Intellectual Property: Ohio

THE FIRM Drawing on exceptional resources from across the globe, this firm's Ohio IP practice centers on Cleveland, where its practitioners have strength in soft IP and trade secrets, among other things. Its impressive litigation capabilities are a major asset to clients looking to contest matters, and the team continues to do important work for Procter & Gamble, such as advising on a false patent marking action challenging dental floss products. It has also advised Brush Wellman and Emigrant Bancorp on trade secret suits, and Eastman Chemical on patent litigation.

Sources say: "Clearly thought of as the leader in the state." "Its litigation practice combined with its strength in IP is hard to beat."

KEY INDIVIDUALS Based in Cleveland, Robert Ducatman is particularly well respected for his work in trade secrets and noncompete agreements. He led on the Brush Wellman and Emigrant Bancorp matters.

Calvin Griffith handles the full range of IP matters, including patents, trademarks and trade secrets. He is also experienced in the antitrust arena.

James Wamsley is especially well known for high-tech patent infringement litigation, particularly involving electronics and computer-related products.

THE FIRM This firm works with major companies on IP strategy, advising on how best to protect their assets, from patent prosecution to litigation. It continues to advise Invacare on a major piece of litigation involving sleep apnea machines. Another significant engagement saw the firm represent Lincoln Electric on two patent infringement suits. Other important clients include Fortune Brands, American Greetings and RPM International.

Sources say: "They are able to bring a unique perspective and strategy while remaining cost-effective."

KEY INDIVIDUALS John Cipolla leads the group. He advises on strategy, enforcement and defense of patents and trademarks. He led on the Lincoln Electric matters, and advised Fortune Brands on its patent prosecution and IP strategy for associated entities.

Senior statesman Charles Lyon has a wealth of experience in IP and technology matters, covering both patents and trademarks. He continues to advise Invacare, and co-led with John Cipolla on the Lincoln Electric matters.

THE FIRM This firm has a large IP practice, with particular strengths in patent protection and opinion, portfolio management and matters associated with M&A. It also has an active litigation practice. Many of its clients are to be found in the biomedical sphere; however, it also acts frequently on behalf of major food and beverage companies.

KEY INDIVIDUALS Steven Goldstein is especially well known for patent prosecution work, and for his experience in international patent matters.

David Schmit is "a well-respected litigator on the patent side." He also handles trademark, copyright, trade secret and unfair competition matters.

Karlyn Schnapp has a focus on patent prosecution in the pharmaceutical sector, drawing on her expertise in organic chemistry, in which she has a PhD.

Clients value Ann Schoen for her "nonconfrontational, methodical style" and "understanding of the business aspects" of IP management.

THE FIRM This IP boutique acts out of Cincinnati, where its expertise and bench strength make it go-to counsel for many major national and international clients. Among its impressive stable of clients, names such as American Eagle Outfitters, Wal-Mart, IBM and Goodyear stand out. The firm is especially well known for patent prosecution and litigation, although its teams handle the full range of IP matters.

Sources say: "They have real IP depth." "I trust them implicitly, they're just terrific. On target, on schedule, on budget."

KEY INDIVIDUALS Kenneth Germain is an expert on trademark matters, offering counseling and litigation support. He is also frequently called upon to act as an expert witness on trademark and unfair competition matters.

Stephen Gillen is exceptionally well respected for his work on copyright issues. Commended for his "good business sense," his practice is supported by extensive experience in the publishing industry.

David Brinkman has a particular focus on electrical and mechanical technologies. He is lead contact for several of the firm's clients operating in these spaces.

Lori Krafte has a notable specialty in advertising, media and internet law. She advises on privacy, trademarks, copyrights and domain name disputes.

Gregory Lunn has particular expertise in the chemical industry, handling patent infringement matters and opinion work.

Kathryn Smith handles domestic and international trademark, copyright, internet and related media, e-commerce and advertising matters.

