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Patents: prosecution (including re-examination and post-grant proceedings) in United States

Fenwick & West LLP

Fenwick & West LLP enjoys an excellent reputation for its prosecution work in the technology and life sciences sectors. The Californian powerhouse offers stellar technical and scientific expertise thanks to its many team members with advanced technical degrees, including in chemistry, electrical engineering, molecular biology, and computer science. Adept at assisting start-ups and growth companies with the development of their patent portfolios, the practice regularly accompanies its clients for years and is able to advise on major acquisitions or IPOs. Post-grant proceedings are another area of particular strength. Clients also benefit from the firm's portfolio management extranets, which are especially useful for the many international and multinational clients which can access and manage substantial patent portfolios from anywhere in the world. Another asset is the firm's Vermont-based patent operational office which ensures cost-efficient patent documentation handling and filing. Mountain View duo Michael Farn and Rajiv Patel share the lead of the practice.

Practice head(s):

Michael Farn; Rajiv Patel

Other key lawyers:

Robert Hulse; Antonia Sequeira; Jae Won Song

Key clients

Cipherome

Corvidia Therapeutics

Facebook

Grail

Instacart

Netflix

Ontera

Propeller Health

Dropbox

Trace Genomics

Work highlights

  • Drafted and prosecuted next-generation patent families for Corvidia Therapeutics, as Corvidia repurposed Ziltivekimab from its original intended indication, treatment of rheumatoid arthritis, to treatment of inflammatory cardiovascular disease, and acted as company IP counsel for Corvidia in its acquisition by Novo Nordisk for $725m in cash, with future contingent payments of up to $1.4bn.
  • Advising Facebook on the development and management of the bulk of Facebook’s patent portfolio.
  • Assisting Ontera Inc. with filing patents for and managing the international portfolio of Ontera, Inc., the leader in silicon-based nanopore technology for precision molecular diagnostics in humans and in AgTech.

Foley & Lardner LLP

Foley & Lardner LLP added the well-known electronics experts Eric Sophir (Washington DC) and Gary Solomon (Dallas), both formerly at Dentons, to its already substantial bench. The group of practice head Michele Simkin in the Washington DC office focuses on the prosecution of technology patents, including representation in corresponding PTAB proceedings such as inter partes reviews and ex parte reexaminations. Particularly active in the prosecution of utility patents, the practice attracts domestic and international clients for US proceedings and the prosecution of patents abroad. In line with market developments, the team is increasingly sought after for patents covering AI and machine learning, autonomous vehicles, or blockchain technology. Pharmaceutical and life sciences patents account for another portion of the caseload, especially those covering genomic and cellular medicines. Other key contacts include biotechnology and chemistry expert Mark Kassel in Madison; electronics specialist Joseph Ziebert in Milwaukee; electronics and technology expert Christopher McKenna in Boston; Stephen Maebius in Washington DC; a biotechnology and pharma specialist; and fellow Washingtonian and electronics and automotive technology buff Pavan Agarwal. Meng Pua in Boston is also recommended.

Practice head(s):

Michele Simkin

Other key lawyers:

Joseph Ziebert; Eric Sophir; Gary Solomon; Christopher McKenna; Stephen Maebius; Pavan Agarwal; Mark Kassel

Testimonials

‘The people – individually, and as a team – are engaged and authentic – they value and are driven by long-lasting partnership. They are a diverse group of individuals and, as a result, are more than the mere sum of their parts. They are highly competent, inspire confidence, are reliable, accurate and punctual. They know their strengths and the business and consistently meet their budgets – they are equally flexible and creative.’

‘Integrity, courage, inclusion, reliability, compassion, authenticity, intuition – Eric Sophir embodies them all – in his personal life and his professional.’

‘Creative and proactive patent prosecution team.’

‘Eric Sophir is a super strategic patent prosecution lawyer. Very responsive and attune to corporate objectives of client.’

‘Foley’s IP team is a true team in all ways. They function as a team internally as well as with in-house counsel. Their positive, respectfully way of dealing with clients and other counsel is exceptional.’

‘Michele Simkin and her team (with special call-out to Aude Peden) stand out.’

Key clients

Aligos Therapeutics

Argonne National Laboratory

Aurora Innovation

AVX

Bank of Montreal

BASF Corporation

Belden

Bemis Company

Bridgestone Corporation

Briggs & Stratton Corporation

Broad Institute, Inc.

Broadcom Ltd.

Celgene Corporation

Citigroup

Citrix, Inc.

Collins Aerospace/Rockwell Collins/Raytheon

Cummins Inc.

Daiichi Sankyo Co., Ltd.

Draper Laboratory

EnGeneIC Ltd

Enterin, Inc.

Facebook, Inc.

Ferring Pharmaceuticals

Fiserv, Inc

FuelCell Energy, Inc.

Genentech

Google Inc.

Harvard Medical School

Hitachi, Ltd.

Hitachi Automotive Systems, Ltd.

Johnson & Johnson

Johnson Controls, Inc.

Knowles Corporation

Kohler Co.

Lockheed Martin Mission Systems and Training (MST)

Major League Baseball

Massachusetts  Institute of Technology (MIT)

Massachusetts Mutual Life Insurance Company

Memorial Sloan Kettering Cancer Center

Nestle Skin Health/Galderma R&D Inc.

New York University

Nichia Corporation

Nissan Motor

Noven Pharmaceuticals, Inc.

Nutanix

Oshkosh Corporation

People.ai, Inc.

Pindrop Security, Inc.

PLx Pharma

Quest Diagnostics Incorporated

REG Synthetic Fuels d/b/a Renewable Energy Group

Regents of University of California

Reliance Worldwide

Renesas Electronics

Research Institute at Nationwide Children’s Hospital

S.C. Johnson & Son, Inc.

Sarepta Therapeutics

Sensia Global

Stanford University

SF Motors/Seres

Smile Direct Club

Stryker Corporation

Sumitomo Dainippon Pharma

Takeda Pharmaceutical Company

Toshiba Corporation

Tumunity

Unilever USA

United Therapeutics

University of California

University of Pittsburgh Innovation Institute, Office of Technology Management

US Bancorp

Wells Fargo & Company

Western Digital

Work highlights

  • Acted as lead counsel for United Therapeutics on two inter partes reviews relating to a product with over $1bn in total sales.
  • Advised Google on strategic IP development for market-making technologies.
  • Acted as lead prosecution counsel for Genentech for a blockbuster antibody drug currently being used to treat severely ill Covid-19 patients.

Sterne, Kessler, Goldstein & Fox PLLC

IP boutique Sterne, Kessler, Goldstein & Fox PLLC remains among the market's most renowned patent prosecution addresses. The group prosecutes design and utility patents and combines wide-ranging technical expertise with an effective PTAB practice. Firmly rooted in Washington DC, the team is also very well versed in the prosecution of patents involving Europe and Asia. Eldora Ellison, a life sciences specialist, is among the key figures. Michael Ray, who specializes in electronics patents, is the firm's managing partner, while Deborah Sterling is in charge of the biotechnology and chemistry practice. The head of the electronics practice is Jason Eisenberg. Tracy-Gene Durkin leads the mechanical and design practice and is a well-known design patent expert.

