Intellectual Property

Massachusetts : AN INTRODUCTION

Contributed by Goodwin Procter LLP

Massachusetts has been able to weather the recent economic crisis better than most states due to its strong tech sector and its innovation-based economy. Drawing upon the myriad institutions of higher education within the state, multiple “startup districts” have emerged in Boston, including in the areas around Kendall Square in Cambridge, the Innovation District in the South Boston Seaport, and up and down Route 128. The increased demand for skilled engineers, programmers and software developers, and the more than 65% increase in patents filed by Massachusetts-based inventors over the past five years, evidence the rapid growth of the state’s intellectual-property based businesses. West Coast-based tech giants such as and Facebook have recently chosen Massachusetts as the site of their East Coast development centers. To promote further growth in the tech sector, Governor Deval Patrick has proposed legislation, called the Growth and Opportunity Act of 2014, to adopt the Uniform Trade Secrets Act in Massachusetts and to eliminate or greatly restrict noncompete clauses in employment agreements.

Massachusetts is also a hub for the biotechnology industry. Continuing alliances between international pharmaceutical companies and the region’s top-ranked hospitals and universities generate new medical devices, blockbuster drugs and, increasingly, smaller specialized treatments targeting rare diseases and genetic ailments. Massachusetts firms such as Genzyme and EMD Serono lead the development of these new specialty drugs, or “biologics”, which generally have small market shares but are also often too new and too complex to face generic competition.

In addition, Massachusetts is home to many of the leading private equity and venture capital firms, positioned to take maximum advantage of the university startup pipeline in both silicon and biological technologies.

All this activity generates growth in the intellectual property legal market. In addition to historically Boston-based firms, an increasing number of law firms are seeking to build strong intellectual property practices in Massachusetts, focusing on such areas as software development, telecommunications and life sciences. The continuing resilience of the Massachusetts technology sector has meant that technology transactions and licensing deals also continue at a high pace, particularly as the economy emerges from the recent recession. Moreover, as ongoing innovation consistently drives disputes over the fruits of that innovation, intellectual property litigation remains active in the US District Court in Massachusetts. In 2013, more than 100 new patent cases, more than 60 trademark cases and almost 40 copyright suits were filed in the District of Massachusetts. An increasing number of Boston-based attorneys also appear in cases filed throughout the United States as competition for IP litigation has become increasingly national.

Intellectual Property - Massachusetts


第一等 |

What the team is known for One of Boston's most capable and well-liked intellectual property practices. Particularly sought after for its prowess in litigation. Particularly well known for life science and pharmaceutical work.

Notable practitioners  

Robert Hillman has a great many years experience in patent litigation, particularly dealing with complex electronics and biotechnology.

Frank Porcelli is a fixture of the legal landscape in Boston. A hugely experienced trial and appellate lawyer, he is considered by his peers to be very well respected and a great litigator.

Frank Scherkenbach is a patent litigator with expertise in matters pertaining to computer software, semiconductors and medical devices. Clients have been impressed by the results he delivers.

第一等 |

What the team is known for Highly capable intellectual property group with a celebrated litigation team and strong transactional lawyers. Clients hail from a variety of industries, with pharma and tech making up a substantial portion of the team's base.

Strengths (Quotes mainly from clients)
"The team's strengths include excellent problem solving and creativity, as well as excellent technical ability."

"This group is notorious for being a top-notch firm!" 

Work highlights Successfully defended Citrix Systems in a patent infringement suit, alleging that Citrix GoTo products infringed a patent covering secured internet communication.

Obtained a verdict in favor of Epocal, a startup company producing blood analysis devices that was accused of infringing patents held by Abbott Point of Care.

Notable practitioners  

"Fantastic litigator" Paul Ware is a leading figure in the market, and is well known as a versatile and skillful litigator. His courtroom skills are highly rated by clients and peers.

Anthony Downs is a highly rated patent litigator. His clients praise his strategic sense and vision, particularly in defensive litigation, and one singled him out as a "primary architect behind our supremely successful defensive strategy."

Duncan Greenhalgh is focused on transactional intellectual property matters and counseling, with a strong expertise in the life sciences. One client describes him as "very good and a very nice guy."

John Englander is an experienced litigator, with a strong engineering background. He primarily litigates in the patent arena, where his clients particularly value his skill for writing and strategy.

