Patents: Prosecution (including Re-examination And Post-grant Proceedings)

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Firms To Watch: Patents: prosecution (including re-examination and post-grant proceedings)

Foley Hoag LLP‘s patent prosecution practice has been consolidated in Boston with the August 2023 arrival of IP and life sciences specialist Amy Baker-Mandragouras from Cooley LLP.
Goodwin‘s patent prosecution collective has been significantly bolstered with the arrivals of Pittsburgh-based Alicia Palladino and Philadelphia’s Daniel Scolnick and Timothy Atkins from Troutman Pepper in February of the same year.
The patent prosecution team at Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. has been bolstered with the 2023 arrivals of San Diego-based Lee Johnson from Wilson Sonsini Goodrich & Rosati in April and Boston-based Jenny Chen who joined from McDermott Will & Emery LLP in October.

Patents: prosecution (including re-examination and post-grant proceedings) in United States

ArentFox Schiff

ArentFox Schiff‘s patent prosecution group is led by Richard LaCava from New York who harnesses impressive expertise in the handling of the prosecution, procurement and enforcement of patents across a range of industry sectors. His team is well-regarded for its ‘first-class service and state of the art knowledge base’ and ably manages portfolios and related complex transactional matters. The team’s client list ranges from start-ups to multinational corporations and includes such well-known names as Mars and Microsoft. The team has presence on both the East and West Coast. Alongside LaCava in New York are Marylee Jenkins (extensive IP expertise); ‘fantastic attorney’ Paul Maier and IP specialist Michael Scarpati (biotech, pharma and diagnostics focus). ‘Standout partner’ Craig Gelfound splits his time between the firm’s San Francisco and Los Angeles offices. Attorneys to note in Washington DC include Richard Berman who is equipped to handle litigation, transactions and prosecution in the chemical, pharma and biotech spheres; James Bindseil who assists on both domestic and international IP matters; Wilburn Chesser; January 2024-promoted partner Brian Stevens; and Anna Lloyd who has experience handling PTAB cases. John K. Hsu departed from the DC office in March 2023 to an in-house role.

Responsables de la pratique:

Richard LaCava


Autres avocats clés:

Craig Gelfound; Paul Maier; Marylee Jenkins; Richard Berman; Anna Lloyd; Johnny Ma; James Bindseil; Wilburn Chesser; Michael Fainberg; Michael Scarpati; Brian Stevens; Michelle Mancino Marsh; Brian Stevens; Jasjit Vidwan


Les références

‘Paul Maier is a fantastic attorney – extraordinarily knowledgeable about patent law, he provides great advice accounting for variations in patent law in different jurisdictions.’

‘First-class service and a state of the art knowledge base. Worked well with us.’

‘Experience and knowledge levels are high. Craig Gelfound is a standout partner.’

Principaux clients

Advance Battery Concepts


Alfred Mann Foundation


Analog Devices, Inc.


Becton Dickinson


BioLPG LLC


Bridgelux


Cardinal Health, Inc.


Cole-Parmer (Antylia Scientific)


Divergent Technologies, Inc.


Global Legal Community


Grass Valley


Johnson Controls, Inc.


Mars, Inc.


Microsoft Corporation


Munchkin


Nicox SA


Omnitracs LLC


Osram


Par Pharmaceutical


Power Integrations


Qualcomm Inc.


Rothy’s, Inc.


Scosche Industries


Vale S.A.


Western Digital and SanDisk


Principaux dossiers


  • Advising Qualcomm on its development of new-generation “5G” communications tech, and “internet of things” initiatives.
  • Drafting and prosecuting patent applications relating to various devices, cloud-computing, blockchain tech, operating systems, laptops, and graphics processing tech for Microsoft.
  • Advising Cardinal Health on the range of IP work, including extensive patent portfolio management, freedom-to-operate analyses, transactional matters relating to new medical tech, and privacy matters.

