Patents: Prosecution (including Re-examination And Post-grant Proceedings)

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Firms To Watch: Patents: prosecution (including re-examination and post-grant proceedings)

Goodwin ‘s patent offering, led by Boston's Catherine McCarty and James Riley in Silicon Valley has been bolstered by the February 2022 arrival of patent expert Scott Bluni and his team from Kacvinsky Daisak Bluni.
Melanie Howard in Los Angeles chairs Loeb & Loeb LLP‘s intellectual property protection team, which has presence in Chicago, New York and LA, and a particular specialism in the management of portfolios and in representing clients at the PTAB.
The practice at Norton Rose Fulbright was bolstered by the arrival to its San Francisco office of specialist IP partners Jason Novak and tech and life sciences expert Roger Kuan from Haynes and Boone, L.L.P. in February 2022, and to its Chicago office of IP tech specialists Daniel Farris, Christopher Hines and Joe McClendon from K&L Gates in April 2022.

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

Fenwick & West LLP

Fenwick & West LLP has teams in both New York City and California and is led overall by Mountain View-based Michael Farn , who has particular expertise in assisting high technology corporations in the development of intellectual property assets. The team is well-equipped to advise pioneering technology and life sciences companies, both across the US and internationally, on high-value patent counselling and prosecution needs. The firm advises start-ups in their early stages of growth, alongside high-profile global companies including the likes of Meta, who are supported with their patent portfolio by California’s Robert Hulse predominantly. Additional key clients include LG Display Co., Docusign, Neuropharma, and Royalty Pharma. California team member Daniel Becker is especially adept at advising biotech and pharmaceutical companies, as is New York’s Carl Morales. Also in California, Antonia Sequeira is acting for Upside Food Inc in the innovative area of growing cell-based meat, while associate Hayan Yoon is assisting on some of the team’s most significant pharma matters.

Practice head(s):

Michael Farn


Other key lawyers:

Dohyun (David) Ahn; Daniel Becker; Daniel Brownstone; Robert Hulse; Antonia Sequeira; Carl Morales; Rajiv Patel; Jae Won Song; Anthony Jacobson; Hayan Yoon


Key clients

BillionToOne


Digital Diagnostics


Impel Neuropharma, Inc.


Maplebear (dba Instacart)


Meta (formerly Facebook)


Netflix


Ontera


Grail


DocuSign


Life360


Instacart


Incyte


Calithera


Royalty Pharma


Work highlights


  • Filing patents and secured issuances on numerous patents for Meta’s innovations in fields including online advertising, machine learning and AI, feed and content ranking, the Portal, and the Oculus headsets.
  • Managing a significant portion of Grail’s patent portfolio, focusing particularly on the machine-learning classifiers and diagnostic pipeline improvement innovation, including advising on protecting novel aspects of the publicly available Galleri cancer test.

Finnegan, Henderson, Farabow, Garrett & Dunner LLP

Boston-based patent expert Jeffrey Jacobstein and Washington DC-based Erika Harmon Arner , Anand Sharma and PTAB trial expert Joshua Goldberg lead Finnegan, Henderson, Farabow, Garrett & Dunner LLP‘s team, which is described as a powerhouse for all IP matters’. The firm handles the full spectrum of IP services for its national and international client base, notably representing AstraZeneca in patent prosecution and strategic counseling matters, with Washington DC’s Jill MacAlpine playing a key role. DC’s Adriana L. Burgy leads on cross-jurisdictional, environmentally significant work for BASF. The team also handles complex matters for clients in the technological and electrical sectors, an example being its current work assisting Alibaba on cloud computing, AI and blockchain-related patent drafting and prosecution work, as well as advising on high-value PTAB matters. In the Atlanta office, specialist in mechanical, electrical, computer and medical device technologies Benjamin Saidman and the ‘super smart’ Kara Specht are key up-and-coming names. Palo Alto’s Arpita Bhattacharyya has a developing specialism in post-grant proceeding matters.



Practice head(s):

Jeffrey Jacobstein; Joshua Goldberg; Erika Harmon Arner; Anand Sharma


Other key lawyers:

Michele Bosch; Jill MacAlpine; Aaron Capron; Benjamin Saidman; John Livingstone; Kara Specht; Brian Kacedon; David Mroz; Adriana Burgy; Elliot Cook; Lionel Lavenue; Arpita Bhattacharyya


Testimonials

‘David Mroz and Brian Kacedon are both very engaged, friendly, business-oriented and focused on enabling opportunity for clients.’

Finnegan is an IP-only boutique, so the entire firm is a powerhouse for all IP matters. We entrust them with our US patent litigation and including post-grant validity challenges (IPRs and ex parte re-examinations). They manage each case perfectly with a clear focus on the client needs, demands and expectations.’

‘They light-handedly adapt their case strategy to the most unexpected situations, including, but not limited to, managing all aspects of international and cross-border litigation perfectly well. Most importantly: Finnegan provides us with a winning team. They will not give up until a case is won.’

‘Lionel Lavenue is an extremely smart and experienced lead partner. A great patent attorney with impressive technical competences. Our outside impression is that he leads his case teams extremely well, and his staff enjoy working with him. We certainly do.’

Kara Specht is a super smart partner with great strengths in PTAB proceedings.’

Key clients

Advanced Drainage Systems, Inc.


Alibaba Group


Ant Financial Services Group


ASML Netherlands B.V.


AstraZeneca UK Limited


BASF Corporation


Bausch & Lomb


Caterpillar, Inc.


Coupang Corporation


Eisai Co., Ltd.


Eli Lilly & Company


FedEx Corporation


FIS


GlycoMimetics, Inc.


Google LLC


iFlight Technology Company Ltd.


Kioxia Corp


MobilEye Vision Technologies


Pirelli Tyre S.p.A


Playtika Ltd.


pSemi Corporation


Scholar Rock, Inc.


Samsung Electronics Co., Ltd.


SharkNinja


SPG Dry Cooling USA, LLC and SPG Dry Cooling Belgium SRL/BV


Tata Consultancy Services, Ltd.


The Hillman Group


Toshiba


Toyota Motor Corp.


Vertex Pharmaceuticals Inc.


Volkswagen Group of America, Inc.


Work highlights


  • Assisting AstraZeneca with patent prosecution and strategic counseling matters, recently managing the global prosecution of AstraZeneca’s portfolio for nirsevimab, the first investigational extended half-life monoclonal antibody (mAb) aiming to protect all infants entering their first RSV season.
  • Successfully represented SPG Dry Cooling SA in IPRs filed by Evapco wherein SPG believed Evapco had copied ground-breaking ACC designs, and filing IPR petitions covering each of the asserted SPG patents; the PTAB ruled in SPG’s favor on all claims where the IPRs were instituted.