Edmund Pitcher is a highly experienced IP practitioner. His clients particularly praise his abilities in patent prosecution, and value his strategic craft in patent drafting and his technical understanding.

Douglas Kline is a well-regarded patent litigator who has represented a variety of clients in the hi-tech industry. He works extensively with Citrix Systems, and successfully defended them recently in a patent suit relating to desktop visualization software. 

Significant clients Citrix, OSRAM, Ensemble Pharmaceuticals, Teva Pharmaceuticals, ZTE Corporation.

Band 1 | WilmerHale

第一等 |

What the team is known for Top-notch Boston group with a sterling reputation for patent litigation and vast trial capabilities. Also recognized for its strategic counsel on portfolio management.

Strengths (Quotes mainly from clients)
"The team as a whole is stellar. The lawyers are smart, quick, dependable, good strategists and effective written and oral advocates."

"The firm has a very solid team from a litigation standpoint." 

Work highlights Secured a victory in defense of a patent infringement claim for LogMeIn, a leading provider of remote access software.  

Successfully invalidated all of the claims of three patents asserted against gene engineering experts Precision Biosciences by competitor Cellectis. 

Notable practitioners  

William Lee has firmly established his reputation as "one of the best patent litigators in the country." Both clients and peers praise his "impeccable judgment," with one particularly satisfied client noting that "if you have a bet-the-company issue, he is the one you want at the table."

Peter Dichiara is widely praised by his clients for his brilliant advice and perspicacity. His practice is driven by the prosecution and litigation of patents, and he has particular expertise in the field of nanotechnology.

Michael Bevilacqua is a well-respected practitioner who is active in licensing and technology transfer matters. His practice also encompasses trademark and patent prosecution. 

Lisa Pirozzolo is cochair of the firm's intellectual property practice group. She is an experienced patent litigator, who is praised by her clients for her courtroom skills.

Wayne Stoner focuses on patent litigation and strategy. Clients highlight his experience and practical strategy in litigation as strengths.

Significant clients Pfizer, Precision Biosciences, Intel, Braintree Laboratories, LogMeIn.

第二等 |

What the team is known for Offers clients a broad range of intellectual property services. Adept at both transactional and contentious aspects of intellectual property work.

Strengths (Quotes mainly from clients)
"Proskauer Rose is a good all-around firm in the intellectual property sphere."

Work highlights Won for Endeca Technologies at the Court of Appeal, which decided that its search engine algorithms did not infringe a patent held by SpeedTrack. 

Represented MMI in actions against Apple and RIM. In the Apple case, the jury returned a verdict that Apple infringed three patents owned by MMI, relating to the iPhone camera and call handling.

Notable practitioners  

Steven Bauer is characterized by an effusive client as "an extremely senior lawyer, who still has a fresh view on things." His work for key client Analog devices has included three ITC proceedings and two district court litigations, regarding patents for microphones.

Joseph Capraro is described by his clients as an "insightful portfolio manager." He advises clients such as Energetiq Technology and Hypertherm in relation to strategic IP portfolio management.

Significant clients Analog Devices, MobileMedia Ideas, Hypertherm, MKS Instruments, Seachange International.

第二等 |

What the team is known for Home-grown team with a global reach. Home to a technically skilled patent practice.

Strengths (Quotes mainly from clients)
"You get great service, and depth of experience and knowledge from the team."

"The firm has very competent people, and can put together very competent teams."

Work highlights Obtained a summary judgment of noninfringement following a Markman hearing for client PerkinElmer and its subsidiary NTD Labs, leading firms in the development of Down's syndrome screening technology, against competitor Intema.

Represented Genzyme in a $2.9 billion deal with Bayer, covering the acquisition and licensing of the cancer drugs Campath, Fludara and Leukine.

Notable practitioners  

Edward Kelly is a strong strategic patent practitioner. He works extensively with companies protecting intellectual property related to drug delivery devices, and has a technical background in hardware and software design. Sources describe him as "wonderful - charismatic and super-smart."

David McIntosh is highly rated for his superlative work in transactional intellectual property matters. One client describes him as a "smart guy, a pleasure to work with, really patient and very solution-oriented." His active clients include Genzyme, Synageva BioPharma and Skillsoft.