Practice head(s):

Michael Ray

Other key lawyers:

Eldora Ellison; Deborah Sterling; Jason Eisenberg; Tracy-Gene Durkin

Arent Fox LLP

Arent Fox LLP stands out as a strong patent practice within a full-service firm, its expertise in patent prosecution work for New York-based fashion licensing companies, and its appointment by Microsoft to its strategic partner program. With offices in New York, Washington DC, Los Angeles, San Francisco and Boston, the group is well suited to large US clients. However, the practice is equally adept at handling cross-border work as a result of its close ties to a well-known London firm, which regularly entrusts its clients’ US patent prosecution work to the firm. Life sciences, mechanical and electrical, software, technology and retail-related patents form the heart of the caseload. Richard LaCava directs the team. Sheree Rowe and Jonas Hodges joined Procopio, Cory, Hargreaves & Savitch LLP in June 2020 while Jeffrey Vockrodt left for Culhane Meadows Haughian & Walsh PLLC in April that year.

Practice head(s):

Richard LaCava

Other key lawyers:

Craig Gelfound; Richard Berman; Wilburn Chesser; James Bindseil; Marylee Jenkins

Testimonials

We look always for firms able to consider a strategy approach rather than to tell us the content of law. This is what we like at Arent Fox. Practical analysis and considerations, attention to the target, alternatives, and lateral views.

The communication between attorneys and paralegals is very good.

With Arent Fox, I have never been given any reason to feel I could do better elsewhere.

Arent Fox is always on top of changes in the law that may affect my business. They work well with other firms when necessary for my business needs and they are not adverse to referring me to someone who they feel could be of assistance.

We have a lot of confidence in Marylee Jenkins.

James Bindseil is a highly effective patent advisor himself, but also runs an excellent client service team. Availability and drive is very high.

Craig Gelfound is incredibly loyal, very cognizant of our financial limitations, and quite honestly one of the main reasons we are still in business. He is open and honest and provides sage and thoughtful advice above and beyond what we pay for.

Key clients

Becton Dicksinson

Bridgelux

Cardinal Health, Inc.

Divergent Technologies, Inc.

Global Legal Community

Grass Valley and Snell Advanced Media

Inspirion Delivery Sciences (IDS)

Johnson Controls, Inc.

Microsoft Corporation

MPLUS Cosmetics srl

Munchkin

Omnitracs LLC

Proteome Sciences, PLC

Qualcomm

Qualcomm Inc.

Rothy’s, Inc.

Spectrum Brands, Inc.

Stone Castle Partners, LLC

Thorton Tomasetti

Vale S.A.

Viax Dental Technologies, LLC

Western Digital and SanDisk

Work highlights

  • Acted as global IP counsel to Thorton Tomasetti, the engineering firm that provided the structural design for several of the world’s tallest building structures.
  • Advising Becton Dickinson on patent prosecution for product lines in the integrated analytics solutions, medication and supply management, surgical instruments, and interventional specialties areas, as well as for the product lines in the infection prevention, respiratory care, and interventional specialties areas.
  • Acted as counsel to Microsoft on patent prosecution matters.

Baker Botts L.L.P.

Baker Botts L.L.P. stands out as one of the few general practice firms to offer a seasoned team of patent prosecution and litigation specialists. Adept at drafting and filing US and foreign patent prosecutions, the practice also distinguishes itself through its successful PTAB experts who shoulder a busy inter partes review and covered business method review caseload. In August 2020, the team gained an experienced prosecution and licensing specialist in Palo Alto when Christopher Palermo joined from Hickman Palermo Becker Bingham L.L.P. , now Hickman Becker Bingham Ledesma LLP. The technology, electronics and telecom industries remain among the firm's core sectors. Robert Scheinfeld in New York is the chair of the IP practice, with Christa Brown-Sanford in Dallas acting as his deputy. Palo Alto's Hogene Choi and Dallas' Samir Bhavsar jointly lead the prosecution team. The PTAB trial group lead duo consists of Brian Oaks in Austin and Chad Walters in Dallas.

Practice head(s):

Robert Scheinfeld; Christa Brown-Sanford; Hogene Choi; Samir Bhavsar; Brian Oaks; Chad Walters

Other key lawyers:

Travis Thomas; Eliot Williams

Testimonials

‘Baker Botts’ patent team has a great mix of technical expertise and pragmatism and can service start-ups and mature technology companies with equal competence. I have been particularly impressed with their ability to work directly with both technical and business teams.’

‘Hogene Choi is uniquely competent at working with technical teams and inventors, internal legal, and business leaders, to create the three legs of the stool that supports our early IP generation program.’

‘The group led by Paul Morico is outstanding in oilfield patent prosecution and is very cost effective despite being a large law firm.’

‘Paul Morico’s attention and oversight of our portfolio makes him an invaluable member of our team.’

‘Huge expertise in video coding and communications space.’

‘Paul Ragusa is very experienced which makes working with him and his team very easy and effective.’

Key clients

Facebook, Inc.

Columbia University

Cisco Systems Ltd.

Lyft

Twilio Inc.

Square

Lennox International

Broadcom (CA Technologies)

Brother Industries Ltd.

Hitachi Ltd.

Qualcomm

Dell Inc.

Dish Network

Utex Industries

Work highlights

  • Acted as primary outside counsel for Cisco for patent licensing, strategic portfolio development, defensive patent analysis, and overall counseling and patent strategy.
  • Represented Dish Network at the Federal Circuit, securing a decision holding that merely configuring a computer to implement an improvement to an abstract concept is not patent-eligible.
  • Assisting Square with the development and management of its worldwide patent portfolio, focusing on all technologies involved in its Cash App, including blockchain-related technology.

Banner & Witcoff, Ltd.

Banner & Witcoff, Ltd. remains one of the finest US addresses for the prosecution of design patents; it is also one of the most active and successful post-grant representatives in the country, especially in inter partes reviews. The IP boutique shoulders a busy utility patent caseload. Given the group's design patent prowess, its popularity among leading consumer goods manufacturers is no surprise, but the team is particularly active in the software, electronics, gaming, and telecoms sectors. Practice head Chunhsi Andy Mu is based in the Washington DC office, with the firm's other key offices being in Boston, Chicago, and Portland. Paul Rivard left for an in-house position at MyMD Pharmaceuticals in September 2020. New joiners to the partnership in January 2020 include Eric ZelepugasChristopher Galfano and Robert Boyd in Chicago, as well as Kirk Sigmon and Blair Silver in Washington DC.

Practice head(s):

Chunhsi Andy Mu

Other key lawyers:

Binal Patel; John Hutchins; Robert Katz; Ross Dannenberg; Joseph Berghammer; Frederic Meeker

Key clients

Allstate Insurance

Bank of America

Brother Industries

Citrix Systems

Comcast Cable

Kayak

Lexmark International

Microsoft

Nike

RTC Industries

Shure Inc.

SolarEdge Technologies

Spectrum Brands

The Clorox Company

Yeti Coolers

Yokohama Rubber Co.

Work highlights

  • Represented Comcast in inter partes reviews against 37 patents and over 1,000 patent claims asserted by Rovi.
  • Representing Centripetal in developing an industry-leading IP portfolio, which includes four patents that recently helped the client secure the largest patent verdict in US history.
  • Assisting Nike with managing nearly its entire design patent portfolio.

