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

Fenwick & West LLP

Fenwick & West LLP's practice spans the development and management of the patent portfolios of international companies and start-ups alike, with the technology and life sciences sectors as the group's mainstays. Digital health companies, medical device manufacturers, pharmaceutical clients, telecommunications players and cybersecurity specialists in particular benefit from the team's expertise in both of these sectors. Additionally, the group is a go-to for matters involving issues regarding patentable subject matter and is known for its expertise in open source software patent matters. At the PTAB, the group assists with all types of post-grant proceedings and uses its own interactive PTAB database to analyze the development of the PTAB's practice. The caseload reveals the team's strength in both domestic and cross-border work and includes a long string of multi-jurisdictional prosecution work. Michael Farn, the Mountain View-based head of the patent practice, and the co-chairs of the post-grant practice Michael Sacksteder and Stuart Meyer, based in San Francisco and Mountain View respectively, direct the prosecution team. Michael Shuster and Kevin Kabler joined Goodwin.

Practice head(s):

Michael Farn; Michael Sacksteder; Stuart Meyer

Other key lawyers:

Robert Hulse; Antonia Sequeira; Dohyun (David) Ahn; Rajiv Patel; Daniel Becker; Jae Won Song

Testimonials

Very strong patent team with deep bench strength and start individuals. Terrific client base. Have aided some of the most technologically sophisticated clients in Silicon Valley develop, manage and leverage their patent portfolios.

They are an effective and efficient team. With this team, I know I am getting the best quality team and they meet us where we are. I never feel pressured with any decision that we make and I am at ease knowing that this team is serving our patent needs.

Rajiv Patel guides clients with their patent strategies. Effectively leverages his prior practical industry experience as an engineer at IBM.

Stuart Meyer – very strong in patent prosecution. Trusted advisor. Efficient. Top ranked. Practical. He is also price sensitive, which I appreciate, and has a great team that he works with.

Key clients

Facebook

LG Display

slock.it

Oculus VR

DeepMap

Ontera, Inc.

Hearst Corporation

Trace Genomics

Medidata Solutions

Keyssa

Phantom AI

Sermonix Pharma

Numenta

B.yond

Square Enix

Supercell

UCB

Pfizer

Almirall

Omata

LELO

Airship

Cujo

Valimail

SK Telecom

Work highlights

  • Represented Facebook in the management of the bulk of its patent portfolio, including securing the patents for Oculus VR, patenting Facebook Ads features, patenting new Instagram features, and utility and/or design patents for innovations around Facebook Stories, Facebook Reactions to Comments and Facebook Building 8’s Brain-Computer Interface technology,
  • Advised LG Display on the development and management of a large part of its US patent portfolio, including strategic patent counselling for the client’ s OLED displays and Advanced In-Cell Touch technology.
  • Represented Supercell Oy as defendant in 16 post-grant reviews  and in multiple inter partes reviews filed in the context of a patent infringement dispute consisting of seven separate lawsuits.
  • Assisted Krikey, Inc. and Omata, Inc. with the filing and prosecution of design patents.
  • Represented Keyssa, Inc., in the strategic development of its patent portfolio aimed at protecting the client’s innovative contactless connectors for electronics.

Finnegan, Henderson, Farabow, Garrett & Dunner LLP

IP giant Finnegan, Henderson, Farabow, Garrett & Dunner LLP offers the full range of patent prosecution services. As one of the most experienced PTAB groups in the market, the practice shoulders an exceptionally busy post-grant caseload composed of a mix of covered business method reviews, post-grant reviews and inter partes reviews. Ex parte reexaminations are another area of particular strength, complementing the firm's strong litigation offering well. Clients rely on the team for the development and implementation of patent portfolios to cover their utility, design and plant inventions, starting with the drafting and filing of applications. The firm's headquarters are in Washington DC, with other important offices in Reston, Palo Alto, Boston and Atlanta. Managing partner Anand Sharma, chair Mark Sweet, PTAB practice head Joshua Goldberg and Jill MacAlpine as the head of the Patent Office practice, all four based in Washington DC, direct the team. Reston's Erika Harmon Arner is also recommended. Jeffrey Jacobstein in Boston and Kevin Rodkey in Atlanta joined the partnership in January 2019.

Practice head(s):

Anand Sharma; Mark Sweet; Joshua Goldberg; Jill MacAlpine

Other key lawyers:

Darren Jiron; Gerson Panitch; Aaron Capron; Elizabeth Ferrill; Erika Harmon Arner; Leslie McDonell; Gregory Gramenopoulos; Christopher Isaac; Mark Feldstein; Thomas Irving; Trenton Ward

Testimonials

Finnegan has an excellent team for patent prosecution. They are very skilled, knowledgeable and creative. They are also very reliable and will do their all to get filings done on the timelines needed. Their size is beneficial, as they can work in a team for large, complex applications. They are my go-to firm for large, important for the company projects.

Jeffrey Jacobstein and Jill MacAlpine – both are extremely responsive and always willing to help and get the job done even with tight deadlines. They are very creative and resourceful. They have great skill in drafting as well as prosecuting applications. They handle very complex cases for me and have done so wonderfully. They have a great team and work well with and use the more junior associates appropriately. They are both excellent to work with.

Key clients

AbbVie Inc.

ASSA ABLOY AB

BMW Group

Caterpillar, Inc.

CSL Behring

Eli Lilly & Company

GlaxoSmithKline

Google LLC

Incyte Corp.

Intuitive Surgical Inc.

LG Electronics, Inc.

Nestle

NetApp

PHC Corporation

Promptu Systems Corporation

REC Solar Pte. Ltd.

Shure Incorporated & Shure Acquisition Holdings, Inc.

SIPCO, LLC

Tetra Tech, Inc.

Toyota Motor Corp.

United Technologies Corp.

X One, Inc.

Work highlights

  • Assisted orCam with strategic patent planning, patent prosecution and other patent-related issues, including application drafting, prosecution and the implementation of worldwide filing strategies for the client’s wearable imaging systems for aiding visually impaired individuals and for augmenting interactions between users and their environments.
  • Advised Vertex Pharmaceuticals, Inc. on domestic and international strategic patent prosecution issues regarding the client’s FDA approved cystic fibrosis products, including double patenting analyses, the preparation and prosecution of US patents, before the Patent Office and the PTAB, and Orange Book listability analyses.
  • Assisted Mobileye Vision Technologies Ltd. with strategic patent planning, patent prosecution and other patent-related issues, ranging from early strategic advice regarding the client’s driver assistance systems and autonomous vehicle technology to the drafting and prosecution of the corresponding patent applications to implement worldwide filing strategies.
  • Assisted ASML Netherlands B.V. with the development of its patent portfolio to protect a wide variety of the client’s inspection technologies, including the preparation and prosecution of the corresponding US patents.
  • Acted as lead IP counsel for Eisai Co., Ltd. and its US research subsidiaries H3 Biomedicine and Morphotek, with work including all aspects of strategic planning, freedom-to-operate analyses and patentability considerations for numerous marketed and lead candidate small molecules and biologics.

Foley & Lardner LLP

Foley & Lardner LLP is well versed in the prosecution of US and international patents, including the use of the Patent Prosecution Highway. The firm houses one of the most successful PTAB practices in the US, with a portfolio of expertise including ex parte reexaminations and inter partes reviews as key tools in the successful management of patent portfolios. The group demonstrates a wide sector spread, with recent instructions coming from the telecommunications, energy, technology, electronics, biopharmaceutical, life sciences and manufacturing sectors. Practice head Michele Simkin is based in the Washington DC office. Other key locations are in Boston, San Diego, Milwaukee, Detroit, Palo Alto and Madison (Wisconsin). In February 2019, Chase Brill and Tianran Yan in Washington DC and Shabbi Khan and Meng Pua in Boston made partner. Christopher Bolten left for Eversheds Sutherland.

Practice head(s):

Michele Simkin

Other key lawyers:

Stephen Moebius; John Lanza; Christopher McKenna; Pavan Agarwal; Joseph Ziebert

Key clients

22nd Century Group Inc.

ANGUS Chemical Company

Argonne National Laboratory

Asahi Glass Co., Ltd./AGC

Aurora Innovation

AVX

BASF Corporation

Belden, Inc.

Bridgestone Corporation

Briggs & Stratton Corporation

The Broad Institute, Inc.

