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)

Haynes and Boone, L.L.P.'s practice is able to cover the full gamut of IP matters, including counseling and patent portfolio management services. The group is particularly well known for its work in inter partes review proceedings. David McCombs is the key contact.
Holland & Hart LLP advises clients on strategic patent portfolio development and patent prosecution and is adept at prosecuting large portfolios across a range of jurisdictions. Michael Drapki, who has a focus on technology companies, heads the group from Boulder, Colorado.

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

Fenwick & West LLP

Fenwick & West LLP is praised for its outstanding ability to ‘deliver a comprehensive patent portfolio strategy, and execute flawlessly on that strategy’. Established as one of the largest patent prosecution groups in California, the department has a solid track record handling the development and management of the patent portfolios of international companies and start-ups alike, regularly advising prominent names from the technology and life sciences sectors. Headed by Michael Farn (Mountain View), the team is experienced in a variety of other disciplines, including chemistry, molecular biology, electrical engineering and computer. With its expertise in handling all types of post-grant proceedings, as well as significant acquisitions and IPOs, the group is considered by some clients as an ‘extension of the in-house legal team’. Also operating from Mountain View, Rajiv Patel, Robert Hulse, the ‘smart and creative’ Daniel Becker, Antonia Sequeira, and Jae Won Song, stand as the core practitioners of the team. New York's Daniel Brownstone is another name to note. Carl Morales and Rufus Pichler joined the firm in November 2021 from Dechert LLP and Morrison Foerster respectively.

Practice head(s):

Michael Farn 

Other key lawyers:

Rajiv PatelRobert Hulse; Daniel Becker; Antonia Sequeira; Jae Won SongDaniel Brownstone; Carl Morales, Rufus Pichler

Testimonials

‘The team has been outstanding in its ability to deliver a comprehensive patent portfolio strategy, and execute flawlessly on that strategy.’

‘They are meticulous, thoughtful, insightful, responsive and wonderful partners.’

‘Very smart and creative team. Excellent understanding of (and willingness to study) the complex science underlying patent matters resulting in novel and better claims.’

‘Dan Becker is very smart and creative, and has willingness to take deep dives in substance matter.’

‘The team is an extension of the in-house legal team for all patent-related matters ranging from application stage to litigation. The fact that they know us very well by now reduces time spent and makes all interactions much more efficient.’

‘Personable, diligent and always very responsive.’

Key clients

Cipherome

Corvidia Therapeutics

Facebook

Impel Neuropharma, Inc.

Instacart

Netflix

Ontera

Quantala

DocuSign

Trace Genomics

Work highlights

  • Advising Airship, Cujo, Groq, Material Security (aka Stellarite), Orbital Insight, TruU and Valimail on patent and IP portfolio development.
  • Advising Facebook on the development and management of its patent portfolio.
  • Represented Corvidia Therapeutics from the company’s inception in 2015 when it performed the original IP due diligence for the newly-seeded company, through Corvidia’s acquisition by Novo Nordisk in July 2020 for $2.1bn.

ArentFox Schiff

As of March 2022, Arent Fox and Schiff Hardin started operating under the ArentFox Schiff brand. The merger has added strength the firms' already notable patent prosecution department, one of the most renowned within a full service-firm. The group operates from its offices in New York, Washington DC, Los Angeles and San Francisco, and has developed expertise in a variety of industries, mainly fashion and retail, electrical and mechanical patents, and the chemical and life sciences sectors. In addition to handling large domestic patent portfolios, the firm is also the preferred US referral source for a distinguished London-based firm to serve its clients’ interest in the country. Richard LaCava heads the practice from New York, where he is closely supported by Marylee Jenkins. California's Craig Gelfound, who is hailed for being ‘extraordinarily creative in pushing boundaries and establishing new ground on complex legal conundrums’, Wilburn Chesser and associate Brian Stevens, both based in Washington, DC, are other highlighted practitioners of the department.

Practice head(s):

Richard LaCava

Testimonials

This team is very strong on deep tech technology patent portfolios, particularly across communications, computer hardware and software, devices, and related technologies. Their engineering experience is second to none and they excel in collaboration during complex projects.’

Craig Gelfound is a figurehead of the IP industry on the West Coast and has been for a long time. There is very little in both portfolio management and litigation he hasn’t dealt with a hundred times before. When it comes to the cutting-edge, he is extraordinarily creative in pushing boundaries and establishing new ground on complex legal conundrums.’

‘Paul Maier focuses on large portfolios and and is also proficient in technical litigation.’

The care, attention and advice we receive is top notch. I have never been disappointed and I feel they genuinely care about us. If these values are important to them then they should try ArentFox Schiff.’

What makes this practice unique in my opinion is specifically one individual, Craig Gelfound and subsequently his team. He offers sage advice, hard work, fair billing and excellent ethical representation.’

We feel that their action to our request is quick and the quality of their service is very high.’

We are satisfied with support by Richard LaCava and Paul Maier.’

Key clients

Spectrum Brands, Inc.

Rothy’s Inc.

Qualcomm Inc.

Munchkin

Western Digital and SanDisk

Global Legal Community

Divergent Technologies, Inc.

Bridgelux

Grass Valley and Snell Advanced Media

Microsoft Corporation

Johnson Controls, Inc.

