IAM Patent 1000: IAM’s analysis of the leading firms in United States: DC Metro Area

Firms: litigation

Gold tier

Silver tier

Bronze tier

Firms: prosecution

Firms: transactions

Covington & Burling LLP

A premier destination for big-ticket patent infringement actions, Covington & Burling has an abundance of top litigators in its DC headquarters, who understand the finer points of patent strategy and possess whetted trial skills. One of the most celebrated is George Pappas, who is hard to beat for courtroom gravitas. A veteran of dozens of trials, Kevin Collins also has significant appellate experience, as do Pappas and Richard Rainey, GE’s former global IP litigation chief. A partner in the IP and Food and Drug Administration (FDA) practice groups, Christopher Sipes is a key contact for pharmaceutical cases alongside Hatch-Waxman litigation veteran Einar Stole. Alexander Chinoy and Sturgis Sobin bring the heat in Section 337 investigations; in June 2021 they were joined by former Sidley partner and fellow ITC specialist Brian Nester, giving the firm even more potency in this vital forum. An eminently smart selection for transactional and IP commercialisation services, Covington has top deal lawyers in life sciences industry group co-chair John Hurvitz and Stuart Irvin, a leading expert on settlement negotiations and video game-related transactions.

Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

A leader among IP boutiques not just in the United States but globally, Finnegan deploys sophisticated experts in all facets of patent practice and all areas of technology from offices in the United States, Asia and Europe. Of its professionals 200 are USPTO registered (roughly 40 of them are former examiners) enabling the firm to file several thousand US patent applications annually, in addition to 2,000-plus foreign applications; in 2020 Finnegan had nearly 4,000 patents issued across the globe, which is a remarkable achievement. By no means a mill, the outfit’s top prosecution and counselling specialists – including Mark Sweet, Gregory Gramenopoulos, Jill MacAlpine, and Adriana Burgy – overlay their knowledge of the law and the patenting process with a highly strategic approach that pays business dividends for clients. Sweet provides outstanding leadership to the group as its chairman. Gramenopoulos calls on significant European and international experience and is insightful on global protection matters. Head of the patent office practice, MacAlpine is a top adviser to life sciences companies; her patrons include Eisai, for which she oversees the protection of commercially important drugs. Finnegan has an extremely well-rounded life sciences practice; like MacAlpine, Burgy understands these industries on many levels, as do Robert Shaffer, William Raich, Charles Lipsey, James Monroe and Michael Flibbert, who form a crack line-up of litigators. Shaffer takes the reins of the pharmaceutical and biotechnology group, which he leads to an outstanding winning record. Superb in lead counsel roles, Raich has a PhD in cellular and molecular biology and is one of the most technically adept advocates – and counsellors – on the market; his recent activities include high-profile representations under the Biologics Price Competition and Innovation Act. Raich frequently links up with Lipsey, who continues to stand out as an elevated strategic thinker and devastatingly effective courtroom lawyer. He has handled a vast number of Hatch-Waxman cases, as has Monroe, a well-rounded professional with a rich knowledge of patent, trade dress, unfair competition and regulatory law. Flibbert is distinguished by his post-grant expertise and vital contribution to one of the best PTAB practices in the country. This is led by Joshua Goldberg, a veteran of 300-plus Leahy-Smith America Invents Act (AIA) proceedings. Thomas Irving and Erika Harmon Arner are other essential contacts for the address book, the former known for his creative strategies and the latter as a dynamic lead counsel. The ITC is another specialised forum in which Finnegan makes a decisive impact. At the forefront of all things ITC are Smith Brittingham, Mareesa Frederick, Qingyu Yin and Yanbin Xu. Brittingham serves as leader of the Section 337 practice and has 25 years of ITC experience, six of them spent with the Commission’s Office of Unfair Import Investigations. Frederick, who also benefits from inside knowledge, recently won a rare complete victory on summary determination for REC Solar Holdings as respondent in a high-profile investigation involving solar cells. Yin is a vital touchpoint for Chinese clients. PhD lawyer Xu has an outstanding research background in electrical and computer engineering and is fantastic behind the scenes in terms of his ability to work up cases and direct strategy. Finnegan has all the resources required for major litigations in any court and stands out for its amazing depth. James Barney, Lionel Lavenue and Doris Johnson Hines have all engaged in Section 337 investigations recently and are three of the best all-round patent litigators on deck. Hines has significant Federal Circuit experience, as does Michael Jakes, the firm’s eminent appellate leader. Jeffrey Berkowitz, Bryan Diner, Gerson Panitch and Anand Sharma all represent a class of litigators at Finnegan who benefit from well-rounded patent prosecution, counselling and licensing experience. Panitch and Sharma both debut in the IAM Patent 1000 this year; Panitch has had notable success under Section 101 recently and achieved a clean sweep victory for Playtika in a dispute with NEXRF Corp, the court ruling that all five of the plaintiff’s patents were invalid as ineligible. Managing partner Sharma gets difficult jobs done in the district courts, the ITC and the USPTO, and is as versatile as they come. Brian Kacedon leans into the contentious practice but is best known as one of Finnegan’s top licensing professionals. He, John Paul and William Pratt form a strong backbone to the transactional practice. Paul is the president of the Licensing Executives Society. Elizabeth Ferrill takes charge of a sophisticated design patent practice; she prosecutes utility and design patents for Caterpillar and prepares design applications for Eli Lilly with respect to its medical device portfolio. Devoted to intellectual property, she recently won a prestigious award from the Intellectual Property Owners Association for her promotion of the value of intellectual property to society.

Fish & Richardson

When it comes to winning patent disputes, few outfits do it more often or more resoundingly than Fish. The firm has many eminent trial lawyers – not just litigators – who master the facts of their cases and present them persuasively, whether in federal district courts, the ITC, the PTAB or the Federal Circuit. Beacons of light for top technology companies in conflict with their main rivals include eminent lawyers Ruffin Cordell and Michael McKeon, who have recently come together to defend Samsung in a six-patent case in the Eastern District of Texas concerning camera features on all of Samsung’s Galaxy smartphones; colleagues in Atlanta, including hotly tipped Noah Graubart are also engaged in this, making it a good example of the cross-office teamwork that Fish is so good at bringing about. Cordell and McKeon know the ITC extremely well, as do others including Rich Sterba, Joseph Colaianni and Christian Chu, who have deep experience encompassing all facets of Section 337 investigations. Litigating strategically in all forums, Linhong Zhang recently added a notable ITC result to his track record in successfully defending Guangzhou Rebenet Catering Equipment Manufacturing Co and others, in which the Chief Administrative Law Judge held that the complainants had failed to prove substantial injury to a domestic industry; he worked alongside Fish’s Boston team on this. Adding to the contentious firepower on offer in DC, Lauren Degnan, Ahmed Davis and Timothy Riffe burnish the firm’s reputation for excellence: Degnan dials in strategies perfectly for each forum in which her cases are being litigated, making her a safe pair of hands when there is much at stake. Davis has a specialist knowledge of the US District Court for the Eastern District of Virginia. Riffe capitalises on his prosecution and counselling experience, most notably in his role as a lead counsel in post-grant proceedings. He doesn’t allow his clients to be strong-armed and recently successfully represented Micron Technology against an aggressive patent assertion entity, whose damages case collapsed. With him on this was Adam Shartzer, who plays an important role at Fish as a dynamic high-stakes litigator, recruiting partner and diversity promoter. Fish’s PTAB practice is well known as one of the most dynamic and sophisticated in the country, which has much to do with the leadership of Karl Renner, who has directed traffic in over 500 proceedings. PTAB Bar Association board member Thomas Rozylowicz and David Holt also excel on the post-grant front owing to their technical dexterity. Holt is an important contributor to the outfit’s prosecution success, which has been masterminded for years by John Hayden in his capacity as leader of the patent practice. Hayden’s innovative ideas around practice management and legal technology integration make everything run smoothly, which is vital given the vast scale of the firm’s global patenting efforts. Others recommended for prosecution include David Jordan, Phyllis Kristal and Nick Jepsen. Jordan is a top authority on software patents; Kristal has a mechanical engineering background and is a sought-after opinion giver; and Jepsen has a talent for growing clients’ portfolios and giving them commercial impetus.

