Intellectual Property: Pennsylvania

THE FIRM Woodcock Washburn is the largest and best-regarded IP boutique in the region and despite some recent departures has maintained an outstanding breadth and depth of practice. The firm works with clients such as Microsoft, DuPont and the University of Pennsylvania across myriad industry sectors, including pharmaceuticals, chemicals, media, software and nanotech. As well as the full range of trademarks and copyright, patent procurement, prosecution and licensing, the team has experience in representing clients in patent infringement investigations before the ITC and in various types of litigation.  

Sources say: "An exceptional firm." 

KEY INDIVIDUALS Senior partner Dale Heist is a skilled patent litigator acting on the side of both plaintiffs and defendants in patent infringement disputes. He has particular experience in matters of electrical engineering and is admitted to practice before the Supreme Court. Peers say they "can't praise him highly enough." John Donohue draws on his experience as in-house counsel at a manufacturing company to provide clients with "business-sense solutions" to patent, trademark and copyright disputes. He focuses on representing companies in the computer, telecom and electronics industries, and is the firm's relationship partner for DuPont. Steven Rocci concentrates on the IP of business methods and database and Internet technologies. He represents Microsoft in litigation and is described by peers as a "great lawyer." Current chair of the trademark and copyright practice, Nancy Frandsen spends most of her time advising clients involved in IP disputes, notably in the areas of unfair competition, trade dress and cyberpiracy. Joseph Lucci is an expert in patent prosecution, interference and litigation. Described as a "smart, high-quality attorney," he often acts for clients in the pharmaceutical and medical device industries. David Wolfsohn chairs the litigation group and is an accomplished generalist in IP litigation, variously handling cases relating to trademark and copyright infringement, unfair competition, licensing and trade secrets. Sources comment on his "wonderful combination of technical knowledge and ability to connect with a jury and clients." 

THE FIRM This Philadelphia boutique firm specializes in IP and IT law. Its attorneys represent and counsel clients in all aspects of patents, trademarks, copyright and licensing relating to pharmaceuticals, chemicals, electricals and computing. Specifically, the firm has a vibrant biotech disputes practice and particular expertise in representing generics in Abbreviated New Drug Application (ANDA) litigation under the Hatch-Waxman Act.

KEY INDIVIDUALS An "icon in Philadelphia," Manny Pokotilow is a specialist electrical engineer focusing on advising companies in the telecom, computing and hi-tech industries. Martin Faigus is a patent prosecution and licensing attorney focusing his practice on the mechanical arts and computer and Internet science. His work covers a significant amount of advice on transactional matters as well as disputes. Robert Silver is heavily involved in the representation of generic pharmaceutical companies in Hatch-Waxman Act/ANDA litigation. He also has a notable domestic and international patent prosecutions practice. Barry Stein is a generalist IP attorney acting for clients in the electrical, computer, Internet, IT and medical fields. He has particular expertise in patent prosecution and commercial issues involving computer systems, e-commerce and communications. Trademark and copyright attorney Stanley Cohen is a senior figure in the practice and is regarded as the "ultimate gentleman and professional."

THE FIRM Dechert's IP group advises blue-chip companies and global brands on IP issues, with clients attracted to the international firm's breadth of practice and global presence. The Philadelphia team is well regarded for its IP litigation practice, especially in the realm of pharmaceuticals ANDA litigation. Clients include TAG Heuer, Hitachi Consumer Electronics and GlaxoSmithKline.

Sources say: "Performs at a top level with major national clients."

KEY INDIVIDUALS Glenn Gundersen is a trademark and copyright attorney who acts for some of the biggest global brands on both US and international trademark enforcement, clearance and aspects of trade dress. His clients include TAG Heuer and The Ivy League. Martin Black chairs the group and focuses his practice on pharmaceutical and electronics patent litigation, for clients including GlaxoSmithKline, Hitachi and Pfizer. He has particular expertise in Hatch-Waxman litigation and other copyright and trade secrets disputes. Kevin Flannery is also a patents and trade secrets litigator experienced in medical devices, pharmaceuticals, electronics, computer software and consumer products. He represents branded pharmaceutical companies, including Endo Pharmaceuticals, in Hatch-Waxman/ANDA litigation.