THE FIRM This firm draws on its national presence to advise clients on IP matters within Ohio and across the country. Its practitioners have particular strength in patent infringement defense, representing major institutions as far afield as Georgia, Florida and Texas. The team has handled major litigation for Funai, including patent infringement actions in the Northern District of California and the Eastern District of Texas. Cincinnati Bell continues to bring in important work, engaging the firm to defend it in a patent infringement case in Ohio and obtain declaratory judgments on its behalf in Texas and Oregon. A major mandate saw the firm advise Google in a patent infringement case relating to Google Maps for Mobile.

Sources say: "Service levels are 10+. I get an immediate response, it's really incredible."

KEY INDIVIDUALS Kevin Kirsch is described as "very bright, articulate and able to show his teeth when appropriate." He led on the Funai and Cincinnati Bell matters, and also advised Tesseron as plaintiff in patent litigation brought in the Middle District of Florida.

Clients value the ability of David Mancino to "quickly understand what patents mean and extrapolate the impact." He regularly acts as lead technical counsel on high-profile infringement suits; in addition to those mentioned above, he advised Dopaco on an action for declaratory judgment brought against it by Ample Industries in the Southern District of Ohio.

Since publication, John Mueller has joined the firm from Taft Stettinius & Hollister LLP. He is commended for his "extensive trademark knowledge," although he is also experienced in patent, copyright and trade secret issues.   

THE FIRM This Cincinnati firm's IP group advises on contentious and noncontentious patent, trademark, service mark and copyright matters. This full-service practice also handles issues relation to licensing, computer software and hardware, e-commerce, trade secrets, trade dress, antitrust and franchising.

KEY INDIVIDUALS Lynda Roesch is "very well respected in the trademark area," according to sources. She is particularly active in contentious matters.

Karen Gaunt, a recent acquisition from Wood Herron, is especially highly regarded for her trademark work. In addition to her significant experience in litigation and transactional matters, she also negotiates computer software licensing, outsourcing and R&D agreements.

THE FIRM This firm's IP practice is regularly engaged to undertake global trademark portfolio management and enforcement by clients such as Fruit of the Loom, Hill-Rom and Zeltiaq Aesthetics. The group also has a strong presence in the pharmaceutical sector, handling the valuation of patent portfolios for in-licensing, out-licensing, enforcing, defending and monetizing assets.

Sources say: "They are very thorough and always work to improve customer satisfaction."

KEY INDIVIDUALS Beverly Lyman is roundly praised by clients for her business acumen and excellent technical knowledge, especially in organic chemistry. One source commented: "I cannot use enough superlatives. She's perfect." Lyman handles patent evaluation, enforcement and prosecution in the chemical, medical and life science arenas.

Louis Ebling "always makes you feel like you are his most important client. He's laid-back, smart, thorough and very responsive." He has a particular focus on international trademark matters, advising Tandem Diabetes Care on its global portfolio management and enforcement.

Mark Levy is well regarded on the patent side, and also handles joint ventures, technology transfer licensing, infringement opinions and litigation.

THE FIRM This group is best known for patent litigation, handling both plaintiff and defendant representations, although it also handles trademark and copyright disputes. It recently advised Alamo Group on the defense of patent infringement claims at federal level, and Eaton on a false patent marking lawsuit filed in the Eastern District of Texas. Other major clients include Bridgestone and Kodak. The firm's Shanghai office adds capacity when cases have an international dimension.

KEY INDIVIDUALS Mark Avsec is a key contact.

THE FIRM This Akron-based team provides IP advice to major local, regional and international clients, with particular strength in patent prosecution and litigation. It manages globally Lincoln Electric's portfolio of patent applications, trademark prosecutions and domain name disputes. It is also handling patent matters on behalf of GE Transportation and Electrolux, and continues to advise Moosehead Breweries on procurement and enforcement of brands.

Sources say: "They try to understand our business and then work with us on each project to meet our objectives."