Fenwick & West LLP

Fenwick & West LLP‘s patents team has a strong reputation for its impressive capabilities handling the gamut of work; one client remarked that it was 'successful in getting us patents issued that we never thought were possible'. The practice has Michael Farn and Rajiv Patel, described by clients as ‘the best’, at its helm, both work from the firm’s Silicon Valley hub. At the same office is Daniel Becker who has noteworthy expertise representing both biotech and pharma company clients in particular on the array of patent counseling matters, and Antonia Sequeira who focuses on biotech, high tech and device-related life sciences work. The ‘very thoughtful and creative’ San Francisco-based Hayan Yoon was promoted to partnership in January 2024. The team is well-equipped to handle lifecycle management, portfolio development, restructuring, post-issuance proceedings, due diligence matters and litigation, which are specialisms of New York’s Daniel Brownstone, while Carl Morales at the same office has experience handling pending or FDA-approved products’ patent portfolios and related prosecution cases. Also with strong abilities in diligence matters in relation to the IP aspects of M&A and financing transactions especially, is Silicon Valley’s ‘gem’ Robert Hulse who is noted as being ‘one of the smartest and most creative patent attorneys’. Meta and Instacart are examples of the international clients the group assists.

Responsables de la pratique:

Michael Farn; Rajiv Patel


Autres avocats clés:

Daniel Becker; Daniel Brownstone; Carl Morales; Hayan Yoon; Robert Hulse; Claire Baek; Michael Saffron; Antonia Sequeira; Jae Won Song; Anthony Jacobson; Glenn Foulds


Les références

‘We have worked with Fenwick for years on our IP portfolio. They have a unique perspective on our complicated IP path and they have been successful in getting us patents issued that we never thought were possible. They are very creative when it comes to the initial patent submissions as well as pivoting based on responses from the patent offices.’

‘We have extensively worked with Hayan Yoon who is very thoughtful and creative when it comes to determining our IP strategy, and has been very successful with this. She is able to work well with the examiners and find an agreeable upon path to success with complicated matters.’

‘I love working with Robert Hulse and his team. Robert is one of the smartest and most creative patent attorneys I have ever encountered, and he combines his knowledge and skill to help us achieve what we want in our patent portfolio.’

Principaux clients

Clara Foods Co. d/b/a The EVERY Company


Databricks


Digital Diagnostics Inc.


Grail LLC


Immunocore


Incyte Corporation


Inversago Pharma


Life360


Maplebear (dba Instacart)


Meta


NewAmsterdam Pharma B.V.


Pharmakon Advisors LP


Royalty Pharma


Scribe Therapeutics


SiMa.ai


Span.io


Surf Bio Inc


Principaux dossiers


  • Managing a large portion of Meta’s (formerly Facebook) patent portfolio.
  • Advising on the intellectual property strategy for Digital Diagnostics, a leading healthcare company that provides AI-based diagnostic tools for diagnosing various diseases.
  • Advising market-leading grocery delivery app Instacart on the development of its patent portfolio, which the firm has helped the company build from scratch.

Finnegan, Henderson, Farabow, Garrett & Dunner LLP

The patent prosecution group at Finnegan, Henderson, Farabow, Garrett & Dunner LLP is well-regarded for its provision of ‘outstanding, commercially-focused legal advice’, which includes the establishment, preparation, filing and management of patent portfolios; inventions and foreign protection issues, as well as the handling of reissues; re-examinations, IPRs, PGRs, and the scope of work that may arise from range of patent transactions, all of which the group handles for such renowned clients as FedEx Corporation, Toshiba Corporation and Google. The team is headed up by specialist Jeffrey Jacobstein and Cory Bell who leads the PTAB sub-team, both are based at the Boston office. Bell and Jacobstein lead alongside Boston-based managing partner Erika Harmon Arner who has a focus on PTAB and federal-level appeal cases and Anand Sharma who splits her time between both Boston and Reston. Among the team are an array of IP and tech experts, with attorneys to note in DC being Adriana Burgy who is experienced handling litigation in the chemical, pharma and biotech industry sectors; ‘great mentor’ Aaron Parker, Mark Feldstein and associate Gracie Mills . On the West Coast, Aaron Capron in Palo Alto has expertise handling post-grant proceedings pertaining to electronics, telecoms and software-based tech. Arpita Bhattacharyya stands out at the same office. Senior counsel Thomas Irving retired in March 2023.