Broadcom Ltd.

CalsonicKansei

Carbonite, Inc.

Citrix, Inc.

Co-Op Financial Services

Cummins Inc.

Daiichi Sankyo Co., Ltd.

Energizer Holdings, Inc.

EnGeneIC Ltd

Fairfield/Megseis

Fiskars Brands, Inc.

Google Inc.

FuelCell Energy, Inc.

Harman International Industries

Harvard Medical School

Hill Phoenix, Inc.

Hitachi, Ltd.

Hitachi Automotive Systems, Ltd.

Idemitsu Kosan Co., Ltd.

Johnson & Johnson

Johnson Controls, Inc.

Knowles Corporation

Kohler Co.

Kythera Biopharmaceuticals, Inc.

LivaNova PLC (formerly Sorin CRM SAS)

Lockheed Martin Mission Systems and Training

Major League Baseball

Massachusetts Institute of Technology (MIT)

Medicinova

Nestle Skin Health/Galderma R&D Inc.

New York University

Nichia Corporation

Nissan Motor

Noven Pharmaceuticals, Inc.

Oshkosh Corporation

People.ai, Inc.

Quest Diagnostics Incorporated

REG Synthetic Fuels

Reliance Worldwide

Renesas

Rockwell Collins, Inc.

S.C. Johnson & Son, Inc.

Seiko Epson Corporation

SF Motors/Seres

Sloan Global Holdings

Stealth BioTherapeutics Corp.

Stryker Corporation

Sumitomo Chemical

Sumitomo Dainippon Pharma

Takeda Pharmaceutical Company

Toshiba Corporation

Unilever USA

United Therapeutics

University of California

US Bancorp

Vibrant Media

Wells Fargo & Company

Work highlights

  • Co-counsel for The Broad Institute, Inc. alongside Quinn Emanuel and Jenner & Block in the successful defense of  the client in a post-grant review filed by Benson-Hill against the client’s CRISPR patent.
  • Advised Reliance Worldwide on the development of its US patent portfolio.
  • Assists EnGeneIC Ltd. with all patent counselling and patent prosecution regarding the client’s portfolio of cancer therapeutics.
  • Provided strategic IP development for market-making technologies, including patent portfolio development, application drafting, and post-grant work for Google.
  • Assisted Broadcom Corporation with the management and development of its patent portfolio encompassing wired infrastructure, wireless communications, enterprise storage and other technologies.

Sterne, Kessler, Goldstein & Fox PLLC

Sterne, Kessler, Goldstein & Fox PLLC in Washington DC demonstrates strength in the prosecution of utility and design patents alike. With its deep bench of practitioners, the group is able to cover an exceedingly wide range of sectors, providing in-depth knowledge to clients from the life sciences, electronics, technology, pharmaceutical, food and beverage, consumer products and manufacturing sectors to name the team's core focus sectors. The group's outstanding PTAB practice, exceptional both in activity and success rate, and its proven capabilities in domestic and international patent prosecution, with a particular focus on patent prosecution in Europe and Asia, make it a popular choice for a number of international giants as well as for renowned research institutions. Managing director Michael RayDeborah Sterling as the head of the biotechnology and chemical practice group, electronics practice head Jason Eisenberg and Tracy-Gene Durkin as the head of the mechanical and design practice group form the quartet at the helm of the team. Life sciences expert Eldora Ellison enjoys an excellent reputation in the market. Richard Coller is also noted. David Cornwell retired.

Practice head(s):

Michael Ray; Deborah Sterling; Jason Eisenberg; Tracy-Gene Durkin

Other key lawyers:

Eldora Ellison; Eric Steffe; Jorge Goldstein; Richard Coller; Michael Lee; Mark Rygiel; Robert Millonig

Key clients

Regents of the University of California

Apple, Inc.

Volkswagen Group

Adidas

Taiwan Semiconductor Manufacturing (TSMC)

PepsiCo, Inc.

Bristol-Myers Squibb Company

AbbVie, Inc.

ASML

SAP

Work highlights

  • Assisted the Regents of the University of California with strategic patent advice regarding the client’s CRISPR gene editing portfolio, leading to significant growth of the portfolio.
  • Advised Apple, Inc. on the development of its design patent strategies and their implementation in the US and worldwide.
  • Assisted Salesforce.com, Inc. with the development of its global patent portfolio covering the client’s graphical user interfaces, namely through the successful prosecution of design patents.
  • Advised PepsiCo, Inc. on the protection of its novel packaging, dispensers, vending machines and formulations through a combination of utility and design patents in the US and 28 countries abroad.
  • Represented Bristol-Myers Squibb Company in the prosecution of several complex patent portfolios for small and large molecules associated with a variety of intracellular pathways, including immuno-oncology (I-O) targets and pathogenic agents.

Baker Botts L.L.P.

Baker Botts L.L.P. remains one of the most active patent prosecution practice among general practice firms, partly thanks to the team's busy PTAB caseload composed of inter partes reviews and covered business method reviews. The group is well versed in US and international patent prosecution across a wide range of technical areas and sectors, with the technology sector providing an especially strong flow of instructions from major players. The electronics and telecommunications sectors also account for a significant portion of the caseload, with the medical device, manufacturing and life sciences sectors as other strong contributors. Practice head Robert Scheinfeld is based in New York, while deputy Christa Brown-Sanford operates from Dallas. Palo Alto's Hogene Choi is also noted. Former Venable LLP practitioner Michael Sartori joined in the Washington DC office. Other key offices are in San Francisco, Austin and Houston.

Practice head(s):

Robert Scheinfeld

Other key lawyers:

Christa Brown-Sanford; Steve Lendaris; Michael Sartori; Daniel Hulseberg; Hogene Choi; Eliot Williams; Luke Pederson; Thomas Travis; Paul Ragusa

Testimonials

The team is practical, thinks through strategies and is very effective.

The team provides strategic but practical counsel to business with strong partnership and keen understanding of business.

Christa Brown-Sanford is one of the best outside lawyers we’ve worked with. She has an amazing way of translating complex IP issues into practical business options and strategy. Highly recommend her work and she is a standout leader for the firm.

Eliot Williams is an outstanding attorney for post-grant proceedings and appellate work. He thinks on his feet, has excellent judgement and great presentation skills.

Eliot Williams delivers. He has the technical chops and is an excellent oral advocate at IPR trials.

Key clients

Facebook, Inc.

Samsung Research America

Lyft

Square

Optmyzr

XNOR.ai

Workfusion

CloudSimple

Broadcom (CA Technologies)

Telesat

Brother Industries Ltd.

Iridium Technologies

Columbia University

Twilio Inc.

Mastercard International Inc.

Bright House Networks, LLC/Charter Communications

Hitachi Ltd.

Qualcomm

Dish Network and Hughes Communication

Work highlights

  • Represented Facebook, Inc. in the development and management of its patent portfolio across a wide range of technologies, including artificial intelligence and machine learning, computer vision, augmented and virtual reality, desktop and mobile applications, social media, and wireless networks.
  • Assisted Columbia University with the development and management of its worldwide patent portfolio, covering a wide range of physical and life sciences technologies, including biotechnology, materials science, medical devices, semiconductor device fabrication and pharmaceuticals.
  • Represented Samsung Research America in patent counselling and prosecution to protect the client’s new developments, such as wearable devices, bio-sensing hardware and software for medical and health applications, touch- and proximity-sensing consumer devices, and 3D video.
  • Acted as chief outside patent counsel for Lyft’s Level 5 Engineering Center in the development of its patent portfolio directed to self-driving systems and networks.
  • Advised Square on the development and management of Square’s worldwide patent portfolio, focusing on all technologies involved in one of their most rapidly growing areas of development: Square’s Cash app, including blockchain-related technology.