Knobbe Martens Olson & Bear LLP

Co-chairs of the firm’s medical device group Sabing Lee and Salima Merani co-head the patent prosecution practice at Knobbe Martens Olson & Bear LLP , which is noted as being ‘beyond stellar’, from its office in Irvine, California. The team is well-versed on the full scope of patent law, from the development and management of portfolios in more transactional matters, to the contested and complex. The team handles patent counseling and prosecution, new product clearance and licensing, post grant proceedings and inter partes reviews, advising clients in industry sectors from technology to media and entertainment, with particular expertise in both life sciences and biotechnology evident across the practice, with high-value IP diligence work frequently completed for the likes of Cala Health. Terry Tullis and the ‘stand out’ Harnik Shukla, both regularly advise on some of the team’s most significant matters. ‘Detail-oriented’ Sabrina Wang specializes in medical device and consumer product IP law.


Practice head(s):

Sabing Lee; Salima Merani


Other key lawyers:

Shannon Lam; Maria Anderson; Jason Jardine; Maria Stout; Sabrina Wang; Ben Everton; Harnik Shukla


Testimonials

‘The team’s legal knowledge and technical expertise is second to none.’

‘I really appreciate the team’s appreciation for business matters  which it integrates into its patent prosecution strategy. Budgets are respected, filings are carefully fitted into an overall strategy with respect to the clients’ business goals and its competitors’ activities; deadlines are also given priority.’

Knobbe’s team does a fantastic job of diving into the technologies underpinning our patent portfolio. They go far beyond the four corners of our disclosures and dedicate significant time to understanding the inventive concepts of each. Knobbe-prepared applications stand out to those prepared by other firms.’

‘The individuals at Knobbe are both social and professional, which puts our inventors at ease when speaking with Knobbe’s associates and encourages appropriately-scoped conversations.’

‘Knobbe has a great depth and breadth of technical expertise. There aren’t many knowledgeable attorneys and drafters equipped to handle patents as complicated, cutting-edge and technology-focused as ours, but Knobbe has managed to create a winning team on these fronts, which is rare and highly appreciated.’

‘The team at Knobbe have been beyond stellar. As a longstanding client I can say that the competency of the firm separates it from the others. I wouldn’t consider leaving quality team because they give my issues such great attention. The team is collaborative, highly skilled in our key areas and always on top of the latest technologies. They have drafted and successfully defended complex patents for us.’

‘I have complete trust in Shannon Lam and Sabrina Wang. I can rely on them at all times. They do not miss any details and they do not cost me additional money. They support me, they are extremely detail-oriented, great communicators and reliable. Over 10 years, I have never had one issue with them. Ben Everton is another great member of the team which is focused on the core strengths of our patents.’

‘Harnik Shukla’s patent prosecution work stands out in terms of constructive and pro-active deeds and advice. He has not only a will to understand the keys to business value in individual patent cases, but also the capacity to transform that understanding into optimized patent strategy and clear advice and actions.’

Key clients

Kestra Medical Technologies


Vensana Capital


Cala Health


Zentalis Pharmaceuticals, Inc.


CathWorks


Brightseed


Lightstone Ventures


LimFlow SA


CranioVation, Inc.


Action Potential Venture Capital (a GSK investment arm)


Amazon.com, Inc.


Truinject Corp.


Venova Medical, Inc.


Illumina, Inc.


Trove Brands LLC d/b/a Blender Bottle


6K, Inc.


Spectrum Solutions LLC


Smith+Nephew


Edwards Lifesciences


Imperative Care


Work highlights


  • Managed the IP strategy for CathWorks, including overseeing all of CathWorks’ patent and trademark matters and serving as lead IP counsel in connection with its $75m financing and up to $585m acquisition option agreement with Medtronic.
  • Managed an extensive global portfolio for treating tremor through non-invasive neurostimulation for Cala Health and led financing IP diligence to secure $77m in venture funding.

ArentFox Schiff

The ‘very efficient and well-integrated’ IP practice at ArentFox Schiff, which covers Washington DC, New York, Los Angeles and San Francisco, has developed significantly following the March 2022 merging of ArentFox Schiff and Schiff Hardin LLP. Partners Anna Lloyd, expert in electrical patent prosecution, and Johnny Ma, specialist in obtaining patents to various industry standards, also joined the DC team from Oblon in the same month. The patents team is headed by Richard LaCava from the New York office, supported by the ‘extremely accomplished’ Paul Maier. The team’s workload includes representing such noteworthy clients as Microsoft, for whom it regularly assists in the drafting and prosecuting of patent applications relating to a multitude of devices; New York’s Marylee Jenkins frequently represents well-known brands; while Craig Gelfound, based in California, is the key actor for Qualcomm, advising recently on patent prosecution work surrounding 5G technology. Developing specialist Brian Stevens assists on many of the team’s highest value matters, namely its $12.2bn action for Becton Dickinson, led by Richard Berman, both of whom are DC-based. Also at the New York office, Michael Fainberg handles global patent portfolios, while Michael Scarpati is a key name to watch in the team.

Practice head(s):

Richard LaCava


Other key lawyers:

Marylee Jenkins; Richard Berman; John Hsu; Anna Lloyd; Johnny Ma; James Bindseil; Wib Chesser; Craig Gelfound; Paul Maier; Michael Fainberg; Michael Scarpati; Brian Stevens; Michelle Mancino Marsh


Testimonials

‘A team of very talented individuals who work very closely and collaboratively with their clients and local counsel.’

‘Paul Maier is an extremely accomplished attorney, whose knowledge of technology is on-point and whose knowledge of patent law is outstanding.’

‘The team is very efficient and fully integrated, which is a great pleasure.’

Key clients

Spectrum Brands, Inc.


Qualcomm Inc.


Divergent Technologies, Inc.


Bridgelux


Microsoft


Johnson Controls


Cardinal Health, Inc.


Becton Dickinson


Cole-Parmer (Antylia Scientific)


Work highlights


  • Advising Qualcomm on the company’s development of new-generation 5G communications technology, and “internet of things” initiatives embedded with software, sensors and connectivity.
  • Advising Cardinal Health on extensive patent portfolio management, freedom-to-operate analyses, transactional matters relating to new medical technologies, and privacy matters.

Baker Botts L.L.P.

Baker Botts L.L.P.‘s ‘solid’ team is led by New York-based intellectual specialist Robert Scheinfeld and patent prosecution expert Sandra Lee , in addition to IP specialist Christa Brown-Sanford and experienced patent prosecution attorney Samir Bhavsar , both of whom work out of the Dallas office. The cohort has a strong reputation for its ability to develop and manage significant patent portfolios for notable clients across a range of industry sectors, namely education, technology and telecommunications, including Colombia University and Mastercard. A key example of such work is its current representation of Ericsson in the development and management of an international patent portfolio, directed to a wide range of technologies. The team is one of the most active in the US in terms of representing its clients at post-grant and inter-partes reviews filed at the PTAB, an example being its defense of the validity of Qualcomm’s patents in an action raised by Apple, with Palo Alto-based Eliot Williams particularly adept in this area. Additionally, Dallas’ Chad Walters, co-chair of the firm-wide PTAB trials group, is a key name for related litigation in the space.