Edward Black is head of intellectual property transactions at the firm, and is highly rated in the field. One client states: "He has a remarkable commercial sensibility. I recommend him wholeheartedly, I wish I could use him for everything!" He represented Nexant in a number of technology acquisitions.

Significant clients AstraZeneca, Genzyme, Rovi, Skillsoft, Synageva.

第二等 |

What the team is known for Full-service intellectual property firm with highly rated litigation skills in chemical and electrical technologies. Rates highly for prosecution and litigation.

Strengths (Quotes mainly from clients)
"The firm gives great guidance internationally for both patents and trademarks."

"There is a great combination of partners and brilliant associates in the team."

Work highlights Defended Sony in the Eastern District of Texas in a patent infringement case, in which the firm secured a summary judgment invalidating one of the two patents at issue, after which the case was favorably settled.

Engaged by Modern Shoe Company to target and shut down 90% of websites offering counterfeit Ash footware or otherwise infringing. 

Notable practitioners  

Michael Rader is the cochair of the firm's litigation group. His clients are particularly pleased with his courtroom and negotiating skills, singling out his "ability to think really quickly on his feet and great command of the law" as particular strengths.

Edward Gates is an established practitioner in biotechnology, pharmaceutical and medical device technologies. His practice is patent-focused, and driven by patent procurement and transactional work. 

Significant clients Tootsie Roll Industries, Dana Faber Cancer Institute, Modern Shoe Company, MStar Semiconductor, Sony.

第三等 |

What the team is known for A comprehensive, well-integrated intellectual property team which works closely with other departments. Active in transactional intellectual property issues.

Strengths (Quotes mainly from clients)
"The firm provides a really high-quality product; its patent prosecution is particularly good."

"We use Choate Hall when we want other firms to pay attention to what we are doing." 

Notable practitioners  

The "very insightful" Robert Frank is a well-established senior litigator in the patent arena. He is respected and valued by clients and peers, particularly for his writing skills.

Brenda Herschbach Jarrell is a talented patent prosecutor, who is particularly notable for her skills and technical background in biotechnology. Clients value her "careful, thoughtful and creative" approach.

Eric Marandett is described as "very business-savvy and my first port of call for litigation" by a client. His practice is focused on biotech, pharmaceutical and hi-tech patent litigation and management.

Karen Copenhaver is highly rated for her extensive work in patent and software licensing and technology transfers. She is described by a client as "a national expert in open source and intellectual property licensing." 

Significant clients Shire, EMC, Momenta Pharmaceuticals, Celgene.

Band 3 | Clark & Elbing

第三等 |

What the team is known for Boutique practice showcasing deep expertise in biotechnology. Strong foothold among major universities and medical centers.

Strengths (Quotes mainly from clients)
"An excellent firm, which is held in very high regard."

"Clark & Elbing has a very strong practice, particularly in biotechnology." 

Notable practitioners  

The eponymous Paul Clark is rated by peers as a practitioner who is "top of the field for biotech patent prosecution."

第三等 |

What the team is known for Full-service, dedicated intellectual property firm. Strengths include biotechnology, pharmaceuticals, computer technology, mechanical and chemical technology, and trademarks.

Strengths (Quotes mainly from clients)
"The firm has a great reputation for complex IP matters." 

Work highlights Upheld a ruling in favor of AstraZeneca and Shinogi affirming the validity of patents covering the anti-cholesterol drug Crestor. 

Notable practitioners  

Denise DeFranco is one of the leading patent litigators of the Finnegan team. She represents a number of important clients in the medical device and electronics fields.

Michael McGurk is rated by sources for his extensive work in intellectual property transactions and due diligence. He works extensively with Eisai, providing counseling, investigation and patent prosecution services. 

Significant clients Biogen Idec, Boston Scientific Corporation, Cubist Pharmaceuticals, Nanotherapeutics, NueroPhage Pharmaceuticals.

Band 3 | Foley Hoag LLP

第三等 |

What the team is known for Maintains its reputation for a strong IP practice, particularly in the biotechnology area.

Strengths (Quotes mainly from clients)
"The firm has a good IP presence and a strong biotech prosecution base."  

Notable practitioners  

Donald Ware is the chair of the firm's intellectual property department and a veteran patent practitioner. His practice is mainly focused on intellectual property disputes and strategy.

Beth Arnold is described by a peer as "dynamic, with a lot of experience." Her practice is oriented towards patent prosecution, counseling and management in the pharmaceutical and biotechnology arenas.