Omnitracs LLC

Vale S.A.

Cardinal Health, Inc.

Becton Dickinson

ByteDance/TikTok

Osram

Cole-Parmer (Antylia Scientific)

Work highlights

  • Acted as counsel to Microsoft on patent prosecution matters.
  • Advised Cardinal Health on patent portfolio management, transactional matters relating to new medical technologies, and privacy matters.
  • Represented Qualcomm regarding the expansion of its portfolio in various technologies including next generation wireless broadband technology (5G).

Baker Botts L.L.P.

Baker Botts L.L.P. is the firm of choice for a notable roster of clients that includes Dell, Cisco, Halliburton, Hitachi, Abbott, and Columbia University, thanks to its well-known patent prosecution practice which stands out among general practice firms. With electronics, technology, telecommunications, and life sciences as the team's mainstays, the group impresses with its busy PTAB caseload, comprised of inter partes reviews and covered business method reviews. Their ‘excellent drafting skills’ are another key factor which makes them the ‘go-to firm for these types of proceedings’. Robert Scheinfeld steers the IP practice from New York, with Dallas' Christa Brown-Sanford as his deputy. Meanwhile the prosecution group is jointly headed by Sandra Lee and Samir Bhavsar from New York and Dallas respectively. Palo Alto's Eliot Williams, ‘an excellent IPR advocate’, is another name to note. Hogene Choi left the firm in August 2021.

Other key lawyers:

Eliot Williams

Testimonials

‘Baker Botts has done an excellent job of getting our IPR petitions instituted.’

‘Eliot Williams is an excellent IPR advocate. He writes great petitions and is an excellent oral advocate.’

‘The inter partes review and ex parte reexam practice has a great depth of knowledge in PTO practices and procedures. Coupled with excellent drafting skills makes them our go-to firm for these types of proceedings.’

‘We use Eliot Williams for our inter partes reviews and ex parte reexams. He is an outstanding attorney who understands the process, law and requirements inside and out. He is excellent on his feet and has great judgement.’

Key clients

Columbia University

Cisco Systems Inc.

Lennox International

Iridium Technologies

Brother Industries Ltd.

Qualcomm

Hitachi Ltd.

Dell Inc.

Dish Network

Utex Industries

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”)

Clear-Vu Lighting

Fujifilm Holdings Corporation (and subsidiaries)

LG Electronics

Ericsson

Sumitomo Electric Industries, Ltd.

Work highlights

  • Advising Dell Inc. on the development and management of a patent portfolio directed to a wide range of technologies, including servers, data rooms, PC and server architecture, and enterprise software.
  • Acted as primary outside counsel for Cisco for patent licensing, strategic portfolio development, defensive patent analysis, and overall counseling 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.

Finnegan, Henderson, Farabow, Garrett & Dunner LLP

IP powerhouse Finnegan, Henderson, Farabow, Garrett & Dunner LLP covers the full gamut of patent prosecution services. The group stands out for its particularly superb PTAB practice, which has a remarkable track record representing petitioners and patent owners in post-grant review, inter partes review proceedings, and covered business method reviews. In addition to its solid domestic presence with offices in Washington DC, Reston, Palo Alto, Boston and Atlanta, the firm boasts a significant global footprint in jurisdictions such as the UK and Japan. Jill MacAlpine in Washington DC, who heads the patent office practice, and has a focus on the chemical and pharmaceutical areas, Boston's Jeffrey Jacobstein, who is a recurring choice for clients from the biotechnology and life science spaces, and Aaron Capron in Palo Alto are key contacts of the group.

Key clients

AbbVie Inc.

Asetek Danmark A/S

BMW Group

Caterpillar, Inc.

CSL Behring

Danisco US Inc.

Eli Lilly & Company

FedEx Corp.

Geneze Innovation Inc.

Godbersen Smith Construction Co. Corp d/b/a Gomaco Corporation

Google LLC

Grupo Cosentino SL

IDEAL Industries, Ltd. d/b/a Cree Lighting

iFlight Technology Company Ltd.

Intuitive Surgical Inc.

LG Electronics, Inc.

Nestle

NetApp

Nevakar, Inc.

NICE Ltd.

Playtika Ltd.

Polygroup Limited MCO

Prolitec Inc.

Promptu Systems Corporation

pSemi Corporation

REC Solar Pte. Ltd.

Sarepta Therapeutics

SharkNinja

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

Tianma Microelectronics Co., Ltd.

Toyota Motor Corp.

Volkswagen Group of America, Inc.

Work highlights

  • Assisted Nestlé with multi-front defense strategy in the district court and the PTAB, securing victory.
  • Prosecuted utility and design patents and coordinated the preparation and prosecution of IP rights worldwide for a variety of products made by Caterpillar.
  • Advising Vertex with a focus on Vertex’s FDA-approved cystic fibrosis products, including Kalydeco®, Orkambi®, and Symdeko®.

Foley & Lardner LLP

Foley & Lardner LLP has a focus on the prosecution of technology patents, including representation in corresponding PTAB proceedings such as inter partes reviews and ex parte reexaminations.