Responsables de la pratique:

Jeffrey Jacobstein; Cory Bell; Erika Harmon Arner; Anand Sharma


Autres avocats clés:

Adriana Burgy; Aaron Parker; Aaron Capron; Daniel Jordan; Karthik Kumar; Benjamin Saidman; Kara Specht; Elliot Cook; Lionel Lavenue; Arpita Bhattacharyya; David Weingarten; Colin Kreutzer; Abhay Watwe; Kai Rajan; Stephanie Ham; Samir Ismail; Gracie Mills


Les références

‘Great collaboration and communication skills. We meet regularly to talk about our needs and they always provide great guidance and are patient with questions.’

‘Aaron Parker has a huge amount of experience in all areas including prosecution and is a great mentor to my team. Daniel Jordan has excellent attention-to-detail and provides careful explanation of patent-related matters to my team in ways we can understand.’

‘Outstanding, commercially-focused legal advice. Finnegan’s team that works with me on prosecution, clearance and assertion matters also bring a unique combination of technical skills, product knowledge and patent enforcement requirements that result in better crafted and more defendable and enforceable patents.’

Principaux clients

Advanced Drainage Systems, Inc. (ADS)


Alibaba Group


Archer Aviation, Inc.


ASML Netherlands B.V.


AstraZeneca Group


BMW


Caterpillar, Inc.


Coupang Corporation


Eli Lilly and Company


FedEx Corporation


FIS


Google


Intuitive Surgical, Inc.


Novartis International AG


Samsung Electronics Co., Ltd.


Toshiba Corporation


Vertex Pharmaceuticals


Wipro Limited


Principaux dossiers


  • Advising Alibaba on patent drafting and prosecution in cutting-edge technologies such as quantum computing, AI, video processing, blockchain, neural network processing units, and other tech.
  • The PTAB upheld one of Bausch’s patents covering the plecanitide active pharmaceutical ingredient, finding that Mylan failed to prove that the patent was unpatentable as obvious.
  • Handling high-stakes drafting, prosecuting, portfolio management, and strategic advising, including patentability, freedom-to-operate, and patent term extension considerations on worldwide patent portfolios covering several different and commercially important drugs.

Knobbe Martens Olson & Bear LLP

Knobbe Martens Olson & Bear LLP houses a patent prosecution team with impressive expertise across the remit of work which is highly regarded for its ‘in-depth expertise and global experience’. At the helm of the practice are medical device specialists Salima Merani who is noted by clients as being ‘simply wonderful’ and Sabing Lee who harnesses deep experience handling the array of patent-related matters; both work from the firm’s Orange County hub. Establishing, managing, protecting and expanding innovative product inventions and related patent portfolios of value in the hundreds of millions of dollars makes up a large part of the team’s workload. Its life sciences, medical devices, biotech, engineering and telecom expertise in particular sees that the team assists clients across industry sectors which range from start-ups to well-established brands. Harnik Shukla at the Irvine hub has a specialism in IPRs and complex prosecution cases, San Diego’s Jason Jardine is noted for his ‘profound strategy insight’ while Maria Stout at the same office ‘invariably has her client’s success at the forefront of her mind’. PTAB matters are also a key focus for the team, with Irvine-based Terry Tullis having particular expertise in such work, as is post-grant work which is the focus of Shannon Lam also based in Irvine. Lori Yamato and Jon Gurka have left the firm.

Responsables de la pratique:

Salima Merani; Sabing Lee


Autres avocats clés:

Maria Anderson; Jason Jardine; Harnik Shukla; Terry Tullis; Maria Stout; Shannon Lam; Jordan Gottdank; Michael Christensen; David Schmidt


Les références

‘In-depth expertise and global experience. Able to give a broad perspective on patent claims.’