Cantor Colburn LLP

IP boutique Cantor Colburn LLP impresses with its strong utility and design patent practice as part of its wideranging IP offering that also includes a transactional practice and trademark work. The hi-tech and biotech sectors are among the firm's mainstays, but the caseload is highly varied thanks to the group's diverse client roster that includes chemical and life sciences players, pharmaceutical companies, electronics and manufacturing companies, automotive giants and medical device specialists. The firm stands out through the exceptional growth of its prosecution practice, having significantly increased its filing activity in the US and abroad, with clients from Korea, Japan, China, Europe, the Middle East, India and Australia relying on the team's expertise. To complete the prosecution offering, the firm also provides strong expertise in post-grant proceedings, including reviews that run parallel to litigation. The main office is in Hartford, Connecticut, where co-managing partners Michael Cantor and Philmore Colburn, Leah Reimer and Pamela Curbelo as the co-heads of the chemicals, materials and life sciences group, David Fox and Keith Murphy as the co-chairs of the electrical-mechanical group, Dave Christensen as the head of the additive manufacturing practice and Bryan Zerhusen as the life sciences practice head are based. Other key offices are in Houston, led by David Rodrigues, Atlanta, managed by Peter Hagerty, Washington DC, led by Jenae Gureff, and in Detroit, managed by Karl Barr. James Wimpe and Wanli Wu in Hartford, Patrick Griffin and Matteo Pedini in Washington DC and Tina Dorr and David Kincaid in Atlanta made counsel in January 2019. Counsel Aaron Bumgarner joined from McCarter & English, LLP, counsel Joseph Barrera joined from Bausch + Lomb, and litigator Marc Henschke arrived from Barclay Damon, all three in the Hartford office. In Houston, Vincent Cichosz arrived from Delphi Automotive Systems. Nitin Virmalwar went in-house to SQZ Biotech, Dmitry Zuev went in-house to Biohaven Pharmaceuticals, Krista Kostiew left for an in-house position at Unilever.

Practice head(s):

Michael Cantor; Philmore Colburn; Steve Coyle; Michael Rye; Leah Reimer; Pamela Curbelo; David Fox; Keith Murphy; Dave Christensen; Bryan Zerhusen

Testimonials

These are the qualities of the staff that help us manage our IP estate: The individuals are very knowledgeable in the process (which I would expect) but they share this knowledge in a simple manner. We are always provided with the options and simple, concise explanations for their recommendations. The individuals are flexible. The staff is always timely and responsive. Dates to which they commit are always met. Things do not fall between the cracks.

Key clients

Faro Technologies

Arvinas

Ingevity

Fish & Richardson P.C.

Fish & Richardson P.C. is known for its powerful prosecution practice, including its successful PTAB practice. Washington DC's John Hayden is the head of the patent practice. Karl Renner, also based in Washington DC, and Dorothy Whelan in the Twin Cities office direct the post-grant practice.

Practice head(s):

John Hayden; Karl Renner; Dorothy Whelan

Knobbe Martens Olson & Bear LLP

Knobbe Martens Olson & Bear LLP, one of the largest IP firms in the US, stands out through the depth of its bench and the corresponding breadth of technologies on which the firm offers in-depth expertise. The medical device, biotechnology, pharmaceutical, electronics and telecommunications practice are core pillars of the firm, with new technologies, such as robotics, artifical intelligence and data privacy-related inventions, continuing to grow their share in the caseload. Thanks to the diversity of the group's client list, composed of Fortune 500 companies and start-ups, the practice is well versed in the development of patent portfolio strategies for companies at different growth stages. As the firm is also a litigation heavyweight in the market, its successful post-grant practice is both a prosecution asset and a skillfully wielded litigation tool. San Diego's Gerard von Hoffmann and Orange County's Steven Nataupsky share the lead of the practice. Salima Merani is highly recommended. Jessica Achtsam, Charlene Azema, Vikas Bhargava, Morgan Coates, Scott Cromar, Jonathan Menkes, David Schmidt and Harnik Shukla made partner in January 2019. Lauren Hockett went in-house to Amazon Web Services, Scott Ravesky became and Administrative Patent Judge at the USPTO, Christopher DiLeo went in-house to Becton Dickinson and John Holcom retired for his nomination as District Judge for the Central District of California. All lawyers named are based in the Orange County office unless otherwise stated.

Practice head(s):

Gerard von Hoffmann; Steven Nataupsky

Other key lawyers:

Salima Merani; Adam Gilbert; Rose Thiessen; Rabi Narula; Theodore Papagiannis; Shannon Lam; Michael Christensen

Testimonials

The team show tremendous knowledge and adaptability to the changing patent law landscape in the US. They also have a comprehensive understanding of international practices, especially how to push forward in Europe. Their experience of working with rapid growth start-ups is unrivalled and their success rate with building commercially relevant IP portfolios is daunting.

Salima Merani – quite simply a doyen of med tech IP. SoCal’s go-to patent partner for medical devices.

Salima Merani is fun to work with, but always on top of things, smart and charming at the same time.

Salima Merani’s level of engagement, client satisfaction, dedication, strategic advice, counsel, and mentorship is unmatched.  One of the top 3 outside counsel’s I’ve ever worked with.  She also treats and spends the client’s money as if it was her own money.  Specifically with regards to PGRs, Salima and the Knobbe team have a firm grasp and understanding of the matter.

Michael Christensen – analytical and focused, highly impressive skills.

Adam Gilbert – thoughtful and relentless in pursuing the claims his clients need.

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.

Work highlights

  • Assisted Cala Health, Inc. with the development of its global patent portfolio to protect the client’s wearable neuromodulation therapies, and advised the client on the $50m investment by a number of blue-chip investors.
  • Represented Insera Therapeutics, Inc. in significantly growing its patent portfolio using the Patent Office’s fast track examination procedures to protect the client’s minimally invasive therapeutics.
  • Acted as lead counsel for Claret Medical for the development of its patent portfolio of filters used in catheter-based heart surgeries in addition to advising the client on its acquisition by Boston Scientific.
  • Represented SureCall in a complex litigation against Wilson, including six IPRs challenging three of the client’s patents covering 5-band cell phone boosters, ultimately securing full dismissal of all six IPRs.
  • Represented Illumina in challenging five of Columbia University’s sequencing technology patents in IPR proceedings at the USPTO.

Arent Fox LLP

Arent Fox LLP's bicoastal patent prosecution practice with offices in New York, Washington DC, Los Angeles and San Francisco specialises in the development and management of large patent portfolios, both domestic and international ones. One of the few full-service law firms with a dedicated prosecution department, the group attracts major corporations with large-scale prosecution needs and is the US advisor of choice for European clients of a well-known London-based firm. The group's four focus areas are fashion and retail, electrical and mechanical patents, the chemical and life sciences sectors and, increasingly, blockchain and cryptocurrency-related matters. New York's Richard LaCava is the head of the practice. Jay Deshmukh left for Kasowitz Benson Torres LLP while Lin Hymel joined Posternak, Blankstein & Lund, L.L.P.. Former partner Anthony Shaw, who splits his time between the New York and Washington offices, is now a counsel at the firm.

Practice head(s):

Richard LaCava

Other key lawyers:

Paul Maier; James Bindseil; Wilburn Chesser; Craig Gelfound; Richard Berman

Testimonials

The team is awesome. They have a quality that differs from other firms that I’ve worked with. Considering that the US law is quite different from our law, the team made all the efforts to try to simplify it and help us to understand the best way to proceed.

Their team has a good relationship, communicating not only between partner and associates, but also between partners. They usually discuss with each other in order to provide the best solution in cases where they consider that it is better to refer to the other’s experience and opinions.

I am very impressed with Arent Fox’s organizational skills despite the fact that the firm has multiple offices.  We have dozens of active patent proceedings in various domestic and foreign venues and Arent Fox keeps our efforts coordinated and up to date.  Arent Fox’s patent practice has a team that I can rely upon to maintain our portfolio in good order.

James Bindseil is an outstanding professional, gives concise opinions that help us to proceed in the best way to protect my company’s interests. Alex Spiegler has a good technical knowledge about our technologies. Taniel Anderson was a real help in explaining the particularities of US patent prosecution.

I have worked with Arent Fox for more than 10 years and in my opinion their practice and attention to the client makes all the difference. My team works directly with them almost everyday for patent cases and we all agree they have a very good attendance in all IP issues.

Richard LaCava and Paul Maier are always considering their client’s cost in priority to maximize their benefit.

Paul Maier provides excellent patent prosecution services in a cost-effective and efficient manner. His services are highly recommended.

Key clients

Becton Dickinson

Bridgelux

Cardinal Health, Inc.

Divergent Technologies, Inc.

Grass Valley and Snell

Advanced Media

Inspirion Delivery Sciences (IDS)

Johnson Controls, Inc.