Kirkland & Ellis LLP

Kirkland & Ellis takes a trial-focused approach in patent litigation by which its lawyers focus from the start of a case on building up themes and narratives that can be presented persuasively. This puts it in an advantageous position in settlement negotiations and the courtroom. The group’s enduring success pays testament to the efficacy of its approach as well as the quality and consistency of its top advocates, including Gregg LoCascio, Paul Brinkman, John O’Quinn, Edward Donovan and Christopher Mizzo in DC. They work well together and with colleagues firmwide to defend and enforce the rights of top companies in no uncertain terms. LoCascio and Brinkman are handling district court litigation for CertainTeed, which arose in accompaniment with an ITC complaint that was promptly withdrawn by the opposing party following Kirkland’s favourable claim construction order. The ITC is a forum they, and the wider group, know extremely well. Top appellate lawyer O’Quinn, meanwhile, linked up with California-based Adam Alper and Michael De Vries so that Sharp Electronics could emerge victorious from years of tough litigation against Wi-LAN, in a case relating to video display and streaming technologies; O’Quinn’s Federal Circuit expertise was instrumental in this win. Donovan and Mizzo, together with New York’s Greg Arovas, are representing Samsung in litigation involving technology used in QLED TVs against nanotechnology company Nanoco; Samsung filed multiple inter partes review petitions, all of which were instituted. One of the newer litigation partners in the group, Todd Baker is also one of Kirkland’s most experienced when it comes to PTAB proceedings.

Latham & Watkins LLP

Latham & Watkins has one of the most robust national patent litigation platforms and has some 20 or so representatives in the IAM Patent 1000, who come from offices in California, Illinois, New York, Massachusetts and DC. Many of those are based in the capital – including multiple American College of Trial Lawyers fellows – and help power the firm to a gold-tier ranking locally alongside just six other competitors. A former global IP group chair, Maximilian Grant continues to provide outstanding leadership – doing so is in his DNA. He gets the hardest jobs done in any court, including the ITC where he has an excellent reputation. So, too, Bert Reiser and Jamie Underwood, who have a nuanced knowledge of all aspects of Section 337 investigations. Michael Morin, Adam Perlman and David Frazier form the backbone of a redoubtable life sciences patent litigation group. Matthew Moore concentrates his efforts on high-technology cases and is a former software product development manager in industry who serves as global vice-chair of the group’s technology industry group. Tara Elliott and Lawrence Gotts have broad spheres of operation, Elliott as a commercial and patent litigator and Gotts as an all-round patent, trademark, trade secret and copyright trial lawyer.

Paul Hastings LLP

Paul Hastings is unanimously regarded as one of the nation’s leading post-grant firms; it is prolific at the PTAB and has clocked up crucial victories for many leading companies. The fulcrum around which this practice turns is global IP vice co-chair Naveen Modi, a preeminent expert who has been involved in well over 500 post-grant proceedings. His recent highlights are too numerous to describe in detail but include a clean sweep victory for Google in a series of inter partes reviews dealing with nine multimedia technology patents asserted by Virentem, every challenged claim of every patent being invalidated. With him on this, co-leader of the patent office practice Joseph Palys is also in his prime. Accomplishing equally great feats in federal district courts, the ITC and the Federal Circuit are Allan Soobert, Jeffrey Pade and Phillip Citroën, who form a strong litigation line-up in DC. Soobert and Pade linked up with Modi and Palys to mount an important defence for Samsung in a complex patent and trade secret case in which the defeat of opponent NuCurrent’s preliminary injunction was required to enable Samsung to pursue inter partes reviews. The result was the invalidation of all of the patents in suit, completely derailing the plaintiff’s litigation – a stark example of the efficacy of the ensemble’s teamwork and the potency of its blended skill set. Soobert and Citroën are defending Samsung in another high-stakes case implicating Samsung’s three-dimensional memory chips found in a wide-range of consumer goods. Paul Hastings is in a stronger position for ITC litigation than ever before, thanks to its recent addition of Kecia Reynolds, who joined from Pillsbury in December 2021. She has 20 years of ITC experience and is a former senior investigative attorney in the Office of Unfair Import Investigations.

Williams & Connolly LLP

For do-or-die patent litigations – or disputes of any kind – Williams & Connolly’s representation is as much a guarantee of a win as it is possible to get. Its lawyers demonstrate refined tactical expertise along with deep patent law and technical knowledge but, above all, possess the ability to persuade in the courtroom. Setting a fantastic example in all regards, practice co-chair David Berl is one of the best of the best in life sciences litigation. “David is beyond super smart and a thorough, practical lawyer who gives real-world advice – he tells it like it is, which is exactly what clients want. He puts together lean teams that work efficiently and cost effectively, drawing on a stable of top-quality lawyers at his firm.” Another source adds, “He is a high-level strategic and big-picture thinker who can explain the most complex subject matter in the most understandable and relatable way.” He recently won a trial and appellate victory on behalf of Teva Pharmaceuticals in an ANDA litigation concerning its flagship brand produce Bendeka, used to treat chronic lymphocytic leukaemia and non-Hodgkin lymphoma. Several other lawyers here consistently deliver emphatic pharmaceutical successes, including Dov Grossman, Bruce Genderson, Stanley Fisher and Jessamyn Berniker. Grossman has a medicinal chemistry background and capitalises on strong technical expertise; he has linked up with Berl in several recent cases, forming a dynamic team. Genderson and Fisher are representing Merck in a Hatch-Waxman case relating to its blockbuster sitagliptin products brought against more than a dozen ANDA filers; in this, they won a favourable PTAB final decision holding that Mylan had failed to prove the unpatentability of the challenged claims. Genderson puts the value of respect at the heart of his practice; he represents his clientele with the utmost rigour but is never discourteous to his opponents. As well as being a leading trial lawyer, Fisher is also a top FDA regulatory expert. Berniker recently handled an important licence dispute for Ionis Pharmaceuticals, involving a six-day arbitration that returned a victory for her client – one which dealt with the interpretation of a sublicence income provision, which is a hot topic in disputes of this kind. Another expert in patent and licensing cases, Thomas Selby crosses technical divides with agility and litigates life sciences and high-technology cases. He recently put the finishing touch on a federal district court win for Dropbox in a multi-year litigation against Synchronoss Technologies, with success at the Federal Circuit.

Akin Gump Strauss Hauer & Feld LLP

With its deep bench of IP trial lawyers, Akin Gump is fit for any complex, high-stakes patent infringement litigation. The group powers leaders in diverse industries to big wins in all forums, gaining an advantage from the freely given support of the firm’s appellate, international trade and other relevant practices. Ascending to the silver tier in the IAM Patent 1000 DC rankings, the outfit also gains extended coverage with the addition of Rachel Elsby and Brandon Rash to the rankings. Elsby has an immunology PhD and mines a rich seam of expertise in life sciences and medical technology disputes. She is an integral member of a potent cross-office team handling a consolidated patent infringement and trade secrets misappropriation case for Boston Scientific against Nevro Corp, a key competitor in the field of spinal cord stimulation. Also involved in this, high-technology litigator and well-rounded counsellor Rash is also handling related inter partes review proceedings for Boston Scientific, working alongside DC IP chair Cono Carrano, one of the group’s most technically adept lawyers and one of its best presenters. Akin Gump puts in regular and winning appearances at the ITC, with David Vondle often taking the lead; he has been engaged by 3M as a significant third party in an ITC investigation concerning dental and orthodontic scanners and software, in which Align has accused 3Shape of patent infringement. Andrew Holtman is one of the busiest Patent Trial and Appeal Board (PTAB) lawyers not just in the firm but in the country; he also stands out for his blended US and European patent knowledge. In the context of a Hatch-Waxman litigation against generic competitors, he recently won a Federal Circuit victory that enabled Janssen Pharmaceuticals to fend off an inter partes review challenge to a patent associated with a multi-billion-dollar schizophrenia treatment; the decision in this brought clarity to the issue of the appealability of PTAB decisions denying institution.

Arnold & Porter

Arnold & Porter has built up a reputation for providing bulletproof representation in the courtroom, particularly having reshaped the medical device industry through its trial wins but also through the significant impact its decisions have had on the high-technology world. The driving force behind its success is Matthew Wolf, a top-tier trial lawyer and dynamite presenter who recently added a Supreme Court win to his résumé; he prevailed there for long-time patron Hologic on the issue of assignor estoppel, the doctrine being upheld in a majority opinion. This arose in the context of Hologic’s dispute with Minerva Surgical, in which Wolf and his team have secured many other successes. Integral to this effort, Jennifer Sklenar also has outstanding leadership and advocacy skills. “Jennifer is detail oriented, pragmatic and an excellent communicator. She has a great sense around materiality and knows what issues are worth focusing on and the best strategies for them.” Arnold & Porter marries litigation potency with prosecution mastery, making it a top all-rounder in the practice. David Marsh is an eminent counsellor to the life sciences and medical device industries. “David is enthusiastically willing to get to know his clients’ technology and business strategy, allowing him to get patent claims that have real commercial value.” He dials in his advice perfectly for companies who are completely rethinking the pharmaceutical manufacturing process and innovating at the cutting edge of drug development. He leans into the litigation effort and is part of a coast-to-coast team representing Regeneron in defending against challenges to its patents for blockbuster drug EYELEA.

