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 Intellectual Property: Massachusetts
Intellectual Property: Licensing: Massachusetts 

Intellectual Property: Massachusetts

THE FIRM The Boston office of this high-powered national IP specialist firm is staffed by a sizable team of dedicated lawyers. Market sources speak with particular admiration of the team's prowess in patent litigation. Recent highlights include representing Bose in a patent infringement suit brought by SDI Technologies related to Bose's SoundDock system. Other notable clients include Boston Scientific, Genzyme and Siemens. 

Sources say: "I think it is an excellent firm; good attorneys who are responsive and provide good advice to us."

KEY INDIVIDUALS "Good patent attorney and hard worker" Frank Porcelli "is highly measured, thinks about things and when he comes to a conclusion it is the right one," say sources. In addition to patent law, his practice has a focus on trade secrets matters.

Frank Scherkenbach is representing Adobe Systems in a patent case brought by Everyscape about the Vanishing Point feature of Photoshop. He has particular expertise in litigation related to computer software, semiconductors and medical devices.

The "phenomenal" and "terrific" Robert Hillman is a patent litigator. His work focuses on a variety of technologies, including complex electronics and biotechnology.

THE FIRM This team earns strong market endorsement for its transactional and patent infringement work. It also advises a range of clients on patent prosecution and strategic patent portfolio development. Recent highlights include defending Cisco Systems in multijurisdictional suits brought by Teles regarding patents in the field of internet telephony. Other notable clients include Teva Pharmaceuticals, GE, IBM and JPMorgan Chase.

Sources say: "They are highly professional,pragmatic and responsive, and always give well-considered and profound advice."

KEY INDIVIDUALS Paul Ware is a "highly accomplished trial lawyer" who "gets high-profile cases because he is extremely good." He appears in substantial commercial, financial and IP litigation.  

Duncan Greenhalgh "knows biotech and the way it should be prosecuted," and is "known to get good results," sources say. His clients include CytoPherx, AVEO Pharmaceuticals and Cambridge Endoscopic Devices.

The "highly respected" Douglas Kline is a "great litigator" who is particularly recommended for his client handling skills. He is representing Helicos Biosciences in a case brought against three defendants relating to next generation DNA sequencing by synthesis.

Anthony Downs is chair of the firm's IP litigation practice. He recently defended Teva Pharmaceuticals in a patent infringement case brought by Pronova.

John Englander has particular expertise in representing clients in patent infringement claims involving semiconductor manufacturing tools, stem cell technology and generic drugs. Notable clients include Applied Materials and JPS Elastomerics.

Edmund Pitcher advises clients on a variety of IP matters, including patent portfolio development matters and patent litigation. He advises Diagnostics for All on matters relating to its IP estate worldwide.  

THE FIRM This team is commended by sources for its handling of high-profile and strategically key patent litigation cases. Recent highlights include winning a case in the US Supreme Court on behalf of Roche Molecular Systems regarding the effect of the Bayh-Dole Act on patent assignments. Other notable clients include Harvard University, Novartis Pharmaceuticals and Skyhook Wireless.

Sources say: "They have all impressed me from associates through partners; highly thorough and highly diligent."

KEY INDIVIDUALS "Super star" William Lee is "one of the biggest names in the Boston IP market," and receives enthusiastic praise for his trial skills. Recent highlights include representing Cubist Pharmaceuticals in Hatch Waxman patent litigation against Teva Pharmaceuticals.

Licensing specialist Michael Bevilacqua is "a great attorney and quite a fixture in the Boston market," sources say. His practice centers on technology-related agreements.

Peter Dichiara is "practical and exercises sound judgment." He is applauded as a "great adviser," and is the chair of the nanotechnology group.

The "excellent and effective" Lisa Pirozzolo is "as forceful as is necessary" and is "an impressive lawyer who does a good job." She is representing Becton Dickinson in patent litigation brought by MBO Laboratories.  

Wayne Stoner represents a wide range of clients in patent litigation. He recently represented Rosco in a case regarding mirror geometry.

Donald Steinberg has a good reputation for patent and trademark litigation and counseling. He is chair of the intellectual property department.