Microsoft Corporation

Munchkin

Omnitracs LLC

Qualcomm Incorporated

Vale S.A.

Western Digital and SanDisk

Work highlights

  • Assisted Becton Dickinson with patent prosecution, including product lines in the integrated analytics solutions, medication and supply management, surgical instruments, and interventional specialties, as well as in product lines in the infection prevention, respiratory care, and interventional specialties areas. More recently, the group also advised the client on the patent protection of biopsy devices and procedures.
  • Acted as lead intellectual property counsel for Bridgelux, managing the client’s entire patent portfolio and developing the client’s intellectual property strategy in addition to providing counselling, licensing and commercial transactional advice and representing the client in litigation.
  • Advised Cardinal Health, Inc. no patent portfolio management, transactional matters relating to new medical technologies, and privacy matters.
  • Represented Divergent Technologies, Inc. in the development and implementation of a patent portfolio strategy to protect the client’s emerging technologies in 3-D printed automobile technology.
  • Assisted a leading technology company with patent application filings and patent prosecution regarding semiconductors, computers and software, and wireless work relating to base stations.

Banner & Witcoff, Ltd.

IP boutique Banner & Witcoff, Ltd. demonstrates particular strength in the prosecution of design patents as shown by the firm's exceptionally high success rate in securing design patents for its clients. The group is well versed in the development and management of large patent portfolios composed of domestic and international patents, leveraging its network of overseas law firm partners to ensure a seamless cross-border service. In combination with the team's strong utility patent practice and its technical versatility, the breadth of the group's expertise also makes for a high-performance PTAB practice. Clients from a broad range of sectors entrust their portfolios to the firm, including telecommunnications, manufacturing, fashion, automotive, electronics, consumer products, life sciences and medical device companies. Chunhsi Andy Mu in Washington DC is the head of the practice. Of counsel Manav Das joined the Chicago office from an in-house position at Micro Focus, Christian LaForgia, formerly in-house at Wickr, of counsel Shawn O’Dowd, formerly at Hunton Andrews Kurth LLP, and counsel Robert Molitors, formerly at Miles & Stockbridge PC, joined in the Washington DC office. The firm also has offices in Boston and Portland. Rebecca Rokos left to join the Rush University Medical Center.

Practice head(s):

Chunhsi Andy Mu

Other key lawyers:

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

Testimonials

Ross Dannenberg is a wonderful patent attorney, full of enthusiasm and industry knowledge.

Key clients

Allstate

Bank of America

Brother Industries

Buc-ee’s Ltd.

Citrix Systems

Comcast

Electrolux

Honeywell International

Ingersoll Rand

KAYAK

Kimberly-Clark

Lakeshore Equipment

Lexmark International

Mark Andy Inc.

Mentor Graphics

Microsoft

NIKE

Nokia

OpenTable

Shure

SolarEdge

Spectrum Brands

The Marmon Group

Toshiba

Wargaming.net

WMS Gaming

YETI Coolers

Work highlights

  • Represented Comcast in patent prosecution and other intellectual property matters, including post-grant proceedings such as the IPR against Rovi concerning 37 patents and over 1,000 patent claims regarding television program guides, digital video recorders and mobile services.
  • Represented NIKE in the management of the bulk of its design patent portfolio, in addition to enforcing and protecting its patents in litigation and post-grant proceedings to protect popular and innovative NIKE apparel, athletic shoes and equipment, including Flyknit and Tech Fleece innovations, and Kobe, Jordan and Lebron basketball shoes, among others.
  • Represented Citrix Systems in the prosecution of utility and design patent applications and the management of its patent portfolio, securing patents in a number of different technologies, including remote desktops, virtualization, enterprise mobile security, online meeting and messaging applications.
  • Represented YETI in patent and design patent prosecution, as well as trademark prosecution, litigation, counselling, trade dress, and other IP matters.
  • Represent SolarEdge in several IPRs (SolarEdge Technologies Ltd. v. SMA Solar Technology AG), as well as other IP matters.

Kilpatrick Townsend & Stockton

Kilpatrick Townsend & Stockton fields a highly international practice, often assisting its clients with the implementation of global patent strategies. The team is experienced in acting for large corporations, individual inventors, organizations and universities from a broad sector spectrum, spanning the life sciences, technology, consumer products, energy and financial services sectors as core areas. Additionally, the group offers strong post-grant capabilities through a mix of patent prosecutors and litigators who have built up a track record of successful inter partes reviews, post-grant reviews and covered business method reviews for both patent owners and petitioners. Atlanta-based Vaibhav Kadaba is the head of the practice which also has key patent offices in Menlo Park, Seattle, San Diego, Washington DC, San Francisco, Denver and Walnut Creek. San Diego's Richard Christiansen, Kate Gaudry in Washington DC and Nicoletta Kennedy, Daniel McCormick and Clark Weight  in Denver made partner in January 2019. James Cleary joined the San Diego office from Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.. John Pratt retired.

Practice head(s):

Vaibhav Kadaba

Other key lawyers:

Tina McKeon; Justin Krieger; Gene Bernard; Nena Bains; Thomas Franklin; Richard Christiansen; Andrew Serafini; Craig Largent

Testimonials

Wide and deep expert bench.

This team is very well managed, and includes many experienced and capable drafting/prosecution attorneys. They employ a supervisor/drafter approach when less experienced attorneys are working on matters.’

The team we use is 100% female, all well-credentialed PhDs, all customer-service oriented. I love each of those characteristics.

Tina McKeon is quick to respond to communications. She finds answers quickly. Delivers bad results well (they don’t happen often, but delivering bad news is an important trait). Kate Gaudry serves one of our more demanding inventors. Her skill and expertise has made interactions run so much more smoothly, and the quality of our patent protection reflects her value.

The individuals with whom I work are all very good with clients, and they have a relatively good understanding of our businesses and technologies. This allows disclosure meetings and other client engagements to be much more focused than in cases where we must educate outside counsel on these topics.

I never hear or get the sense that another client is more important.

Key clients

Atreca

Avery Dennison Corporation

California Institute of Technology (Caltech)

Celanese International Corporation

Emory University

Laboratory Corporation of America

Novelis

Prometheus Laboratories Inc. part of Nestlé Health Sciences

Work highlights

  • Represented Atreca in the development and management of its patent portfolio, IP aspects of its multiple financing rounds and the IP disclosures and due diligence in preparation for the client’s successful IPO in 2019.
  • Advised Avery Dennison Corporation on the management of its global patent portfolio of over 100 patent families, including the filing and prosecution of patent applications in the US and abroad.
  • Assisted the California Institute of Technology with the development of an international patent portfolio to protect the client’s breakthrough graphene technology, including cooperation with patent attorneys abroad.
  • Represented Celanese International Corporation in three IPR proceedings challenging a number of competitor patents relating to the production of acetic acid, obtaining favourable decisions from the PTAB in each of the proceedings, with two having gone on to the Federal Circuit.
  • Acted for Emory University in several European opposition proceedings regarding patents relating to the treatment of cancer and persistent infection that have been challenged by up to five opponents before the European Patent Office.

McDermott Will & Emery LLP

McDermott Will & Emery LLP is traditionally known for its strength in the life sciences and technology sectors, acting for major international companies and renowned research institutions. Following a number of departures in 2018, the group saw Kristin Connarn and Robert Underwood join Hogan Lovells US LLP and Hosang Lee leave for Morgan, Lewis & Bockius LLP. Kristina Bieker left for Goodwin. Practice head Ahsan Shaikh splits his time between the Silicon Valley and Chicago offices.

Practice head(s):

Ahsan Shaikh

Morgan, Lewis & Bockius LLP

Morgan, Lewis & Bockius LLP offers the full range of patent prosecution services for its high-profile life sciences and technology clients. The team of practice head Eric Kraeutler and deputy practice head Louis Beardell, both based in Philadelphia, accompanies its clients from the inception of a patent application to its successful registration and enforcement, its commercial exploitation through licensing and the development of its surrounding patent portfolio both in the US and overseas, frequently joining forces with colleagues from the firm's global network of offices. Thanks to its successful litigation group, the firm is also extremely well suited to post-grant proceedings at the PTAB, being able to draw on its longstanding experience in USPTO practices and the strategic conduct of adversarial proceedings. Mark Itri and Michael Dreznes in Orange County are also noted. Former McDermott Will & Emery LLP practitioner Hosang Lee joined the Washington DC office in January 2019. Life sciences, chemistry and healthcare expert Christina MacDougall in San Francisco and electrical and computer engineering specialist Michael Ryan in Philadelphia made partner in 2019. The firm also has offices in Houston, Chicago, Silicon Valley and Boston.