KEY INDIVIDUALS Mark Watkins is a key contact at the firm.

THE FIRM This Cleveland-based IP boutique handles patent, trademark, copyright, trade secret and unfair competition matters. It is most widely recognized on the patent prosecution side, where the firm has extensive experience in electronics, software, biotechnology, nuclear science and chemistry.

KEY INDIVIDUALS Jeffrey Sopko handles domestic and international patent, trademark and copyright prosecution, litigation and licensing, and has experience in the nuclear and mechanical and electronic device fields.

Stephen Wentsler focuses on mechanical, electromechanical and biomedical patents, providing validity and infringement opinions and handling patent prosecution domestically and internationally.

THE FIRM This boutique firm comes particularly recommended for complex patent litigation, although its team also handles trademark, copyright, unfair competition and related antitrust matters. The practice is based in Cleveland.

Sources say: "Known for sophisticated litigation."

KEY INDIVIDUALS Donald Otto is the managing partner of the firm.

THE FIRM This firm's recent merger with Chester, Willcox & Saxbe adds capacity in the Columbus market to its traditional strength in Cincinnati. The group handles all IP matters, including trademark registration, patent licensing and software development, for the National Stock Exchange. Contentious work is a major strength, with the firm handling a variety of patent infringement and unfair competition cases in Ohio and throughout the region for clients such as HMI Industries. The IP group has also been engaged to act as counsel to brands with major international operations, including Knauf Insulation.

KEY INDIVIDUALS Margaret Lawson handles trademark, trade secret, copyright and right of publicity matters. In addition to acting as counsel to Knauf Insulation, she advises brands such as AeroMetric and Furminator on licensing, patents, trademarks and copyright.

Susan Rector of Ice Miller LLP is roundly praised by clients for her knowledge and responsiveness. "She's a great communicator, very practical and she just gets to the nuts and bolts of the issue." She advised Fahlgren on trademark and copyright matters as well as the defense of a business method patent infringement suit. She also frequently advises startups on licensing issues.
Holly Kozlowski of Porter Wright Morris & Arthur LLP is praised for her expertise in patent law, especially preparation and prosecution. She has advised Phadia on patent application and licensing and the defense of trade secret violation assertions.
Joseph Dreitler of Dreitler True, LLC handles all aspects of trademark, copyright, advertising and internet law, including counseling, prosecution, transactional matters and litigation.
James Pingor of Kegler, Brown, Hill & Ritter has a particular focus on patent preparation, processing and procurement, advising clients such as Heinz Reisser and Ridge Corporation. "He's very thorough, gets everything done and doesn't waste time."
Since publication Steven Auvil has joined Squire Sanders (US) LLP from Benesch, Friedlander, Coplan & Aronoff LLP. Clients describe him as "very open and quick to suggest unique and different ways to address issues." He focuses on litigation, often with respect to the patent area.
Richard Killworth recently became a sole practitioner after leaving Dinsmore & Shohl. Senior statesman Killworth focuses on the patent side, including litigation, licensing and chemical patent prosecution. He is frequently called upon to act as an expert witness.   

Future Events 

16th May 2013: GC Seminar, London Sponsor-backed IPOs: IPO Exits of Portfolio Companies

21st May 2013: GC Seminar, New York Hackers Are After Your Data!: Practical Ways To Reduce Data Security Breach Exposure

23 May 2013: Chambers USA Awards for Excellence 2013, New York 

24 May 2013: Launch of Chambers USA 2013, New York and online

29th May 2013: GC Seminar, New York Going Mobile: IP and Privacy Considerations

4th June 2013: GC Seminar, Houston Challenges in Creating An Effective and Coordinated Global Compliance Program

9 September 2013: Chambers Latin America Awards 2013, Miami

10 September 2013: Launch of Chambers Latin America 2014, online

3rd October 2013: Chambers Bar Awards 2013, London

 

Chambers News

10 May 2012: Chambers Europe Awards for Excellence, Amsterdam