Practice head(s):

Robert Scheinfeld; Christa Brown-Sanford; Sandra Lee; Samir Bhavsar


Other key lawyers:

Matthew Avery; Eliot Williams; Chad Walters; Matthew Avery; David Wu


Testimonials

‘The patent team at Baker Botts is solid. They provide good advice and have expertise in multiple technology areas. They are responsive to and address feedback from our team.’

‘Matthew Avery has deep legal and technical knowledge and provides good advice on our matters. He has good client management skills and communicates well.’

‘The firm is very good with patents. They collaborate well with our team.’

‘This is the team we work with and they are valuable in a variety of aspects with all things patent related, particularly Matthew Avery.’

Key clients

Columbia University


Cisco Systems Inc.


Lennox International


Iridium Technologies


Brother Industries Ltd.


Qualcomm


Dish Network


Halliburton Company


Guangdong Mic-Power New Energy Co. (“Mic-Power”), Audio Partnership LLC and Audio Partnership PLC D/B/A Cambridge Audio (“Cambridge Audio”), GN Audio A/S and GN Audio USA Inc. D/B/A Jabra (“Jabra”), and PEAG, LLC, D/B/A JLab Audio (“JLab”)


Fujifilm Holdings Corporation (and subsidiaries).


LG Electronics


Ericsson


Sumitomo Electric Industries, Ltd.


Mastercard


DraftKings


GrubHub Holdings Inc. (f/k/a GrubHub, Inc. and f/k/a Seamless North America, LLC)


Penumbra, Inc.


Work highlights


  • Representing Ericsson in licensing negotiations and handling the development and management of a worldwide patent portfolio directed to a wide range of technologies.
  • Acting as Cisco’s primary outside counsel for patent licensing, strategic portfolio development, defensive patent analysis, and overall counselling and patent strategy.
  • Assisting with the development and management of Columbia University’s worldwide patent portfolio that is directed to a wide range of physical and life sciences technologies.

Kilpatrick Townsend & Stockton

Kilpatrick Townsend & Stockton‘s ‘practical and pragmatic’ team has a strong reputation for providing strategic advice to clients developing their patent portfolios, and in prosecution matters. Team members at the firm have well-rounded expertise across the sector, including in matters involving IPRs and post-grant proceedings. The key industry areas the team focuses on includes chemistry and life sciences; electronics and software; and medical and mechanical devices, acting for such bodies as the California Institute of Technology and Volvo Penta of Americas. The collaborative team has a broad reach across the US. Practice lead Vaibhav Kadaba, based in Atlanta, specialises in patent work involving a diverse range of technologies, San Francisco’s David Raczkowski and San Diego’s William Shaffer, both noted for their ‘professionalism and moral ethics’, handle prosecution matters involving complex developing technologies for key clients.

Practice head(s):

Vaibhav Kadaba


Other key lawyers:

Andrew Serafini; Joseph Snyder; David Raczkowski; Matias Ferrario; William Shaffer; Cathy Cretsinger; Matthew Zigmant; Karam Saab; Jesse Bennett


Testimonials

Excellent acumen on the law, while very practical and pragmatic. Also, many members of the team have worked in the industry as engineers and chemists so they do understand and can speak technically with engineers. I can also check the status of my applications any time due to the firm’s modern IT systems.’

‘William Shaffer and David Raczkowski show great professionalism and moral ethics and are incredibly responsive. They also understand that this is about a relationship and they are willing to work on a fixed-fee basis.’

‘A key strength of Kilpatrick Townsend & Stockton LLP lies in the strategic use of published U.S. Examiner data at the per-examiner level to assess probabilities of successful outcomes for different prosecution strategies.’

Key clients

Labcorp


Novelis


California Institute of Technology


Volvo Penta of Americas, LLC (and other Volvo Group entities)


ExThera


Work highlights


Morgan, Lewis & Bockius LLP

The team at Morgan, Lewis & Bockius LLP, which has a bicoastal presence, is led by Philadelphia-based Louis Beardell and Silicon Valley-based Dion Bregman. The team handles matters spanning a broad array of industry sectors, including life sciences, automotive, consumer products and electrical, with standout work including advising on internet technologies which have developed as an indirect result of Covid-19, for such major clients as Walmart, a key relationship for partner Manita Rewat, who joined the Silicon Valley office from Duane Morris LLP in September 2022. Internal team changes have also significantly impacted the firm’s practice, notably the October 2022 promotions to partner of Silicon Valley-based patent prosecution and PTAB specialist Alexander B Stein, and Philadelphia-based Deping Chai, who is developing a specialism in international prosecution matters, particularly in the area of material sciences. Boston-based Stephen Altieri, noted as ‘outstanding’, has strong capabilities in advising emerging life sciences companies in particular.


Practice head(s):

Louis Beardell; Dion Bregman


Other key lawyers:

Gary Williams; Tae-Woong Koo; Hosang Lee; Janice Logan; Todd Hales; Stephen Altieri; Manita Rawat; Alexander Stein; Deping Chai; Christina MacDougall


Testimonials

‘The attorneys and technical specialists in the team have deep and useful insights into the field; many team members hold PhDs.’

‘Janice Logan is particularly adept in assisting Asian clients as she is multilingual. She and her team members can discuss cases in detail with us, which makes them special.’

‘The team at Morgan respond quickly and efficiently to our issues, and did so throughout the pandemic.’

‘Todd Hales handles all our patent and IP work and is exceptional. He is patient, effective and efficient and manages all members of my team in this area very well.’

‘Stephen Altieri is outstanding. Far and away the best patent attorney with whom I have ever worked in my 30 years of biotech experience.’

‘Stephen Altieri provides all aspects of patent services from writing and prosecuting, to providing business and freedom-to-operate advice, to negotiating licenses. He is highly skilled. His prosecutions are very effective. He also has an unequalled capacity to understand the nuances of the science presented to him and to identify those aspects that would be most valuable and protectable.’

Key clients

Tanium Inc.


Walmart Inc.


Heat Biologics (renamed NightHawk Biosciences, Inc.)


SalioGen Therapeutics Inc.


Hyundai Motor Company  and Kia Motors


POSCO


Samsung Electro-Mechanics Co. Ltd.


JC Medical, Inc.


