Intellectual Property

Intellectual Property - Massachusetts


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What the team is known for Highly regarded firm with a strong focus on IP and litigation work. Recognized for its broad IP capabilities and for particular expertise in patent matters.

Work highlights Represented Samsung Electronics in defense of patent claims brought by LED Tech Development over LED flashlights. Also advised on related inter partes reviews before the USPTO.

Advised ZOLL Medical on its multi-venue dispute with Philips over automatic external defibrillator patents.

Notable practitioners  

Frank Porcelli is a senior partner at the firm, with substantial experience in patent and trade secrets appellate litigation. He cochairs the appellate practice.

Litigator Frank Scherkenbach handles patent disputes across medical devices, software and semiconductors. Recent work includes defending Microsoft in patent infringement claims brought by Sentius International against certain Microsoft Office features.

Robert Hillman is a respected figure in the Boston IP market, with extensive experience in patent litigation across the electronic and life sciences subject matters.

Significant clients Adobe Systems, Boston Scientific, Bose, Fresenius Medical Care North America, Massachusetts General Hospital. 

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What the team is known for High-quality Boston IP group handling technology and life sciences patent work, including both prosecution and litigation. Represents clients at trial, before the USPTO and at the ITC. Consistently praised by clients for the strength of its bench and for judicious team selection.

Strengths (Quotes mainly from clients)

"I was incredibly impressed by the Goodwin machine. It was just how prepared they were for every eventuality. They never seemed to get flustered, they took everything in stride, and I felt they weren't surprised by anything. Their cross-examining was, at times, withering. I actually felt bad for the other side!"

"Great IP team all around. No politics, no egos, just great client service."

What's new? Consumer electronics brand Bose is a new client.

Work highlights Acted for Teva Pharmaceuticals on an appeal to the Supreme Court challenging a Federal Circuit invalidity judgment. The ruling related to patents covering the Copaxone drug.

Represented Cisco Systems in a dispute with Teles AG and its parent company before the Board of Patent Appeals and the Federal Circuit. The original dispute related to patents for voice-over IP technology.

Notable practitioners  

Experienced patent litigator Anthony Downs advises clients in the software, telecoms, life sciences and financial services sectors. He successfully represented Teva Neuroscience in an infringement claim against Mylan Pharmaceuticals, relating to the Azilect treatment for idiopathic Parkinson's disease.

Life sciences specialist Duncan Greenhalgh focuses on patent procurement, protection and licensing for clients such as Charles River Laboratories and GliaCure. One peer considers him a "wonderful" lawyer, adding: "If I could recruit him, I would!"

Edmund Pitcher focuses on counseling, procurement, transactions and litigation across a broad spread of life science technologies. Clients include PAKA Pulmonary Pharmaceuticals and Serenity Pharmaceuticals.

Chair of IP litigation Douglas Kline is a "very technically-gifted" trial lawyer, with a focus on patent litigation. He also handles post-grant proceedings and Federal Circuit appeals. Clients appreciate his ability to "synthesize the issues and develop a clear, cogent story to present to the jury."

Clients consider John Englander "a brilliant strategist," and appreciate the technical ability he brings to patent litigation. Recent work includes representing Applied Materials in defense of a number of infringement claims brought by Zond in relation to semiconductor manufacturing technology.

The "excellent" Paul Ware is held in high esteem in the Boston IP market. He is a seasoned litigator with extensive experience in IP matters.

Up-and-coming partner Michael Strapp handles patent and trade secrets litigation. His attention to underlying technology impresses clients, with one commenting: "He understands it better than I do at this point!"

Significant clients Applied Materials, Citrix Systems, Massachusetts Institute of Technology, OSRAM, ZTE.

Band 1 | WilmerHale

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What the team is known for Outstanding IP team with a national reputation for district court and appellate work. Active in post-grant proceedings, transactional due diligence, portfolio management and patent and trademark prosecution.

Strengths (Quotes mainly from clients)

"They are all very good. They have a deep bench, spend the time to get things right, are extremely knowledgeable and have a good sense of the points that play well to a judge or jury."

"Fantastic firm. They completely understand how to go about building a strong patent portfolio."

Work highlights Represented LogMeIn before the Federal Circuit, in relation to 01 Communique Laboratory's remote system access patent. Secured summary affirmation of the original noninfringement verdict.

Acted for Precision Biosciences on patent litigation, ex parte re-examination, cross-licensing and global settlement with Cellectis, a competitor in meganuclease development.