Knobbe Martens Olson & Bear LLP

Full-service IP firm Knobbe Martens Olson & Bear LLP advises an impressive roster of clients -comprised of Fortune 500 names and start-ups- with their patent portfolio strategies. The practice continues to grow its its presence in the data privacy and artificial intelligence areas, although the medical device, biotechnology, electrical engineering and telecom sectors continue to stand out as the group´s mainstays. The team also assists with due diligence for corporate transactions, and is well know for its expertise handling in post-grant reviews before the PTAB. The practice has a particularly strong presence in California, with offices in Orange County, Los Angeles, San Diego, San Francisco. Key practitioners Salima Merani, who specializes in building patent portfolios for life sciences companies; Jason Gersting; Terri Tullis; and Sabing Lee, are all based in Orange County. Seattle, New York, and Washington, D.C, are other key offices.

Practice head(s):

Salima Merani; Mike Fuller

Other key lawyers:

Jason Gersting; Terri Tullis; Sabing Lee

Key clients

Personal Genome Diagnostics Inc.

ICU Medical, Inc.

Nkarta, Inc.

Agilent Technologies, Inc.

Illumina, Inc.

Ulthera, Inc.

Vensana Capital Management, LLC

Cala Health, Inc.

CyDex Pharmaceuticals, Inc.

Aligos Therapeutics, Inc.

Work highlights

  • Represented Wright Medical on Stryker’s $4bn acquisition of Wright Medical.
  • Assisted Imperative Care with raising $260m to advance innovations that elevate stroke care.
  • Represented Nkarta in the negotiations of a deal with Crispr Therapeutics.

Morgan, Lewis & Bockius LLP

The IP practice at Morgan, Lewis & Bockius LLP prosecutes patents and provides strategic advice to a number of renowned domestic and international technology and life sciences companies. The group garners praise for its ‘very deep understanding of the life sciences, biotech and pharmaceutic-related technologies and inventions’. Drawing from its successful litigation group, the firm is also well suited to act in post-grant proceedings, handling all types of proceedings, including appeals, reissues, and reexaminations. Louis Beardell heads the practice from Philadelphia, while Dion Bregman, who represents public and private companies in the software, hardware, media, internet, telecommunications, and medical device sectors, acts as deputy practice head from Silicon Valley. San Francisco-based life sciences, chemistry and healthcare specialist Christina MacDougall, who is recommended for being ‘an extraordinary patent attorney’; Mark Itri in Orange County; and Janice Logan in Washington, DC, are other names to note.  The firm also operates from its offices in Houston, Chicago and Boston.

Practice head(s):

Louis Beardell; Dion Bregman

Testimonials

‘Very deep understanding of the life sciences, biotech and pharmaceutic-related technologies and inventions. Outstanding responsiveness.’

One of the unique features of Morgan Lewis team for patent prosecutions is their creativeness and flexibility formed upon their vast knowledge about the USPTO practice. Further, their strength resides both in patent prosecutions and post-grant proceedings.’

‘Christina MacDougall is an extraordinary patent attorney. Very knowledgeable, dedicated, responsive, and pleasant to work with.’

Janice Logan speaks fluent Japanese. Although she has a technical background of biotechnology, her enthusiasm enables her to work on variety of technologies such as AI.’

‘A strong life sciences practice group. We can consult the team about intellectual property matters and regulatory matters as well as business law matters related to drug development in a one-stop manner.’

‘Great service, professionalism, and responsiveness: Dion Bregman.’

Key clients

ConocoPhillips Company

POSCO

Qualcomm

SalioGen Therapeutics Inc.

Volta Charging, LLC

Work highlights

  • Secured a significant appellate win for ConocoPhillips before the US Court of Appeals for the Federal Circuit following an appeal from the PTAB.
  • Assisting Qualcomm with IP counseling and patent prosecution with respect to ‘system on chip’ devices.
  • Advised POSCO in connection with its patent prosecution, ex parte reexamination, IPR, and patent infringement matters.

Wolf Greenfield & Sacks

Earning plaudit for being ‘technically excellent, and very responsive’, IP boutique firm Wolf Greenfield & Sacks houses a thriving practice comprised mostly of attorneys with science or engineering degrees, but also several others with advanced degrees under their belt. The firm is a preferred choice for large, global corporations, mid-size companies, start-ups, universities and research institutions. With the electronics, technology and life sciences sectors as their mainstays, the group shows particular prowess in post-grant proceedings, including IPRs, acting for petitioners and patent owners alike. Ed Gates, who is well known in the life sciences sector, leads the team from the Boston office, where he is closely supported by Richard Giunta, who serves as co-chair of the firm’s post-grant proceedings team. Oona Johnstone is praised for offering ‘excellent service and high-quality work, with attention to detail and high technical standards’.

Practice head(s):

Ed Gates

Other key lawyers:

Richard Giunta; Oona Johnstone

Testimonials

‘WGS provides high-precision, is technically excellent, and very responsive. The team working for us is large, but they are a cohesive group with excellent communication among themselves and with us.’

‘Oona Johnstone is building a large patent portfolio for us and is providing excellent service and high-quality work, with attention to detail and high technical standards.’

‘The whole team has exhibited great professionalism.’

‘Very good response and professional proposals. Lot of value for the money.’

‘Very pleasant way of working together. Straight forward way and providing good advice.’