Becton Dickinson and Company


Vyaire Medical


Work highlights


  • Filing and prosecuting hundreds of patent applications for Walmart, related to its online computing retail platforms.
  • Working with Hyundai and Kia entities and their local Korean counsel in the filing of large numbers of US patent applications and in responding to the USPTO actions related to those applications.
  • Assisting POSCO on the prosecution and ex parte re-examination of, and are currently providing legal advice on strategy in, the patent-infringement case asserted by a world-renowned steel manufacturing company.

Wolf Greenfield & Sacks

Wolf Greenfield & Sacks‘ Boston-based offering is headed by Ed Gates, and handles complex prosecution matters both domestically and overseas, with particular strength in managing patent portfolios and strategies for key international clients such as European start-up Oxford Nanopore, as they enter the US market, a key case for co-chair of the firm’s biotechnology practice Patrick Waller, who is adept in advising on prosecution in the biomedical field in particular. Oona Johnstone and Heather DiPietrantonio also have a particular specialism in biomedical prosecution, while the team also offers expertise in a range of innovative issues, a key example being its work developing patents for Detect, who developed a molecular self-administrable test that provides PCR-quality Covid-19 test results. The firm focuses on work for life sciences clients, bolstered by industry and academic knowledge within its team, with other key industry focuses including tech and consumer products. Richard Giunta is noteworthy for his post-grant proceedings expertise. As well as being praised for its 'refreshing' gender diveristy, in 2022, the firm is also noted for its active work on LGBTQ* representation.

Practice head(s):

Ed Gates


Other key lawyers:

Richard Giunta; Patrick Waller; Daniel Young; Hunter Baker; Oona Johnstone; Daniel Rudoy; Elisabeth Hunt; Heather DiPietrantonio; Kevin MacDonald


Testimonials

‘The Wolf Greenfield team that I interact with is more than 50% female, which is not common in patent prep and prosecution, and it has been refreshing to have this added level of diversity. The collaboration between team members to provide counsel, and the team’s willingness to dig into the technology with scientists, has been top tier.’

‘Partners are approachable, easy to communicate with, and timely. The associates all have a willingness to communicate with the scientists and are happy to dig into the technology.’

‘The Wolf Greenfield team has a unique combination of technical and legal strength. They are able to operate seamlessly across different technologies important to our company ranging from biotechnology to computer science including machine learning and AI. They have a deep bench of specialists. It is not only strong in patent preparation and prosecution, but also provides counsel with respect to many other typical as well as unique IP issues.’

Key clients

Wayfair


Moderna


Pfizer


Takeda Pharmaceutical Company Limited


Analog Devices, Inc.


Bose


Sony Corporation


SharkNinja


Ginkgo Bioworks


Boston Children’s Hospital


University of Florida


PathAI


Massachusetts Institute of Technology


Work highlights


  • Representing Oxford Nanopore, prosecuting patents on the top-funded digital health start-up in Europe’s core technology and helping it effectively protect its IP assets as it enters the US market through partnerships.
  • Advising Keurig Dr Pepper with developing a comprehensive IP portfolio to protect their innovations in the consumer products space.
  • Representing Detect™, a Connecticut-based company that developed a molecular self-administrable test that provides PCR-quality Covid-19 test results with a 97.3% accuracy rate, in protecting its valuable innovation including a growing worldwide patent portfolio.

Arnold & Porter

Washington DC’s Matthew Wolf and Chicago’s Dina Hayes co-lead the practice at Arnold & Porter, which combines strategic advice to its clients and developing patent portfolios, with representing in key patent prosecution matters. The team is particularly renowned in the area of developing technology in the life sciences industry, an example being its work in the patent prosecution of transgenic plants for Bayer. It also acts for such notable clients as Finch Therapeutics and Regeneron in this field. DC-based senior associate Alice Ho is developing a particular specialism in prosecution, inter partes and ex parte matters involving biotech, medical devices, pharma and life sciences, while, also in DC, David Marsh has significant experience advising on the full range of IP matters. Silicon Valley’s Deborah Fishman is another name to note in the team, focusing on biopharma and medical devices litigation.


Practice head(s):

Matthew Wolf; Dina Hayes


Other key lawyers:

David Marsh; Deborah Fishman; Alice Ho; Bonnie Qin


Key clients

Altria


Bayer (formerly Monsanto)


Bruin Biometrics LLC


Finch Therapeutics


Hemanext


Organogenesis


Regeneron Pharmaceuticals, Inc.


Sapphire Energy


Synexis LLC


Water Street Healthcare


Work highlights


  • Representing Bayer in the patent prosecution of transgenic plants, traditionally bred plants, and in many other areas of plant genetics.
  • Providing strategic advice to Bruin Biometrics for two company-critical portfolios in the area of medical devices.
  • Representing Regeneron’s in proceedings, protecting EYLEA®, Regeneron’s flagship product, against US patent office post-grant challenges.

Bookoff McAndrews

The Washington DC-based boutique Bookoff McAndrews, which focuses exclusively on patent prosecution, counseling, and IP transactions, has a multitude of specialists at its helm, being managing partner Christopher Agrawal; expert in the field Les Bookoff; the ‘excellent’ Kirsten Johnson; patent strategists Jameson Ma and Dinesh Melwani; the vastly experienced Roland McAndrews; Elizabeth Shah, who specialises in collaborating with businesses to ensure patents further their goals; Jessica Winchester, who is particularly experienced in IPR proceedings; and Sangwoo Ahn, who focuses on patent counseling and prosecutions. The team is commended as being a ‘very diverse’ one, formed of partners who have been developing specialisms in this practice area ‘for decades’, with expertise spanning various sectors, including medical devices, finance and technology. The firm represents such notable longstanding clients as Boston Scientific Corporation and Capital One in their prosecution matters.


Practice head(s):

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


Testimonials

‘The team is a strong one – very good at patent prosecution, at a reasonable price. They are basically as good for service as any of the very large firms, but at a much lower costs, since they do not have a litigation function.’

‘I work with Kirsten Johnson mostly. She is excellent – a very good chemist, as well as a skilled patent lawyer.’

‘The team is very diverse and the partners have focused on this type of work for decades.’

Key clients

Boston Scientific Corporation


Verizon Communications, Inc.


Everspin Technologies, Inc.


Safran S.A.


Regeneron


Worldpay / FIS


Caterpillar


Honeywell International Inc.


BIC


Capital One


Alcon


MicroStrategy


Paige.AI


BorgWarner


Corteva Agriscience


HeartFlow, Inc.


Proterra


Boral nka Westlake Royal Building Products


Work highlights


  • Managing over 1,500 pending patent applications worldwide for Boston Scientific Corporation’s endoscopy, pulmonary, urology, and cardiac rhythm management business units.
  • Collaborating directly with Capital One’s inventors and in-house counsel to garner deep insights into their technology and to build robust IP portfolios.
  • Assisting Honeywell, in particular in its Aerospace division, with patenting Industrial IoT technologies that are poised to revolutionize the aerospace industry.