Notable practitioners  

Trial attorney William Lee enjoys an excellent national reputation for his IP work, with one client naming him "the all-time star." Another enthuses: "He is incredibly bright and very diligent, but he also has an excellent trial persona. He has a way of presenting the facts of the case that is both easy for a jury to understand and consistent with how we want to present ourselves."

Peter Dichiara has a diverse practice, advising on patent and trade secrets litigation across hardware, software, wireless communication and semiconductor technologies. Clients say: "He is extremely dedicated and knowledgeable, very thorough and a problem solver."

Wayne Stoner focuses on patent litigation across a wide range of technologies. Clients say he is "excellent at cross examination; extremely prepared and relentless. Just extraordinary." 

The "excellent" Lisa Pirozzolo is held in high regard for her patent litigation practice, representing clients in District Court and at the appellate level. She has experience in life sciences, electronic goods and telephony technologies.

Clients say Michael Bevilacqua "does a great job" on their trademark registration, opposition and licensing issues. He is also known for his work in licensing and development agreements in the technology field.

Significant clients Hewlett-Packard, Intel, Monsanto, Pfizer, Braintree Laboratories.

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What the team is known for Well-regarded group handling the full range of patent and trademark work, including prosecution, licensing and litigation. Particularly active representing clients in the life science, chemical, consumer products and technology industries.

Strengths (Quotes mainly from clients)

"Strengths include their sense of urgency, their relationship with the USPTO, their thoroughness and their creativity."

"Very knowledgeable and responsive." 

Work highlights Represented Biosig Instruments in the Supreme Court on the question of the requisite standard of clarity for patent claims.

Acted for ADREA on multi-patent infringement claims against Barnes & Noble over its NOOK devices. ADREA is a joint venture of Discovery Communications, Sony, Philips and Intertrust.

Notable practitioners  

Cochair of the litigation department Steven Bauer is "a very experienced patent litigator, with a disarming and down-to-earth presence in the court" reports one client, adding that his courtroom style "plays well to a jury." His trial experience includes patent, trademark and trade secrets cases in the technology field.

Joseph Capraro chairs the prosecution and technology licensing groups at the firm. His practice is broad, spanning prosecution of trademarks and patents, transactional work and litigation support. Clients say: "Joseph Capraro is a business-minded lawyer with knowledge of both corporate and IP issues. He provides practical advice suitable for today's business climate. He is dependable and a straight shooter."

Significant clients MPEG-LA, Seachange International, GoerTek, Office Depot, Hypertherm.

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What the team is known for Well-regarded patent-focused practice, handling prosecution, transactions, litigation and post-grant proceedings. Particular expertise in the life sciences, chemicals and investment technology fields.

Strengths (Quotes mainly from clients)

"A quality firm with excellent people on both the transaction side and for litigation."

"They understand risk. You don't get opinions that are conservative or done in a vacuum."

Work highlights Acted for PerkinElmer, Xenogen, Caliper Life Sciences and Stanford University on an infringement action against Bruker and Bruker BioSpin over nine patents.

Represented TransAct Technologies in its trade secret dispute with Avery Dennison over food service industry labeling technology.

Notable practitioners  

Edward Kelly provides strategic advice on IP procurement, opposition and review proceedings before the USPTO, and transactions involving IP assets. He has particular expertise in hardware, software and medical devices.

Edward Black focuses on transactional work, including M&A due diligence, collaborations and licensing. Clients praise him as "extremely knowledgeable and commercial."

Clients appreciate Anita Varma's "business-savvy" approach and her familiarity with the biotechnology and pharmaceutical industries. She focuses on portfolio management, licensing and opinion work.

David McIntosh handles transactions and collaborative agreements for technology, life sciences and other clients. Clients appreciate his case management skills.

Significant clients AstraZeneca, Bristol-Myers Squibb, Genzyme, Spansion, SkillSoft.

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What the team is known for Esteemed Boston-based IP boutique handling all aspects of patent, copyright, trademark and domain name work. Recognized for technical expertise across the chemical, pharmaceutical, biotechnology, nanotechnology and electrical subject matters.

Strengths (Quotes mainly from clients)

"Very strong in biotechnology." 

"Technically superb." 

Notable practitioners  

Chairman of Wolf Greenfield Edward Gates is well regarded in life sciences IP, with a focus on patent procurement, licensing and post-grant proceedings. He also handles litigation across biotechnology, medical devices and pharmaceuticals.