Key clients

Pfizer

Takeda Pharmaceutical Company Limited

Sony Corporation

SharkNinja

Keurig Green Mountain, Inc.

Boston Children’s Hospital

Analog Devices, Inc.

Ginkgo Bioworks

Harvard University and Medical School

Massachusetts Institute of Technology

Work highlights

  • Managing patent portfolio and strategy for Oxford Nanopore.  
  • IP counseling and patent prosecution services to Boston Dynamics to protect new innovations for its robots as they are optimized for deployment in various commercial and industrial settings.
  • Managing the worldwide patent portfolio and coordinating the IP strategy for Telebrands, better known as Bulbhead.

Arnold & Porter

Arnold & Porter‘s highly reputed IP group offers a solid patent prosecution practice which is particularly renowned in the life sciences industry, with Altria, Bayer, Bruin Biometrics, Finch Therapeutics, and Regeneron as key names in its client roster. David Marsh, who operates from Washington DC, is the key contact of the practice, which, in combination with the firm’s  substantial litigation experience, is also well-suited to protect interests of its clients before the PTAB. Ex parte reexaminations, reissues, supplemental examinations, and interferences are part of the group’s experience. Matthew Wolf and Dina Hayes, based in Washington DC and Chicago respectively, share leadership of the practice. Deborah Fishman in Silicon Valley is another name to note.

Practice head(s):

Matthew Wolf; Dina Hayes

Other key lawyers:

Deborah Fishman; Jennifer Sklenar

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

  • Defending two of Regeneron’s patents directed to manufacturing and formulations of EYLEA® against ex parte reexamination challenge.
  • Represented Bayer with the prosecution of patent portfolios critical for the protection of key DNA breakthroughs.
  • Provided strategic advice to Bruin Biometrics for two company-portfolios in the area of medical devices.

Kilpatrick Townsend & Stockton

Kilpatrick Townsend & Stockton offers a ‘large, responsive and knowledgeable practice’, comprised of ‘experts in all technical areas and at all levels of experience’, who advise clients on the implementation of global patent strategies. They are led by Vaibhav Kadaba from the firm’s main hub in Atlanta. The practice is particularly skilled at handling life sciences and chemistry patents, electronics and software patents, as well as those covering mechanical and medical devices, regularly assisting inventors, corporations, organizations, and universities. Through a combination of prosecutors and litigators, the department is also adept at handling post-grant proceeding, covering inter partes reviews, post-grant reviews and covered business method reviews for both patent owners and petitioners. ‘Outstanding life sciences patent attorneyAndrew Serafini, who is based in Seattle; and San Francisco’s David Raczkowski, who is praised for being ‘extremely knowledgeable on technology and patent prosecution requirements’, are other names to note.

Practice head(s):

Vaibhav Kadaba

Testimonials

‘The team’s deep knowledge of technology and collaboration are extremely valuable in the prosecution space.’

‘David Raczkowski is a fantastic lead – he is extremely knowledgeable on technology and patent prosecution requirements.’

Andrew Serafini is an outstanding life sciences patent attorney. He oversees a large team of fee earners, but is always visible on a case, and seemingly always available. We trust Andrew and his team with our most important cases.’

A large, responsive and knowledgeable practice. They have experts in all technical areas and at all levels of experience. In addition to excellent attorneys, they have an effective paralegal team who ensure efficient and cost-effective processing of routine matters. Furthermore, they have fixed charges for routine matters which helps to manage the costs of US patent prosecution.’

Key clients

Facebook

Atreca, Inc.

BayMedica, Inc.

Ascend Performance Materials

TerraLithium LLC

ExThera Medical Corporation, Inc.

LI-COR Biosciences

Fry Labs

LabCorp

Emory University

McDermott Will & Emery LLP

Operating from key innovation hubs, including Atlanta, Boston, Chicago, Silicon Valley, Los Angeles and Washington, DC, McDermott Will & Emery LLP's practice prepares and prosecutes patent applications and manages and protects the patent portfolios of clients such as Amgen, CRISPR Therapeutics, Facebook, and Shutterstock, showcasing its particular expertise in the life sciences and technology spaces. The prosecution group is headed by Chicago's Ahsan Shaikh, while William Gaede in Silicon Valley acts as global head of the IP group. Other key attorneys include Boston's Edward Gordon, who often takes the reins in negotiations in transactions involving IP assets as well as in negotiating joint ventures and strategic collaborations for global companies. Fellow Bostonian Michael Siekman's skills shine through in life sciences side of the practice. The later two are based in Boston.

Other key lawyers:

Michael Siekman

Key clients

Amgen Inc.

AppDirect

Assertio Therapeutics (Delpor)

Charles River Laboratories, Inc.

Charles Stark Draper Laboratory

Compagnie Générale des Établissements Michelin SCA (Michelin)

Cornell University

CRISPR Therapeutics, Inc.

Electronic Arts, Inc.

Everlaw

Facebook

Fuze

Heron Therapeutics

Ironclad

KAI Pharmaceuticals

Kaiser Aluminum Corporation

Kymab Limited

Manifold

Native American Intellectual Property Enterprise Council (NAIPEC)

Next Caller Inc.

Piaggio Fast Forward

Quidel Corporation

Resodyn Corporation

Sendoso

Shutterstock

Specifica, Inc

SpiralEdge

Splunk

WABCO Holdings Inc.