Cooley LLP

Ivor Elrifi , chair of the firm’s global patent counseling and prosecution practice, leads the well-established cohort at Cooley LLP from the firm’s New York hub. The firm advises on a broad range of matters, with a particular focus on technology and life sciences issues, while Palo Alto-based specialist in patent prosecution Mika Reiner Mayer is a key name to note among the cohort for work for start ups and well-established companies. The firm's advice on patent portfolios often has international elements, an example being the team’s representation of ModernaTX Inc. in its Covid-19 vaccine-related pharma and biotech work, key industry sectors for Boston’s Amy Mandragouras. Seattle’s Bill Christiansen also stands out for his expertise in this area, while Washington DC’s Chris Holly is focused on financing and acquisition matters.

Practice head(s):

Ivor Elrifi


Other key lawyers:

Mika Reiner Mayer; Amy Mandragouras; Chris Holly; Bill Christiansen; Heidi Erlacher; Carol Laherty; Madhuri Roy


Testimonials

The partners in this practice — for example, Mika Mayer and Madhuri Roy — have a great way of communicating with non-lawyer members of our team. They can distill very complex concepts into easy-to-understand non-lawyer speak, and also can adequately communicate risk. They also have a huge diversity of academic backgrounds, allowing us to leverage many lawyers with different expertise.

Chris Holly has been outstanding. He has been available and timely meeting all self imposed deadlines. He organized associates to support the work and efficiently completed our filing. The knowledge and strategic questions discussed added significant value.

Key clients

ModernaTX, Inc. (“Moderna”)


Black Diamond Therapeutics


Dicerna Pharmaceuticals


Cyteir Therapeutics


Running Tide Technologies, Inc.


Athenex, Inc.


OKYO Pharma, Inc.


Arvinas


Renalytix AI, Inc.


Nobell Foods


Ocuphire Pharma


ElevateBio Technologies, Inc


Wugen, Inc


Correvio Pharma Corp


Intellective AI Inc.


Myovant Sciences


Scribe Therapeutics


Intersect ENT


RubrYc Therapeutics


Work highlights


  • Representing Moderna, one of the front-runners in the development of a COVID-19 vaccine, in patent prosecution and counseling matters.
  • Representing Myovant Sciences, a pharmaceutical company focusing on new treatments in the women’s health space, including treatment of uterine fibroids, and endometriosis, in all patent prosecution, counseling and strategy work.
  • Providing strategic patent and licencing advice to the RenalytixAI since itsinception, recently advising on the company’s licence agreement with Mount Sinai School of Medicine for the KidneyIntelX diagnostic, as well as all associated patent counseling.

Haynes and Boone, L.L.P.

Haynes and Boone, L.L.P. has a strong reputation for its abilities in the IP field, with a nationwide offering led by Alan Herda and David O’Dell in Dallas, New York's Richard Rochford, and  Washington DC-based Jeffrey Wolfson. The firm regularly acts for noteworthy clients in the medical devices and new technologies industries, including Paypal, Cisco and Twitter, advising on the full-range of matters, encompassing patent counseling, IP-related agreements and due diligence, and particularly regarded for its inter-partes review and re-examination work, a key example of which being its high-profile representation of medical device company Orthofix, Inc in its merging with Seaspine, wherein the team obtained two favorable rulings at the PTAB. Dallas-based David McCombs is renowned for his work at the PTAB and is the primary contact for many of the firm’s key clients, while  Austin’s Raghav Bajaj is also a key up-and-coming name for PTAB and inter-partes proceedings.

Practice head(s):

Alan Herda; David O’Dell; Richard Rochford; Jeffrey Wolfson


Other key lawyers:

Tom Chen; David McCombs; Raghav Bajaj


Key clients

Nabors Industries, Ltd.


TeneoBio, Inc.


Nice Systems Ltd.


PayPal


Qualcomm Incorporated


Strides Pharma, Inc.


SurgiSil, LLP


Orthofix, Inc.


Taiwan Semiconductor Manufacturing Company, Ltd.


Twitter, Inc.


Ericsson, Inc.


Teledyne FLIR LLC


Roku


Cisco Systems, Inc.


Work highlights


  • Assisting Nabors Industries with patent counseling, IP-related agreements, due diligence, including in connection with M&A activity.
  • Handling patent matters domestically and internationally for Paypal.
  • Representing Orthofix on healthcare-related IP matters of a that pertain to the client’s durable medical equipment and other medical device products.

McDermott Will & Emery LLP

Silicon Valley-based intellectual property head William Gaede, Chicago-based patent prosecution head Ahsan Shaikh, who leads on a number of the team’s prominent matters, and Boston-based IP transactions and licensing head Edward Gordon , are key leaders of the team at McDermott Will & Emery LLP, with Silicon Valley’s Judy Mohr particularly focused on pharmaceutical and medical device matters, developing and defending portfolios for clients in these industries. The team continues to represent major clients such as Meta and related platforms, Panasonic and EA, with Boston’s Jenny Chen and Michael Siekman leading on key matters, an example being the multi-jurisdictional life sciences patent prosecution matter regarding a number of CRISPR Therapeutics’ lead programs. Partner Margaret Sampson notably joined the team in Austin, Texas from Baker Botts L.L.P. in July 2022.

Testimonials

‘The team is adept at dealing with Japanese clients.’

Key clients

Amgen Inc.


QuidelOrtho Corporation


Heron Therapeutics, Inc.


Delpor, Inc.


Corium, Inc.


Meta Platforms


Specifica Inc.


CRISPR Therapeutics


AirSculpt Technologies


Atkore, Inc.


Best Buy Co, Inc.


Electronic Arts, Inc.


StubHub


Shutterstock


Panasonic


Taiwan Semiconductor Manufacturing Company


Work highlights


  • Advising Heron Therapeutics Inc’s on patent filings for FDA approved products SUSTOL and CINVANTI, both for prevention of nausea and vomiting induced by chemotherapy.
  • Advised CRISPR Therapeutics on patent matters relating to their immuno-oncology programs, which combines the cutting-edge ‘crispr’ and ‘CAR-T’ technologies.
  • Advising and working on patent application drafting and examination strategies for Meta Platforms, preparing many patent applications for Meta, such as Instagram.