Practice head(s):

Eric Kraeutler; Louis Beardell

Other key lawyers:

Mark Itri; Dion Bregman; Gary Williams; Stephen Altieri; Janice Logan; Nathan Smith; Gargi Talukder; Robert Smyth; John Hemmer;

Testimonials

The Morgan Lewis IP team is really professional and always tries to provide a customer-oriented service.  Namely, the team is very careful in understanding their clients’ situation and what their clients desire in the situation. Another strength of the Morgan Lewis IP team is the close relation between partners/senior associates.  This is true even between different local offices.  The network in the team provides a comprehensive spectrum of expertise.

Keen commercial awareness and the pursuit of unique strategies.

Creative, responsive and effective. The Morgan patent team treats us as partners, and works well with our engineering team.  They appreciate their work and creativity as well.

Janice Logan’s excellent communication skills help her to convey her thoughts to clients and colleagues in a clear and convincing way. Her background is in biotech, but she is also involved with many computer-related inventions. This background should be attractive for many cutting-edge companies.

Dion Bregman, John Hemmer and David Bernstein are go-to folks. Dion is thoughtful and creative. John provides strategic design patent advice. And David executes well.  Together, they consistently exceed expectations.

Key clients

Kokusai Electric Corp.

Deere & Company

OliX Pharmaceuticals, Inc.

Icagen, Inc.

Xencor

Singular Bio Inc.

Omron Corporation

Work highlights

  • Represented Kokusai Electric Corp. in fifteen IPR proceedings against competitor ASM International, successfully obtaining institution of trial on all of ASM International’s asserted patents and convincing the PTAB to deny institution of three of ASM International’s challenges.
  • Assisted Deere & Company with the preparation of patent applications relating to GPS signal processing, GPS receivers, and a variety of systems and techniques for improving navigation accuracy in both ordinary and challenging environments.
  • Represented OliX Pharmaceuticals, Inc. in the license and collaboration agreement with Laboratoires Théa SAS for the OLX301A program, an RNA interference treatment for dry and wet age-related macular degeneration, in addition to managing the client’s underlying patent portfolio.
  • Represented Xencor in patent applications and ongoing prosecution for its bispecific antibody platform and Fc-fusion protein platform, global patent portfolio management, and IP due diligence for collaborations, licenses, and financings.
  • Advised Singular Bio Inc. (now a part of Invitae) on the implementation of a patent portfolio prosecution strategy, including the prosecution of multiple biotech patent applications and thereby enabling the client to receive further financing.

Wolf, Greenfield & Sacks, P.C.

IP boutique Wolf, Greenfield & Sacks, P.C. defended its position as one of the most flourishing specialist IP firms in the country, growing its team in an overall tricky climate for independent firms. The firm's deep and versatile technical bench consists almost exclusively of practitioners with a science or engineering degree, including a high number of specialists with advanced degrees, making it a popular choice for major international companies, medium-sized enterprises, start-ups, universities and research institutions alike. In post-grant proceedings at the PTAB, the busy practice achieves an exceptional success rate for patent owners and petitioners, especially in inter partes reviews. Electronics, technology and life sciences are the team's core sectors. Boston-based managing partner Timothy Oyer is in charge of the firm, including the New York office. Michael Siekman and Jenny Chen left for Polsinelli PC in April 2019.

Practice head(s):

Timothy Oyer

Other key lawyers:

Richard Giunta; Edward Russavage; Oona Johnstone; Randy Pritzker; Michael Twomey; Helen Lockhart; Neil Ferraro

Testimonials

The team is very sound technically and can interface seamlessly with their clients’ engineers. They are the closest thing to having an internal IP team while still providing the benefits that a large outside firm brings.  From global patent and trademark prosecution to initiating and defending IPRs, the firm has a broad range of outstanding lawyers.

Outstanding legal and technical knowledge.  High degree of responsiveness. Willingness to engage deeply.  Always working hard to achieve and find solutions for our business objectives.

The team at Wolf, Greenfield & Sacks brought together technical expertise in several high-value areas via several team members with PhD-level training. They understood the special and patentable aspects of our work and collaborated with us to craft an aggressive prosecution strategy. Of course, the team checked all the boxes on more general aspects of the practice, including project planning, deadline awareness, budgeting, and strategic input.

Very strong understanding of our business and objectives.  Always willing to prioritize our work for any urgent matters that arise. Randy Pritzker is exceptionally helpful.

Ed Russavage – great communicator, highly organized, confident, experienced (he’s seen it all, no surprises!), and great manager of his team.’

Key clients

Analog Devices

Becton Dickinson

Biogen

Dana Farber Cancer Institute

Dell EMC

Google

Harvard University and Medical School

Keurig Green Mountain

Massachusetts Institute of Technology

Moderna Therapeutics

Work highlights

  • Filed a successful IPR petition on behalf of 3D printer specialist FormLabs against competitor EnvisionTEC in the context of a patent infringement suit launched by EnvisionTEC, successful obtaining a PTAB decision that found all claims unpatentable.
  • Assisted ClearMotion with the development and management of its patent portfolio as well as with the acquisition of a patent portfolio from Bose Corporation. Acted as sole US prosecution counsel for the client.
  • Advised synthetic biology company Ginkgo Bioworks on patent prosecution, licensing agreements, opinion work, and freedom-to-operate analyses.
  • Assisted Moderna, Inc. with patent prosecution, freedom to operate analyses, and portfolio management for patents relating to messenger RNA therapeutics.
  • Represented Oxford Nanopore in the management of its patent portfolio, prosecuting patents on the company’s core technology and assisting it with the protection of its IP assets as it enters the US market through partnerships.

Arnold & Porter

Arnold & Porter impresses with longstanding experience in domestic and international patent prosecution, successfully acting as a long-term adviser to its high-profile clients. Thanks to the firms strength in litigation and prosecution work, the group performs very well at the PTAB, both in independent proceedings or in proceedings that run parallel to district court litigation. The life sciences sector is the firm's mainstay, with expertise ranging from chemistry and biochemistry to biophysics, biologics, applied physics and engineering. Washington DC duo Matthew Wolf and Jennifer Sklenar are the heads of the practice. The other key office is in Silicon Valley.

Practice head(s):

Matthew Wolf; Jennifer Sklenar

Other key lawyers:

David Marsh; Deborah Fishman; Curtis Altmann;

Key clients

Bayer (formerly Monsanto)

Genus PLC

Sapphire Energy

Bruin Biometrics

Finch Therapeutics

Temptime Corporation

Altria

Water Street Healthcare

Orthogenesis

Hemanext

Work highlights

  • Assisted Bayer (formerly Monsanto) with the patent prosecution of transgenic plants, traditionally bred plants  and in several other areas of plant genetics, including multiple appeal and multi-party opposition proceedings in the US and abroad to successfully develop patent portfolios aimed at protecting key DNA breakthroughs.
  • Advised Bruin Biometrics, LLC on strategic matters relating to two company-critical patent portfolios covering medical devices, including non-invasive biometric-sensor-based devices for detecting tissue moisture content and blood oxygenation, and non-invasive biometric-sensor-based devices configured to perform acoustic and biomechanical measurement.
  • Represented Hemanext (Formerly New Health Sciences, Inc.) in the development of patent strategies to protect the client’s blood deoxygenation methods.
  • Advised Finch Therapeutics, a clinical-stage biotech start-up, on patent portfolio strategies and global IP procurement relating to the microbiome-based  treatment of diseases, such as gastrointestinal disorders.
  • Represented Sandoz in six IPRs challenging AbbVie’s method of treatment patents on Humira.