Young Innovations, Inc.

Work highlights

  • Managing Amgen’s patent estate for its PARSABIV product.  
  • Advising on patent application drafting and examination strategies for Facebook.  
  • Advising CRISPR on patent matters relating to their immuno-oncology programs, which combines the cutting-edge crispr (clusters of regularly interspaced short palindromic repeats) and CAR-T (chimeric antigen receptor T cell) technologies.

BakerHostetler

Baker & Hostetler LLP offers a full-spectrum patent prosecution service with notable expertise across a wide sector range, including computer technology, life sciences, electrical and chemical engineering, aeronautics, and biotechnology. Washington DC's Kenneth Sheehan, who handles a wide array of patent work, including prosecution, licensing, litigation, and transactions, and earns praise for his ‘technical expertise, very high-quality standards and business acumen’, is a key contact of the group. Tayan Patel and Hussein Akhavannik, also in Washington DC, and Stephanie Lodise in Philadelphia, are also noted. The firm includes a number of attorneys with an extensive background in regulatory bodies such as USPTO. The firm also operates from its office in Atlanta.

Other key lawyers:

Tayan Patel; Hussein Akhavannik

Testimonials

Kenneth Sheehan is an excellent professional with technical expertise, very high-quality standards and business acumen.’

Kenneth Sheehan has a keen ability to understand highly technical invention disclosures.’

Key clients

AT&T

Comcast Corporation

Amazon.com

Johnson & Johnson

American Water Works Company, Inc.

Bosch

SPX Corporation

Sinclair Broadcast Group

Apple

West Pharmaceutical Services

Fresenius Kabi USA

Sinclair Broadcast Group

CACI (formerly LGS Innovations)

Bruker

comScore

Nordson Corporation

TracFone

Hyatt

Transdigm

Syngenta

Cree

Teleflex

Baker McKenzie LLP

Washington DC’s Richard Wells and Dallas-based partner Mackenzie Martin, who also heads the firm’s global prosecution practice, share the helm of Baker McKenzie LLP's practice after the retirement of former department co-head Brian McCormack  in October 2021. In addition to oil and gas, the group houses a broad expertise in the medical devices sector; covers the technology space with hardware and software technology specialist Vas Vedantam (Dallas). The group also has developed a solid practice around plant patents and plant variety rights as part of its life sciences offering, headed by associate Jessica Greenwald. The group can also draw from its international network of offices and seamlessly works with colleagues in Europe, Russia, Asia, South America, and Mexico to coordinate global patent strategies.

Practice head(s):

Richard WellsMackenzie Martin

Other key lawyers:

Vas VedantamJessica Greenwald

Testimonials

‘Great collaboration, fair hourly rates, we have the privilege of working with very capable lawyers in IP matters, specially Richard Wells. Results-oriented, but also very open to giving thorough explanations and making sure everything is crystal clear. Efficiency and quality.’

‘Efficient communication, quick turnaround, notorious knowledge on intellectual property matters, easy to comprehend explanations.’

‘The team has gone out of their way to put together training materials and educational sessions for our company to up-skill us so that we both work better together. It is a win-win situation. Really appreciate the way they understand our company’s unique situation and tailor their advice accordingly.’

‘Jessica Greenwald has been an invaluable resource for our company. She never dropped the ball and always kept on top of our case files. Her knowledge on our global portfolio and the relevant laws in these territories is very deep.’

Key clients

Veeva Systems

Schlumberger Corporation

Zero Friction

Zespri

Isomer

Coflex S.A.

Dr. Matt Johnson

Robowash

Work highlights

  • Strategic prosecution and patent opposition (quasi-litigation) for Veeva Systems, as well as providing pre-litigation advice.
  • Acted for Schlumberger on patent prosecution.
  • Managing the global patent portfolio for Zero Friction.

Bookoff McAndrews

Earning plaudit for offering ‘high quality and value’, Bookoff McAndrews, brings to the table ‘many years of experience focused in all aspects of patent prosecution, including strong strategic patent portfolio development’. The Washington DC-based boutique firm is known for having all its resources devoted to patent prosecution, counseling and transactional work. Fortune 100 companies, start-ups and medium-sized companies from a diverse array of industries turn to the firm, including clients from the medical devices, biotechnology, consumer product, engineering, and financial services sectors, showing prowess in domestic and cross-border matters alike. A stellar bench of practitioners comprised of Christopher Agrawal, Les Bookoff, Kirsten Johnson, Jameson Ma, Roland McAndrews, Dinesh Melwani, Elizabeth Shah and Jessica Winchester, jointly head the practice.

Testimonials

‘The team has many years of experience focused in all aspects of patent prosecution and counseling, including strong strategic patent portfolio development. They offer high quality and value.’

‘I have worked with Roland McAndrews and Les Bookoff for many years. They are excellent patent attorneys who are able to offer practical counseling to their clients.’

General high-quality work. But I think more than anything they are easy to work with. Client-focused without pandering. Never any surprises with billing.’

Chris Agrawal is a fantastic relationship partner (in addition his legal and technical skills).’

Key clients

Boston Scientific Corporation

Verizon Communications, Inc.

Everspin Technologies, Inc.