BakerHostetler

Mark Tidman leads the intellectual property team from BakerHostetler‘s Washington DC office, with the practice focusing heavily on the tech, energy, and life sciences sectors. The team represents such significant clients as Meta and Amazon on IP-related matters, with Meta a key client for Atlanta-based partner Cory Davis, who advises on their cross-jurisdictional patent inventory related to the Metaverse. Denver-based partner Timothy Worrall specializes in life science work, having developed, filed and prosecuted the high-value international patent portfolio for Monjuvi, a novel cancer treatment approved for treatment of lymphoma. There have been significant team changes, with the joining of partners Michael Dreznes and Mark Itri in Costa Mesa from Morgan, Lewis & Bockius LLP in early 2022. Further, specialist counsels Kyle Morse and Duane Carver Jr. joined the New York City and Dallas teams respectively, in August 2022; both formerly worked at Dentons. Departures include Hussein Akhavannik in July 2022 and Kenneth J. Sheehan in June 2022 .

Practice head(s):

Mark Tidman


Other key lawyers:

Cory Davis; Craig Cupid; Timothy Worrall; Michael Dreznes; Mark Itri; Kyle Morse; Duane Carver Jr.


Key clients

Campos EPC


Agios, Inc.


Johnson & Johnson


Johnson Matthey


Pivot Energy Solutions, LLC


Xencor


Dragonfly Endoscopy


FuboTV Media, Inc.


CNS BioSciences, Inc.


Meta Platforms, Inc.


Kajeet, Inc.


Top Product Innovations, Inc


Arcfield


Amazon.com


Work highlights


  • Advising Nordson Corporation’s on patent prosecution work which supports its business, including counselling and opinion services to related patents and technology.
  • Advising Meta Platforms, Inc., primarily in the virtual reality, augmented reality, and AI technology space, which is primarily associated with the Metaverse.
  • Advising Johnson & Johnson, related to patents and technology, including the purchase, sale and licensing of technology, as well as mergers and acquisitions related to same.

Baker McKenzie LLP

The leader of ‘experienced and reliable firm’ Baker McKenzie LLP‘s intellectual property practice is patent litigation expert John Flaim , who works from the Dallas office alongside experienced patent strategist and prosecutor Mackenzie Martin. Washington DC-based Richard Wells is also experienced in prosecution, counseling and litigation, leading on advanced technology matters for such key clients as Schlumberger Corporation. Dallas’ Jessica Greenwald, promoted to partner in December 2022, is developing a specialism in microbiology, biotechnology, and plants-related work of this nature and leads the team’s representation of Zespri Limited. At the same office, Vas Vedantam has strong expertise in the hardware and software technologies.

Practice head(s):

John Flaim


Other key lawyers:

Richard Wells; Mackenzie Martin; Vas Vedantam; Jessica Greenwald


Testimonials

‘Experts in almost every branch, there’s always someone that can provide guidance or steer you towards a person within the firm that is able to help with a specific matter. A trustworthy, experienced and reliable firm.’

‘The team headed by Richard Wells is efficient at what they do. The assignments are effectively divided among the attorneys and the staff, yielding an efficient and satisfactory output.’

‘Richard Wells runs an efficient team.’

Key clients

Veeva Systems


Schlumberger Corporation


Zespri Limited


Isomer


Coflex S.A.


Dr. Matt Johnson


Robowash


IXL Learning


CEC Northstar


Swift Textile Metalizing


Xamax Industries


Sonic Connectors


Work highlights


  • Handling strategic prosecution and patent opposition (quasi-litigation) for Veeva Systems, as well as providing pre-litigation advice.
  • Managing patent prosecution work for Schlumberger.
  • Assisting Zespri with the prosecution, strategy development, risk management and enforcement of its global IP rights portfolio covering Zespri’s proprietary kiwifruit varieties including plant variety rights and plant patents.

Choate, Hall & Stewart

Choate, Hall & Stewart‘s Boston-based team is led by Charles Lyon, Brian Reese and Kristen Buteau, who offer expertise in patent-related life sciences work; alongside Charles Lyon, Brenda Herschbach Jarrell chairs the firm’s life sciences group, advising a broad array of companies, from clinical candidates to well-established organizations and institutions on biotech, pharmaceutical, and specialty chemical matters in particular. Atop its solid prosecution work, the team has a strong reputation for its post-grant and re-examination practice, with partner Stephanie Schonewald having handled a significant number of such matters at the PTAB.

Practice head(s):

Charles Lyon; Brian Reese; Kristen Buteau


Other key lawyers:

Brenda Herschbach Jarrell; Charles Lyon; Stephanie Schonewald


Work highlights


Dechert LLP

Dechert LLP‘s Boston-based practice is co-led by Andrea Reid and Andrew Wilkins, who is described as ‘one of the best IP counsel’. The team is adept at advising on prosecution in a multitude of areas, though there is an evident expertise across the board in biotech, with the team being noted as a ‘terrific partner when it comes to new technologies’. Additionally, its work in life sciences and pharmaceuticals is noteworthy, a key example being Reid and the ‘business-centric’ and ‘excellent’ Chad Davis representing AVEO Oncology on the $566m multi-jurisdictional creation of its patent portfolio following its acquisition by LG Chem. Scott Warren  left the firm in August 2022.

Practice head(s):

Andrea Reid; Andrew Wilkins


Other key lawyers:

Chad Davis


Testimonials

‘The Dechert team is great at devising IP strategy to meet corporate needs. They offer aggressive solutions to maintain the best possible IP position, ensuring it meets deadlines and timelines. They are a terrific partner when it comes to new technologies and being able to adopt a strategy that is defensive against competition.’

‘Chad Davis is incredibly organized and is always on top of our needs and patent update timelines. He has a great attitude and is always responsive.’

‘They have an extremely deep knowledge of the biologics space and are very responsive to client requests.’

‘Andrew Wilkins is one of the best IP counsel I’ve worked with. He’s able to quickly work through the most complex issues and come up with practical guidance.’

‘Chad Davis and his team provide excellent, timely, thoughtful and effective service. They provide forward-looking cost estimates that help budget forecasting.’

‘Chad Davis has a business-centric approach to IP, incorporating business strategy in his recommendations on patent prosecutions.’

‘The team we work with has an in-depth knowledge of the IP landscape but also understands what is required from an IP strategy perspective within a small biotech company. They are very responsive and provide clear guidance on current IP prosecution needs. We do a lot of work with academics and they do a great job of ensuring we get the most from those interactions, both from a legal contract and an IP licence perspective.’

‘Andrew Wilkins is very responsive and pragmatic in his approach, which ensures that issues are dealt with quickly and efficiently.’