Finnegan, Henderson, Farabow, Garrett & Dunner LLP

Finnegan, Henderson, Farabow, Garrett & Dunner LLP's substantial team is among the most experienced and versatile groups in the market. The IP mega-boutique is a one-stop-shop for patent matters, with the prosecution practice being one of the core practice pillars. Under the lead of Joshua Goldberg, the firm also remains a key player at the PTAB, with proceedings including inter partes reviews, ex parte proceedings, post-grant reviews, and covered business method reviews. Clients entrust their utility and design patent portfolios to the firm. The practice is a very good choice for US clients and multinationals alike, thanks to its US footprint with the main office in Washington DC and other offices in Reston, Palo Alto, Boston, Atlanta, coming in addition to its international presence in London, Seoul, Shanghai, Taipei, and Tokyo. Managing partner Anand Sharma, chair Mark Sweet and patent office section head Jill MacAlpine are, like Goldberg, based in Washington DC. Erika Harmon Arner, the Reston-based leader of the firm electrical and computer technology practice group and a PTAB expert, is also noted.

Practice head(s):

Anand Sharma; Mark Sweet; Joshua Goldberg; Jill MacAlpine

Other key lawyers:

Aaron Capron; Erik Puknys; Elizabeth Ferrill; Erika Harmon Arner

Fish & Richardson P.C.

Fish & Richardson P.C. is widely recognized for its effective PTAB practice, led by Karl Renner in Washington DC and senior principal Dorothy Whelan in Minneapolis. Also based in the Washington DC office, John Hayden directs the patent practice of the IP boutique.

Practice head(s):

John Hayden; Karl Renner; Dorothy Whelan

Knobbe Martens Olson & Bear LLP

IP firm Knobbe Martens Olson & Bear LLP houses one of the country's largest patent teams and is therefore able to prosecute patents in an exceedingly wide range of sectors. The medical device, biotechnology, electrical engineering and telecom teams are particularly big, with a continuing growth in the data privacy, robotics, and artificial intelligence areas. The firm's patent group is an integral part of the firm's full-service IP offering and includes seasoned PTAB experts and federal court litigators whose dispute experience ties in nicely with the patent drafting and portfolio development practice. San Diego's Gerard von Hoffmann and Steven Nataupsky (Orange County) form the practice's lead duo. Life sciences specialist Salima Merani, also in Orange County, is very well known for her medtech and biotech work, especially in the venture capital space. In January 2020, the following practitioners made partner: aerospace, mechanical and medical technology expert Tom Cowan in San Diego; mechanical and medical device specialist Devanie DuFour in Washington DC; Chang Lim in Orange County, whose expertise includes automotive, blockchain and electronics patents; and San Francisco's Kyu Min who focuses on cleantech, electronics, semiconductor, and nanotechnology patents. Loni Morrow left for an in-house position in July 2020.

Practice head(s):

Gerard von Hoffmann; Steven Nataupsky

Other key lawyers:

Salima Merani; Tom Cowan; Jon Gurka; William Zimmermann; Joseph Re; Devanie DuFour; Chang Lim; Kyu Min

Testimonials

‘Salima Merani and her team do an excellent job. Their understanding of what is needed in litigation or in IP-related M&A transactions is fantastic.’

‘Salima Merani is brilliant, she has exceptional expertise and brings prosecution to another level. Everything you need for successful exits for VC-backed start-ups or how to win a litigation is considered during prosecution. She is truly outstanding.’

‘Amazing depth of knowledge on all things IP law, a great place to handle your IP needs. All the partners I worked with were some of the best. I felt like I had the A-Team all the time.’

‘Salima Merani. Hands down, simply one of the best outside counsels I’ve ever worked with. Her client management skills are top notch. She not only has a command of patent law, but also transactions/negotiations, and the business knowledge and acumen to go along. She has a highly focused and commercial approach to patent prosecution. She not only provides great service but she has been a fantastic teacher and mentor.’

Key clients

Icu Medical, Inc.

Experian Americas

Agilient Technologies, Inc

Illumina, Inc.

Ulthera, Inc.

Broadcom Corporation

Tyra Biosciences, Inc.

Vensana Capital, LLC

United States Postal Service

Personal Genome Diagnostics Inc.

Fisher & Paykel Healthcare Ltd.

Smith & Nephew, Inc.

Nobel Biocare USA, LLC

Fisher & Paykel Appliances Ltd.

Lund Motion Products, Inc.

Ligand Pharmaceuticals, Inc.

Starbucks Corporation

Expedia, Inc.

Morgan, Lewis & Bockius LLP

Morgan, Lewis & Bockius LLP specializes in strategic, high-stakes patent prosecution for US and international clients. Focused on the technology and life sciences sectors, the practice is well suited to prosecution matters requiring a trained commercial and transactional eye as the firm's wider licensing and corporate practice are closely linked to the patent group. Consequently, start-ups and growth companies as well as large multinationals rely on the expertise of Philadelphia-based practice head Louis Beardell and his team, which includes deputy practice head Dion Bregman in Silicon Valley. The strong PTAB practice is a clear asset for clients, as the team's litigation prowess can easily be leveraged for the different PTAB proceedings, including reexaminations, inter partes reviews, and post-grant reviews. The patent support unit includes paralegals, patent administrators and docketing specialists who are in charge of the management of global patent portfolios. For smaller companies, the firm offers its business operations team BizOps that assists with pricing matters, data issues, and staffing matters. Mark Itri in Orange County is another key contact. Washington DC, San Francisco and Boston are the firm's other significant patent hubs in the US. Janice Logan in Washington DC brings her Ph.D. in biomedical engineering and her B.S. in materials science and engineering to her prosecution, due diligence, and litigation practice.

Practice head(s):

Louis Beardell; Dion Bregman

Other key lawyers:

Stephen Altieri; Gary Williams; Robert Smyth; Gargi Talukder; Janice Logan

Testimonials

‘One of the unique features of Morgan Lewis’ team for patent prosecution is its creativeness and flexibility formed upon their vast knowledge about the USPTO practice. The team does not simply represent clients but rather work with the client as a team. They think strategically from the view point of clients not only considering legal matters, but also business requirements. This makes a big difference especially in a case where a longstanding relation is established between Morgan Lewis and clients.’

‘Their strength resides both in patent prosecution and post-grant proceedings. This enables the team to provide a comprehensive and strategic services to their clients.’

‘Janice Logan’s strength resides in her professional hospitality, which means she really thinks about what she can provide to her clients to achieve their goals. Her consideration is very comprehensive – a business goal, budget, relevant laws, business circumstance, etc. She has a technical background of biotechnology, but her enthusiasm enables her to work on variety of technologies such as AI.’

‘The team provides strategic, but practical counsel to our patent portfolio with strong partnership and keen understanding of business.’

‘The attorneys in Morgan, Lewis & Bockius LLP work very quickly. Especially, Janice Logan has an outstanding ability in patent prosecution and litigation. She also has outstanding management skills. She always thinks from client’s point of view. I fully rely on her.’

‘This team is extremely strong in drafting and prosecuting biotechnology-related patent applications. Importantly, the team takes a portfolio view and has helped us make strategic decisions during drafting and prosecution to maximize the overall value of our patent estate.’

‘Stephen Altieri stands out as an exceptional patent attorney who has managed our patent portfolio as it has grown from one patent to more than ninety over the last ten years. We value Steve’s deep understanding of the science and technology, his ability to successfully prosecute and interview cases, and his adeptness at drafting valuable claims and prosecuting them to grant.’