THE FIRM This team earns substantial market recognition for its advice to clients on the full spectrum of IP matters, including patent prosecution, due diligence and litigation. It recently represented Insulet in a patent infringement case regarding medical instruments for diabetes. Other key clients include Linux Foundation, Pfizer and Tufts University.

Sources say: "They are a good group with good technical backgrounds and working experience."

KEY INDIVIDUALS Karen Copenhaver advises clients on business transfers and licensing, particularly in the software sector. Sources recommend her client service skills.

Robert Frank "is smart, has great judgment, has really superior analytical abilities and is great on his feet," sources say. He is representing Momenta Pharmaceuticals in a case against Teva Pharmaceuticals.

Brenda Jarrell is praised for her "thoughtful, thorough and smart" approach in a range of disputes, transactions and general counseling matters. She has extensive expertise in the life sciences and biotechnology sectors.

Eric Marandett is "deeply steeped in the life science practice" and offers "tremendous judgment," according to sources. He is representing Wyeth in a patent infringement claim against Intervet.

THE FIRM This team receives consistently positive recognition for its expertise in patent litigation in the life sciences and biotechnology sectors. Recent highlights include representing Becton Dickinson in a patent infringement claim brought by Gen-Probe regarding an automated molecular diagnostics instrument and related patents. Other notable clients include Fresenius Medical Care, Massachusetts Institute of Technology and Third Rock Ventures. 

Sources say:  "They are good in the biotechnology sector."

KEY INDIVIDUALS Chair of the department Donald Ware is "a talented litigator, particularly on the biotech side," say sources. He recently successfully represented Biogen Idec in two claims against Sanofi-Aventis.

Claire Laporte recently represented GI Dynamics in a medical device patent case brought by W.L. Gore, and counter-claims. Clients praise her "detail-oriented" approach, "useful advice" and strategic litigation skills.

Beth Arnold is "a force of nature in the biotech area in Boston," according to sources. She specializes in patent prosecution, licensing and opinion work.

Dana Gordon focuses on patent prosecution and drafting patent opinions on non-infringement, invalidity and clearance matters. His clients include leading universities, medical device companies and pharmaceutical companies.

Philip Swain is "an effective litigator and a good lawyer," who is praised for his impressive skill set. He recently represented delfortgroup and others in a patent infringement investigation claim brought by Schweitzer-Mauduit International relating to reduced ignition proclivity cigarette paper.

THE FIRM This team maintains a strong profile across patent litigation, transactional compliance, portfolio development counseling and patent prosecution. Recent highlights include defending T-Mobile in infringement claims brought by NTP relating to wireless communications patents. Other key clients include American Honda, MKS Instruments and Viacom.

KEY INDIVIDUALS Steven Bauer is "a good IP attorney and a terrific litigator who has proven himself to be good with litigation strategy," clients say. His recent work highlights include representing Analog Devices in its dispute with Knowles Electronics regarding patents relating to microphones used in handheld electronic devices, including iPods and iPads.

Joseph Capraro focuses on patent and trademark prosecution, and technology licensing matters. He also has expertise in litigation and transactional work.

THE FIRM This group is held in high regard for litigation and rights management, and is a favorite for due diligence work. It recently provided due diligence support to AstraZeneca on a $1.2 billion transaction with Rigel Pharmaceuticals. Other notable clients include Bayer Healthcare, Monster.com and Xamarin.

Sources say: "They had an understanding of our issues and I found the guidance excellent."

KEY INDIVIDUALS Edward Kelly has a particularly good reputation for his work before the Board of Patent Appeals and Interferences of the US Patent and Trademark Office. He also has extensive expertise in representing clients during investments and in licensing matters.

Edward Black recently advised Oscar de la Renta on its restructuring process. Sources admiringly note his strength in managing IP assets.

THE FIRM The Massachusetts branch of this national IP boutique continues to receive praise for its mastery of patent prosecution and litigation. It has particular expertise in advising clients in the biotechnology and pharmaceutical sectors. Clients include AstraZeneca, Vertex Pharmaceuticals and Philips Electronics North America.

Sources say: "They live and breathe patent work."

KEY INDIVIDUALS The "engaged and enthusiastic" Denise DeFranco "really knows her stuff." She recently represented Boston Scientific in a patent infringement case against three of its major competitors for the supply of stents for use in the digestive system.