Key clients

Agenus


argenx


Atlas Venture


AVEO Oncology


Bicycle Therapeutics


Brickell Biotech


Exo Therapeutics


Forbion Capital Partners


Homology Medicines


Ikena Oncology


Kymera Therapeutics


Matchpoint Therapeutics


Nimbus Therapeutics


Parthenon Therapeutics


PIC Therapeutics


Rectify Pharmaceuticals


ROME Therapeutics


Tectonic Therapeutics


Third Harmonic Bio


Vigil Neuroscience


Work highlights


  • Representing Boston-based oncology-focused biopharmaceutical company AVEO Oncology in its $566m definitive agreement with LG Chem to acquire AVEO for $15 per share.
  • Advised Third Harmonic Bio on patent strategy and IP diligence relating to its $185m IPO.
  • Represented Homology Medicines in the establishment of its $180m joint venture with Oxford Biosciences, a UK-based gene therapy firm and contract development and manufacturing organization.

Dentons

Brian Ho in San Francisco and Dallas's Robert Hanson  co-lead the practice at Dentons, with support from the global chair of intellectual and tech Monica Richman in New York. The team advises a list of noteworthy clients, including a multitude of universities across the nation, for whom it consistently advises on patent prosecutions in life sciences and biotechnology matters. Additionally, the team has significant experience in the realm of developing technologies, including the likes of LG Electronics and Solidia Technologies, managing patent portfolios at both a domestic and international level, as well as the full range of other patent-related matters. Stephanie Seidman in San Diego is a key member of the team with particular expertise in the bio-pharma industry. Specialist counsels Kyle Morse and Duane Carver Jr. both departed in August 2022.

Practice head(s):

Brian Ho; Robert Hanson; Monica Richman


Other key lawyers:

Robert Hanson; Song Jung; Stephanie Seidman


Testimonials

‘Dr. Seidman and her team at Dentons have helped us file and process over 50 patents and patent applications worldwide over the last twenty years. They focus on the quality, structure, breadth and strength of the patent claims which ultimately save costs over time. I have worked with other IP firms and have not seen the experience Dr. Seidman and Dentons possess.’

‘I have learned a lot form Dr. Seidman and have found myself educating other IP experts based on the knowledge I have gained from her. She and her team are an amazing resource. They don’t only attain patents, but they help us to protect them. They provide a sense of security.’

‘The team is amazing in its ability to predict responses from patent examiners and assure protection.’

‘They are our preferred firm when helping to craft patent strategies before the patent offices.’

Key clients

LG Electronics, LG Chem


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


Tesla


VMware, Inc.


Novartis


ECC TEC MSJ Incorporated


SeeDevice


TMRW Foundation


Best Planet Science


Work highlights


  • Advising 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.
  • Representing university clients in numerous patent matters, including patent opinions, counselling and prosecution in the fields of biotechnology, agriculture, genetics, life sciences, animal health, biofuel and plant science.
  • Managing Solidia Technologies’ entire global patent portfolio and supporting them with all of their IP needs.

DLA Piper LLP (US)

The patent prosecution offering at DLA Piper LLP (US) is led by Boston-based patent prosecution national chair Larissa Bifano , described as ‘incredibly business-minded’; San Diego-based co-practice group leader Sean Cunningham ; and deputy practice group leader Gina Durham , who is based in San Francisco. The team has undergone significant change in 2022 since the arrival to the Philadelphia office of three specialized IP partners from Troutman Pepper in early 2022: health sciences specialist Raymond Miller; patent expert Joseph Helmsen, and N Nicole Endejann, who is adept in patent prosecution. Additionally, patent due diligence partner Melissa Harwood joined the Seattle team from Polsinelli PC in April 2022. Associate Joseph Wolfe, who assists on many of the team’s most complex matters, is a name to note.



Practice head(s):

Larissa Bifano; Sean Cunningham; Gina Durham


Other key lawyers:

Raymond Miller; Lisa Haile; Blake Jackson; Joseph Helmsen; N Nicole Endejann; Joseph Wolfe


Testimonials

‘The team demonstrates first-rate expertise, on top of excellent client service, including responsiveness and business orientation.’

‘Larissa Bifurno and Joseph Wolfe are incredibly responsive, knowledgeable and business-minded.’

‘The lawyers I work with are extremely knowledgeable regarding intellectual property in general and are mindful of strategy, practicality, and balancing risks.’

‘Blake Jackson is extremely knowledgeable and provides practical guidance on patents. He is personable and is efficient with his time.’

Key clients

Cybereason


STATS Perform


Precision NeuroScience, LLC


Nanotronics Imaging


Caelum Biosciences


Viridos (formerly Synthetic Genomics, Inc.)


Personal Genome Diagnostics (PGDx)


Delfi Diagnostics


Neurelis, Inc.


FibroGen, Inc.


Knopp Biosciences and Biohaven Labs


Work highlights


  • Representing Precision Neuroscience in managing and establishing their IP portfolio, including patents related to neural interface technology adaptable for human patients.
  • Representing Nanotronics is in a high-growth stage in order to increase their valuation for their next round of financing, to further develop their patent portfolio related to AI controls for manufacturing systems.
  • Representing Caelum Biosciences in a patent, contracts and trade secret matter involving an anti-amyloid monoclonal antibody drug targeted for the potential licensing and commercialization in treating amyloidosis.

Eversheds Sutherland

Co-head of the global intellectual property practice at Eversheds Sutherland Peter Pappas co-leads the team from the Atlanta office, alongside Malvern Griffin, also based in Atlanta, and Austin-based Nash Zogaib. It is well-equipped to handle prosecution and portfolio strategy matters on behalf of its key clients as part of its full-service IP practice, with particular focus on developing technologies, wherein it advises such notable clients as Lumen Technologies, and is also noted for its cross-border capabilities. San Diego’s Christopher Bolten has a reputation for dealing with life sciences and medical device work, while Atlanta’s Daniel Warren is described as ’embodying practicality’, and Jeffrey Guise in San Diego is another name to note.

Practice head(s):

Peter G. Pappas; Malvern Griffin; Nash Zogaib


Other key lawyers:

Daniel Warren; Christopher Bolten; Jeffrey Guise


Testimonials

‘In my experience, they have a very practical and down-to-earth approach. The team is friendly, approachable and nice to work with. They are responsive to queries. Their fees are reasonable compared to larger US patent practices.’

‘Daniel Warren embodies practicality and a down-to-earth approach. Peter Pappas is also very approachable.’

Key clients

Cardiologs Technologies


Corcym


Distalmotion


JenaValve Technology


Mainstay Medical


Lumen Technologies/CenturyLink/Level 3 Communications


Tufts Medical Center


Gyrus Capital Partners


Pfenex


Bright Peak Therapeutics


V-Wave


MD Start


Moon Surgical


Sequana Medical


Sofinnova Partners


Axial Medical Printing


Gaiaca


CorWave


FEops


Georgia-Pacific


Angelini Pharma


Fameccanica.Data


Florence Healthcare


Work highlights


  • Representing Georgia-Pacific, providing patent prosecution and counselling in all of the client’s domestic and global core business areas.
  • Represented Fameccanica.Data S.p.A. in domestic patent prosecution, counselling, transactional, litigation, and contested Patent Office proceedings and related appeals representations.
  • Representing Angelini Pharma S.p.A. with pharmaceutical patent litigation and pharmaceutical product development legal representation, including serving as lead litigation counsel in two pending pharmaceutical patent litigations.

