stover head the practice; Chicago’s Heidi Dare, Durham’s Allen Baum and Ryan Marshall in Salt Lake City are other names to note. Amir Penn joined Lempia Summerfield Katz LLC.

Cooley LLP fields a prolific patent application practice in the technology and life sciences sectors, but also has strong PTAB expertise. The group’s experience includes IPRs alongside covered business method reviews and ex-parte reexaminations. New York’s Ivor Elrifi heads the practice.

At Dentons the arrival of Peter Yim and Brian Ho in San Francisco and Christopher Eide in Silicon Valley, all from Morrison & Foerster LLP, has significantly increased the group’s prosecution strength. Life sciences, technology and electronics are core areas of expertise. Dallas life sciences expert Robert Hanson, who led in successfully representing Monsanto in tree IPR proceedings regarding soybean seed oil patents, and Washington DC-based technology specialist Song Jung share the lead of the IP and Technology group. Eric Sophir in Washington DC is another main contact. Clients include Coca Cola, LG and the University of Texas at Austin.

Post-merger Eversheds Sutherland has considerably expanded its client base and now serves an impressive list of clients, mainly from the consumer products industry, but also from the e-commerce, automotive, electronics and technology sectors. Microchips Biotech, Magnolia Liquefied Natural Gas and Novaled are clients. The Atlanta-based team of practice head Peter Pappas includes key attorneys Ann Fort, Malvern Griffin, Daniel Warren and Christopher Chan.

Based in Chicago, Leydig, Voit & Mayer Ltd. has expertise in the healthcare, biotech, electrical and manufacturing and heavy equipment sectors and advises a diverse group of clients including the National Institutes of Health, Huawei Technologies and Caterpillar. Samsung Electronics engaged the team to assist with the prosecution of biotechnological patents. John Kilyk directs the team and mechanical engineering and fluid dynamics expert Charles Mottier is also noted.

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