Gibson Dunn & Crutcher LLP

Gibson Dunn has a superb track record in patent and trade secret litigation spanning all major forums for such disputes. Its lawyers are known for their tenacity, experience, strategic approach and advocacy skill, all of which are demonstrated by Brian Buroker, who anchors the practice in DC.

Goodwin Procter LLP

Several factors make Goodwin Procter a high-flyer in US patent litigation, including a top-drawer ITC team and leading appellate capabilities. Its Section 337 investigations experts have represented not only top technology companies but also pharmaceutical industry leaders, who litigate before the Commission with less frequency. On the frontlines is Patrick McCarthy, who is dynamically engaged in Goodwin’s practice not just as an ITC leader but as an all-round litigator, who is named on many of the firm’s work highlights. His recent ITC work includes representing General Electric and Fujian Wanlong Superhard Material Techno in separate investigations; in district court litigation he has been handling an eight-patent case in the Western District of Texas for Renesas Electronics Corporation; at the PTAB he has been acting for Ledman Optoelectronic in three inter partes reviews. Brilliant at the Federal Circuit, William Jay is one of the nation’s best appellate advocates and strategists and leads the group’s Supreme Court and appellate practice. A new name in the DC rankings, though not new to the IAM Patent 1000, Calvin Wingfield recently relocated from New York to the capital, deepening the local bench. He is an integral member of cross-office trial teams representing top life sciences companies such as Novartis and technology leaders including Facebook.

McDermott Will & Emery

Well-roundedness, internationality and commerciality are some of the traits associated with McDermott Will & Emery when it comes to patent practice; the firm has dedicated counsellors sitting alongside litigators, takes a collaborative approach across its US and European offices, and provides pragmatic, business-focused advice. In DC, McDermott maintains a well-balanced non-contentious and contentious practice, Michael Fogarty and Takashi Saito being recommended for prosecution and Thomas Steindler and Jay Reiziss being endorsed for litigation. Fogarty and Saito serve as patent prosecution to Taiwan Semiconductor Manufacturing Company, which is one of the world’s top 10 filers; in this, they have shown themselves to be outstanding original patent draftsmen. Panasonic is another key patron with which they have a close relationship; they manage approximately 400 patent assets a year, adapting Japanese filings for the United States and providing strategic advice. Steindler heads the local IP litigation group and is one of the firm’s leading pharmaceutical litigators. One of his longstanding clients is Bausch Health US, which he has recently been representing in a Hatch-Waxman litigation against Mylan, which filed an abbreviated new drug application (ANDA) seeking FDA approval to market its generic version of Bausch’s Jublia product; prior to its settlement, the dispute brought out a landmark ruling at the Federal Circuit regarding venue options in Hatch-Waxman cases. Reiziss is a headline act at the ITC, where he worked for over a decade in several roles. He understands every nuance of Section 337 investigations and is a real difference maker for parties such as Traeger Pellet Grills, which he is representing in an ITC complaint against GMG Products, alleging infringement of Traeger’s cloud-connected grill technology; previously, the McDermott team achieved a number of PTAB victories (appeals of which were later voluntarily dismissed by GMG) relating to the same patents.

Paul, Weiss, Rifkind, Wharton & Garrison LLP

Regularly writing legal headlines for all the right reasons, Paul Weiss is an indomitable trial firm with a hard-hitting patent litigation group. A critical unique selling point is its chart-topping post-grant practice, leading from the front on which is Steven Baughman. Supreme at the PTAB, Baughman has a flawless record in final written decisions on behalf of patent owners in proceedings linked to district court cases verdicts and market valuations totalling over $1 billion. He frequently joins forces with New York’s Nick Groombridge, another best-of-the-best lawyer; both are heavily engaged counselling Amgen in various patent litigations concerning competitor applications to market biosimilars under the Biologics Price Competition and Innovation Act. Few outfits, if any, are better than Paul Weiss at both navigating complex biotechnology disputes and understanding the interplay between post-grant proceedings and litigation. Baughman also works with firmwide litigation co-chair Kenneth Gallo down the hall in DC. They have been representing SAP in two related and multi-layered actions brought by business analytics provider Teradata, alleging trade secret misappropriation, patent infringement and antitrust violations. New to the listings this year, counsel Megan Raymond is building her reputation for post-grant and all-round litigation excellence on both the life sciences and high-technology sides of the practice. She’s well placed for many-sided disputes playing out in multiple forums and, with Baughman and Groombridge, has been representing digital literacy software solutions company Achieve3000 in a high-stakes patent infringement, trade secret misappropriation and breach of contract district court and PTAB litigation against Beable Education.

Perkins Coie LLP

Already one of the top performing firms in patent practice, Perkins Coie has orchestrated impressive growth recently, particularly on the East Coast. Two prominent hires in DC are Lori Gordon and Ngai Zhang, who joined in June and July 2021, respectively. Gordon has a sparkling track record in USPTO litigation and deepens the group’s bench of PTAB experts. She takes up a place alongside Nathan Kelley, who previously served as the chief administrative patent judge at the PTAB. Zhang strengthens the prosecution and counselling offering and cements Perkins Coie’s position atop the preferred vendor leaderboard for many large corporates. “Ngai displays an extraordinary commitment to understanding his clients’ goals and delivers an exceptional service. He can take on in-house functions that clients need to offload and is proactive in identifying ways to improve and tailor processes.” Perkins Coie has a lot of momentum, which is reflected in the IAM Patent 1000 DC rankings, with the firm ascending to the silver tier in litigation. A sparkplug of the local group is Shannon Bloodworth, a linchpin of a potent pharmaceutical patent litigation practice. She and fellow life sciences ace Brandon White garner vocal praise from the market: “Shannon is undoubtedly one of the best pharma lawyers in the country and has an incredible amount of experience. She can be counted on to provide high-quality and well-reasoned advice, and is respected by senior executives who seek out her input. She has put a brilliant team around her – the bench strength at her firm is phenomenal.” “Brandon is extremely hard working and dependable and, as someone who treats all others with respect, is a delight to partner with. He’s an exceptional writer – when he takes the lead on a brief, you know it will come back in the best of shape. He does a great job in complex inter partes review proceedings, particularly in terms of his oral advocacy skills.” Dan Bagatell chairs the Federal Circuit patent appeals practice and is a fellow of the American Academy of Appellate Lawyers.

Rothwell, Figg, Ernst & Manbeck, PC

Rothwell Figg is hardly matched in its ability to litigate patent infringement cases marked by technical density, deep complexity in points of law and commercial consequentiality. Thriving on such matters, Steven Lieberman, Sharon Davis, Robert Parker, Martin Zoltick, Joseph Hynds and Anthony Figg are just some of the headline acts in a deep and dynamic cast of litigators. Lieberman and Davis form a devastatingly effective pairing and recently secured a complete victory for TripAdvisor in litigation against Mimzi, which alleged infringement of a patent describing methods and systems for the provision of location-dependent, social media-informed information upon making a spoken request to a mobile device. As it was in this case, many of their wins come after razor-sharp advocacy in PTAB proceedings. Parker and Zoltick, meanwhile, have put on a strong showing for Nichia Corporation in multiple disputes against its top competitors, licensees and leading companies using LEDs in their products; after one district court effort, Parker was invited by the judge who presided over the trial to teach a law school course on litigation management, which he continues to teach. Their work for Nichia has involved major arbitrations and counselling with respect to the company’s worldwide business interests, giving them ample opportunity to showcase their impressive range as patent professionals. “Robert comes up with practical solutions that reflect an excellent understanding of his clients’ businesses and products. He coordinates his team extremely well and is a friendly, accessible lawyer who is easy to work with.” Zoltick earns praise from a patron for his “clever argumentation and tough lines of questioning”, and for the quality of his all-round performance in litigation, inter partes reviews and licensing negotiations. Hynds and Figg are at the forefront of a vigorous life sciences practice and frequently collaborate. One of their keys to litigation success is a deep understanding of the entire patenting process; together they manage the patent portfolio of Coherus BioSciences, covering biosimilar pharmaceuticals and methods which, under their supervision, has grown to over 130 granted patents – with dozens of applications pending; Hynds has also achieved expeditious wins in post-grant proceedings for the company. An integral member of the Coherus team, biochemistry PhD Aydin Harston continues to burnish his reputation. “Aydin’s advice is always based on careful attention to the technologies and commercial needs of those he represents. He’s a skilful adviser who knows how to get patents granted quickly around the world, and a trusted partner who offers thoughtful guidance on negotiations with third parties. He’s experienced, creative, highly motived and genuinely cares about the success of his clients.” One source comments, “His leadership will be the catalyst to our idea becoming a huge global success.” Former chemist Danny Huntington is another wellspring of life sciences industry knowledge and is working with Harston to grow the portfolio of Editas Medicine, a leading gene editing company focused on developing CRISPR medicines. According to commentators, “Danny is awesome and conveys complex legal and technical matters to company boards, project teams and judges in a way that is reassuring and inspiring.” Focusing on high-technology matters, Brian Rosenbloom is another portfolio development ace, though he is significantly involved in the group’s litigation activities, too, the TripAdvisor case being one example. Alongside Zoltick, he drafts, files and prosecutes patent applications related to 5G wireless telecommunications on behalf of Ericsson.