Morrison Foerster

Morrison Foerster‘s ‘diverse’ team has experience in advising its clients on the full spectrum of patent counseling and prosecution services, with a significant focus on and expertise in related life sciences work for such well-known biotech organisations such as Genentech. It has bases across the country, with key name Jonathan Bockman heading the Washington DC team. The team is headed by specialist in crop protection and plant IP Michael Ward, who works from both San Francisco and Boston respectively. Palo Alto’s Catherine Polizzi leads on many of the team’s most significant matters and is noted as being ‘exceptional in her knowledge of complicated biopharmaceutical technologies’. Palo Alto’s Janet Xiao is described as ‘excellent’.


Practice head(s):

Michael Ward


Other key lawyers:

Catherine Polizzi; Jonathan Bockman; Karen Potter; Janet Xiao; John Chapman; Jie Zhou; Anita Choi


Testimonials

‘Catherine Polizzi is exceptional in her knowledge of complicated biopharmaceutical technologies, patent law and the value of intellectual property to the biopharmaceutical industry. One of the things I appreciate about Catherine is her demeanour – she treats her clients as peers, recognizing that she has knowledge and experience they do not and vice versa. This recognition of the client as a partner permeates the firm and results in the most fruitful collaborations.’

‘Anita Choi is extremely pragmatic and efficient and takes the time to get to know the technology in order to provide very surgical legal assistance as-and-when needed. We highly recommend Anita and are grateful for her collaboration with us.’

‘Catherine Polizzi and John Chapman stand out and have worked very closely with me on IP at different companies. Even when working on complex new methods, they’ve been successful at getting imorigant claims granted,’

‘An excellent legal team that is highly responsive and extremely competent. Particularly strong in the strategic planning of an IP portfolio and prosecution of patent office actions. They are a diverse group with women and people of color at all levels, which makes for a much more well-rounded practice. Billing is very conservative and accurate with no waste seen by our company at all.’

‘The Morrison Foerster team has great breadth of knowledge regarding patent prosecution, both in and outside the US. They are well acquainted with the minutiae of patent practice in countless jurisdictions. The team includes partners, associates, and technical advisors, and each individual brings unique skills, experience, and expertise to our matters.’

‘Janet Xiao and her team are excellent. Everything runs very smoothly and thoroughly under Janet’s command. She understands the life sciences industry so I don’t waste time explaining commercial relevance of work we instruct. She and her team are also creative, deep thinkers.’

‘The team are collaborative, curious, and have relevant technology experience. I have appreciated having ease of communication with the team both from a technology perspective, and from a client relationship perspective. I have confidence that the team can competently handle IP matters ranging from a variety of technologies, which is not always the case when engaging with other law firms.’

‘Karen Potter impresses me by how knowledgeable she is about our IP portfolio, and the status, prioritization, and business objectives of each of our matters. She manages a talented group of IP practitioners, who have a variety of experience and expertise. She is communicative, honest, and curious about the technologies she helps us protect.’

Key clients

10x Genomics


Abraxis Bioscience


Aimmune Therapeutics


Ally Bridge Group


Alpine Immune Sciences


Aspen Neuroscience


Bayer


Benson Hill


Bristol-Myers Squibb; Juno Therapeutics and Celgene (acquired by BMS)


California Table Grape Commission


Cartography Biosciences


Cartography Biosciences


CG Oncology, Inc.


Cornell University


Cytokinetics


Dewpoint Therapeutics


Driscoll’s


Dynavax Technologies


Enza Zaden


Eureka Therapeutics, Inc.


Genentech


Gilead Sciences


Hofseth Biocare


Inari


Indapta Therapeutics


Invaio


Johnson & Johnson


Juno Therapeutics


Lyndra Therapeutics


Magic Leap, Inc.


Maze Therapeutics


Pillar Biosciences


Pliant Therapeutics


Praxis Biotech


Santen Pharmaceutical Co.


Seagen


SNIPR Biome


SoFresh


Terviva


Triastek, Inc.


Tropic Biosciences


Work highlights


  • Providing strategic patent counseling and prosecution services to Genentech, developing the company’s strategy for its multibillion-dollar portfolios, including blockbuster cancer drugs Kadcyla, Perjeta, Gazyva, and Tecentriq.
  • Acting as counsel to Driscoll on vital patent strategy that keeps the company at the top of the ultra-competitive berry market, representing them in a dispute with California Berry Cultivars regarding strawberry breeding and plant patent rights.
  • Representing Ally Bridge Group, a global healthcare investment management firm focused on high-impact life science innovation, since its inception to conduct IP due diligence on its investment deals.

Paul Hastings LLP

Paul Hastings LLP‘s ‘top-notch’ practice is led from its Washington DC office by global co-chair of the firm’s intellectual property group Naveen Modi , alongside Bruce Wexler and Eric Dittmann , both of whom work at its New York office. The firm has a strong record in representing such notable clients as Google and Samsung in post-grant proceedings, including IPRs, CBM and post-grant reviews before the PTAB, and is also experienced in handling matters involving new technologies, a key example being its recent work representing Google in IPRs, dealing with nine patents asserted by Virentem Ventures, LLC concerning various multimedia technologies. DC’s Joseph Palys, specialist in PTAB-related work, co-leads on this matter.

Practice head(s):

Naveen Modi; Bruce Wexler; Eric Dittmann


Other key lawyers:

Joseph Palys; Phillip Citroën; Chetan Bansal


Testimonials

‘The Paul Hastings team, led by Naveen Modi, is top-notch. They are simply the best of the best. Their technology and legal expertise is unmatched.’

‘Naveen Modi and Chetan Bansal are two of the most savvy attorneys I’ve worked with.’

Key clients

AbCellera


Chevron Oronite Company, LLC


Fitbit Inc.


Flex Logix Technologies, Inc.


Google


Illumina, Inc.


JSR Corporation


Medtronic


Organovo


Samsung Electronics Co., Ltd.


Snap Inc.


Uber Technologies Inc.


VirnetX


Work highlights


  • Represented Samsung in a complex, multi-faceted IP dispute, involving claims for patent infringement and trade secret misappropriation under state and federal law.
  • Representing Google in IPRs dealing with nine patents asserted by Virentem Ventures, LLC. related to various multimedia technologies, arguing that various important Google technologies infringe the patents, such as YouTube.
  • Representing Medtronic in seven IPRs filed by Axonics Modulation Technologies challenging seven Medtronic patents asserted by Medtronic against Axonics in the Central District of California.