THE FIRM Sources recognize this team for its patent prosecution and litigation work. Recent highlights include successfully representing Archer Daniels Midland in a patent infringement case regarding road de-icing products. Other clients include American Express, ITA Partners and Polartec.

Sources say: "I received great advice, fine interaction and a wonderful product."

KEY INDIVIDUALS Thomas Turano has a good reputation for IP counseling and patent prosecution. His recent highlights include filing and prosecuting numerous patent applications for LightLab Imaging.

THE FIRM This team has a notable practice representing clients in the life sciences and hi-tech sectors in a range of patent prosecution, protection and counseling matters. Recent highlights include counseling Eisai on due diligence relating to its acquisition of TransMolecular assets. Other clients include Abbott Laboratories, GlaxoSmithKline and Harvard University.

Sources say: "They are timely, follow up and are responsive. They also scope a project so as to preserve our resources and efficiently get a job done."

KEY INDIVIDUALS Lee Bromberg is "a great lawyer" and "highly knowledgeable," according to sources. He is well known in the community for his litigation work, which has recently included filing an amicus brief on behalf of the Boston Patent Law Association in a case regarding the patentability of gene sequences.

Elizabeth Hanley has particular expertise in chemistry and biotechnology patent law. She is often called upon to advise and give opinions on matters such as patent prosecution, patentability, freedom to operate and validity.

Steven Davis is "autonomous, thorough and thoughtful," according to clients, who include universities, startups and pharmaceutical corporations.

THE FIRM The Boston office of this boutique IP firm advises clients on a range of matters, including the acquisition, prosecution and enforcement of IP rights. Key clients include Dana Farber Cancer Institute, Microsoft and Tootsie Roll Industries.

Sources say: "It is a specialized IP boutique firm and it has really deep expertise in many different fields of IP."

KEY INDIVIDUALS Timothy Oyer is a key contact at the firm.

Thomas Meyers of Brown Rudnick LLP is commended by clients for his "transaction-oriented" approach and his "excellent productivity and high quality of work." He focuses on representing pharmaceutical and biotechnology companies.
Giulio DeConti of Lathrop & Gage LLP is a "seasoned biotech veteran" who has "been in the trenches with biotech companies for a long time and has seen and done much." His clients include a mix of large pharmaceutical companies and midsized biotechnology startup companies.
The "highly practical" Sarah Chapin Columbia of McDermott Will & Emery LLP focuses on heavyweight IP litigation. Her recent work highlights include representing Seikagaku and Zimmer in a patent suit against Genzyme.
Robert Underwood of McDermott Will & Emery LLP is, say sources, "highly approachable, available and friendly" and "knows his clientele well." He gives strategic IP counseling and patent prosecution advice to Novartis Vaccines & Diagnostics.  
Ralph Loren of Edwards Wildman Palmer LLP focuses on litigation, licensing and patent prosecution matters. His expertise in prosecuting patents includes the areas of biochemistry, biotechnology, nutrition and immunology.
Steven Frank of Bingham McCutchen LLP is "able to distil highly complicated patent issues to us and the other side in a strong and forceful way without being arrogant," clients say. He advises clients on the full range of IP matters including strategic transactions and patent prosecution.
Ivor Elrifi of Mintz Levin Cohn Ferris Glovsky and Popeo PC has a particularly good reputation in the life sciences area. He advises clients on patent prosecution, litigation and transactions.
"Talented life sciences lawyer" Louis Myers of Lando & Anastasi, LLP is "wonderful and highly creative," according to sources. He advises companies of all sizes and has notable expertise in counseling venture fund financed startups on strategic matters.
Thomas Engellenner recently joined Pepper Hamilton from Nutter McClennen & Fish. He "does a good job," say sources.
Joshua Krumholz of Holland & Knight LLP focuses on IP litigation. His recent highlights include obtaining a summary judgment for Sig Sauer in two suits brought by Adam Arms.
John Lanza of Foley & Lardner LLP focuses on providing clients with strategic advice on the acquisition, transfer and enforcement of IP rights. Sources praise his expertise in the field of electronics patents.
Paul Clark of Clark & Elbing is a "strong long-term practitioner," sources say. He advises clients in the biotechnology and pharmaceutical sectors on a range of IP matters, including transactions, patent prosecution and re-examination.

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