Sidley Austin LLP

Sidley Austin is a popular pick for high-stakes patent litigation and has impressive, experienced and tenacious advocates stationed in key cities around the country, virtually all of whom bring deep trial experience to the table. The firm receives expanded coverage in the DC chapter of the IAM Patent 1000 this year, thanks to the addition of Joseph Micallef to the listings. He is one of the best there is in terms of working up a compelling case, but he also does not fall short when time comes to stand up and present. Noteworthy, too, is his proficiency in post-grant proceedings, of which he has handled nearly 200. He has recently been representing SK Hynix in ITC actions with companion district court cases against Netlist, which is seeking to exclude billions of dollars in memory modules from the United States; in the ITC cases, he and the Sidley team secured a decision finding no infringement, while in the PTAB they obtained final written decisions finding all asserted claims invalid. Integral to the life sciences as well as technology practices, Jeffrey Kushan is another partner who can be relied on when the chips are down. He was a vital team member of a cross-office group of high-powered lawyers who successfully represented Amgen against Sandoz in a matter involving Amgen’s blockbuster rheumatoid arthritis drug Enbrel; the case represents the first time a biologics maker has fully succeeded in blocking a biosimilar under the Biologics Price Competition and Innovation Act through the courts. No review of the outfit would be complete without mention of Carter Phillips, who is arguably one of the top Supreme Court and appellate lawyers in the country.

Sterne, Kessler, Goldstein & Fox PLLC

Established as a prosecution-focused boutique some 40 years ago, Sterne Kessler has exceptionally strong foundational patent skills. Most of its professionals have advanced scientific and technical training and all its attorneys are USPTO registered (or registration eligible); many have served as examiners, too. This puts it in pole position for global patent prosecution, which it has retained a strong focus on even as it has grown to leadership positions in the post-grant proceedings and litigation domains. Brilliant in the role of prosecution chair, Carla Ji-Eun Kim excels as a portfolio manager on behalf of biotechnology companies. Sterne Kessler mines a rich seam of life sciences expertise that is supplied abundantly by others, including Eldora Ellison, Jorge Goldstein, Deborah Sterling and Eric Steffe. One of the nation’s brightest stars in the post-grant arena, Ellison is known for her elevated strategic thinking, as are Goldstein and Steffe; together they have been putting in serious work for the Regents of the University of California in the course of which they have grown the University of California, the University of Vienna and Emmanuelle Charpentier’s (CVC) portfolio of issued US CRISPR patents from zero to more than 30 and undertaken extensive engagements at the PTAB. A veteran of many post-grant proceedings, Sterling has been performing optimally for Roivant, for which she has developed new exclusivity strategies covering several clinical stage assets, some of which have now moved through approval. Masters of the electrical arts, managing director Michael Ray, foreign filings chair Donald Featherstone, top all-rounder Robert Sokohl and Michael Lee are key contacts for high-technology innovators. Sokohl is a go-to for Taiwan Semiconductor Manufacturing, which he supports on prosecution and advises on strategy. Lee makes a huge impact for companies such as Roku and has overseen the filing of 173 patents and the issuance of 122 patents – in the crowded streaming field – since 2019, showcasing a knack for overcoming prior art and Section 101 challenges. Like many of those already named, he is highly proficient in a post-grant context. Underscoring just how strong the AIA proceedings practice is at the group, Robert Greene Sterne and Richard Coller have also been achieving great things at the PTAB. Co-chair of the patent office litigation practice, Sterne is a visionary lawyer and one of the most influential IP firm founders in the country. Coller’s blend of prosecution and litigation skills suits him to inter partes reviews; he recently took the lead in delivering six denials of institution for medical equipment and physiotherapy pioneer BTL, which was crucial in the context of an ITC and district court litigation spearheaded by John Christopher Rozendaal; Sterne Kessler is scarcely rivalled in its ability to combine strong PTAB defences and litigation offensives to bring about positive outcomes for its clients. Trial lawyer Rozendaal is one of the top names on the litigation fight card and recently executed a significant win for Teva Pharmaceuticals in obtaining a rare summary judgment of invalidity based on indefiniteness on the sole patent protecting Tirosint, used to treat thyroid hormone deficiency. With him on this and the BTL matter, astrophysics PhD Michael Joffre is another top litigator, as well as Federal Circuit lawyer. He co-chairs the appellate practice with Jon Wright, who is managing appeals for Roku in its ongoing effort to preserve PTAB wins, following the strategic filing of 15 inter partes review petitions by Lee. Taking the reins of the Section 337 practice, Daniel Yonan has been enormously successful in building out the team’s ITC capabilities. His work on behalf of Wirtgen in litigation against Caterpillar is worth close inspection as it encompasses 11 inter partes reviews and multiple appeals arising from ITC investigations, PTAB actions and customs proceedings. On hand for pharmaceutical cases, Dennies Varughese has some swagger to him but is not brash; he is respected by his opponents and by fact finders. Coverage of the firm would not be complete without attention being paid to a market-leading design patent practice chaired by Tracy-Gene Durkin, who has supported Apple for many years with respect to global design protection. She has many other high-profile followers including PepsiCo and Oakley, who have come to rely on her as one of the best design lawyers in the world.

Venable LLP

The team at Venable understands the business criticality of patents and maintains a strong focus on commercial objectives, whether preparing patent applications, litigating high-stakes infringement disputes or sewing up technology and IP-driven deals – all things it does with a great deal of sophistication. Anchors of the prosecution practice include Brian Klock, Michele Van Patten Frank and Henry Daley, all of whom engage in highly strategic patent procurement activities. Klock is the go-to for Canon, a company which Fitzpatrick Cella, which merged into Venable in 2018, has supported for more than four decades as primary outside patent counsel, during which time the company has consistently placed in the top five companies for which US patents have been issued. Frank fulfils a similarly integral role for Viveve, to the extent to which she handles complex enforcement and litigation issues. Frank co-chairs the prosecution group with Klock and helms the life sciences and medical device practice. Daley has an extremely broad sphere of operations and manages portfolios of patents protecting all manner of innovations; in this and in his monetisation and enforcement practice he excels at IP value creation, which is why top universities place their faith in him. Spearheading the litigation practice, Frank Cimino and Megan Woodworth give patrons a strong one-two punch. Coming in for special praise, “Frank and his team offer a wonderful balance of attention to detail, strategic creativity and cost-effectiveness”, they are cited by a client for winning a difficult case that a previous firm had struggled with. They recently represented Verizon Wireless in two Eastern District of Texas cases filed by Uniloc; in one they negotiated the dismissal of all four patents in suit (the dismissal of three of those coming after success at the PTAB). Nora Garrote and William Russell represent Venable on the IAM Patent 1000 transactions table. Garrote, who plays a lead role on the diversity and inclusion front, brings a rich blend of business, IP and technology expertise to the table, enabling her to get all kinds of deals across the finish line in satisfying fashion. Co-leader of the technology, media and commercial group, Russell has abundant experience in the software space.