Litigator Michael Rader advises on patent, trademark and copyright disputes before district courts and the ITC. Sources praise him as "experienced and reasonable." 

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What the team is known for Well-known IP group active in trade secret and patent litigation, as well as prosecution, transactional and opinion work. Particular expertise in the pharmaceutical, biotechnology, chemical and hi-tech fields.

Strengths (Quotes mainly from clients)

"There has yet to be a situation where someone at the firm does not have practical experience. All the attorneys seem to mesh very well together. Everyone from the assistants to the partners are exceedingly polite and willing to do whatever it takes to get the job done on time. "

"They have done a very good job with the team in understanding the company, and the technology in particular. They understand what our objectives are and get us to good outcomes." 

Work highlights Advised Celgene on its dispute with Children's Medical Center Corporation over the alleged breach of a license agreement for Amino Thalidomide and Revimid products.

Acted for Hertz and Avis on their defense of patent claims brought by Pi-Net International over online transactions systems and methods.

Notable practitioners  

Clients say that seasoned litigator Robert Frank is "a very good lawyer" and "very methodical." He recently acted for Momenta Pharmaceuticals on its infringement claim against Amphastar, relating to patented methods of therapeutic polysaccharide manufacture.

The "fantastic" Brenda Jarrell is cochair of the life sciences group and has a practice spanning the biotechnology, pharmaceuticals and chemical subject matters. She focuses on portfolio management, licensing transactions and collaborative agreements.

Eric Marandett is cochair of the IP litigation practice and an experienced trial lawyer. Recent work includes advising Shionogi on its licensing dispute with Cowen Healthcare Royalty Partners over the Fenoglide drug.

Karen Copenhaver is well known in the Boston IP market for her licensing and technology transfer work. Software and open source technology are areas of particular strength.

Significant clients Shire, Momenta Pharmaceuticals, Polartec, PerkinElmer, Hewlett-Packard.

Band 3 | Clark & Elbing

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What the team is known for Boston-based boutique active across prosecution, licensing, due diligence and opinion work. Known for expertise in the chemical, biochemical and biological subject matters.

Notable practitioners

Paul Clark is highly regarded by peers in the Boston IP market and is known for his work in biotechnology in particular. He has a diverse practice spanning patent prosecution, re-examination, licensing and opinion work.

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What the team is known for Specialist firm noted for the breadth of its IP offering. Particularly recognized for expertise in patent preparation, prosecution, litigation and post-grant review work. Areas of strength include biotechnology, pharmaceutical and electrical engineering.

Strengths (Quotes mainly from clients)

"One of the great strengths of the firm is its depth of experience in all aspects of patent practice, from drafting and prosecution to litigation."

"Finnegan Henderson has a firm grasp on the many esoteric but important nuances of patent law."

"Their responsiveness is absolutely excellent. They are always available and respond immediately to requests. They work as a team and are very pleasant, calm, polite and cheerful. Just great to work with. So smart, and so on top of the law."

Work highlights Acted on a patent action concerning LED technology for defendants Everlight Electronics, Everlight Americas, Epistar, Lite-On, Lite-On Service USA and Lite-On Technology.

Acted for Harmonix Music Systems on the defense of a patent infringement claim brought by Princeton Digital over computer-generated virtual environments in Harmonix's game products.

Notable practitioners  

Denise DeFranco has a broad patent litigation practice handling life sciences, telecoms and hi-tech disputes. She recently represented Koninklijke Philips in patent infringement action against Wangs Alliance Group over LED technology.

Michael McGurk handles portfolio management, re-examination proceedings, freedom to operate clearance and due diligence analysis for clients in the life sciences and technology industries. She has expertise in the pharmaceutical, chemical and mechanical fields.

Leslie McDonell specializes in biotechnology and pharmaceutical patent matters, including prosecution and re-examination proceedings. Clients say her strength lies in "a deep understanding not only of what is likely to persuade a patent examiner or a court, but also of what matters to the company."

Significant clients AbbVie, Acura Pharmaceuticals, Asuragen, Intertrust Technologies, Philips Electronics North America.

Band 3 | Foley Hoag LLP

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What the team is known for Well known in the Boston IP market for expertise in the life sciences, particularly biopharmaceuticals. Active in a range of IP matters, with a focus on patent prosecution, patent litigation, post-grant proceedings and interferences.

Strengths (Quotes mainly from clients)

"The IP group has a good deal of depth. They listen and they get results." 

