Intellectual Property - Massachusetts
THE FIRM This national IP firm is recognized as one of the leaders in the market, with a number of highly regarded attorneys among the 63 practitioners in the Boston office. A real strength of the practice is patent litigation, with particular emphasis on Abbreviated New Drug Application pharmaceutical disputes. The team works across the life sciences, medical device, electrical, software and mechanical technology industry sectors, acting for a prestigious roster of clients including Adobe Systems, FUJIFILM Dimatix, Procter & Gamble and Boston Scientific.
Sources say: "Fish & Richardson is a top-tier patent litigation firm with good depth and many skilled attorneys."
KEY INDIVIDUALS The "outstanding" Frank Porcelli is a much-revered litigator, with particular experience in appellate work in the patent and trade secret spheres. Porcelli recently represented the plaintiff in the Federal Circuit appeal of Gaylord v United States of America, a copyright infringement case relating to a commemorative stamp.
Frank Scherkenbach is an experienced trial lawyer specializing in software, medical devices and semiconductor technology. He recently represented Adobe Systems in a patent infringement action brought by Tarkus Imaging, resulting in a jury verdict of no infringement.
Robert Hillman is a highly experienced patent litigator, and is particularly noted for his expertise in electronics and biotechnology.
THE FIRM The Boston IP practice notably benefits from the resources of this full-service, national firm, and receives particular praise from clients for its deep bench and thorough approach to matters. The team offers a range of IP services, including transactional, litigation and counseling work, with particular strength in the pharmaceutical and software technology sectors. Teva, Boston Scientific, Cisco Systems and GE are among its key clients.
Sources say: "They are, in my view, as good as there is in patent litigation."
KEY INDIVIDUALS The much-admired Paul Ware predominantly focuses on litigation, particularly patent and trade secret disputes. He recently represented Teva in a patent jury trial against Novartis and Sandoz.
Clients say that Anthony Downs is "outstanding at trial" and "greatly skilled in making complex technical arguments understandable to lay persons." He is chair of the IP litigation practice at Goodwin Procter, specializing in patent cases in district courts and at the ITC.
Edmund Pitcher is a seasoned IP attorney with a very broad practice, ranging from portfolio development and patentability analysis to patent litigation. He works across the chemical and life sciences industry sectors, and a recent highlight includes strategy, preparation, prosecution and litigation advisory work for Serenity Pharmaceuticals in relation to a new drug.
Duncan Greenhalgh focuses on patent procurement and enforcement in the life sciences field. He also offers strategic advice with regard to IP development, finance and transactions.
Douglas Kline, chair of the IP group at Goodwin Procter, is a general IP litigator with particular expertise in patent disputes. Recent work includes representing Eloqua as defendant in patent infringement litigation concerning automated marketing software.
John Englander principally concentrates on patent, trade secret and copyright litigation. His patent practice covers mechanical, pharmaceutical, biotechnology and hi-tech matters, such as telecoms and software architecture. He recently represented Aereo in a copyright litigation brought by a number of major television broadcast networks.
THE FIRM WilmerHale is a full-service firm with an international presence and an outstanding Boston IP practice. While offering the full range of IP services, including prosecution, strategy and counseling, the group is particularly known for its patent litigation practice, which covers a broad spread of technologies. It counts Pfizer, Intel, Novartis and Harvard University among its impressive group clients.
Sources say: "WilmerHale is a firm of the highest caliber. Excellent."
KEY INDIVIDUALS Market sources describe William Lee as "one of the pillars of IP here in Boston." An experienced litigator, he represents clients from the hi-tech, electrical engineering and pharmaceutical industries at the ITC, Federal Circuit and district courts. He recently represented Cree in litigation against SemiLEDS, in which eight Cree patents relating to high-brightness LED chips were alleged to have been infringed.
Michael Bevilacqua enjoys an excellent reputation in the market and specializes in licensing, development and joint venture agreements. His practice also covers patents and trademarks, with particular focus on software technology.
Sources are quick to applaud Peter Dichiara's command of the patent prosecution process as well as his "world-class" expertise in the nanotechnology space. His practice also covers electronics and electrical engineering, wireless communication and semiconductors. He also played a key role in the above matter for Cree, alongside Lee.
Wayne Stoner is a patent litigator whose practice covers medical devices, semiconductors, electrochemistry and telecoms, among other technologies. He recently acted for A123 Systems, achieving the settlement of long-term multiforum litigation relating to the licensing of lithium ion battery technology.