Wilmer Cutler Pickering Hale and Dorr LLP

WilmerHale’s DC lawyers draw glowing recommendations from their clients: “David Cavanaugh provides a complete patent service and sophisticated and high-impact support on overall IP strategy. He’s one of the best advisers on the market if you’re looking to use IP as a barrier to entry for your competition. David is conscious of cost, to the extent that he recommends moving low-value work way from Wilmer, while retaining the firm for strategic matters. Working with him is never less than an exceptional experience.” He chairs the post-grant proceedings group which has handled 560-plus inter partes reviews with a market-leading 96% institution rate. “Amy Kreiger Wigmore is a seasoned litigator who is incredibly well prepared and thoughtful about how her approach to a case may impact future strategy. She is also an excellent trial attorney who is completely unflappable in the courtroom.” Together with Boston’s Bill Lee, she obtained a complete victory for Bristol-Myers Squibb Co and Pfizer when the Federal Circuit affirmed a district court decision holding that the patents that cover the drug Eliquis are valid and infringed by all generics challenging them; this case started out as one of the largest Hatch-Waxman litigations ever filed. “A great fit for significant patent litigation and post-grant proceedings, Greg Lantier is incredibly smart, level-headed, responsive and strategic, and embodies all the attributes of a great lawyer. He has a fantastic team around him, which he draws on very effectively.” They are integral members of an almighty litigation group that has tried 36 patent cases to verdict since 2015 and argued more than 100 cases at the Federal Circuit, many of them presented in compelling fashion by Seth Waxman, one of the nation’s foremost appellate advocates.

Winston & Strawn LLP

Already one of the undisputed leaders of the patent litigation scene, Winston & Strawn is only getting stronger: in January 2022 it announced the hire of former Weil partner Brian Ferguson, who brings decades of experience representing top companies in commercially consequential IP litigations. He takes his place among several other heavyweights in DC, including Charles Klein, Jovial Wong and Thomas Jarvis. The recipients of effusive praise, “Accessible, responsive and great to work with, Chuck and Jovial are first-class lawyers technically and strategically, with an enormous depth of experience. They pitch their advice perfectly according to the requirements of any given task and are commercially savvy.” They are in their element handling top-dollar pharmaceutical and biotechnology cases, and make Winston & Strawn a centre of gravity for the life sciences industry. In one recent matter overseen by Klein, the company on the losing side of the dispute saw its stock fall 70% in after-hours trading upon news of the decision; the case in question saw Amarin Pharma fail in an action against Winston client Hikma Pharmaceuticals. Jarvis chairs the ITC practice and is a veteran of over 60 Section 337 investigations; not only a top trial lawyer, Jarvis is also an essential port of call for strategic ITC insight.

Adduci, Mastriani & Schaumberg, LLP

AMS is an undisputed leader in Section 337 investigations at the International Trade Commission (ITC); through constant engagement in many of the most important disputes being litigated there, it has cultivated incredibly deep forum-specific expertise and infinite knowledge on broader trade enforcement and international trade policy. Any of the name partners are good entry points for those interested in the support of this top boutique.

Allen & Overy LLP

Allen & Overy has significantly deepened its US IP bench lately with the hire of an eight-partner technology group from White & Case, which also came with the 13 senior counsel and associates. The firm now has over 100 IP specialists across the United States, Europe and Asia-Pacific, putting it in pole position to handle local as well as cross-border matters. Among the new arrivals are David Tennant and Shamita Etienne-Cummings, who anchor the practice in DC. Tennant is multitalented; making full use of his deep technical knowledge, he procures valuable patents for his clients, then applies mature advocacy skills to protect them through complex district court, ITC and PTAB litigations. Another adept litigator, Etienne-Cummings plays the role of trusted adviser to perfection; innovators are keen to tap her cultivated technical, legal and business expertise. On the work front, Tennant has been defending Marvell Semiconductor in a District of Delaware patent infringement case and handled inter partes reviews arising in the context of litigation between client Carl Zeiss Meditec and Topcon Medical Systems; in the latter example he worked with Bijal Vakil, a frequent collaborator and A&O’s global technology sector co-head, who won a trade secret injunction in a rare outcome for a Northern District of California case. Etienne- Cummings has abundant ITC experience and recently represented Lenovo and intervening party Google against Nokia in a Section 337 investigation, winning on summary judgment. In February 2022 Allen & Overy also recruited William James from Goodwin Procter, bringing on board a life sciences patent litigator who is in his prime.

Baker Botts LLP

Baker Botts has sophisticated IP teams in Texas, New York, California and DC, and strength in depth in all areas of patent practice. Large corporate patrons gain much in the way of efficiency savings when enlisting the group, in addition to high-quality legal and business support. Brother Industries, for example, instructs DC-based Luke Pedersen on prosecution, litigation and opinions of counsel, and gets nothing less than his full commitment to their cause, along with the benefit of wisdom distilled from many years of diverse engagement in the technology world. In much the same way, Sumitomo Electric Industries draws on veteran counsellor Michael Sartori, who has distinguished himself in a crowded field with his analytical and data-driven approach to prosecution and portfolio management. The local IP department is led by Lisa Kattan, who also chairs the firm’s ITC practice. She recently obtained a favourable final determination and exclusion order in a hard-fought patent infringement dispute between client CMC Materials and DuPont de Nemours.

BakerHostetler

Several of BakerHostetler’s DC lawyers garner excellent feedback, which attests to the quality and momentum of the local group and highlights the strength of its contribution to the firm’s excellent national IP practice. A leading light in the capital is William Bergmann, a respected trial and appellate attorney and strategic counsellor. References highlight his authoritative knowledge of and deep experience in the Court of Federal Claims, but paint a picture of him more broadly as “technically and legally excellent as well as commercially intelligent”. He took over a case from another outfit on behalf of Klas, which manufactures the military-use mobile data centres that were the subject of a claim made by Arnouse Digital Devices against the US government. The ITC is another familiar specialised forum for the group and especially Cy Walker and Robert Hails, who recently secured a Federal Circuit affirmance of an ITC win for Jubilant Life Sciences in a complaint filed by Bracco seeking to exclude Jubilant’s RUBY rubidium infusion systems from the United States for patent infringement; in its final determination, the ITC found all asserted claims of three patents invalid. Walker and Hails are both seasoned advocates with polished presentation skills. On the prosecution and counselling side, the key names to know are Kenneth Sheehan, Hussein Akhavannik and Tayan Patel: “Kenneth has outstanding technical expertise along with business acumen and sets extremely high standards in his work. He is highly creative and practical in his solutions; he puts his clients’ needs first and delivers quickly.” He provides a broad range of patent services to long-term client SPX Flow, a global supplier of specialised engineered solutions to the food and beverage, power and energy industrial markets. “Hussein does an excellent job of securing patent protection that aligns with his clients’ business objectives and has a sophisticated understanding of pharmaceutical innovation.” He co-leads the life sciences team. Foreign sources call Patel “the go-to attorney for US patent filings”, citing his “prompt service and excellent advice”. He has a rich mix of prosecution, transactions, counselling and litigation experience and is a former USPTO examiner, all of which gives him a deep strategic playbook to draw on.

Banner Witcoff

Banner Witcoff has several compelling unique selling points; it takes an enforcement-minded approach to patent drafting; demonstrates a high rate of success in post-grant proceedings; has deep litigation experience and landmark wins to its name; and runs a market-leading designs patent practice. At the forefront of the latter are Robert Katz and Darrell Mottley, who take care of the entire design patent portfolio of Microsoft (Katz as the lead partner); they have procured close to 4,000 design patents for the company since the turn of the millennium; Spectrum Brands is another client for which they take on extensive work. Exceptional at utility patent procurement, Ross Dannenberg takes the lead in representing Citrix Systems and Wargaming.net; he has also built up the portfolio of UK tech start-up Improbable, which is valued at over $1 billion. He is one of the best there is for anything software or video game related. At the forefront of innovation in fintech, former USPTO examiner Scott Kelly is doing fantastic work for Capital One, implementing a programme that has enabled it to become one of the industry’s leaders – if not outright leader – in patents. Adding to those undertaking high-impact work for blue-chip companies, Fred Meeker and John Hutchins represent long-time patron Comcast in contested matters at the USPTO and in district court and ITC litigation; they have been enormously successful in several series of inter partes reviews against Rovi. Both experienced lead counsel, Meeker and Hutchins make great things happen independently and when they come together. The firm recently announced an important addition to its DC roster, bringing on board Laura Brutman from Schiff Hardin in March 2022. Brutman is a former electrical engineer and patent examiner with vast prosecution experience.

Blank Rome LLP

Blank Rome has all the bases covered for patent owners and can take an idea and turn it into an issued patent and then monetise and enforce it. In all endeavours its lawyers remain in sync with their clientele on a technical and business level. This is especially true of counsellor Stephen Soffen, who cultivates a fine-grained knowledge of the companies he represents by engaging in all their patent issues, strategic, commercial and contentious. He focuses his practice on high-technology and medical device matters. A litigator with ample prosecution and counselling experience, Dipu Doshi works in similar fashion. Recently making the move from BakerHostetler, Hussein Akhavannik “does an excellent job of securing patent protection that aligns with his clients’ business objectives and has a sophisticated understanding of pharmaceutical innovation.”