Safran S.A.

Regeneron

UnitedHealth Group

WorldPay

Caterpillar

Honeywell International Inc.

BIC

Corteva Agriscience

Capital One

Alcon

MicroStrategy

Work highlights

  • Managing nearly 1,300 pending patent applications worldwide for Boston Scientific Corporation’s Endoscopy, Pulmonary, Urology, and Cardiac Rhythm Management business units.
  • Managing Proterra’s burgeoning patent portfolio and acting as counsel for all of its patent aspects, including product clearance, and IP agreements.
  • Developing valuable patent assets to secure Capital One’s competitive advantage.

Cooley LLP

Cooley LLP is home to an ‘amazing’ practice which is able to attract significant players from the technology, agri-business and, especially, from the life sciences sectors, who seek out the firm's solid capabilities in patent prosecution work. The group headed by New York's Ivor Elrifi enjoys a solid level of activity nationwide thanks to is capabilities in other hubs such as Boston, Palo Alto, Washington DC and Reston, VA. The team also has proven expertise in PTAB invalidation proceedings. Mika Reiner Mayer (Palo Alto); Chris Holly (DC); and Bill Christiansen (Seattle) are other key contacts. The May 2021 arrival of life sciences expert Amy Mandragouras, formerly at Nelson Mullins Riley & Scarborough LLP, in Boston strengthened the firm's East Coast presence.

Practice head(s):

Ivor Elrifi

Testimonials

‘The patent team at Cooley is amazing. They are scientists and deep subject matter experts that really ‘get it’ when it comes to what we as a company are trying to do and they are very strategic about making sure we get there.’

‘They feel like an extension of our team and that they are doing everything they can to help us with what we need, which is much appreciated and can be very unique to find in outside counsel.’

‘Chris Holly is an excellent partner who is wonderful to work with. He is very strategic and has mastery over how to navigate the patent laws to do everything possible to secure protection of our IP.’

The quality of work is outstanding and as a client I get access to the most brilliant minds of the whole team.’

Ivor Elrifi is outstanding and exceptional, very hardworking and extremely intelligent as well as brilliant.’

Cooley is a unique practice since they’re very client-friendly and patient. The quality of work is outstanding.’

Ivor Elrifi is outstanding and exceptional, very hardworking and extremely intelligent as well as brilliant.’

Key clients

Abeona Therapeutics

Arvinas

ATAI Life Sciences

AtriCure

BAI Intelligence LLC

C16 Biosciences

Compass Pathways Ltd

Demetrix

Dicerna Pharmaceuticals

ElevateBio

Intuity Medical

LocanaBio Inc.

McMaster University

Moderna

Myovant Sciences

Nobell Foods

OKYO Pharma

Pivot Bio

Provivi, Inc

RefleXion Medical

RenalytixAI

Resolve Therapeutics

Shoreline Biosciences

Upside Foods, Inc.

Vaxcyte

Zymergen

Work highlights

  • Representing Moderna in the development of a worldwide patent portfolio relating to rna-based therapeutics, including patent prosecution and counseling matters in the development of a COVID-19 vaccine.
  • Advised RenalytixAI on all patent counseling associated with its license agreement with Mount Sinai School of Medicine for the KidneyIntelX diagnostic, as well as strategic patent advice in connection with RenalytixAI’s IPO and follow on offerings.
  • Advised Abeona Therapeutics on patent prosecution matters relating to AAV gene therapy and on an arbitration matter relating to breach of a license relating to AAV capsids.

Dechert LLP

Recommended for being ‘diligent, comprehensive, collaborative, nimble, and resourceful’, Dechert LLP‘s practice is widely recognized as a highly-competitive player in the life sciences sector, regularly acting for pharmaceutical and biotechnology companies in a wide variety of matters, including patent portfolio development for pre-public and discovery stage clients, the management of international patent portfolios, multi-million dollar transactions, and disputes brought before the USPTO. Boston’s Andrea Reid and Andrew Wilkins, who joined the firm in February 2021 from Lathrop GPM, share the helm of the practice. Chad E. Davis, also in Boston, is another name to note. Carl Morales left the firm in October 2021.

Practice head(s):

Andrea ReidAndrew Wilkins

Other key lawyers:

Chad E. Davis

Testimonials

‘They are creative in finding ways to patent new inventions. They understand the patent requirements of foreign jurisdictions and proactively take these into account when drafting new patent applications.’

‘The team members understand biotechnology in general and immunology in particular. They know the competitive landscape and alert us when something crosses their desk that is relevant to our business.’

‘They are very time flexible, understand our time pressures and provide an environment in which they appear as committed to the ‘project’ as the client.’

Great at explaining complex subject matter as they have excellent communication skills. Understand the science, so you can have detailed conversations with counsel and they can provide valuable guidance. They are very responsive.’

Andrew Wilkins is very smart, quick, offers excellent communication and guidance, and is responsive.’

The Dechert team is diligent, comprehensive, collaborative, nimble, and resourceful. They’ve been flexible on billing and open to our financial needs. They work very well with other IP advisors we’ve engaged.’