‘Salima Merani is outstanding. She is simply wonderful. The best! She is extremely client-focused, tireless and is very talented in what she does.’

‘Salima is a strategic thinker who understands our business and risks. She is smart, business-minded, anticipates our needs, and is always solutions-focused. She approaches issues from a pragmatic perspective, and provides us with both business and legal advice.’

Principaux clients

Imperative Care


6K, Inc.


Evident Vascular


Cala Health, Inc.


Augmedics, Inc.


LimFlow SA


Insera Therapeutics


Colorescience, Inc.


Paragonix Technologies, Inc.


AVITA Medical, Inc


Principaux dossiers


  • Represented Relievant Medsystems for over a decade and obtained over 100 patents and trademarks in multiple countries, including in its successful acquisition by Boston Scientific of $850m.
  • Represented advanced materials company 6K, Inc. for several years, managing an extensive and rapidly growing patent portfolio that includes over 100 pending applications and over 20 issued patents to-date.
  • Filed Evident Vascular’s foundational patent applications for novel ways to image the body.

Baker Botts L.L.P.

An extensive team of specialists oversee Baker Botts L.L.P.‘s collective, which is noted for its ‘dedication to staying at the forefront of the legal landscape’. Christa Brown-Sanford, high-tech specialist Samir Bhavsar and Chad Walters at the Dallas office, life sciences specialist Sandra Lee and Jennifer Tempesta in the New York hub, and Eliot Williams who co-leads from Palo Alto. Walters and Williams are both on the PTAB board, while Lee and Bhavsar have a particular focus on the patent prosecution side of the practice. The team’s workload incorporates a notable number of PTAB trial cases, patent litigation cases, post-grant proceedings before the USPTO and portfolio management matters for its client roster which includes names such as Samsung, Mastercard and Bank of America. There is a range of IP expertise across the group and it is noted that ‘the team’s diversity contributes to a richness of perspectives’. The ‘exceptional’ Matthew Avery in San Francisco is noteworthy for his ‘deep expertise in navigating the intricacies of patent prosecution’, while David Wu in Palo Alto has a particular focus on assisting research and development investment clients in complex cases.

Responsables de la pratique:

Christa Brown-Sanford; Jennifer Tempesta; Sandra Lee; Samir Bhavsar; Eliot Williams; Chad Walters


Autres avocats clés:

Matthew Avery; David Wu; Natalie Alfaro Gonzales


Les références

‘Matthew and his team are a rare breed – it’s a big law firm with the nimbleness to work with high-flying start-ups. I have a deep patent background, and I appreciate the combination of technical skills, client service, and business savvy value-add.’

‘Matthew Avery is a skilled patent specialist. He and his team of patent agents are able to quickly grasp onto cutting-edge research and development, key differentiators, and do the majority of the heavy lifting.’

‘The practice stands-out for several reasons. The practitioners within the team possess a profound understanding of IP laws and regulations, allowing them to navigate complex issues efficiently and effectively.’

Principaux clients

Genentech


Cisco Systems Inc.


Lyft Inc.


Bank of America


GrubHub Holdings Inc.


MasterCard International Incorporated


Columbia University


Motorola Solutions, Inc.


Fujifilm Holdings Corporation (and subsidiaries).


Draftkings


Penumbra


Samsung Electronics Co.


Lennox International


Brother Industries Ltd.


Eaton Corporation


Ericsson


Tile Inc.


Principaux dossiers


  • Representing Ericsson in licensing negotiations that includes reviewing and presenting arguments on 60 Ericsson patents and 50 patents owned by a licensee.
  • Serving as Cisco’s primary outside counsel for patent licensing, strategic portfolio development, defensive patent analysis, and overall counselling and patent strategy.
  • Assisting with the development and management of Columbia University’s worldwide patent portfolio that is directed to a wide-range of physical and life sciences tech.