Buchanan Ingersoll & Rooney PC

Buchanan IP provides valuable guidance on all aspects of IP procurement, development, monetisation and enforcement, and is a discerning choice of one-stop shop for patent services. Unwavering in its dedication to patent quality, it has 6,700-plus patent applications in active prosecution and will see a very high proportion of them to successful issuance, such is the skill of its USPTO-registered attorneys, many of whom are former examiners. One of those is Charles Wieland, who, along with electrical group co-chair Shawn Cage undertakes extensive US and international patent portfolio assignments for Mastercard Worldwide. Both practitioners are masterful at navigating competitive landscapes and minimising commercial risk for their clientele. Another prestigious client is shared between Cage and Patrick Keane, who are working diligently to protect key innovations in the AI and machine learning space, while designing strategies enabling the company to commercially leverage its portfolio. Keane excels at the latter task, being a thoroughly internationally and business-minded practitioner and well-rounded litigation, post-grant and licensing expert; he is also an acknowledged thought and practice leader in and outside of his firm. Another leader in the ensemble is William Rowland, who sits on the board of directors, co-chairs the IP division and prosecution group, and leads the mechanical side. Buchanan IP has assembled an excellent cast of contentious IP experts, including Todd Walters, Matthew Fedowitz and Lloyd Smith: Walters is the fulcrum around which a top-performing PTAB practice turns, who has contributed greatly in the way of wins for his patrons and knowledge sharing in the wider post-grant practice scene. His recent successes include having all five of long-time client 3Shape’s challenges to competitor Align’s patents instituted for review. Also active at the PTAB, Fedowitz is one of the top life sciences experts on deck; he has a well-developed toolkit for achieving his clients’ aims, being highly experienced in prosecution, litigation and post-issuance matters. He and Smith collaborate frequently in the context of pharmaceutical litigation – and to great effect. Smith chairs the litigation team and is a seasoned advocate with specialised knowledge regarding the US District Court for the Eastern District of Virginia.

Cooley LLP

Well-roundedness is one of the defining features of Cooley’s global patent group, which represents over 1,000 patrons in a strategic counselling and prosecution role, has led on 1,000-plus investor and company-side patent due diligence reviews, and which litigates extensively in the United States and the United Kingdom. Its experts in the DC metro area reflect the wider group’s broad horizons and collectively cover all the bases: Scott Talbot is one of the most sophisticated counsellors on deck and takes on high-level patent procurement, licensing and enforcement assignments in the medical technology industry that he knows so well. DC partner-in-charge Michael Tuscan is integral to Cooley’s top-tier life sciences practice and excels as a biotechnology strategist. Another industry expert, Sanya Sukduang affords pharmaceutical litigants decisive representation in Hatch-Waxman cases as well as broader advisory support. Erik Milch tries cases involving a wide range of technologies, his success stemming, in part, from involvement in other facets of practice (prosecution, portfolio management and licensing), and the cultivation of thorough patent knowledge as a result. Stephen Smith provides strong leadership to Cooley’s national IP litigation practice and is one of the most seasoned trial lawyers in the fold – one with ample ITC as well as PTAB experience. He recently delivered a complete victory for a video game client in a hotly contested case; his excellent performance at the PTAB limited his client’s exposure at trial on a surviving patent; he then convinced the district court to overturn an adverse trial result in a decision that he had affirmed at the Federal Circuit. Adam Ruttenberg specialises in technology transactions.

Dentons

In patent practice, Dentons has more than 100 lawyers and advisers in 19 offices from coast to coast, giving it one of the strongest national platforms of any firm; its offering is also uniquely global in scope, as it has more than 600 IP and technology lawyers worldwide. The group maintains its core patent skills in prime health and works closely with inventors and the C-suite to optimise patent procurement and ensure maximum rights protection. A co-practice leader of the US IP and technology group, Eric Sophir is among the outfit’s leading portfolio managers and developers and a lawyer with a keen eye for patent quality. Song Jung and Mark Kresloff have an exceptionally strong relationship with LG spanning its electronics, display, chemical and energy solutions businesses, and manage some 8,000 US patent matters on its behalf. Jung is the founding chair of the global IP and technology group, to which he continues to provide superb leadership. A coal-and-ice partner to his clients, he stands out for his exceptional versatility as a prosecutor, litigator, deal-broker and high-level strategist. Kresloff is distinguished by his international experience; he has lived and worked overseas, including in Seoul working alongside LG Electronics’ in-house patent team, and has prosecuted applications to successful grant in many territories. He manages the worldwide portfolio of Solidia, a pioneering innovator in the field of sustainable cement and concrete production, which recently replaced 20 firms globally with Dentons. A leader on the post-grant side Scott Cummings, who makes his debut in the IAM Patent 1000. He has recently handled important inter partes reviews on behalf of Synchronoss Technologies in the context of litigation against Dropbox, leading on which is Mark Hogge, a hard-hitting veteran patent litigator with extensive appellate experience.

Fisch Sigler LLP

Trial boutique Fisch Sigler demonstrates a mastery of all facets of patent litigation; whether trying cases before a jury, handling appeals at the Federal Circuit, litigating in fast-paced ITC actions, presenting in front of technically trained judges at the PTAB or negotiating settlements, the team here delivers crisp results. Founding partner Alan Fisch is a huge difference maker for his clients because he knows how to win and overcome any obstacle. He has always practised at the leading edge of modern IP development.

Hunton Andrews Kurth LLP

Newly added to the DC firm rankings this year, Hunton Andrews Kurth maintains a well-rounded patent practice locally and now has representatives on each of the prosecution, litigation and transactions tables. Focused on patent procurement in the electro-mechanical space, Daniel Shanley is the go-to for numerous household name companies including NICHIA Corporation and Toyota, for which he dispenses invaluable strategic advice around portfolio management and licensing. Tyler Maddry is a specialised IP and technology transactions lawyer with polished negotiation skills. He co-leads the IP group with Michael Oakes, a savvy litigator proficient at handling diverse technologies, who calms nerves when infringement issues loom.

Jenner & Block LLP

Chicago-based Jenner & Block has made some serious moves in the DC market recently, bringing on board seasoned attorneys Mark Davis, Ronald Pabis and Alexander Hadjis. These three lawyers know the ITC intimately, and immediately put Jenner & Block in the frame for the most significant Section 337 investigations, while also increasing the firepower available for federal district court litigation. A notable highlight was delivered by Hadjis, who won a complete jury trial defence verdict in the Western District of Texas before Judge Alan Albright; the suit implicated every Roku product on the market and was therefore of critical importance to the company; confident and persuasive storytelling and creative strategising were key to this victory.

King & Spalding LLP

King & Spalding delivers crisp results in patent litigation, courtesy of experienced first-chair trial lawyers with a fine-grained understanding of the technology industry and deep experience cutting across all major disputes forums in the United States. The courtroom is a home away from home for Stephen Baskin, who provides strong leadership to the IP group. He has recently been in action at the ITC, which he knows well, on behalf of Amtech Systems in a six-patent complaint involving RFID readers and transponders. Between them, he and Chris Campbell bring more than 50 years of experience to the table. Campbell has litigated myriad patent and trade secret cases and has applied his advocacy skills to great effect in licensing negotiations.

Mayer Brown

Mayer Brown’s patent litigators take on and win difficult cases, demonstrating technical agility, keen strategic instincts, high-level advocacy skill and an even temperament. One of its top draws is head of the Section 337 practice Jamie Beaber, who garners vocal praise: “Jamie has rich experience before the ITC and is a trusted adviser. He is hands on and deeply involved in his cases, which gives great comfort, but he also sees the big picture as well. He impresses with his unique business savvy; he gets to know his clientele and delivers legal solutions that get business results. He has outstanding interpersonal and communication skills, and is excellent at building strong teams that can maximise opportunities and confront challenges as they arise.” He is representing Maxell in patent litigation against Hisense alongside IP luminary Alan Grimaldi. Fellow DC partner Gary Hnath is another ITC expert and one with insider knowledge and a vast amount of experience. He has achieved great things for Chinese companies there and was lead counsel to the first Chinese company to win a Section 337 case involving an ITC trial. He recently won a complete victory at US Customs and Border Protection in one of the first inter partes ruling requests at the agency; through briefing and oral argument opposed by the patent owner, Hnath’s team convinced the agency to rule that client Jennewein Biotechnologie’s redesigned human milk oligosaccharide infant formula ingredient was non-infringing and could be imported.