Baker & Hostetler LLP

Baker & Hostetler LLP is primarily active for technology, life sciences and healthcare clients, but also acts for a number of companies from the aerospace, electronics and manufacturing sectors. The group focuses on the prosecution of US patents, with counseling regarding the development of international filing strategies as an additional service, and offers the necessary experience in PTAB proceedings to successfully grow and defend its clients' patent assets. For international work, the team cooperates with a number of foreign firms, including firms form India, France and Japan. The Washington DC-based Mark Tidman is the chair of the IP group. Kenneth Sheehan, also in Washington DC, and Michael Stein in Seattle share the lead of the electrical, mechanical and computer science prosecution group. Phong Nguyen left for an in-house position at State Farm. Other key locations are in Atlanta and Philadelphia.

Practice head(s):

Mark Tidman; Kenneth Sheehan; Michael Stein

Other key lawyers:

Hussein Akhavannik; Tayan Patel; Robert Hails; Steven Samuels; Erdal Dervis

Testimonials

Highly skilled attorneys. As in-house counsel, I appreciate a firm’s ability to learn the client’s business and work with the information they have or can obtain without ‘hand holding’. This firm is able to produce tremendously high quality work without large client input by understanding the business, knowing the business objectives, and understanding the entire industry. Clients are consistently impressed with the level of work produced by this firm.

Good advice and strategies provided by the team.

Very responsive, dynamic team. Suitable infrastructure in place to help meet all of our IP needs.

Very professional communication, always easy to reach and to get a thoughtful response within very little response time. All team members were very helpful in explaining American litigation and in navigating our team through the entire process in the negotiation with the opponent. Result achieved was excellent and this is through an excellent guidance from our counsel. We are very satisfied and can highly recommend BakerHostetler and we will surely use them again in the future.

Again, they bring value added in terms of knowing all the recent case laws, all the rules and practices associated with the Patent Office, and all the tools available to get patent applications through the prosecution.

Tayan Patel is swift in responding, and great in quality. Provides great advice and strategies.

Tayan Patel – great depth of knowledge regarding patent and technological expertise. Skillful management of resources with respect to our patent assets from a procedural perspective and strategic planning guidance.

Open-minded, does not stop at legal questions only, always has business of the client in mind.

We appreciate Ken Sheehan very much. His communication is excellent, always professional and friendly and easy to reach. All advice was very much appreciated and well thought through. We can recommend him highly to all other clients. Could not be happier.

Key clients

Teleflex

Nordson

Johnson & Johnson

SPX Flow

Syngenta

Apple

CACI (formerly LGS Innovations)

SPX Corporation

TracFone

comScore

Bruker

Cree

Sinclair Broadcast Group

Fresenius

Hitchiner Manufacturing Co.

Trasdigm

Hyatt

Work highlights

  • Represented Teleflex Incorporated in patent prosecution and patent counselling matters, such as the monitoring of competitor products and patents, advice regarding clearance the cohesiveness of patent protection and portfolio management and enforcement in addition to assisting with the patent aspects of the purchase, sale, and licensing of technology, and in regard to mergers and acquisitions.
  • Represented Nordson Corporation in patent and trademark prosecution matters across almost thirty divisions of the company, including the procurement of patents worldwide, monitoring competitor products and patents, advice regarding clearance and cohesiveness of protection, maintenance, and enforcement.
  • Advised SPX Flow on patent prosecution matters, provided counselling related to patents and technology, including the purchase, sale, and licensing of technology, as well as mergers and acquisitions related to same, and portfolio management, including monitoring competitor products and patents, advice regarding clearance and cohesiveness of protection, maintenance, and enforcement.
  • Represented Apple in patent prosecution matters for various technologies, especially in the area of graphics and video coding.
  • Assisted LGS Innovations LLC (now CACI, Inc.) with the strategic development of an IP portfolio covering cybersecurity, optical communications, wireless and networking, licensing aspects and due diligence investigations.

Baker McKenzie LLP

Baker McKenzie LLP continues to grow its PTAB practice, with several exceptionally successful high-stakes inter partes reviews already under its belt. The group distinguishes itself from competitors through a combination of its strong software patent prosecution expertise, wide geographical reach as shown by its experience in the prosecution of global patent portfolios, drawing on its in-house Korean- and Mandarin-speaking practitioners to better counsel clients from China and South Korea, and its specialism in plant patents and plant variety rights as part of its life sciences offering. Additionally, the group is growing its expertise in patent issues regarding artificial intelligence. Mackenzie Martin in the Dallas office is the head of the practice. The other key office is in Washington DC. Matt Dushek went in-house to Pratt & Whitney and William McSpadden left for an in-house position at Cochlear.

Practice head(s):

Mackenzie Martin

Other key lawyers:

Richard Wells; Brian McCormack; John Flaim

Testimonials

Worldwide reach.

Broad knowledge.

Key clients

Authentic8

Blackhawk Moldings

Coflex

DI Optical

Edenlux

Martin UAV LLC

Noble Sensors

Robowash

Rosetta Stone

Schlumberger Corporation

Sentiens LLC

Starcom

Swarovski

Xamax Industries, Inc.

Zero Friction

Zespri Group Ltd.

Work highlights

  • Assisted Authentic8 with strategic patent preparation and prosecution as well as with portfolio management.
  • Assisted Blackhawk Moldings with patent prosecution matters, including drafting patent applications and responses to office actions.
  • Assisted longstanding client Coflex S.A. de C.V. with the management of patent prosecution work, including drafting patent applications and responses to office actions.
  • Assisted D.I. Optical USA Inc. with patent prosecution work for DI Optical, including preparing new applications, responses to office actions, reissue applications and appeals.
  • Represented Rosetta Stone, Inc. in the management of its patent portfolio, including ongoing prosecution and new filings.

Birch, Stewart, Kolasch & Birch, LLP

Virigina-based IP boutique Birch, Stewart, Kolasch & Birch, LLP is especially well known for its powerful life sciences practice. Other areas of expertise include electronics, mechanical engineering and technology patents.

Dechert LLP

Dechert LLP 's practice focuses on advising pharmaceutical and biotechnology companies on a wide range of matters, spanning patent portfolio development for pre-public and discovery stage clients, the management of international patent portfolios and the representation in adversarial proceedings at the USPTO as core lines of work. The group is a key player in the firm's international life sciences practice and well versed in multi-jurisdictional matters. Boston's Andrea Reid and Austin's Jeffrey Plies direct the life sciences powerhouse.

Practice head(s):

Andrea Reid; Jeffrey Plies

Other key lawyers:

Chad Davis; Carl Morales

Testimonials

Dechert really is a team – amazing and seamless ability to bring deep expertise to bear, while also having a key relationship manager. They get client service right.

Collaborative, deep expertise, steady hand on the tiller with excellent advice, timely delivery and to the upmost quality. A true Rolls Royce firm.

Highly creative team, especially in the small molecule and formulation areas.  Fantastic work cleaning up inherited files.

Andrea Reid is an exemplary lawyer and leading light in IP thinking.  Further, she is an amazing manager and developer of talent, as evidenced by the amazing associates and young partners she has groomed.

Andrea Reid – Outstanding in her field, highly personable, deep expertise and experience, trusted advice, delivers everything that is required of a strategic patent attorney, collaborative and knowledgeable contributing across whole landscape of our complex corporate structure and other patent firms.

Paul Fleming – Experience based on real world experience of pharma, delivers above and beyond what is expected, superb scientific roots. Trusted team member.

Carl Morales – Carl does an excellent job approaching a problem from new angles and finding a solution to otherwise impossible issues. He is responsive and takes a lot of pride in his work.

Key clients

Arrakis Therapeutics

AstraZeneca/Omthera

Centrexion Therapeutics

Ferring Pharmaceuticals

ImmuneSensor Therapeutics

Incyte Corporation/Calithera Biosciences

Kymera Therapeutics

Kyn Therapeutics

Merck KGaA

Nimbus Therapeutics

Pfizer

Rafael Pharmaceuticals

Work highlights

  • Represented Pfizer in securing patent protection for Ibrance® (palbociclib), an FDA-approved blockbuster oral drug for first line treatment of HR-positive/HER2-negative breast cancer, including the management of Pfizer’s patent term extension strategy for Ibrance® and extensive dialog and negotiation with the USPTO.
  • Represented Omthera Pharmaceuticals Inc. in developing a patent portfolio covering the drug product Epanova®, an FDA-approved complex fish oil-derived mixture of free fatty acids for the treatment of hypertriglyceridemia.
  • Assisted Merck KGaA’s patent department in performing the IP due diligence in a license agreement with Vertex Pharmaceuticals Incorporated for four oncology research and develop programs.
  • Advised Arrakis Therapeutics on IP diligence and implementing a portfolio strategy in its $75m series B financing to advance a new class of small-molecule medicines targeting RNA.
  • Assisted Kyn Therapeutics with the patent strategy and diligence and negotiation of the IP terms in a global strategic collaboration with Celgene Corporation relating to immunometabolic therapies for treating cancer.