Lisa Pirozzolo is cochair of the IP litigation practice at WilmerHale. She focuses on patent infringement, and contractual and licensing disputes in life sciences and electronics.
The "very talented" Donald Steinberg is renowned among commentators for "working hard for his client." He is chair of WilmerHale's IP group, with a personal practice focus on trademark and patent protection. He worked with Research In Motion on a patent case relating to wireless technology, resulting in a $150 million settlement before trial.
THE FIRM Foley Hoag has a strong reputation in Boston, with peers naming the practice as part of the 'go-to' group of IP firms. The team has notable strength in patent litigation, particularly in the biotechnology and biopharmaceutical fields. The practice also covers broader IP work, including trademark and licensing matters. Key clients include Biogen Idec, Dana Farber Cancer Institute and Johns Hopkins University School of Medicine.
Sources say: "They handle difficult contentious matters that require higher-level thinking and creative solutions."
KEY INDIVIDUALS Donald Ware, chair of Foley Hoag's IP department, is much admired for his litigation skills. His practice covers a range of biotechnologies, including recombinant DNA matters, research tools and medical devices. He recently represented Biogen Idec in a consolidated patent infringement case brought by Sanofi, obtaining district court judgment of noninfringement.
The highly regarded Beth Arnold is experienced in pharmaceutical and biotechnology patent protection. Her practice also encompasses development and commercialization agreements, patent counseling, and IP due diligence on M&A.
Claire Laporte is a well-regarded trial lawyer with a particular focus patent litigation in the life sciences field and in computer technologies. She recently represented GI Dynamics as defendant in a patent action brought by WL Gore & Associates, relating to a medical device for the treatment of obesity and diabetes.
Dana Gordon is "a recognized name in the IP community," specializing in patent preparation and prosecution. His practice also includes patent and trade secret protection strategy, and patent portfolio due diligence analysis.
Philip Swain is an experienced patent litigator, appearing in district and Federal Circuit appeal cases. His practice is largely focused on telecom, computer technology and medical devices.
THE FIRM The Boston office of this international, multiservice firm is known for its strength in patent litigation. The practice also offers patent portfolio development, patent prosecution, counseling and transactional services. Areas of particular focus include the life sciences field and hi-tech industries, such as telecoms and software. T-Mobile USA, MobileMedia Ideas and Viacom are counted among its distinguished client base.
Sources say: "One of the reasons I continue to send work to them is because I can rely on them and can be confident the work will be done well and in a timely manner."
KEY INDIVIDUALS Steven Bauer is a dedicated IP litigator, who practices across patent, trademark, copyright and trade secret matters. "He is a very intelligent guy with a good grasp of the technical issues that are important to us," an impressed client notes, while other market commentators mention his tenacity and fine tactical approach to matters. He recently represented MobileMedia Ideas in litigation against Apple, which was found to have infringed three of the plaintiff's patents.
Joseph Capraro is "a very responsive, thoughtful and efficient counselor," according to one happy client. His broad practice covers a range of industries and technologies, including medical devices, alternative energy, semiconductors and financial services.
THE FIRM This Boston-based global giant is noted for the strength of its transactional practice, and also maintains a fine track record for patent work in both prosecution and litigation. Recent standout work includes handling patent prosecution and portfolio strategy matters for Google. Other key clients include Genzyme and Bristol-Myers Squibb.
KEY INDIVIDUALS Edward Kelly is a well-regarded attorney whose practice focuses on strategic advice as well as trademark, copyright and patent prosecution. He is particularly noted for his work in the hi-tech, semiconductor and medical device technologies, and recently played a central role in the aforementioned matters for Google.
Edward Black is head of the IP transactions practice and specializes in IP asset creation and management. Clients praise him as "responsive and smart," appreciate his "clear advice" and comment that he is "an expert in his field." He recently worked with TPG Capital on the IP elements of its investment transactions, as well as on brand protection matters.
THE FIRM Wolf Greenfield is a well-known and respected IP boutique based in Boston. The team offers full IP services and is particularly known in the market for its patent prosecution capabilities. Clients are also full of praise for its trademark and patent litigation work, and additionally single out its strengths on transactional matters. The practice covers technologies as diverse as acoustics, robotics, bio-sequencing, pollution reduction and ceramics.
Sources say: "They provide high-quality legal work while maintaining a commitment to client service."