Morgan, Lewis & Bockius LLP

For companies who enlist Morgan Lewis’s patent group it is a best-of-both-worlds scenario – they get the prosecution expertise and specialisation associated with a boutique and the litigation heft typical of those top business outfits that take intellectual property seriously. In DC fixtures Robert Smyth and Hosang Lee, Morgan Lewis has eminent patent strategists at the disposal of cutting-edge innovators in the life sciences and high-technology domains, extending the firm’s range even further. Pharmacology PhD Smyth directs biotechnology, pharmaceutical and chemical patent prosecution with perfect exactitude, while advising extensively on post-issuance proceedings in the United States and multiple other territories. Lee has a similarly broad compass and adds tremendous value for his clients. He is extremely well connected among Korean companies. Eric Namrow spearheads a highly successful ITC practice that represents claimants and respondents with efficiency and confidence born of many trial wins. He recently aggressively defended General Electric in three ITC actions against Lighting Science Group, working hard and fast on highly expedited schedules and bringing about the voluntary withdrawal by LSG of two of the cases; in the third, the administrative law judge ruled in GE’s favour on multiple grounds, finding that the asserted patents were invalid, not infringed and that LSG failed to prove it had sufficient domestic industry.

Morrison & Foerster LLP

Morrison & Foerster has all the bases covered for innovative companies and maintains flourishing national patent filing, litigation and transactions practices. Its versatility and range are well represented by the team in DC, which includes head of prosecution on the East Coast Jonathan Bockman, global IP litigation co-chair Mark Whitaker and veteran ITC specialist Brian Busey. The recipient of enthusiastic praise, “Jon has a commanding knowledge of all the nuances of patent prosecution and related practices both in the US and globally. He provides honest, practical, actionable advice that takes legal requirements and business realities into account. He’s super easy to work with, too.” His recent highlights cannot be disclosed, but include extensive international strategic advisory work for blue-chip medical technology, professional services, life sciences and agritech companies. In complex litigation, Whitaker is a master at thinking ahead and demonstrates superb tactical judgement from the moment a case is filed. He is representing Teradata Corporation in a major patent infringement, trade secret misappropriation and antitrust litigation against SAP, encompassing numerous courts and jurisdictions. This substantial matter, which goes to the heart of Teradata’s business, has required the input of many lawyers from the firm, which Whitaker has coordinated flawlessly; he is an inspiring leader who knows how to get the best out of his team. A notable ITC result for which he teamed up with Busey was a complete win for Renesas Electronics Corporation, which was found not to have violated Section 337 with respect to all four patents asserted in the matter by Broadcom.

Oblon

Right on the doorstep of the USPTO in Alexandria, Virginia, Oblon is one of the top outfits in the country when it comes to obtaining patent registrations. It has represented many high-volume filers for decades and, for example, has served as one of Toyota’s most trusted IP firms for nearly 50 years; in the past 15 years it has handled all prosecution for the company’s US entities. Well equipped in terms of electrical, mechanical and chemical expertise, the team easily gets to grips with all kinds of technologies and supports clients from diverse industry backgrounds. The chemical group is particularly well represented in the IAM Patent 1000, with two PhD lawyers – practice co-head Daniel Pereira and former examiner Marina Miller making the cut. Managing partner and physics PhD Philippe Signore carries the flag for the electrical and mechanical prosecution team, though is also a key contributor on the strategic counselling and litigation fronts. He recently represented Biomune Company in connection with the favourable settlement of a high-profile district court litigation brought against Clear H20, working alongside Tia Fenton. She provides dynamic leadership to the litigation group with fellow co-chair Eric Schweibenz, one of the go-to’s for Toyota, and Oblon’s top ITC litigator. He manages the firm’s ITC blog (one of the best of its kind) and is up to speed on all goings on at the commission.

Pillsbury Winthrop Shaw Pittman LLP

Pillsbury’s IP litigation team is a high-powered one that has litigated over 500 IP cases in 77 of the 94 district courts in the past decade with a win rate that inspires great confidence. Top billing goes to William Atkins, a veteran who, in his 25 years as a Pillsbury lawyer, has led many trial teams to victory. He has written treatises on PTAB practice and patent litigation strategies. Clients’ feelings of security are heightened by the outfit’s command of post-grant proceedings; another authority in this regard, Pat Doody frequently takes the reins when there are complex life sciences and medical technology battles to be fought at the PTAB and in court. Keeto Sabharwal also litigates extensively under the Hatch-Waxman Act, increasing the firepower available to pharmaceutical companies. Not just a patent litigation firm, Pillsbury is a sophisticated handler of prosecution briefs; in the past 12 or so months it has obtained more than 850 US patents and 560-plus foreign patents. Multinational Swiss bank UBS continues to outsource its entire IP function to the firm. Taking the lead on this, Jack Barufka is one of the best A-to-Z patent lawyers in the country and a first-class counsellor.

Steptoe & Johnson LLP

Steptoe & Johnson thrives in the cut and thrust of ITC patent litigation as its outstanding Section 337 investigations record attests. John Caracappa has handled more than 75 such cases, scoring excellent results which he then backs up in appeals. Hands-on through all phases of a case (ITC or federal district court), he represents his clients with intensity and drives trial teams to achieve great things. A former senior investigative attorney in the commission’s Office of Unfair Import Investigations, Matthew Bathon has a highly nuanced knowledge of the forum, too. Boyd Cloern, who has also put in ITC appearances, distinguishes himself as a leading light on IP and antitrust matters and as a top trade secret litigator.

Weil Gotshal & Manges LLP

Mr Brian E Ferguson

Willkie Farr & Gallagher LLP

Willkie Farr & Gallagher has been in talent acquisition mode and unveiled Indranil Mukerji and Stephen Marshall as new patent litigation signings at the start of 2021, with Mukerji taking up the role of head of technology patent litigation. The former Fish & Richardson lawyers have settled in well, their expertise in high-stakes litigation matching that of other top professionals in the firm, such as Thomas Meloro in New York and Craig Martin in Chicago, both of whom are also ranked in the IAM Patent 1000. Mukerji and Marshall have been retained by Johnson Controls for a major patent infringement representation encompassing actions at the ITC and in the Western District of Texas against EcoFactor, relating to smart thermostat and HVAC systems. They are also representing Samsung Electronics as amicus curiae in an appeal to the Federal Circuit regarding the law on the interplay between patent term adjustments and non-statutory double patenting. Their work puts them at the cutting edge in terms of legal development and in the thick of the action in highly competitive industries.