Work highlights Represented Biogen Idec in a patent infringement action brought by Sanofi-Aventis. Secured judgment and Federal Circuit affirmation that the Rituxan cancer treatment does not infringe Sanofi-Aventis's DNA sequence patents.

Advised Becton Dickinson & Company on an infringement suit brought by Gen-Probe which alleged the infringement of eight patents relating to molecular diagnostic and DNA amplification technology.

Notable practitioners  

Cochair of the IP department Donald Ware is held in high regard for his strategic, transactional and contentious patent work. Clients say: "He's really smart, he knows the law quite well, and he is a very, very good writer. He is also a very good legal strategist."

Beth Arnold is an experienced patent prosecutor with a focus on the pharmaceutical and biotechnology fields. She also advises life sciences clients on collaborative agreements.

Peers have "a very high opinion of" Claire Laporte and clients report "a high degree of trust in her capabilities." She focuses on patent litigation in the technology and life sciences areas, recently representing Biogen Idec in defense of a patent infringement action brought by Novartis over the Tysabri biologic.

Dana Gordon focuses on patent preparation, prosecution and counseling. His clients include life sciences companies and universities. 

Experienced litigator Philip Swain handles a range of IP cases, with a particular focus on patent litigation. He recently secured a summary judgment of noninfringement for LevelUp, in relation to a method patent covering communication over a financial network.

Clients identify Joshua Jarvis as "a standout associate," praising him as "smart, client focused and fast." His focus is on the procurement and enforcement of trademarks and copyrights.  

Significant clients DreamWorks Animation, Regeneron, Massachusetts Institute of Technology, AbbVie, Johns Hopkins University School of Medicine.

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What the team is known for Well regarded for work in life sciences, including patent prosecution, Hatch-Waxman litigation and post-grant proceedings. Also active in trademark litigation, and in the hi-tech electronics field.

Strengths (Quotes mainly from clients)

"They're good lawyers. They've got a critical mass of people and are influential within Boston."

What's new? Biogen is a new client.

Notable practitioners  

Seasoned litigator Lee Bromberg has "a strong reputation" in the Boston IP community, handling patent, trademark and trade dress disputes for clients in a wide range of industries. Peers say he "is very experienced, and uses that experience to his advantage."

Elizabeth Hanley focuses on chemical and biotechnology patent matters, handling prosecution, licensing, due diligence and opinion work. She is held in high regard by peers, who note that she is "good on the life sciences side and on patent portfolio development." 

Steven Davis handles patent prosecution, portfolio management, licensing and analysis in the chemical and life sciences fields. One happy client comments: "I can always get Steve's attention; he is always aware of our needs. He doesn't treat us like a small fish in a big pond."

Significant clients Sanofi-Aventis, Princeton University, Eisai, Harvard University, Berg Pharma.

Other Ranked Lawyers 其他上榜律师

Clients say Thomas Meyers of Brown Rudnick LLP offers "top-quality legal advice, on time and on budget." He is co-head of the firm's life sciences group and focuses on patent matters for corporates, investors and research institutions.

Joseph Maraia of Burns & Levinson LLP is a "very good lawyer on the prosecution side," according to peers. As well as patent procurement and counseling, his practice covers re-examination issues.

Ivor Elrifi focuses on patent counseling and prosecution for a wide range of life sciences companies. Clients say: "He is creative, thorough, accessible and user friendly. He has been wonderful to work with and has played a key role in our IP strategy." He joined Cooley LLP in 2014 from Mintz Levin.

Joseph Teja joined Cooley LLP in 2013 from Foley & Lardner. He focuses on patent protection across a range of technologies, particularly cleantech and electronics. Clients "can't say enough good things about Joe Teja and his team," praising his "very knowledgeable and very conscientious" approach.

Matthew Lowrie heads Foley & Lardner LLP's IP litigation practice and has a broad practice, covering counseling, transactions and disputes. Computer software, circuitry, telecoms and semiconductors are all areas of expertise. He recently acted for Google/Motorola Mobility in defense of claims brought by The University of Florida Research Foundation and Rapid Mobile Technologies alleging infringement of a cell phone test-bed patent.

David Brook of Hamilton, Brook, Smith & Reynolds, P.C. is a well-known name in the Boston market. His practice covers chemical, material and life sciences IP matters.