‘The most noticeable advantage of Morgan, Lewis & Bockius LLP is its strong team with more than 200 members in the intellectual property practice. Aside from this, our cooperation always ends up with satisfaction thanks to their professionalism. They provide full services in prosecution and the specialties of lawyers and professionals covered almost all the technical fields.’

‘Janice Logan has a great sense of responsibility for the cases she handles and the clients she serves. She always provides us with helpful and professional advices and responses swiftly to clients.’

‘The prosecution quality is very high.’

‘Provide the best quality from the client’s perspective.’

‘Stephen Altieri is outstanding; far and away the best patent attorney with whom I have worked in career. Steve is highly skilled. He writes outstanding patent applications with valuable and defensible claim structures. And, he puts the applications together remarkably quickly, within one day if warranted. His prosecutions are very effective. Steve also has an unequaled capacity to understand the nuances of the science presented to him and to identify those aspects that would be most valuable and protectable. Finally, Steve is readily approachable and always available to speak.’

‘Strong team, providing strategic and thoughtful advice.’

Key clients

Daicel Corporation

Factor Biosciences

Kartos Therapeutics

NBE Therapeutics

rideOS, Inc.

S-Alpha Therapeutics, Inc.

Shattuck Labs

Tanium Inc.

Volta Charging, LLC

Work highlights

  • Managed and prosecuted a worldwide patent portfolio of 100 patent applications for NBE Therapeutics.
  • Prepared patent applications protecting Tanium’s networking and network security technology as the sole outside counsel for Tanium.
  • Assisted Volta Charging with writing patent applications directed to six major innovative areas from the mechanical design of its charging stations to targeted advertising, as well as with securing design patents on various electric vehicle charging station designs.

Wolf Greenfield & Sacks

Wolf Greenfield & Sacks remains one of the finest US IP boutiques. In 2020, the firm's patent prosecution bench gained two new partners with the promotions of post-grant specialist Elisabeth Hunt and computer and medical device expert Zachary Piccolomini, continuing the firm's growth trajectory that also saw the firm move to bigger New York premises to accomodate for the growth of its soft IP practice. The practice acts for multinationals, small and medium-sized companies, and start-ups including unicorns, as well as for renowned universities and research institutions. A standout feature is the group's very successful IPR track record for both petitioners and patent owners, with post-grant practice head Richard Giunta as the main contact. Best known for its strength in life sciences matters, the team also excels in other sectors, with the software and technology sectors accounting for a good portion of the caseload. Timothy Oyer is the firm's managing partner. Oona Johnstone, a specialist in biotechnology, pharmaceuticals and cleantech, is also noted. All lawyers named are based in the Boston office.

Practice head(s):

Timothy Oyer

Other key lawyers:

Hunter Baker; Richard Giunta; Randy Pritzker; Ed Gates; Dan Young; Oona Johnstone; Helen Lockhart; Edward Russavage

Testimonials

‘This firm boasts a team of top notch scientists who are also good strategic thinkers about patents. They have helped us to arrive at a patent strategy that fits the specific research methods of our platform and protects our inventions.’

‘Oona Johnstone is highly organized, a good strategic thinker, has helped us to develop a very tailored patent strategy.’

‘Rob Sahr is very good at extracting value from a mature portfolio.’

Key clients

Biogen

Takeda Pharmaceutical Company Limited

Analog Devices, Inc.

Ginkgo Bioworks

Sony Corporation

SharkNinja

Keurig Green Mountain, Inc.

Harvard University and Medical School

Moderna

Massachusetts Institute of Technology

Work highlights

  • Managed the patent portfolio and strategy for Oxford Nanopore, prosecuting patents on the top-funded digital health startup in Europe’s core technology and helping it effectively protect its IP assets as it enters the US market through partnerships.
  • Acted for Cognex with patent strategy and portfolio development, clearance studies, and pre-litigation analysis.
  • Assisted Gingko Bioworks with patent prosecution, licensing agreements, opinion work and freedom-to-operate analysis for the synthetic biology company that was started by a team of MIT scientists and launched out of well-known seed incubator Y Combinator.

Cantor Colburn LLP

Cantor Colburn LLP demonstrates a particular strength in the prosecution of utility patents, but is also among the country's most active design patent outfits. Founded by managing partners Philmore Colburn and Michael Cantor, the firm has gone on to become one of the US' largest IP boutiques, with offices in Hartford, Troy, Atlanta, Houston and Detroit, while building a robust Korean practice group and a Japanese practice group in addition to a third, more general, international practice group. With its deep bench and high degree of specialization, the firm impresses with its strong technical expertise and offers a designated electrical engineering group, led by David Fox and Brad Lawrence in Hartford, as well as a mechanical engineering team led by Hartford advisors Dave Christensen and Keith Murphy. In addition, it also houses a computer science practice led by Anne Davis Barry and Jeffrey Waters in Hartford and Atlanta; Dave Christensen's additive manufacturing squad; Grant Ehrlich's Hartford-based energy storage, batteries and materials practice group; the Houston- and Hartford-based chemical and materials team headed by David Rodrigues and Roberta Pelletier; and a life sciences and a pharmaceutical group in Hartford, with the former being led by Bryan Zerhusen and Todd Garabedian and the latter headed up by Anne Maxwell and Karen LeCuyer. Finally, the firm also has a designated automotive team based in Detroit and led by Karl Barr, and a specialist design patent team under the lead of Daniel Drexler and Daniel Gibson, based in Washington DC and Hartford. The firm can look back on a very successful string of prosecuted software patents, frequently overcoming Alice challenges brought under section 101 of the US Patent Act, as well as on a successfully fought pharmaceutical, biotech and life sciences patent registrations that overcame rejections based on the Mayo and Myriad decisions. The post-grant team complements the strategic portfolio development and management practice well. In January 2020, Robert Hayter joined the firm following his role as chief patent counsel at Raytheon.

Practice head(s):

Philmore Colburn; Michael Cantor

Other key lawyers:

David Fox; Brad Lawrence; Dave Christensen; Keith Murphy; Anne Davis Barry; Jeffrey Waters; Grant Ehrlich; David Rodrigues; Robert Pelletier; Bryan Zerhusen; Todd Garabedian; Anne Maxwell; Karen LeCuyer; Karl Barr; Daniel Drexler; Daniel Gibson

Kilpatrick Townsend & Stockton

Kilpatrick Townsend & Stockton's three core areas of expertise are chemistry and life sciences patents, electronics and software patents, and patents covering mechanical and medical devices. The high number of specialized patent attorneys with advanced degrees in the team attracts clients seeking protection for a very wide range of inventions, starting with more traditional patents, for example, in the chemistry and pharmaceutical, engineering or physics space, and extending all the way to cutting-edge technologies, such as biotechnology, software and telecommunications, and bioengineering and neurobiological science patents. The group's PTAB practice includes inter parties reviews, post-grant reviews, covered business method reviews for petitioners and patent owners, with the team including the firm's litigators alongside its prosecution specialists. Atlanta is the firm's main prosecution hub and homebase of practice head Vaibhav Kadaba, but the firm also has offices in Walnut Creek, Denver, Winston-Salem, Seattle, Washington DC, San Francisco, and Menlo Park.