THE FIRM The 18-lawyer Pennsylvania IP practice at this national firm is equally adept at counseling on patent, trademark and copyright issues and at handling IP litigation, with a particular emphasis on the defense side in recent times. Its clients include such major names as GE, Urban Outfitters and Amazon.com.

Sources say: "We can be confident that our scientists can talk to their attorneys and translate things effectively."

KEY INDIVIDUALS Gregory Lavorgna is well respected in Philadelphia both as a litigator and as counsel. He advises on the protection and enforcement of IP, and recently defended several clients in patent infringement litigation. Clients describe him as "a super attorney of high character." Peers describe John Marshall as an "extremely smart litigator." His niche specialties include advising insurance underwriters of IP risks in business transactions, and handling patent litigation arising from representations and warranties. Peers respect his calm approach and ability to understand juries. Robert Koons is counsel to domestic and foreign companies in the chemicals, plastics, electronics and semiconductor industries, among others. He handles IP, trade secret, antitrust and unfair competition disputes and also a fair amount of patent prosecution. Life sciences specialist Daniel Monaco is praised for his expertise in biochemical patent prosecution, protection and licensing. Clients comment on his "crystal-clear advice, not only regarding the patentability of an invention but also the larger picture of potential market and regulatory hurdles." Robert Cannuscio advises clients regarding mechanical and electromechanical devices, system processing and computer and Internet technologies. He also has particular expertise in aircraft/aerospace engineering. Sources label him "an excellent attorney whose prosecution and litigation experience reinforce each other to provide good value to his clients."

THE FIRM This Philadelphia-based boutique handles a spectrum of IP litigation and counseling for both foreign and domestic clients working in numerous industry sectors. The firm emphasizes the transactional side of the practice and is renowned for its patent prosecution work.  

Sources say: "There is lots of depth in the firm, yet at the same time it is a boutique small enough that you get individualized attention."

KEY INDIVIDUALS Alan Nadel advises clients in the mechanical, bioscience and chemical industries on patent prosecution, protection, commercialization and disputes. He is frequently called upon to prepare US patent applications for foreign companies. Clients comment on his personable nature and impressive knowledge of international IP law. Ronald Panitch is "a trusted adviser and counselor" who devotes his practice to patent and trademark licensing and general advice. In addition to directly representing clients, Panitch has also served as an expert witness in IP disputes. Sources note: "He's an excellent negotiator; I've never met anyone with a greater command of patent law." Martin Belisario handles noncontentious IP matters concerning the mechanical arts, including heating, ventilation and air conditioning (HVAC) systems, medical, software and electromechanical devices. He has recently been focusing on product clearance work alongside patent portfolio management. Clients comment on his "strong business orientation and common-sense approach to legal matters." William Schwarze has expertise in pharmaceutical and chemical IP. He possesses an "excellent technical understanding" in these fields and offers clients "great experience concerning tactics" of patent portfolio management, licensing and prosecution. As a fluent German speaker, he counsels many clients from this country. Clark Jablon spent eight years as a patent examiner with the USPTO. Now in private practice, he concentrates on electronics, computer and Internet technologies and business methods on both the transactional and litigation side. Clients comment that he "excels at writing patent claims in a collaborative way that captures the essence of the invention." 

THE FIRM This international firm focuses its Pennsylvania IP practice on guiding clients through litigation and other contentious issues. With the recent acquisition of lawyers from Woodcock Washburn, the firm has particular depth in pharmaceuticals and life sciences patent disputes.

KEY INDIVIDUALS Dianne Elderkin specializes in patent infringement cases concerning pharmaceuticals, medical devices, diagnostic methods and consumer products. She has extensive trial experience and in 2009 won a $1.67 billion damages claim in favor of her client against Abbott Laboratories. One peer commented that Elderkin is "one of those attorneys you want people to think of when they think of the Bar," while clients say: "She's smart with good judgment and a very good style."