Claire Laporte is a well-practiced patent litigator, who interviewees sum up simply as an "excellent trial lawyer."

Dana Gordon cochairs the firm's intellectual property group. He is a well-regarded practitioner who works in patent counseling and prosecution. 

Philip Swain is a resourceful and well-regarded patent litigator. His practical approach to litigation was summed up be a peer, who described him as "a street fighter."

第三等 |

What the team is known for A top-flight patent prosecution practice in the life sciences. Skilled in both patent and trademark litigation.

Work highlights Represented Christian Louboutin in high-profile fashion industry litigation involving 3D and color trademarks. Successfully upheld a ruling in the Second Circuit Court of Appeals in favor of their client.

Notable practitioners  

Lee Bromberg is a noted IP litigator. He has had signal success in recent years litigating in the trademark arena, in particular regarding the eligibility of color marks for registration.

Elizabeth Hanley is the leader of the firm's intellectual property and information technology practice group. Peers particularly praise her skill and experience in patent prosecution, with one highlighting her skill at "working with the USPTO; she knows how to go there and get patents."

Steven Davis is a highly experienced patent prosecutor, with a well-established practice prosecuting patents for the pharmaceutical industry.

Significant clients AbbVie, Hayward Industries, Harvard University, Princeton University.

Other Ranked Lawyers 其他上榜律师

Thomas Meyers of Brown Rudnick LLP is especially singled out for his subject matter expertise, with a client describing him as "one of the very best for life sciences." He focuses on strategic patent representation for pharmaceutical and biotechnology companies.

Joseph Maraia of Burns & Levinson LLP focuses his practice on engineering and biotechnology patent prosecution. Clients appreciate his hands-on approach, describing him as "very proactive and very practical."

Ivor Elrifi recently joined Cooley LLP from Mintz Levin Cohn Ferris Glovsky and Popeo PC and is appreciated by his clients for his strategic insight and leadership skills. He works in patent counseling, prosecution, transactions and litigation.

Matthew Lowrie of Foley & Lardner LLP is a well-experienced litigator and patent professional. A peer endorsed his practice, saying: "He does a very good job. I would hire him myself."

David Brook of Hamilton, Brook, Smith & Reynolds, P.C. is described as "a legend in his field" by peers. He is a hugely experienced practitioner in the life sciences, and is well respected as an IP strategist.

Joshua Krumholz heads the IP practice at Holland & Knight LLP. He focuses on patent litigation, and maintains an impressive trial record. Clients state that he is "superb; he brings common sense and has always been very thorough and detailed."

Giulio DeConti of Lathrop & Gage LLP is a prominent and well-regarded patent practitioner. His practice is primarily in patent procurement and transactions. Peers praise his organizational and practical skills, saying he is "an excellent leader."

Louis Myers of Lando & Anastasi, LLP is highly rated by clients and peers alike, with one highlighting him as "a very good practitioner and a very keen strategist." He works in patent prosecution and transactions, with a particular expertise in the life sciences.

Sarah Chapin Columbia of McDermott Will & Emery LLP is the head of the intellectual property litigation practice group. Clients say she is "smart and practical, with a good perspective on legal issues."

Robert Underwood of McDermott Will & Emery LLP works extensively in nonlitigious patent strategy and counseling for a number of important clients. His talents in the life science space are widely recognized. 

Steven Frank of Bingham McCutchen LLP directs his practice towards patent prosecution, transactions and analysis. His clients praise him for his efficient approach, describing him as "cost-effective, timely and quick to identify issues." 

Since publication, Steven J Frank has joined Morgan, Lewis & Bockius LLP

Jane Remillard of Nelson Mullins Riley & Scarborough LLP is highly rated by both clients and peers, who describe her as "very experienced, very bright, with an excellent understanding of the law." She is particularly praised for her skills in the pharmaceutical, biotechnology and chemical fields.

Thomas Engellenner of Pepper Hamilton LLP is praised by his clients for his technical abilities, with one saying: "He has a deep understanding of biotechnology, and really understands intricate and complex issues." His practice is focused on patent prosecution.

Reza Mollaaghababa of Pepper Hamilton LLP works extensively in patent prosecution. His clients particularly praise his technical knowledge, saying: "If you have a difficult problem, he is the guy!"

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.