Practice head(s):

Vaibhav Kadaba

Other key lawyers:

Joseph Snyder; Tina McKeon; Charles Calkins; Justin Krieger; Andrew Serafini; William Shaffer; Kate Gaudry; Matthew Hinsch

Key clients

Abbott Point of Care

All American Lithium LLC

Ascend Performance Materials

Celanese International Corporation

Fine Agrochemicals, Ltd.

Ulterra Drilling Technologies, LP

Atreca, Inc.

Myosana Therapeutics, Inc.

Novelis

adidas AG

California Institute of Technology

TrueMotion, Inc.

Volvo Trucks, Volvo Construction, Volvo Penta, and other Volvo entities

McDermott Will & Emery LLP

Under the lead of Silicon Valley's Ahsan Shaikh, practice head since March 2020, McDermott Will & Emery LLP bolstered its life sciences practice with the arrival of Boston duo Jenny Chen and Michael Siekman, both formerly at Polsinelli PC, in August 2020. The team scores with its transversal approach to patent prosecution, combining deep technical expertise with prosecution experience, refined through the use of technology for optimal prosecution strategy crafting, and a high-profile transactional practice that sharpens the team's focus on the commercial aspects of portfolio development. As a notable international player, the group also offers experience in cross-border matters. William Gaede (Silicon Valley) is the head of the firm's global IP practice. Roger Kuan and Jason Novak left for Haynes and Boone, L.L.P. in May 2020, five months after Kristina Bieker joined Goodwin.

Practice head(s):

William Gaede; Ahsan Shaikh

Other key lawyers:

Judy Mohr; Bhanu Sadasivan; Michael Fogarty; Takashi Saito; Edward Gordon

Key clients

Electronic Arts Inc.

Quidel Corporation

Amgen Inc.

Panasonic

Taiwan Semiconductor Manufacturing Company

Shutterstock

Heron Therapeutics

Young Innovations

Kymab Limited

Block.one

Prospect Medical Holdings

One Home Products

Work highlights

  • Advised Electronic Arts Inc. on patent application drafting and examination strategies related to Electronic Arts’ cutting-edge computer gaming technologies.
  • Acted as patent counsel to Panasonic for almost 25 years, managing nearly 400 patents a year on a wide range of technologies.

Arnold & Porter

Arnold & Porter specializes in the prosecution of life sciences patents and enjoys the trust of many long-term clients, both from the US and international players. With its complementary litigation team, the firm is well equipped to handle post-grant proceedings. Alongside the patent lawyers, the group includes patent agents and technical advisors who contribute their scientific and engineering expertise in areas such as biochemistry and biophysics, applied physics, and biology. The firm has introduced an eDiscovery service aimed at accessing and analyzing data more quickly. Washington DC-based duo Matthew Wolf and Jennifer Sklenar share leadership of the practice. Silicon Valley is the firm's second patent prosecution hub.

Practice head(s):

Matthew Wolf; Jennifer Sklenar

Other key lawyers:

David Marsh; Deborah Fishman

Key clients

Altria

Bayer

Bruin Biometrics LLC

Finch Therapeutics

Hemanext

Organogenesis

Regeneron Pharmaceuticals, Inc.

Sapphire Energy

Synexis LLC

Water Street Healthcare

Work highlights

  • Acted as lead counsel to Regeneron to help defend two of its patents directed to manufacturing and formulations of Eylea® against an ex parte reexamination challenge.
  • Represented Bayer in patent prosecution of transgenic plants, traditionally bred plants, and in many other areas of plant genetics, including on the prosecution of patent portfolios critical for the protection of key DNA breakthroughs.
  • Provided strategic advice to Bruin Biometrics for two company-critical portfolios in the area of medical devices.

Baker & Hostetler LLP

Baker & Hostetler LLP's prosecution team focuses on protecting electrical, mechanical and computer science patents. With IP group chair Mark Tidman and Kenneth Sheehan, who co-heads the prosecution team alongside Philadelphia-based Steven Samuels, the firm is a particularly appropriate choice for clients with East Coast headquarters. The group is also present in Denver, Cincinnati, Atlanta, and Seattle; it also shoulders an international practice, as attested by its regular prosecution work involving Europe and China. The team unites practitioners with experience in regulatory bodies such as the USPTO, in-house counsel experience, and backgrounds in engineering and science. The caseload includes strategic portfolio development, patent enforcement, licensing matters, and transactional assistance.

Practice head(s):

Mark Tidman; Kenneth Sheehan; Steven Samuels

Other key lawyers:

Hussein Akhavannik; Joseph Lucci; Christopher Arena; Theresa Weisenberger

Testimonials

‘Highly technically savvy and efficient with medical device assessments and prosecution.’

‘Hussein Akhavannik goes above and beyond to support his client’s work – extremely responsive, very efficient, and provides spot-on advice.’

‘Brendan Clark is extremely hands-on and responsive. These are key attributes that I look for when hiring outside counsel.’

‘Great knowledge on the process for getting patents approved and the best strategy to move patents forward to issuance.’

Christopher Arena and Theresa genuinely care about the success of our engagement and are thoughtful about navigating us in a cost effective manner to a successful prosecution of the IP plan.

Key clients

AT&T

Comcast Corporation

Amazon.com

Johnson & Johnson

Saudi Basic Industries Corporation

American Water Works Company, Inc.

Bosch

SPX Corporation

Sinclair Broadcast Group

Work highlights

  • Advising AT&T on a range of patent matters, handling inventions primarily in the wireless communication technology space, including 5G telecoms, satellite, broadband, cloud computing, software-defined networking, and virtualized network technologies.
  • Assisting Johnson & Johnson with patent prosecution spanning a wide array of technologies, including medical and surgical devices, and small and large molecule therapeutics.

Baker McKenzie LLP

Baker McKenzie LLP's mainstays are the oil and gas, electrical, and software sectors. With co-practice head Mackenzie Martin (Dallas) also in charge of the firm's global prosecution practice, the firm signals its specialization in complex cross-border matters. The portfolio of expertise includes the drafting and prosecuting of patents, the setting up of patent programmes, and the development of national, international and global portfolio strategies. Inter partes reviews are another area of strength. Brian McCormack in Dallas, and Washington DC's Richard Wells share leadership of the practice with Martin. James Blank in the New York office is recommended for his PTAB expertise. Hardware and software technology specialist Vas Vedantam in the Dallas office made partner in January 2021.

Practice head(s):

Mackenzie Martin; Brian McCormack; Richard Wells

Other key lawyers:

James Blank; Jessica Greenwald

Testimonials

‘These guys just get it…, didn’t need to spend a lot of time educating about what was sought and/or why.’

‘The work products were clear, clean and efficient… very few iterations were required to get it right.’

Key clients

Zespri Group Limited

CEC Northstar

Isomer

miraDry

The Trade Desk

Veeva Systems

Paramount Pictures

Swift Textile Metalizing

Schlumberger Corporation

Coflex S.A. de CV

Rosetta Stone

Xamax Industries, Inc.

D.I. Optical USA Inc.

Sientra, Inc.

Zero Friction

Starcom

Purifics

Shell Oil Co.

Parabel

Work highlights

  • Assisted Zespri with the prosecution, strategy development, risk management and enforcement of its global IP rights portfolio covering Zespri’s proprietary kiwifruit varieties.
  • Assisted The Trade Desk with the preparation of patent applications directed to real-time advertisement bidding technology, tailoring them to the requirements established following the Alice decision.
  • Acted as global patent prosecution counsel for Rosetta Stone Ltd., including the management of Rosetta Stone’s global patent portfolio, ongoing prosecution and new filings, and providing patent training courses for in-house counsel and in-house developers.