THE FIRM This firm has a diverse bench in its Pennsylvania IP group, with attorneys handling a variety of contentious and noncontentious patent, trademark and copyright issues in industries including biosciences, materials, chemicals, polymers, electronics and telecom.

KEY INDIVIDUALS Peter Cronk is an IP generalist advising clients on everything from trademark disputes to technology transfer, although he is primarily known for his patent litigation practice. He has particular expertise concerning building materials, glass fabrics and medical devices. Peers describe him as "an excellent patent litigator and a respected member of the Bar."

THE FIRM Eckert Seamans' IP team is divided between the firm's outposts in east and west Pennsylvania. The Pittsburgh practice is oriented toward patent prosecution work with an emphasis on mechanical, electrical and chemical arts, while in Philadelphia the mainstay of the practice is trademarks, particularly regarding e-commerce, and life sciences patent work.

KEY INDIVIDUALS "The best known trademarks attorney in Philadelphia," Roberta Jacobs-Meadway splits her practice between litigation and counseling on protection and commercialization of IP, including questions of trade dress and unfair competition. Clients say her "talent is beyond question." Jay Meadway is an expert at managing international trademark portfolios, advising on questions of protection of trademarks and associated transactional work. He speaks fluent German and acts for clients across Europe, North America and Japan. Richard Peirce has a "solid knowledge base" in matters of e-commerce and Internet trademark issues such as cybersquatting.

Since publication, Jay K Meadway has left this practice.

THE FIRM This international firm houses a 35-strong Pennsylvania IP team in its Pittsburgh office. It has a significant patent prosecution practice with attorneys qualified in the chemical and electrical arts, among others. It also advises on contentious and noncontentious trademark and copyright issues. On the transactional side, attorneys handle IP due diligence and negotiate complex IP acquisition agreements.

KEY INDIVIDUALS IP litigator James Kyper counsels clients involved in trademark and copyright disputes, as well as handling other commercial litigation. Patrick McElhinny also concentrates on IP litigation. His expertise relates to patent infringement, trade secrets and copyright disputes. His clients include Abercrombie & Fitch.

THE FIRM Pepper Hamilton has a strong reputation in IP litigation across the spectrum of patents, trade secrets, trademarks and copyrights. A regional firm, it has offices in Berwyn, Harrisburg, Philadelphia and Pittsburgh, with the Berwyn office concentrating on patent prosecution. It recently successfully defended ADT Security Services against a multimillion-dollar patent infringement claim. On the transactional side, sources note the firm's ability to act on questions of financing and corporate issues concerning emerging companies. 

Sources say: "We don't usually like to deal with the patent department of a large firm but they are an exception - they do a good job of acting like a patent-only firm."

KEY INDIVIDUALS Kelly Tillery has developed a strong practice in the area of anticounterfeiting and is known as the "go-to guy in Philadelphia" for seizure and injunction actions. His expertise also covers trade secrets litigation and IP arbitration, where he sits as an arbitrator. Paul Kennedy also focuses part of his practice on anticounterfeiting and frequently appears before the Trademark Trial & Appeal Board in patent prosecution matters. "A very fine attorney," Mark DeLuca acts for major pharmaceutical companies including Pfizer and Colgate-Palmolive in patent prosecutions; he also advises technology clients on patent protection, technology transfer and questions of IP portfolio management.

THE FIRM RatnerPrestia adopts a distinctly international approach to its IP practice. It has forged particular links in China and Germany, and represents clients including Crayola, Panasonic and Porsche. The firm predominantly handles patent prosecutions alongside transactional advice, IP strategy, risk management and some litigation from its two Pennsylvania offices in Allentown and Valley Forge.