KEY INDIVIDUALS Edward Gates is a "very talented lawyer" with "very good business sense." Recent work includes assisting Shire, a biopharma company, in negotiating exclusive worldwide rights to a technology used to investigate curative therapies for hemophilia. Market sources also add: "He is a purist in his attention to his clients and his focus on protecting their interests."
The highly regarded Jason Honeyman comes recommended for his work across a wide range of IP matters, including patent and trademark litigation, as well as portfolio management, technology-related due diligence and technology licensing. "He is very diligent and knowledgeable," asserts an impressed interviewee.
Michael Rader is a "very strong advocate" whose practice covers patent, trademark and copyright matters in a variety of technologies and industries. These have included hi-tech products like LCD screens, semiconductors, medical devices and transgenic mice. Sources describe him as "extremely responsive, very creative and imaginative."
THE FIRM This group offers the full range of IP services, from trademark and copyright issues to patent, unfair competition and trade secret matters. The practice is particularly active in the biotechnology, pharmaceuticals, computer and electrical engineering fields. Key clients include Shire, Momenta Pharmaceuticals, Hewlett-Packard and Celgene.
Sources say: "They are the most responsive law firm I've worked with. I have a high degree of confidence in the quality of their thinking and I have a real partnership with them."
KEY INDIVIDUALS The highly regarded Karen Copenhaver specializes in licensing and technology transfer, and also comes recommended for her expertise in open source software issues.
Robert Frank is noted for his experience in IP disputes and patent litigation, and elicits praise from sources for his "very dedicated, focused and very client-centered" approach to matters. He recently represented Insulet in a patent infringement case relating to medical instruments for the treatment of diabetes.
Brenda Jarrell is a seasoned practitioner in the life sciences and chemical IP arenas. Her expertise spans litigation, licensing and transactional work, and she is particularly renowned by sources for doing an "excellent job" on the prosecution of patents.
Eric Marandett is a "fantastic attorney" and much-respected litigator, with particular experience in the biotechnology, pharmaceutical and technology spheres.
THE FIRM Clark & Elbing is a highly regarded patent boutique based in Boston, offering portfolio management and strategy, M&A due diligence work, technology licensing and freedom-to-operate analysis. Sources particularly note the firm's excellence in patent prosecution. Biotechnology, pharmaceuticals and chemistry are the key areas of practice.
Sources say: "They are very good at helping you build your IP position to the point where it creates additional value for the company."
KEY INDIVIDUALS "Very, very high-caliber" attorney Karen Elbing is noted for her litigation expertise, and her practice also covers strategy, prosecution and in-licensing patent matters. Additionally, she comes much recommended for her knowledge of the life sciences arena.
The excellent Paul Clark has extensive experience in the biotechnology sphere and maintains a fine track record working with clients on prosecution and licensing matters.
THE FIRM The Cambridge office of this national IP firm offers the full range of services, including prosecution, litigation, reexaminations, strategy and transactional work. The practice covers trade secret, trademark, copyright and patent matters in a variety of industry sectors, from life sciences and chemicals to software, telecoms and the internet. It counts Boston Scientific, Caterpillar, Genzyme and Walmart among its impressive roster of clients.
Sources say: "They are absolutely top-notch in terms of their expertise."
KEY INDIVIDUALS Denise DeFranco is an experienced trial and appellate court litigator, specializing in life science and hi-tech matters. She recently represented Boston Scientific in a patent infringement action brought against three competitors, asserting ten patents relating to digestive stents. Clients appreciate that she is "easy to work with" and praise her "high competency."
Michael McGurk is managing partner of the Cambridge office. His practice covers licensing, and transactional and strategic work, as well as litigation, interference and reexamination proceedings. Clients say he is "practical, smart and able to really focus on the important issues."
THE FIRM The Boston office of this national, full-service firm is well regarded by clients, who particularly note the strength of the litigation practice. The team also has prosecution, counseling and transactional capabilities. Key clients include Google, Sony and MIT.
KEY INDIVIDUALS John Lanza specializes in strategic advice on IP enforcement and transactional matters. "He is incredibly well organized, very accurate and has great responsiveness," reports one happy client. He works with Citrix Systems as ongoing lead counsel on the development and management of its IP portfolio.
Matthew Lowrie is chair of the firm's IP litigation group and specializes in patent litigation, covering IT, telecom, and medical device and semiconductor technologies. Clients reserve particular praise for his "very strategic" approach to matters. He defended Sun Life Assurance in a longrunning patent infringement suit, obtaining Federal Circuit affirmation of an invalidity judgment.