Bookoff McAndrews

Washington DC-based prosecution, counseling and transactional patent boutique Bookoff McAndrews added three new senior attorneys to its bench in 2020: Ankit Aggarwal joined from Voelpe Koenig and Dan Sharpe joined from Troutman Pepper, both of whom arriving in August; William Uhr joined from Goodwin the following October. The growing practice acts for small and big clients alike, with start-ups, medium-sized companies, and Fortune 100 players. The wide range of technical expertise is one of the practice's main strengths, with instructions including patents from the medical devices, biotechnology, consumer product, engineering, financial services, automotive, and agriculture sectors. The heads of the practice are Chris Agrawal, Les Bookoff, Kirsten Johnson, Jameson Ma, Roland McAndrews, Dinesh Melwani, Elizabeth Shah and Jessica Winchester.

Practice head(s):

Chris Agrawal; Les Bookoff; Kirsten Johnson; Jameson Ma; Roland McAndrews; Dinesh Melwani; Elizabeth Shah; Jessica Winchester

Testimonials

‘Bookoff is strategic and wicked smart, but at the same time super aggressive in advocating on behalf of their clients. With that combination, we are confident and always know the Bookoff team is protecting our interests, while actively executing on strategies that best help our business grow.’

‘Christopher Agrawal, Matthew Seward, and Douglas Choi are an all-star team. Always responsive, always strategic, and always exceeding expectations.’

‘The customized service that this practice provides to its clients is both unique and incredibly high in quality. The firm is adaptable to different billing structures, different styles of communications, and the quirks of each of its clients. The firm’s partners and its associates are communicative, frank, and thoughtful, in a way that makes the client feel reassured that its portfolio is in good hands.’

‘Jessica Winchester takes great personal care with her work. While she delegates to many excellent associates, she remains a readily available point of contact for questions and discussions at any time, providing insightful analyses and solutions in real-time during conversations on strategy. She is professional, while also being highly personable and friendly, and she is truly a pleasure to work with. Associates who have provided stand-out work include Ankit Aggarwal and Joel Simon.’

Key clients

Boston Scientific Corporation

Verizon Communications, Inc.

Everspin Technologies, Inc.

Safran S.A.

Regeneron

UnitedHealth Group

WorldPay

Caterpillar

Honeywell International Inc.

BIC

Corteva Agriscience

Capital One

Alcon

MicroStrategy

Work highlights

  • Managed nearly 1,100 pending patent applications worldwide for Boston Scientific Corporations’ endoscopy, pulmonary, urology, and cardiac rhythm management business units; this comes in addition to conducting IP due diligence investigations for acquisitions and investments in other medical device companies and providing clearance opinions for many of its products.
  • Managed over 300 matters across Regeneron’s portfolio involving technologies relating to the preparation and delivery of formulated drug substances, including biologics.
  • Assisted Worldpay with growing its US portfolio of patents covering key technology areas such as EMV, e-commerce payments, and POS/pinpad technologies.

Cooley LLP

Cooley LLP is particularly active in the life sciences and technology sectors; these are aso industries in which the team of New York-based practice head Ivor Elrifi enjoys an excellent reputation for its start-up caseload. The group regularly accompanies clients from seed stage onwards, but is also sought after by market-leading multinationals. Forming a part of the firm's integrated patent offering that also includes litigation and licensing experts, the prosecution practice also includes an effective PTAB team with particular experience in inter partes reviews. Special counsel Sandhya Deo joined a pharmaceutical company in an in-house position.

Practice head(s):

Ivor Elrifi

Other key lawyers:

Michael Tuscan; Fraser Brown; Matthew Langer; Mika Reiner Mayer; Scott Weston; Dean Farmer; Scott Talbot

Testimonials

Cooley is global in its knowledge and reach and yet retains the service excellence of personal service. Their team is incredibly talented and knowledgeable.

Very creative IP attorneys. Excellent scientific and IP expertise. They are outstanding at simplifying complex scientific and patent matters into laymans terms.

Strong leadership with strategic IP capabilities beyond patent drafting and prosecution.

They understand our technology and just get everything we need them to get, which is so important when filing patents and moving quickly. They are responsive, creative, smart and personable. We love working with them!

Cooley is very technical and collaborative in their approach to IP. They want to deeply understand the technology and help guide their clients through the legal process of IP.

They are careful, diligent, and do extensive and thoughtful analysis where warranted. They offer an extraordinary level of care and analysis that is uncommon in this space.

They are simply outstanding in terms of time spent on details and execution. They are likewise a fair bit cleverer than the competition and are frequently a step ahead in their recommendations and counsel.

Matt Langer and his colleagues have developed a deep understanding of our goals, strengths, and challenges, which has enabled them to provide legal counsel tailored to our particular circumstances. As a result, Cooley has become a highly respected and valued partner.

Erich Veitenheimer is our lead contact and has an incredible background specific to our needs that is not likely available from any other source. In addition to the specific knowledge and experience, Erich has always been 100% vested in our success and development – he is our top, most trusted advisor!

Erich Veitenheimer is the best patent attorney I have ever worked with.  He is extremely knowledgeable, very creative, and very thoughtful. Jon Counsin is also exceptional.  Very knowledgeable and easy to work with.

Both Chris Holly and Erin Foley are excellent. Chris Holly is extremely personable and responsive, and he is always willing to work with me until I have exactly what I need. He is also great interfacing with the patent examiners and we have been very happy with the results he has gotten us. Erin Foley is one of the best associates I have ever worked with – she is extremely smart and on top of everything we need from her (which is a huge workload) and she never misses anything. Can’t say enough good things about both of them!

Scott Weston and Lesly McAnelly are both exceptional to work with. I deeply appreciate both their attention to detail, understanding of the technology and ability to clearly articulate the many nuances of IP law and processes.

Dean Farmer:  good-humored, great memory for details, valuable depth of experience, understands needs of smaller pharma companies. Connie Tong (patent agent):  excellent attention to detail, organized, well-prepared and thorough.

Matt Langer is an extraordinary individual. He is both clever and personable.  He explains the details well and executes on these equally well. The level of service and detail is simply outstanding and worth every penny. Likewise his associate Alla Kagan has been remarkable in her care and attention to our file. These two are a fantastic team!’

Key clients

Alpine Roads

Aptose Biosciences

Ascus Biosciences

Atai Life Sciences

Black Diamond Therapeutics

BioXcel Therapeutics

C16 Biosciences

C3Nano

Compass Pathways Ltd

Essa Pharma

Evolutionary Genomics, Inc.

Forbius (Formation Biologics)

GW Pharmaceuticals

Jazz Pharmaceuticals

Lava Therapeutics

Microbion Corporation

Novavax

Pivot Bio

Provivi, Inc

Secura Bio

Zymergen

Alairion

Arvinas

Bai Intelligence LLC

Biolux Research Holdings, Inc.

Bloomberg

Bumble

DalCor Pharma UK

Facebook

Google

Flexion Therapeutics

JCyte Therapeutics

McMaster University

RenalytixAI

ServiceNow

Tivity Health

Usher III Initiative, Inc.

24M Technologies, Inc.