KEY INDIVIDUALS Benjamin Leace's expertise encompasses computer architecture, software and semiconductors. "He's smart and can explain things well both to clients and in the courtroom," say sources. Kenneth Nigon has extensive experience in patent prosecution in the computers and electronics fields. He recently defended several patents under ex parte reexamination, and is regarded by peers as "a great lawyer."

THE FIRM This firm has a global presence with offices across the USA, Europe and Asia from which it advises on IP matters from transactions and licensing to patent prosecution and litigation. The Pennsylvania team focuses primarily on patent issues.

KEY INDIVIDUALS Frederick Colen litigates US and foreign trademark, copyright and patent disputes before state and federal courts. In addition to litigation, he also counsels clients on licensing matters. William McNichol's experience lies in advising clients in the biotech and medical technologies industries on patent prosecution and reexamination, trademark registration, and preparing patent validity and infringement opinions.

THE FIRM This dynamic patent boutique has been growing over the last few years and has developed a major presence in Philadelphia. The firm has a deep patent application, prosecution and licensing team, especially regarding electronics, small components and mechanical devices. The firm is also active in false marking litigation. Almost a quarter of the work undertaken by the team involves foreign companies and its attorneys speak a variety of languages, including Spanish, Korean, Mandarin and Hindi.

Sources say: "They're able to break out of the box and be innovative."

KEY INDIVIDUALS Anthony Volpe handles a mix of dispute resolution and transactional counseling and has particular expertise in litigation in the mechanical arts field. Sources describe him as "a terrific lawyer and a capable patent litigator."

THE FIRM Ballard Spahr's IP group is sought as counsel on trademark and copyright questions. The firm has an active e-commerce practice that advises on domain name misuse, social media-related brand management and IP enforcement strategies. Philadelphia attorneys also handle a significant number of copyright and patent infringement cases on a national basis.

Sources say: "If I run into a problem they are the first people I call."

KEY INDIVIDUALS Lynn Rzonca focuses on litigating patent, trademark, false advertising and trade secret cases. She also counsels clients on IP portfolio management. Clients comment on her "great demeanor and practical business sense. She provides us with a great measure of reasoned advice and counsel." She is defending several patent false marking claims. Another litigator, Hara Jacobs represents clients in trade dress, trade secret, false advertising, trademark and patent disputes.

THE FIRM This midsize firm has offices across Pennsylvania, New Jersey and Delaware and handles contentious and noncontentious work in fields of expertise which include pharmaceuticals and chemical engineering. Clients include American Standard Brands, which the team advises on patent application and prosecution. 

Sources say: "We treat the firm as a partner. It is a valued, trusted adviser."

KEY INDIVIDUALS Jordan LaVine is regarded by peers as a "real solid trademark attorney" with "great instincts," who blends advice on unfair competition, worldwide portfolio management and litigation into his practice. One source commented: "I can send stuff to him and know it's taken care of." LaVine advises Ancestry.com Operations on its Internet IP disputes regarding misuse of its trademarks. Lynda Calderone's background in chemical engineering is much appreciated by clients, who seek her advice on patent prosecution, litigation and transactional issues. "She's brilliant – she can articulate the nuances of the patent area and she really understands the process of innovation and issues of bringing a product to market." Abbe Fletman is a commercial litigator focusing particularly on trademark and copyright disputes. Clients note her "outstanding legal judgment – she developed a rapport with the judge and did a great job of defending our case."

THE FIRM This Pittsburgh-based IP boutique advises on a range of contentious and noncontentious IP issues including patents, trademarks, copyrights, unfair competition and trade secrets.

Sources say: "It has a good reputation as a solid patent boutique."

KEY INDIVIDUALS Richard Byrne has a broad IP practice that encompasses patent and trademark applications, protection and enforcement. He is admitted to practice before the US Supreme Court and the US Court of International Trade. Kent Baldauf advises clients on patents, trademarks and copyrights. He has particular expertise in metallurgical engineering and is also admitted to practice before the US Supreme Court. John McIlvaine counsels on patent procurement, enforcement, trademarks, licensing and related litigation, and has expertise in the field of petroleum engineering.