Key clients

Atlas Venture

Bicycle Therapeutics

Brickell Biotech

Exo Therapeutics

Forbion Capital Partners

Homology Medicines

Ikena Oncology

Kymera Therapeutics

Nimbus Therapeutics

Parthenon Therapeutics

Rectify Pharmaceuticals

ROME Therapeutics

Tectonic Therapeutics

Vigil Neuroscience

Work highlights

  • Represented Brickell Biotech in its $320m acquisition of the worldwide rights to South Korean drug discovery company Voronoi’s DYRK1A inhibitor platform.
  • Represented Forbion Capital Partners in the $148m Series C investment in Gyroscope Therapeutics.
  • Handled the patent strategy and diligence on behalf of Ikena Oncology in its $143m initial public offering.

Dentons

Applauded for having ‘one of the most strategic patent teams around’, Dentons serves as counsel to a variety of clients, ranging from high-tech, biotechnology and pharmaceuticals clients to universities, providing top-notch services to develop, manage and protect IP portfolios. The group boasts notable domestic and international capabilities, being able to draw resources from its global network of offices when handling cross-border prosecution matters. Robert Hanson in Dallas, Brian Ho, who splits his time between San Francisco and Oakland, and Monica Richman in New York share the leadership of the practice. Peter Yin, who is ‘armed with technical knowledge’ and operates from San Francisco; Song Jung in Washington, DC; and Dallas' Thomas Hiesberger, who made partner in 2021, are key names of the team. Martin Bruehs left the group in 2021.

Testimonials

‘Denton’s global reach and universally high standards for all types of practices make them the best choice to support growing biotechnology companies.’

‘Stephanie Seidman is always ready to help, whether it is drafting a patent or assisting with articulating claims, or broader aspects of patent strategy.’

One of the most strategic patent teams around both for prosecution and evaluating technical issues in litigation.’

Peter Yim is the most sophisticated advisor by far when it comes to decisionmaking at various phases of an an IPR, re-exam or in the context of litigation. Armed with technical knowledge, Peter balances the strength technical arguments with real-world experience to craft the best approaches forward.’

This firm is completely customer-friendly. They respond quickly, in extreme detail and in a manner that our management team members can easily understand and follow.’

Key clients

LG: LG Electronics, LG Chem, LG Display

Solidia Technologies

DiversiTech Corporation

The Coca-Cola Company

Columbia University

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

Land O’Lakes

TransRobotics, Inc

VMware, Inc.

Work highlights

  • Advised LG Chem and LG Display on the management of a patent portfolio pertaining to their core technologies in the areas of mobile communication, digital television technologies, codec technology and home appliances.
  • 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 the global patent portfolio for Solidia Technologies.

Eversheds Sutherland

Atlanta-based partners Peter Pappas and Malvern Griffin hold the reins of Eversheds Sutherland's practice, which continues to be the go-to adviser for renowned national and international corporations, showing prowess in a wide range of industry sectors, including consumer products, medical devices, automotive, pharmaceutical, and telecoms. At the PTAB, the team acts for patent owners and petitioners in inter partes reviews and covered business method reviews. Atlanta's Daniel Warren, who has a background in mechanical engineering, Nash Zogaib, who heads the Austin office, and Jeffrey Guise, who joined the San Diego office in April 2021 from Wilson Sonsini Goodrich & Rosati, are other names to note.

Practice head(s):

Peter PappasMalvern Griffin

Key clients

Dassault Systemes

ESET

Kyocera

Workplace Technologies Research

General Motors

Tufts Medical Center

Gyrus Capital Partners

Pfenex

Bright Peak Therapeutics

Aligos Therapeutics

V-Wave

Bodycad

AerSale

Georgia-Pacific

Angelini Pharma

Fameccanica.Data

Spellman College

Florence Healthcare

Gyrus Capital Partners.

Work highlights

  • Advised Georgia-Pacific, providing patent prosecution and counselling on all of the client’s domestic and global core business areas.
  • Represented Fameccanica.Data in domestic patent prosecution, counselling, transactional, litigation, and contested patent office proceedings and related appeals representations.
  • Representing Angelini Pharma with pharmaceutical patent litigation and pharmaceutical product development legal representation.

Pillsbury Winthrop Shaw Pittman LLP

Pillsbury Winthrop Shaw Pittman LLP remains a solid choice for both domestic and international clients in need of assistance with the development and management of their patent portfolios. Practice head Jack Barufka is the key contact of the main office in MacLean, Northern Virginia, which is also pharmaceutical sector expert Pat Doody's home base. In addition, the firm has a Texas-based patent prosecution team led by Josh Tucker (Austin), who focuses on emerging technologies such as artificial intelligence, blockchain and 5G. Ngai Zhang left the firm in June 2021.

Practice head(s):

Jack Barufka 

Key clients

Adient Medical

ALTR Solutions, Inc.

BioRegentech

Cerebri AI

Digital Asset Capital

Fellowes, Inc.

Inpixon

Institute for Ethnomedicine d/b/a Brain Chemistry Labs

The Zebra

UBS

University of Southern California

Vapor IO

Work highlights

  • Advising UBS on IP matters worldwide, including patent, trademark, copyright, licensing, IP diligence, IP agreements, monetization, domain names, and litigation.
  • Assisted ALTR Solutions, Inc. with the development of its patent portfolio to more than 22 patent allowances involving blockchain technology to build a platform for greater data security.
  • Assisting Vapor IO build with a first-to-market patent portfolio around edge computing hardware and related software.