Dentons

Dentons acts for a highly international client roster that includes clients from the education, electronics, financial services, food & beverage, technology and life sciences sectors. The group is experienced in domestic and international patent prosecution, including PTAB proceedings, and is, thanks to the firm's global footprint, able to join forces with colleagues from foreign jurisdictions for cross-border prosecution matters. Robert Hanson in Dallas, Brian Ho, who splits his time between San Francisco and Oakland, and Eric Sophir in Washington DC are the heads of the practice. With the arrival of Steven Lubezny from Perkins Coie LLP in Chicago the group strengthened its presence in the Midwest. Peter Yim, who splits his time between the San Francisco and Oakland offices, is another main contact. Other key offices are in Silicon Valley, San Diego, New York and Short Hills, New Jersey. Heather Khassian left for an in-house position at Cardtronics. Robert Kramer and Russell Tonkovich left to join Feinberg Day Kramer Alberti Lim Tonkovich & Belloli LLP.

Practice head(s):

Robert Hanson; Brian Ho; Eric Sophir

Other key lawyers:

Gary Solomon; Joel Bock; Peter Yim; Stephanie Seidman; Martin Bruehs

Testimonials

Dentons has a high quality team to meet our needs. I’ve interacted with other attorneys in this area and some don’t even have fundamental patent knowledge down. We know we are getting expert advice with Dentons.

Responsiveness, agility, expertise (legal + technical), proper staffing, leadership in industry, commitment …. as you can see, they don’t have super powers, but what they do have in spades, is every single quality a client could want in a team of attorneys – not some, not one at the expense of another – but ALL – they never miss a beat. Once they’re on the case, you can relax – I don’t have to manage them, let alone constantly re-manage them. They have integrity, they keep their word – they truly are a partner of ours.

Eric Sophir – Eric is as proficient at the business of providing legal services as he is at delivering those very legal services – being in the business of law doesn’t come at the expense of being a lawyer to him – he has set up an exceptionally gifted, committed, group of professionals, enabled them (personally, professionally, technologically, etc.) – success begets success and this team demonstrates perfectly.

We work with Partner Rob Hanson and have found his advice regarding patent strategy and claim interpretation to be extremely valuable.

Key clients

LGE

Bank of Montreal

IHS Markit

Forage Genetics International

OrioleDB

MasterCard, LLC

The Coca-Cola Company

Texas A&M University etc.

KPMG

Loeb Partners Corporation

Work highlights

  • Assisted LGE, LG Chem and LG Display with 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, among others, totalling over 4,000 US patent matters.
  • Advised Pindrop Security on the prosecution of patent applications following the transfer of the patent applications to the firm, prepared additional patent applications and securing a number of patents, and provided counselling regarding a litigious competitor, including non-infringement analysis, invalidity analysis, and patent portfolio development strategies.
  • Dentons represents various education institutions, such as Texas A&M University, University of Texas at Austin, University of Texas Southwestern Medical Center, University of Missouri, Wisconsin Alumni Research Foundation (Univ. of Wisconsin), and the Samuel Roberts Noble Foundation on patent prosecution matters in the fields of biotechnology, agriculture, genetics, life sciences, animal health, biofuel, and plant science.
  • Represented Columbia University on numerous patent matters relating to stem cells, chemistry, robotics and diagnostics and advised the client on open source issues.
  • Assisted KPMG with patent prosecution work related to information technology over a wide range of business applications.

Eversheds Sutherland

Eversheds Sutherland grew its patent prosecution practice, with the medical device caseload seeing a particularly big uptick, attracting an impressive number of new clients to the firm. Able to cover a wide range of sectors, with the manufacturing, aerospace, life sciences food & beverage, semiconductor, telecommunications and technology sectors all featuring in the recent caseload. At the PTAB, the team acts for patent owners and petitioners in inter partes reviews and covered business method reviews. Ex parte reexamination proceedings are also part of the group's portfolio. Former Foley & Lardner LLP practitioners Nicola Pisano, Jose Patiño, Christopher Bolten, Justin Gray Scott Penner in the San Diego office strengthened the firm's prosecution and litigation offering on the West Coast, with key support coming from San Diego-based counsel Jaime Choi who joined from Reddie & Grose LLP in the UK. The practice heads Peter Pappas, co-head of the firm's global IP practice, and Malvern Griffin, the deputy chair of the US IP practice, are based in Atlanta. Other key offices are in Houston and Austin.

Practice head(s):

Peter Pappas; Malvern Griffin

Other key lawyers:

Daniel Warren; Jaime Choi; Ann Fort; Christopher Chan; William Warren; Christopher Bolten

Testimonials

The firm provides excellent services in all facets of IP. The firm is very proactive in responding to last minute requests and is adaptive to clients’ costs requirements. In high-stakes patents matters where technical expertise is paramount, the firm is second to none.

They have a helpful and pragmatic approach.

The Eversheds US IP team’s strength is in providing practical, business-oriented solutions to complex technical issues in prosecution as well as US litigation.

Dan Warren and his team also provide valuable advice on IP portfolio review and development. Dan can be trusted for incisive and frank advice on any matter. His leadership caliber is evident in quality of work done by the firm. His broad perspective on IP and related issues is strengthened by his deep knowledge of the laws of the US. He is well known and respected by his peers and clients. Pete Pappas is an excellent patent practitioner  and is a well regarded practitioner.

Dan Warren is very friendly and helpful. Always makes time to assist when urgent help or late instructions are needed. Pete Pappas – US head of IP is also very approachable. Likewise, Chris Chan and David Wigley.

Dan Warren has, over many years, demonstrated excellence in the ‘three A’s’ critical to business: Ability, Availability and Affability.

Key clients

Schoeller-Bleckmann Oilfield Equipment

Fameccanica.Data S.p.A.

Aerospace Corporation

Illumina, Inc.

Work highlights

  • Represented Fameccanica.Data S.p.A. in domestic patent prosecution, counselling, transactional, litigation, and contested Patent Office proceedings and related appeals representations, including a successful representation in an inter partes review involving a major competitor as well as a successful appeal to the US Federal Circuit Court of Appeals.
  • Represented Aerospace Corporation in patent drafting and prosecution relating to signal processing and interference suppression.
  • Represented Illumina in patent drafting and prosecution relating to genetic sequencing technologies.

Jones Day

Jones Day has a track record of acting in high-stakes technology and life sciences prosecution matters, with particular strength in PTAB proceedings, not the least because of the firm's deep litigation bench. Anthony Insogna, based in the San Diego office, is the head of the firm's intellectual property practice.

Practice head(s):

Anthony Insogna

Morrison & Foerster LLP

Morrison & Foerster LLP's traditional strengths lie in the life sciences, technology and consumer product sectors, with the group's expertise in the prosecution of agricultural patents as a clear stand-out feature. With offices on both coasts, the team is geographically well placed to assist its high-profile client base.

Pillsbury Winthrop Shaw Pittman LLP

Pillsbury Winthrop Shaw Pittman LLP acts for domestic and international clients whom it assists with the development and management of their patent portfolios, including its commercial exploitation by way of licensing. The practice shoulders a sectorially varied caseload with the life sciences sector as a clear core area. Other work came from the consumer products, financial services, cybersecurity, electronics and technology sectors, with expertise in emerging technologies such as artificial intelligence, blockchain and 5G. Jack Barufka, based in McLean, Virginia, and the Washington DC office directs the practice. Other key offices are in Silicon Valley, San Diego, Austin and New York. In Silicon Valley, Ranjini Acharya joined from K&L Gates. McLean's Ngai Zhang and Austin's Brian Nash made partner.

Practice head(s):

Jack Barufka

Other key lawyers:

Drew Schulte; John Wetherell; Josh Tucker

Testimonials

My experience with the Pillsbury Winthrop Shaw Pittman LLP team is that they are exceptional at helping me take a comprehensive and business-focused approach to patent prosecution and maintenance. They have a well-informed, business-savvy team which is very responsive to our needs. They stand out from other firms in their customer-focused service and attention.