THE FIRM McCarter & English is a full-service firm with a growing profile in the Boston market. The practice covers the range of IP services, including trademark, copyright and patent litigation, and it is also frequently called upon to handle patent prosecution, portfolio management and brand management. The team is particularly known for its work in the pharmaceutical and biotechnology sectors, with key clients including GlaxoSmithKline, Novartis, Sanofi and Abbott Laboratories.
KEY INDIVIDUALS Lee Bromberg is an experienced litigator who sources describe as "one of the best and brightest in Boston - and he has been for years." His practice covers patent infringement disputes as well as other IP litigation. Peers also add: "He is a great lawyer and a first-class guy."
The excellent Elizabeth Hanley heads McCarter & English's IP and IT group. Her practice covers prosecution, patentability, licensing and due diligence work in chemical and biotechnology patent law.
Steven Davis specializes on patent prosecution, portfolio management and licensing issues. Chemistry, biotechnology and pharmaceuticals are areas of particular expertise. Clients say: "He is a highly skilled attorney - very strategic and a real problem solver."
Bingham McCutchen LLP's Steven Frank has a practice focus on transactional due diligence, patent prosecution and analysis, in addition to handling copyright matters and licensing agreements. Sources regard him as "extremely dependable and contactable."
Thomas Meyers of Brown Rudnick LLP is an experienced counselor and patent prosecutor in the biotechnology, pharmaceutical, medical device and chemical technology fields. He is particularly well regarded in relation to genomics work, and receives particular praise from clients for his responsive approach to matters.
The very experienced Ivor Elrifi is noted for his patent prosecution, licensing and enforcement capabilities, and specializes in life sciences, including medical devices, genetics and novel therapeutics. He recently joined Cooley LLP from Mintz Levin Cohn Ferris Glovsky and Popeo PC.
David Brook at Hamilton, Brook, Smith & Reynolds, P.C. has "an unbelievable clientele and reputation," according to market sources, who add that he is "a real creative thinker in biotechnology IP strategy." Along with biotechnology, his practice covers chemistry, chemical engineering and medical devices.
"Tremendous strategic thinker" Joshua Krumholz is a patent litigator and chair of the IP practice at Holland & Knight LLP. He works in the computer ware, chemical products, air jet and consumer goods areas. Clients appreciate his "common-sense approach to solving business problems," as well as his "responsiveness, availability to answer questions, organizational skills and efficiency."
The terrific Thomas Turano at K&L Gates has a particular focus on the medical device, diagnostics, software, electronics and optics fields. His practice covers prosecution of patents and trademarks, as well as licensing, due diligence, litigation and counseling.
At Lathrop & Gage LLP, the very well-respected Giulio DeConti focuses on prosecution, portfolio development, counseling and licensing across the biotechnology, pharmaceutical and chemical arenas.
The excellent Louis Myers of Lando & Anastasi, LLP specializes in biotechnology, pharmaceutical and chemical patent matters. He is particularly known for his prosecution practice, also offering portfolio acquisition and development, transactional due diligence, licensing and analysis opinion services.
Sarah Chapin Columbia is head of the IP litigation group at McDermott Will & Emery LLP. Her practice incorporates patent, copyright, trademark and trade secret matters, particularly within the life sciences, computer and electronics fields. She represents Sandoz as defendant in a Hatch-Waxman patent infringement case against Teva, Amphastar and Watson. Sources say: "She is the whole package; a very good courtroom lawyer and an exceptional counselor outside the courtroom."
At the same firm, Robert Underwood has an impressive range of expertise within the fields of life sciences and chemicals. Clients say: "We leave our interactions with Bob both educated and confident that we are proceeding on a positive course of action." Underwood works with Novartis Vaccines & Diagnostics on strategic counseling, due diligence and patent prosecution matters.
Thomas Engellenner of Pepper Hamilton LLP has "the depth and knowledge needed, as well as a superb service attitude to his clients," according to market sources. He focuses on patent and licensing in biotechnology, pharmaceuticals and medical devices. He recently arrived from Nutter McClennen & Fish.
Clients say Reza Mollaaghababa of Pepper Hamilton LLP is "creative and effective at getting to the heart of the matter." His practice covers patent and trademark prosecution, as well as counseling. His expertise includes such technologies as medical devices, computer ware, nanotechnology and optics. He is another new arrival from Nutter McClennen & Fish.