Bracewell LLP

Houston-based duo Constance Gall Rhebergen and Brad Chin co-head Bracewell LLP's patent prosecution group, which is particularly renowned for its skills in the management and strategic development of international patent portfolios, as well as for its clout in the technology and energy sectors. The firm's national footprint also extends to its other offices in Austin, New York and Seattle. Douglas Rommelmann, also based in Houston, brings in additional expertise representing clients in contested USPTO proceedings, including inter partes review proceedings.

Other key lawyers:

Douglas Rommelmann 

Key clients

Saudi Arabian Oil Company (Saudi Aramco)

Apache Corporation

Tetra Technologies

Cheniere Energy, Inc.

Eyedetec Medical, Inc.

Freschfield

CSG Investments

Work highlights

  • Advised Saudi Aramco on more than 7,000 international patent prosecution matters, including patents covering upstream and downstream oil technologies, as well as drilling equipment, polymers, chemicals, medical instruments, nanotechnology, and robotics.
  • Advised Cheniere on technology-related agreements and developing internal policies and procedures to assist Cheniere with its intellectual property asset management.
  • Advised Freshfield on all aspects of intellectual property protection, including global strategic portfolio management.

Cantor Colburn LLP

Founding partners Michael Cantor and Philmore Colburn (both based in Hartford, Connecticut) co-head the practice at Cantor Colburn LLP, which has established itself as one of the largest IP boutique firms in the US. Also operating from its offices in Troy, Atlanta, Houston and Detroit, the group enjoys a solid reputation for its prosecution practice, thanks to its thriving activity in the US, which they complement with the work for clients from Korea, Japan, China, Europe, the Middle East, India and Australia. In addition, the practice is also well versed in post-grant proceedings.

Practice head(s):

Michael CantorPhilmore Colburn

Testimonials

‘Cantor Colburn offers top-notch legal services at very reasonable rates. The attorneys are hard-working, very responsive, and proficient in various areas of IP law. They work long hours to get things done in time for their clients.’

‘Bryan Zerhusen is a very knowledgeable attorney both in the technical field and patent law. Bryan is a person to go to for any patent work related to biologics and due diligence advice.’

Choate, Hall & Stewart

Praised for being ‘very responsive, collaborative, and pleasant to work with’, Boston-based firm Choate, Hall & Stewart offers a solid patent prosecution practice, which is particularly well known for providing strategic patent counseling to life sciences clients, be it start-ups, venture-backed mid-size companies or large biopharma companies. Brenda Herschbach Jarrell and Charles Lyon share the lead of the team, which has a particular experience in matters related to financings, IPOs, product launches, or acquisitions, and also shows good capabilities when handling reexaminations and post-grant proceedings. Partners Kristen Buteau and Stephanie Schonewald are other names to note.

Testimonials

This team is very responsive, collaborative, and pleasant to work with. They have a very high level of professionalism.’

Key clients

LogicBio

Immuneering Corporation

WAVE Life Sciences

Takeda

DLA Piper LLP (US)

DLA Piper LLP (US) houses an ‘exceptionally effective, knowledgeable, and trustworthy practice’ which shows prowess in cases involving a variety of technologies, including electronics, semiconductors, computing, pharmaceuticals, biologics and medical devices. Boston’s Larissa Bifano, who also leads the firm’s artificial intelligence group which opened in 2019, is the key contact of the department. Lisa Haile in San Diego brings in her experties in the life sciences sphere and garners praise for being ‘very good and producing very high-quality work’.

Other key lawyers:

Lisa Haile 

Testimonials

They were able to take over my patent portfolio and correct a number of items from the previous firm handling the portfolio. Lisa Haile and her team were incredible and super responsive.’

Lisa Haile is very, very good and producing very high-quality work. She is a very good strategist and is incredibly responsive.’

Lisa Haile is extremely easy to work with and seems to be always available for any issue that comes up.’

The team at DLA is incredibly sharp and responsive – they really take the time to understand our business, what our drivers are, and deliver an impeccable client experience.’

Larissa Bifano is super smart, responsive and hardworking.’

This is an exceptionally effective, knowledgeable, and trustworthy practice.’

Larissa Bifano is exceptional. She is effective, knowledgeable, and trustworthy, through high times and trying times.’

Lisa Haile is always on top of making sure the filings are strong and timely.

Key clients

Citrix Systems, Inc.

iRobot Corporation

Dropbox, Inc.

Nike, Inc.

Techtronic Industries Co., Ltd.

Grandstream Networks

Caelum Biosciences

Synthetic Genomics, Inc.

MVRx

CuraSen Therapeutics, Inc.

Personal Genome Diagnostics (PGDx)

Codex

Delfi Diagnostics

BASF Corporation

Work highlights

  • Analyzed and enforced certain patent rights in 22nd Century’s IP portfolio that relate to the biosynthetic pathway for cannabinoid production.
  • Represented Caelum Biosciences in a matter involving an anti-amyloid monoclonal antibody drug targeted for the potential licensing and commercialization in treating amyloidosis.
  • Obtained issuance of multiple key patents for Synthetic Genomics, Inc. for its key product and research areas.