ArQule, Inc.

Cyteir Therapeutics, Inc.

Exosome Diagnostics, Inc.

LiquiGlide, Inc.

Magnolia Medical Technologies, Inc.

NanoString Technologies, Inc.

Perception Neurosciences, Inc.

Poseida Therapeutics, Inc.

AtriCure

Demetrix

Intersect ENT

Intuity Medical

Myovant Sciences

Oyster Point Pharma

Work highlights

  • Advising Pivot Bio on its worldwide IP estate covering its first-in-class commercial product which promises to replace the current agricultural practice of utilizing synthetic fertilizer.
  • Represented Black Diamond in the development of a worldwide patent portfolio relating to precision oncology medicines, which are small molecule, tumor-agnostic therapies, including patent strategy advice, patent preparation and prosecution and freedom to operate and patentability analyses.
  • Represented Poseida Therapeutics, Inc. in the development of a worldwide patent portfolio relating to gene engineering technologies and cell and gene therapeutics for the treatment of cancers and rare diseases, with a particular focus on strategic counseling for complex IP matters, patent acquisition and business-focused due diligence.

Dechert LLP

Dechert LLP packs a punch in the life sciences sector. Headed by Andrea Reid in Boston and Jeffrey Plies in Austin, the practice focuses on biotechnology and pharmaceutical clients, ranging from start-ups all the way to listed multinationals. The team comes highly recommended, with its clear sector focus and its well-rounded practice that also includes high-stakes and complex licensing work as well as disputes brought before the USPTO. It is integrated into the firm's international life sciences and patent group and is, therefore, well versed in matters with multi-jurisdictional aspects. Pharmaceutical expert and patent attorney Carl Morales is based in the New York office.

Practice head(s):

Andrea Reid; Jeffrey Plies

Other key lawyers:

Carl Morales

Key clients

Arrakis Therapeutics

Bicycle Therapeutics

Kymera Therapeutics

Navitor Pharmaceuticals

Pfizer

Pic Therapeutics

Royalty Pharma

Work highlights

  • Advising Royalty Pharma plc on the IP-related aspects of its agreement to acquire the residual royalty interest in Vertex Pharmaceuticals, Inc.’s cystic fibrosis treatments owned by the Cystic Fibrosis Foundation, including an upfront payment of $575m and a potential milestone payment of $75m.
  • Advised Kymera Therapeutics on the patent strategy and due diligence relating to its up-to-$2bn multi-program, a strategic collaboration with French pharmaceutical company Sanofi.
  • Advised Pfizer on the ongoing management of its patent term extension (PTE) strategy for Ibrance® (palbociclib), an FDA-approved blockbuster oral drug for first-line treatment of HR-positive/HER2-negative breast cancer, including extensive dialog and negotiation with the USPTO.

Dentons

Dentons underwent a season of change as Eric Sophir and Gary Solomon joined Foley & Lardner LLP in February 2020; Lee & Hayes, P.C. joined Lee & Hayes, P.C. the following October; and four new partners were promoted in January 2020 - Bruce VanceBumrae Cho and Derek Auito in Washington DC as well as Parker Kuhl in Denver. The team of practice heads Robert Hanson in Dallas and Brian Ho in San Francisco demonstrates a particular strength in the biotechnology sector, but the group's varied caseload also includes notable mandates from hi-tech and pharmaceutical clients. The firm expanded its already significant US footprint further with the launch of its 'Project Golden Spike', which saw the firm join forces with Bingham Greenebaum Doll LLP and Cohen & Grigsby, P.C., now Dentons Bingham Greenebaum and Dentons Cohen & Grigsby. Key prosecution hubs include Washington DC, San Diego and New Jersey, as well as San Francisco where Peter Yim is based.

Practice head(s):

Robert Hanson; Brian Ho

Other key lawyers:

Song Jung; Mark Kresloff; Roman Tsibulevskiy; Peter Yim; Stephanie Seidman; Martin Bruehs

Testimonials

‘In addition to being strong on the raw technology, what makes this group stand out as exceptional is their ability to think strategically across prosecution and litigation, setting the client up for success first in obtaining strong patents and then in protecting those patents and their IP rights if disputes or infringement scenarios arise.’

‘There is no patent attorney I have met who comes close to the overall sophistication level that Peter Yim brings to the table. Not only is he exceptional at understanding complicated technologies, he is a master strategist across prosecution work, reexaminations, post-grant reviews, IPRs, and patent litigation. He has that very rare ability to understand nuanced differences between prosecution-side work and litigation-side work, and to develop strategies to tackle the most complicated situations. Whenever I have complicated, complex patent issues, Peter is the first (and last!) person I turn to.’

Key clients

LG Electronics / LG Chem / LG Display

Solidia Technologies

DiversiTech Corporation

The Coca-Cola Company

Columbia University

Texas A&M University / University of Texas at Austin / University of Texas Southwestern Medical Center / University of Missouri / Colorado State University / Wisconsin Alumni Research Foundation (Univ. of Wisconsin) / Samuel Roberts Noble Foundation

Land O’Lakes

Canopy Growth Corporation and Tweed

TransRobotics, Inc

VMware, Inc.

Work highlights

  • Advised LG Chem and LG Display on the management of a patent portfolio pertaining to their core technologies in the areas of mobile communication, digital television technologies, codec technology and home appliances, including energy conservation technologies, liquid crystal display (LCD) devices, organic light emitting diode (OLED) displays, OLED lighting device among others, with over 8,000 active patent matters.
  • Represented university clients, such as Texas A&M University and the University of Texas at Austin, in numerous patent matters, including patent opinions, counseling and prosecution in the fields of biotechnology, agriculture, genetics, life sciences, animal health, biofuel and plant science.
  • Advising Solidia Technologies with the management of its entire global patent portfolio.

Eversheds Sutherland

Eversheds Sutherland is especially active in patent prosecution for wireless technologies, medical devices, autonomous vehicles, telecoms, and pharmaceutical patents. The US practice is a key component of the firm's global patent offering, making the team very well suited to matters involving multi-jurisdictional aspects that require experience in strategic portfolio development and management. The group's experience in contentious proceedings includes inter partes reviews and covered business method reviews, acting for patent owners and petitioners, as well as a good amount of ex parte re-examination work. In addition to advising a strong raft of global industry leaders, the practice also acts for entrepreneurs and small companies. Atlanta-based duo Peter Pappas and Malvern Griffin are the heads of the practice. Counsel Regis Worley, who specializes in medical devices, manufacturing equipment, software and computer hardware, and consumer electronics patents, joined the San Diego office in January 2020 from Robbins Geller Rudman & Dowd LLP. Several electrical, chemical and biotech engineers also joined the group in 2020. The firm's third US patent prosecution hub is in Austin, Texas.

Practice head(s):

Peter Pappas; Griff Griffin

Other key lawyers:

Jaime Choi; Daniel Warren; Nash Zogaib; Ann Fort; Kevin King; William Warren

Testimonials

‘Eversheds’ IP group is smart, nimble and responsive.’

‘Dan Warren is a highly responsive and knowledgeable US practitioner who has broad experience and great depth in complex US IP issues.’

‘Their expertise, experience, and client-oriented attitude.’

‘All the attorneys we have worked with are extremely helpful and interested in the cases they work on for us. Standouts are Kevin King and Josh Aronson.’