I’ve worked with general business attorneys as well as patent attorneys from other firms.  However, I was blown away by the capabilities of the intellectual property team.  Not only do they understand the patent process, but they know how to craft a patent strategy.  This includes how the initial filing should be presented as well as the long view of how it will evolve.  This grants the holder the best prospects for initial grant as well as broader protection in the long term.

‘Drew Schulte has the skills, is always willing to learn new tech, and has excellent judgement when it comes to strategy decisions.

I was blown away by the expertise of Josh Tucker.  Not only does he really understand the patent process, patent strategy, and law, but he has DEEP technical expertise. This was tremendously valuable as he was able to immediately understand what and how we were approaching the problem.  He was able to provide advice and counsel on how our product should evolve to further claim territory in the patent valley we had found.

John Wetherell stands out as a true business partner, counseling not only on the technical merits of a patent, but also considering the utility and business value of the same.

Key clients

UBS AG

Philips Healthcare

Facebook Technologies f/k/a Oculus VR

Bass Pro Shops, a subsidiary of Cabela’s

ALTR Solutions, Inc.

CA, Inc.

The Lundquist Institute

USC Stevens Center for Innovation

Work highlights

  • Advised UBS AG on all of UBS’s IP matters worldwide, including patent, trademark, copyright, licensing, IP diligence, IP agreements, monetization, domain names, litigation and more.
  • Represented Stanley Black & Decker (Emhart) in an inter partes review filed by Henrob Limited involving innovative rivet technologies for high-strength steel applications
  • Represented Horus Ophthalmics in patent matters, including assisting the client with filing numerous patents for its augmented/virtual reality and ophthalmic technologies to diagnose, augment, and correct vision defects, securing multiple patents.
  • Assisted ALTR Solutions, Inc. with the development of its patent portfolio to protect its cybersecurity products that use blockchain technology to build a platform for greater data security.
  • Represented Immerz, Inc. in connection with launching a strategic cross-border patent prosecution strategy to maximize the geographic footprint of the client in order to secure additional rounds of investor funding.

Venable LLP

Venable LLP combines a dedicated PTAB practice with in-depth knowledge of the life sciences sector and a track record of advising clients from a variety of other sectors, including the electronics and technology sectors. The key office is in Washington DC. Michael Sartori left for Baker Botts L.L.P. in January 2019.

WilmerHale

WilmerHale is particularly well equipped for post-grant proceedings and impresses with its successful IPR track record. The life sciences and technology sectors are the firm's mainstay, both at the PTAB and in patent portfolio development and management. The main offices are located in Washington DC and Boston, with Donald Steinberg in Boston as the head of the intellectual property department.

Practice head(s):

Donald Steinberg

Other key lawyers:

Monica Grewal; David Cavanaugh

Bookoff McAndrews

Washington DC patent boutique Bookoff McAndrews was established in 2012 and specialises exclusively in patent prosecution, counseling and transactional work. Since its foundation, the practice has succeeded to attract Fortune 100 companies, start-ups and medium-sized companies from a range of sectors, including the life sciences, medical device, pharmaceutical, manufacturing and technology sectors. The practice demonstrates strength in domestic and cross-border matters alike. Name partners Roland McAndrews and Les Bookoff have built one of the most diverse patent prosecution benches in the country and now head the team jointly with Chris Agrawal, Kirsten Johnson and Dinesh Melwani.

Practice head(s):

Chris Agrawal; Les Bookoff; Kirsten Johnson; Roland McAndrews; Dinesh Melwani

Testimonials

Always proactive and great work product.

Les Bookoff and Chris Agrawal are both very savvy about the space we occupy with our IP, and very in tune with the patent examiners we encounter.  They also have the litigation background to understand how to prosecute claims that will be strategic in value. Roland McAndrews is a superstar patent attorney.  He takes great pride in providing clients with a high quality work product.

Kirsten Johnson is amazing and always available to answer our questions and meets all deadlines.

Key clients

Boston Scientific Corporation

Verizon Communications, Inc.

Everspin Technologies, Inc.

Safran S.A.

Regeneron

United Health Group

WorldPay

Caterpillar

Honeywell International Inc.

Capital One

Work highlights

  • Represented Boston Scientific Corporation in the management of nearly 1,100 pending patent applications worldwide for the client’s endoscopy, pulmonary, urology, and cardiac rhythm management business units in addition to conducting IP due diligence investigations for acquisitions and investments in other medical device companies and providing clearance opinions for many of the client’s products.
  • Assisted Capital One with the strategic development of valuable patent assets for the client’s financial technology products.
  • Represented HeartFlow, Inc. in patent prosecution matters relating to the client’s proprietary computer systems, algorithms, imaging techniques, and workflow for the diagnosis of coronary heart disease.
  • Represented Proterra in patent prosecution, strategic intellectual property counselling, and transactional representation relating to electric bus technologies.
  • Assisted Caterpillar with patent prosecution, post-grant proceedings, and strategic intellectual property counselling relating to heavy equipment and engine technologies.

Brinks Gilson & Lione

IP boutique Brinks Gilson & Lione offers a dedicated patent prosecution team that specialises in the prosecution of US and foreign patents. The group's core expertise lies in the automotive, pharmaceutical, chemical and medical device sectors and offers a deep bench of practitioners with science or engineering degrees able to assist with the full spread of technologies from these sectors. Recent work saw the group act in several matters pertaining to autonomous driving and increase its activity for pharmaceutical and biotechnology clients. Work at the intersection of technology and agriculture has also seen an uptick. Practice head Andrew Stover operates from the Chicago office, with other main locations in Ann Arbor, Durham and Indianapolis.

Practice head(s):

Andrew Stover

Other key lawyers:

Steven Oberholtzer; Rashad Morgan; Allen Baum; James Naughton; Gustavo Siller; Heidi Dare; Trevor Copeland; Kent Genin

Key clients

BASF

Cboe Options Exchange

Continental

Cook Medical

PIDC

Pratt & Miller

Tencent

Work highlights

  • Assisted BASF with patent prosecution, portfolio analysis, and strategic intellectual property counseling, including the management of several hundred patents; securing and protecting patents in the agricultural technology and crop science arm of the business, which covers fungicides, herbicides, and plant biotechnology, and in the client’s batteries division.
  • Successfully represented Cboe Options Exchange before the PTAB in proceedings involving the 2019 Revised Patent Subject Matter Eligibility Guidance, leading to a decision classed as an informative opinion by the PTAB.
  • Assisted Continental with patent prosecution services relating to the client’s advanced driver assistance systems.
  • Represented Cook Medical in patent prosecution matters relating to its medical devices that incorporate numerous technologies, such as mechanical, manufacturing, polymers, chemistry, and metallurgy, including prosecution work related to the client’s ‘ProCore Biopsy Needle’ that allows physicians to obtain endoscopic samples simultaneously for both histological and cytological analyses in a single operation.
  • Assisted PIDC with patent prosecution for several of its product lines, including work relating to nanomaterials, alumina materials, rare earth powders, aqueous solutions, and a variety of customized, proprietary powders for a broad spectrum of industries including automotive emission catalysts, refining and chemical catalysis, abrasives, ceramics, and electronics.

Cooley LLP

Cooley LLP specialises in prosecution work for life sciences clients, including pharmaceutical companies and biotechnology players. The key offices are New York where practice head Ivor Elrifi is based, and Palo Alto from where Mika Reiner Mayer operates.

Leydig, Voit & Mayer Ltd.

Leydig, Voit & Mayer Ltd. fields a varied caseload, spanning life sciences, chemicals, manufacturing and electronics. Post-grant expert John Kilyk and the versatile Charles Mottier in Chicago are key figures. The firm also has offices in Boulder, Alexandria and Walnut Creek.

Oblon

Oblon is known as one of the most prolific patent prosecution practices in the market. The group traditionally acts for an impressive string of international clients, including many Japanese companies who also benefit from the firm's presence in Tokyo. The chemical, electrical and mechanical, and pharmaceutical and medical device sectors account for the majority of the firm's historic caseload. Managing partner Philippe Signore, based in the firm's headquarters in Alexandria, directs the firm.

Practice head(s):

Philippe Signore