Kilpatrick Townsend & Stockton

Kilpatrick Townsend & Stockton‘s patent prosecution practice has a strong reputation for its capabilities assisting its portfolio of clients on complex matters which span the array of industries, from tech and education to healthcare, medical devices and pharma. Vaibhav Kadaba is well-established as an expert in IP litigation and heads up the practice from the firm’s Atlanta office. The group is described as ‘able to understand client needs and translate them into a patent portfolio strategy’ and the establishment, management and protection of portfolios is a large part of its workload as well as related transactional cases; Seattle’s Jesse Bennett has a focus on such work in both national and international contexts, as does Walnut Creek-based Joseph Snyder who is noted as ‘an expert in filing and prosecuting patents as well as managing worldwide IP portfolios and patent life cycle management’. Further, the team is well-equipped to assist with post-grant proceedings, with experience representing clients in IPRs and PGRs before the PTAB. Justin Krieger in Denver has expertise in such PTAB matters in particular.

Responsables de la pratique:

Vaibhav Kadaba


Les références

‘Efficient and effective patent portfolio management. Excellent understanding of patent strategy for worldwide patent filings. High-quality product.’

‘Joseph Snyder is a strong practitioner with decades of experience in the commercial patent space. He’s an expert in filing and prosecuting patents as well as managing worldwide IP portfolios and patent life cycle management.’

‘Patent strategy and portfolio management is key here.’

Principaux clients

PsiQuantum Corp.


Qromis, Inc.


Labcorp


University of Rochester


ImmunityBio, Inc.


Progeneer, Inc. (Republic of Korea)


Nano Precision Medical Company


Latitude Pharmaceuticals


ExThera Medical Corporation, Inc.


Reynolds American


Morgan, Lewis & Bockius LLP

The ‘proactive, diligent and rigorous’ patent prosecution offering at Morgan, Lewis & Bockius LLP assists its portfolio of clients in such matters as the management of worldwide patent estates, advising namely on establishment, management, protection and due diligence.In Philadelphia, Louis Beardell harnesses expertise advising life sciences, chemical and defense sector companies as well as venture capital and private equity funds on the array of IP work. Dion Bregman who works from the Silicon Valley hub is described as ‘second-to-none’ in patent matters. Bregman and Beardell co-lead the team. Also in Silicon Valley is Gary Williams who focuses his practice on patent prosecution, pre-litigation patent validity, and infringement investigations. ‘Top line’ attorney Stephen Altieri based in Boston is noted for his capabilities providing ‘insights both on the patent side and on the science’ to his clients, while the ‘excellent’ Silicon Valley-based Manita Rawat is noted for her ‘diligent and high-quality work’. In San Francisco, Christina MacDougall has a focus on life sciences, chemistry and healthcare-related matters. Deping Chai departed from the Philadelphia office to an in-house role in August 2023.

Responsables de la pratique:

Louis Beardell; Dion Bregman


Autres avocats clés:

Hosang Lee; Tae-Woong Koo; Stephen Altieri; Manita Rawat; Todd Hales; Christina MacDougall


Les références

‘They are proactive, diligent and rigorous. The partners work and think outside the box to provide solutions.’

‘Dion Bregman is second-to-none! High intellect and incredible soft skills which makes him an attorney both capable of getting results and working with many different teams and technologies to get the mandate done efficiently.’

‘Needless to say, in my opinion, Stephen Altieri is outstanding – far and away the best patent attorney with whom I have ever worked in my 34 years of biotech experience.’

Principaux clients

The Aerospace Corporation


Samsung Electro Mechanics


Becton Dickinson and Company


Replimune


Tanium


DMAT


Energous Corporation


POSCO


Vyaire Medical Inc.


Principaux dossiers


  • Achieved an against-the-odds victory to defend Replimune’s patent on novel tumor-specific oncolytic immunotherapies before the PTAB.
  • Filed and prosecuted patent applications with the USPTO to allowance related to The Aerospace Corporation’s various space-related science and engineering tech, such as space satellite communications and antenna assemblies.
  • Advised DMAT on entity formation and the creation of its patent estate; this technology has been featured in news outlets including MIT News, CNN, Fast Company, and Reuters.