‘Eversheds has as deep bench, expertise in many areas, and counsel in many areas of the world. I have had a good experience with all of the attorneys I have worked with. They are responsive and produce high-quality work, often under tight time constraints. I consider them to have one of the best IP practices in the Southeast.’

‘Pete Pappas is a very capable partner who manages his team well and is very responsive to client requests.’

‘Josh Aronson is a talented attorney with an excellent knowledge of chemistry. In my experience, he is particularly good at handling complex and time-sensitive matters, including drafting high quality patent applications. He is at the top of my list if I have something that needs to be done fast and right.’

‘Chancellor Shafor is a hardworking associate who communicates well, produces high-quality work, and manages deadlines well.’

‘Eversheds Sutherland provides excellent services in all facets of IP including patent and trademark prosecution, and licensing. Firm is also valuable for advising on IP portfolio review and development. What makes the firm stand out is its ability to understand its clients.’

‘Dan Warren is a seasoned practitioner who can be trusted for incisive and frank advice on any matter. His leadership caliber is evident in the quality of work done by the firm. His forward-looking perspective has been shaped by his deep knowledge of IP laws. He is well known and respected in both law firm community in the US and legal departments of many global corporations. His leadership qualities are evident from his role at the firm.’

Key clients

Georgia-Pacific

Angelini Pharma

Fameccanica.Data

Schoeller-Bleckmann Oilfield Equipment

Cytiva

The Board of Regents of the University of California

Work highlights

  • Advised Schoeller-Bleckmann Oilfield Equipment on the full range of US IP diligence, negotiation and drafting counsel in a transactional context, as well as in patent and trademark prosecution and litigation.

Pillsbury Winthrop Shaw Pittman LLP

Pillsbury Winthrop Shaw Pittman LLP is primarily active in the development of US patent portfolios, but also shoulders a substantial international caseload that accounts for roughly a third of the overall practice. Practice head Jack Barufka is based in the firm's main office in MacLean, Northern Virginia, but the group also has a prominent office in Texas where Josh Tucker, an AI, blockchain, 5G and edge computing enthusiast focuses on assisting start-ups including unicorns, and hi-tech companies with the development of management of their patent portfolio. At the USPTO, the practice frequently acts in inter partes reviews, covered business method reviews, and post-grant reviews, as well as in derivation proceedings. In December 2019 Michael Chibib joined Bracewell LLP while Howard Wisnia left to found Wisnia PC. Nicole Cunningham and Steve Moore joined Zhong Lun Law Firm in December 2019 and January 2020, respectively.

Practice head(s):

Jack Barufka

Other key lawyers:

Ngai Zhang; Patrick Doody; William Atkins; Josh Tucker; Drew Schulte

Key clients

UBS

Stanley Black & Decker

Philips Healthcare

Digital Asset Capital

ALTR Solutions

Cerebri AI

The Zebra

Rigetti Computing

GE Video Compression, LLC

Work highlights

  • Advised UBS AG on all of its IP matters worldwide, including patent, trademark, copyright, licensing, IP diligence, IP agreements, monetization, domain names, litigation, and more.
  • Defended Rigetti Computing against two inter partes reviews (IPRs) brought against one of its foundational patents by IBM, with the PTAB determining not to institute the IPR proceeding based upon the Patent Owner Statement, which highlighted fundamental inconsistencies in IBM’s assertions.
  • Assisted ALTR Solutions, Inc. with the development of its patent portfolio to more than 22 patent allowances involving blockchain technology to build a platform for greater data security.

Bracewell LLP

Bracewell LLP's patent prosecution strengths lie mainly in the energy and technology sectors, with other prominent matters coming from the hospitality, financial services, and manufacturing sectors. The group is well versed in the management and strategic development of international patent portfolios as well as in PTAB disputes. Clients also benefit from the firm's adjacent teams in commercial litigation, finance, tax, and corporate law. Practice head duo Constance Gall Rhebergen and Brad Chin in Houston are the main practitioners in Texas, but the firm also has offices in Austin, where litigator and PTAB expert Michael Chibib joined the team from Pillsbury Winthrop Shaw Pittman LLP, Seattle and New York.

Practice head(s):

Constance Gall Rhebergen; Brad Chin

Other key lawyers:

Douglas Stewart; David Ball

Key clients

Saudi Arabian Oil Company

Baker Hughes Incorporated

Apache Corporation

Tetra Technologies

Madden Contracting, LLC

Cheniere Energy, Inc.

Sysco Corporation

Eyedetec Medical, Inc.

Freschfield

CSG Investments

Work highlights

  • Advised Saudi Aramco on more than 7,000 international patent prosecution matters, including patents covering upstream and downstream oil technologies, as well as drilling equipment, polymers, chemicals, medical, instruments, nanotechnology, and robotics.
  • Assisted Sysco with the management of the global patent portfolio for its hospitality business, which includes hospitality supplies provided to the world’s top hotel chains and independent properties.
  • Advised CSG Investments on portfolio analysis matters relating to syndicated loans which were secured primarily on the borrower’s intellectual property.

Brinks Gilson & Lione

Brinks Gilson & Lione stands out through its strong medical device and pharmaceutical practice - areas which form key components in the group's wider caseload that also includes complex mandates from the automotive, electronics, software, mobile devices, and chemicals sectors. The IP boutique is among the largest specialist outfits in the US and is experienced in acting for a varied client list, starting with start-ups and ranging all the way to well-known multinationals. The portfolio development and management caseload also includes USPTO proceedings. With offices in Chicago, Washington DC, Indianapolis, North Carolina and Shenzhen, China, the firm demonstrates its strong commitment to US prosecution work, but also its international outlook. For cross-border mandates, the group relies on a its network of foreign associates. Andrew Stover and Joseph Hetz in Chicago direct the practice.

Practice head(s):

Andrew Stover; Joseph Hetz

Other key lawyers:

Andrew Stover; Gustavo Siller; Betsy Derwinski

Key clients

Amneal Pharmaceuticals

Cboe Options Exchange

Cook Medical

Michigan State University

TCL Corporation

Tencent

ZTE

Work highlights

  • Assisting Cook Medical with building a robust family of patents and with the management of the company’s patent strategy over the entire patent life cycle.
  • Advising Middleby on both patent and trademark work for many different Middleby divisions/subsidiaries, including patent prosecution and IP strategy/management, as well as trademark procurement and enforcement worldwide.
  • Represented Cboe Options Exchange in PTAB proceedings, securing an important victory where the PTAB applied the USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance.

Choate, Hall & Stewart

Boston-based Choate, Hall & Stewart offers an integrated patent prosecution and litigation practice; it specializes in strategic patent advice for life sciences companies. With a client list that ranges from start-ups to pharmaceutical giants, the group is experienced in assisting with the patent aspects of any milestones companies might reach in their life cycle, including financings, product launches, acquisitions, and repurposing of products. For patent office disputes, the team can draw on its litigators' experience. Thanks to a number of practitioners with in-house counsel experience, the firm is also a very good choice for clients in need of advice pertaining to tailor-made licensing agreements. Brenda Herschbach Jarrell and Charles Lyon are the heads of the practice.

Practice head(s):

Brenda Herschbach Jarrell; Charles Lyon

Other key lawyers:

Eric Marandett

Key clients

Saudi Arabian Oil Company

LogicBio

Disarm Therapeutics

Takeda