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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.

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.

Following the combination of Andrews Kurth LLP with Kenyon & Kenyon LLP in 2016, Hunton Andrews Kurth 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.

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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