Joshua Krumholz is head of the IP group at Holland & Knight and has a particular focus on patent litigation. Clients find his advice "practical and savvy," and praise him as "a very smart strategist and a fantastic partner for our business." Of his courtroom presence, sources say he "is very focused, thinks well on his feet and is very polished in his presentation." He secured a jury verdict of willful infringement for Cognex against Microscan Systems in relation to specialized bar code readers.

Sarah Gagan of Latham & Watkins LLP is known for her transactional and collaboration work in the technology, consumer goods and financial services areas. Clients praise her as "responsive, intelligent, creative and proactive," and appreciate that she "cuts to the chase and focuses on what is important."

Giulio DeConti of Lathrop & Gage LLP handles patent work across the chemical, pharmaceutical and biotechnology subject matters. Peers say he "has a good stable of clients and is generally regarded as an excellent patent portfolio adviser on the life science side."

James Velema of Lathrop & Gage LLP is "a very good and calm attorney," specializing in portfolio development and management in the biotechnology field. Clients include startups, leading pharmaceuticals companies and research institutions.

Louis Myers of Lando & Anastasi, LLP is recommended by clients for his life sciences work, which includes strategic counseling, prosecution, licensing, collaborative agreements and disputes.

Sarah Chapin Columbia of McDermott Will & Emery LLP is an experienced litigator, handling patent, trademark, copyright and trade secret disputes. Clients appreciate her "ability to deliver excellent results within a really strict budget." She recently acted for BlackBerry on its defense of infringement claims, securing a jury verdict of non-infringement and invalidity of all three patents.

Leigh Martinson of McDermott Will & Emery LLP focuses on patent litigation in the hardware, software, circuitry and telecoms fields. Peers say that "his personality is his strength; he's very straightforward, thorough and highly energetic."

Robert Underwood of McDermott Will & Emery LLP has a practice focused on the chemical and life sciences subject matters. He advises on patent prosecution, portfolio management, licensing, due diligence and freedom to operate analyses.

William Geary joined Mintz Levin Cohn Ferris Glovsky and Popeo PC from Nutter, McClennen & Fish in April 2014. His practice covers patent and trademark law, with an emphasis on medical devices, chemicals and materials. He is a "highly visible IP lawyer in the medtech space in Boston," according to clients.

Michael Renaud leads the IP group at Mintz Levin Cohn Ferris Glovsky and Popeo PC, and has a particular focus on portfolio management and patent litigation. "He goes out of his way to provide high-quality, client-centered service, but always in a very cost-conscious manner," says one client, adding: "I can always trust Mike to give me both great guidance and great value."

Steven Frank joined Morgan Lewis & Bockius LLP from Bingham McCutchen in November 2014. He has a wide-ranging IP practice, covering procurement, licensing and contentious work in patent and copyright. Clients consider him "outstanding for IP counsel," with one source naming him as "one of the most impressive attorneys I've ever met" for his "capability, thoroughness, knowledge of our IP issues and opportunities, and fairness in billing." 

Jane Remillard of Nelson Mullins Riley & Scarborough LLP has a broad life sciences practice, handling patent prosecution, re-examination proceedings, licensing, collaboration agreements and opinion work. Sources say: "She is very easy to work with, very enthusiastic and the quality of her work is very good. I think the best thing about her is that she's very good at coming up with sensible proposals for overcoming particularly difficult problems." 

Thomas Engellenner of Pepper Hamilton LLP is well regarded in the Boston IP market, with one peer commenting that they have "always had the highest respect for him." He handles procurement, licensing and litigation across patent, trademark and copyright.

Reza Mollaaghababa of Pepper Hamilton LLP handles a range of IP issues, including patent and trademark prosecution, post-grant proceedings and opinion work. He is particularly noted for his experience in technical subject matters and for his representation of university clients.

Foreign Experts

Foreign Experts are individuals with expertise in a different jurisdiction to the one they are based in. These individuals are particularly highly regarded for international and cross-border work. Usually, they will be identified in the jurisdiction in which they are based and in their country of expertise.

Senior Statesman

A 'Senior Statesman' is a lawyer who no longer works hands-on with the same intensity but who, by virtue of close links with major clients, remains pivotal to the firm’s success.

Eminent Practitioners

'Eminent Practitioners' are highly influential lawyers in a particular practice area who, due to managerial or client relationship commitments, are less active in day-to-day work but remain key players in the team.

Other Noted Practitioners

Other Noted Practitioners are individuals who have not yet been ranked but are seen to be active and accomplished in this area of law.

Other Noted Firms

Other Noted Firms are firms that have not yet been ranked but are seen to be active and accomplished in this area of law.