Other recommended experts

Charles Andres is gifted when it comes to strategic patent prosecution, IP due diligence, regulatory counselling, opinion giving and amicus brief writing. He generates huge value for his pharmaceutical and medical technology followers by building and shaping optimal patent portfolios. He can be found at Greenberg Traurig alongside Andrew Sommer, one of the top PTAB lawyers in the outfit. Steven Anzalone and Paul Goulet are key members of the IP and litigation practices of FisherBroyles, the largest distributed law firm in the world. They are well known as top ITC specialists but have significant trial experience in other forums, too. Sheppard Mullin added a well-rounded strategist to its roster recently when it brought former Dentons partner Martin Bruehs on board. He serves as his new firm’s chemical patent practice leader on the East Coast. Aziz Burgy is a leading ANDA litigator and key component of a high-powered pharmaceutical patent litigation team at Axinn. He has a research background and extensive lead counsel experience. Gregory Castanias takes the reins of Jones Day’s Federal Circuit team. A fellow of the American Academy of Appellate Lawyers, he has vast experience and has presented arguments at the Supreme Court on multiple occasions. “Jeffrey Costellia handles substantively complex matters with great expertise, efficiency and cost-effectiveness. He provides a first-rate service and readily makes himself available at short notice when things are urgent.” The Nixon Peabody global strategies committee chair is a go-to for top foreign associates, leading South African IP firm Spoor & Fisher being an example; his other clients include Semiconductor Energy Laboratory, which he serves as patent portfolio counsel. Michael Dilworth is a renaissance man in patent practice, being experienced in all aspects of patent protection, enforcement and monetisation. The Dilworth IP lawyer has extensive senior in-house experience and understands the business criticality of patent assets. Element IP has an exceptionally strong foundation in chemical patent practice and a number of experienced specialists such as Jacob Doughty. The former Oblon partner has broad horizons; he prosecutes and manages patents, counsels clients and represents them in post-grant proceedings. He has also served as a testifying expert in patent litigation on several occasions. Following recent expansion, Cozen O’Connor is now well resourced in DC in terms of litigation and prosecution talent: Thomas Fisher is a seasoned federal district court, ITC and post-grant advocate. Registered patent attorney Keith Fredlake and Jeffrey Gendzwill form a dynamic prosecution and counselling team and have recently been representing a patron in a European Patent Office opposition. Coming in for special praise, “Jeff is an excellent lawyer for prosecution, opinions and IP due diligence. He understands his clients’ business and risk tolerance, and provides practical advice accordingly.” Over the past two years Harold Fox has settled in extremely well at Honigman. An excellent and seasoned counsellor, he represents prestigious entities such as the Massachusetts Institute of Technology, where he obtained his PhD in chemistry. Honigman is a Michigan-based outfit that is expanding; it has not been in DC for long but is already making its mark. Sheppard Mullin’s James Gatto is a technology industry devotee and a leading expert in the blockchain and fintech spaces. Top national trial firm Quinn Emanuel recently welcomed former Williams & Connolly patent litigation co-chair Kevin Hardy into the fold, helping to increase its profile in DC. The group was already well known and respected in the capital, thanks to its strong performance at the ITC under the direction of Alex Lasher. James Heintz and Salvatore Tamburo give DLA Piper a strong patent presence in the DC metro area. Well-rounded partner Heintz prosecutes and litigates with aplomb; Tamburo focuses on patent litigation. Blair Jacobs flies the flag of Texas trial firm McKool Smith in the capital. The former Paul Hastings lawyer is a seasoned lead trial counsel who knows the ITC intimately. In January 2022 Fried Frank unveiled Nicole Jantzi and Paul Schoenhard as its new signings in DC. Both are talented and experienced patent trial lawyers with a ton of courtroom experience. Michael Kiklis is a founding partner of recently established boutique Kiklis and Clark and an experienced patent attorney with an excellent record in PTAB trials. Strategic prosecution is another of his fortes. Andrew Kopsidas recently made the switch from Fish & Richardson to Hughes Hubbard & Reed. He supports a global client base as a strategic counsellor and trial lawyer. Stephen Kunin, Timothy Maier and Christopher Maier form a strong line-up at patent boutique Maier & Maier. Worldly wise, Kunin is hotly tipped as an expert witness on patent matters. Timothy Maier is excellent at reading the patent landscape and designing strong and valuable portfolios that help keep his clients’ businesses rolling. Christopher Maier is appreciated for the clarity and perspicacity of his strategic thinking around prosecution and litigation issues. Kevin Laurence and Matt Phillips are two of the top PTAB experts in DC and bring more than 50 years of collective experience to the table at Laurence & Phillips. Laurence is hailed for his strategic wisdom, which he applies in both post-grant proceedings and prosecution. Phillips, who has written extensively on post-grant topics, is a former Federal Circuit law clerk and excels in appeals from PTAB decisions. Christine Lehman gives Reichman Jorgensen a strong presence at the ITC. A former investigative attorney in the Office of Unfair Import Investigations, she capitalises on an intimate knowledge of the forum as well as her technical background and polished advocacy skills. “Angel Lezak is an absolute dream to work with. Genuinely interested in her clients’ vision and goals, she has a strong relationship focus and goes above and beyond to ensure you get the results you need – it’s the opposite of counting the minutes and running up a bill; lawyers around the world could learn a thing or two from her in this regard. Angel also has a way of making complicated matters easy to understand and she shows great leadership by proactively engaging in industry research to deliver first-class ideas and suggestions without having to be asked.” She wears the colours of Polsinelli and is one of the outfit’s most dynamic patent prosecutors. Recently making the move to Tucker Ellis is prosecution and transactions expert Derek Mason. He is an organic chemistry PHD with experience working as a chemist in industry. Robert Mattson recently joined KramerDay. He is a hardworking and strategic trial attorney with ample ITC experience. Scott McKeown is one of the busiest and best post-grant lawyers in the country and is widely looked up to as a thought and practice leader. A habitual winner for top companies, he is a veteran of over 375 PTAB matters at this point. He is based at Ropes & Gray alongside Matthew Rizzolo, who leads the ITC practice. He is a leading member of a team representing Emerson Electric in extensive litigation against SIPCO and other parties, in which the firm has had multiple ITC, PTAB and Federal Circuit successes. Parker Poe Adams & Bernstein partner Kyle Musgrove has fought and won many pharmaceutical patent battles. Leveraging this experience, he provides valuable strategic counsel to his life sciences followers. Taking charge of Alston & Bird’s IP litigation group in DC, Scott Pivnick is a seasoned trial team leader. He recently secured a finding of wilful infringement in favour of his client Oshkosh Corporation and Pierce Manufacturing after a six-day jury trial, with potential for a trebling of the $1.46 million damages award. In the opinion of his patrons, “Scott is a joy to work with on any major patent dispute.” Kristen Riemenschneider joined Freshfields in October 2021, further fuelling the firm’s growth in life sciences transactions following the hire of New York-based Adam Golden from Hogan Lovells earlier in the year. An experienced deal maker, Riemenschneider capitalises on sharpened negotiation skills and fine-grained technical knowledge. Steven Routh is a fellow of the American College of Trial Lawyers with vast courtroom experience. He is one of Orrick’s premier technology and IP-focused litigators. Edell Shapiro & Finnan’s Jason Shapiro has led a rich life in intellectual property; he started out as an Army Research Laboratory patent adviser, then went in-house before entering private practice. He has a cultivated world view when it comes to patents and well-developed prosecution, litigation, post-grant and licensing skills. Haynes and Boone welcomed Vincent Shier on board in DC in February 2022. The former Oblon patent prosecution ace has a strong life sciences background, high-level technical and counselling skills, and a contemporary knowledge of key global trends and developments in patent law. Han Santos DC managing partner Dan Stanger has exceptionally strong fundamental patent drafting and prosecution skills, which he has constantly refined over more than 35 years. He has a carefully cultivated international network, including many contacts in Japan, making him a go-to for global patent services. One of O’Melveny’s top IP litigators, Sean Trainor draws on a wealth of ITC experience. Together with Los Angeles-based Ryan Yagura, he recently defended Samsung in high-stakes district court and ITC litigation against Neodron, which could have blocked Samsung from importing most of its mobile device and computer products to the United States; the parties reached a global settlement. Crowell & Moring’s Kent Walker is a top contact for the life sciences industry, which he knows inside and out; he has more than 15 years of in-house experience on his CV – he served as vice president of global IP strategy at Mylan – and knows what it takes to develop drugs and bring them to market. Richard Wells brings valuable in-house experience to the table; he previously worked at Schlumberger subsidiary WesternGeco, where he managed a global patent portfolio. The Baker McKenzie lawyer often serves as quasi in-house counsel for smaller patrons, which puts him at the heart of strategic decision making. He has large clients, too, including Schlumberger, many divisions of which he remains thick with. Haynes and Boone’s prosecution group chair is Jeffrey Wolfson, who serves as primary patent prosecution counsel for Nabors Industries. William Zimmerman co-chairs the Hatch-Waxman litigation and life sciences practice groups at Knobbe Martens. He has fought battles over top-dollar drugs many times and is an excellent advocate as well as trial team leader. He executes aggressive litigation strategies very effectively.

Recommended individuals: litigation

Gold tier

Adam L Perlman– Latham & Watkins LLP
- Alan M Fisch – Fisch Sigler LLP
- Bert C Reiser – Latham & Watkins LLP
- Bruce R Genderson – Williams & Connolly LLP
- Carter G Phillips – Sidley Austin LLP
- Charles B Klein – Winston & Strawn LLP
- Charles E Lipsey – Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
- David Berl – Williams & Connolly LLP
- Edward C Donovan – Kirkland & Ellis LLP
- Gary M Hnath – Mayer Brown
- George F Pappas – Covington & Burling LLP
- Gregg F LoCascio – Kirkland & Ellis LLP
- J Michael Jakes – Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
- Matthew J Moore – Latham & Watkins LLP
- Matthew M Wolf – Arnold & Porter
- Maximilian A Grant – Latham & Watkins LLP
- Michael A Morin – Latham & Watkins LLP
- Michael McKeon –Fish & Richardson
- Naveen Modi – Paul Hastings LLP
- Ruffin B Cordell – Fish & Richardson
- Steven Baughman – Paul, Weiss, Rifkind, Wharton & Garrison LLP
- Steven Lieberman – Rothwell, Figg, Ernst & Manbeck, PC
- Thomas L Jarvis – Winston & Strawn LLP
- William G James II – Allen & Overy LLP

Silver tier

Bronze tier

Individuals: prosecution

Individuals: transactions

Luminaries

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