Wolf, Greenfield & Sacks, P.C.

The patent prosecution practice at Boston-based IP-focused firm Wolf, Greenfield & Sacks, P.C., the attorneys of which are highly regarded for their ‘skill, intelligence, expertise and experience’, is headed up by Ed Gates. Its impressive client portfolio includes such names as Pfizer, Sony and Google. Its prosecution work includes advising such clients on all aspects of large-scale patent portfolios and handling protection, management and due diligence as well as FDA-related issues. The team also has well-established post-grant proceedings capabilities and is adept at handling IPRs before the PTAB, which is the area of particular focus of Richard Giunta. This side of the team’s practice was bolstered in July 2023 with the arrival of post-grant expert and ‘thought-leader’ Scott McKeown from Ropes & Gray LLP to its newly established Washington DC hub. Patrick Waller heads the biotech practice and is experienced assisting with life sciences-related patent strategy matters as is experienced attorney Hunter Baker. Heather DiPietrantonio specializes in strategic counseling and life cycle management of IP rights relating to life sciences, which is also an area of focus of Oona Johnstone; both are equipped to advise on matters with international scope. All practitioners noted are based in Boston unless stated otherwise.

Responsables de la pratique:

Ed Gates


Autres avocats clés:

Randy Pritzker; Patrick Waller, Daniel Rudoy; Scott McKeown; Gregory Corbett; Richard Giunta; Gregory Nieberg; Patrick Waller; Daniel Young; Hunter Baker; Oona Johnstone; Elisabeth Hunt; Heather DiPietrantonio


Les références

‘The skill, intelligence, expertise and experience of the Wolf team is truly amazing. They can provide the highest quality advice on all aspects of IP, licensing, and other related areas, and additionally have an extremely strong litigation and dispute resolution group.’

‘They always display the highest degree of integrity and professionalism. They are an incredibly impressive group which has consistently provided exceptional, invaluable services for our mission critical business objectives.’

‘Randy Pritzker and the other attorneys Patrick Waller and Daniel Rudoy are tech specialists we have worked with over the years who have outstanding legal expertise, knowledge of the industry, and deep technical expertise, including in all niche technologies that are relevant to our medical technology business. They communicate clearly, efficiently and promptly, and the quality of their work product is extremely high.’

Principaux clients

Google


Bose Corporation


Wayfair


Sony Corporation


Oxford Nanopore Technologies


Takeda Pharmaceutical Company Limited


Pfizer


Massachusetts Institute of Technology


Moderna Therapeutics


PathAI


Burton Snowboards


Flagship Pioneering


Principaux dossiers


  • Handled prosecution of the client’s patent portfolio, which includes working with the company as it seeks FDA approval of VP-102.
  • Persuaded the PTAB to deny two inter-partes review petitions at the institution stage on patents related to methods of treating facial wrinkles using animal-protein-free botulinum toxin compositions.
  • Helping to build the client’s patent portfolio in a way that supports their evolving business goals, which includes 250 pending/issued patents.

Bookoff McAndrews

Bookoff McAndrews‘ cohort is housed in its Washington DC hub. The team has significant experience handling the range of matters relating to patent prosecution, counseling and IP transactions on which it advises its client roster, formed of companies from start-ups to the Fortune500 listed. Computer and internet specialist and managing partner Christopher Agrawal leads the team in collaboration with Sangwoo Ahn, ‘exceedingly good’ attorney Jessica Winchester, patent counseling specialist Les Bookoff, Aaron Johnson who is equipped to advise international and domestic clients, tech-focused Kirsten Johnson, patent strategist advisor Jameson Ma, Roland McAndrews whose practice incorporates portfolio analysis in large part, which is an area of expertise shared by Dinesh Melwani and Elizabeth Shah who also co-head the practice. The group is highlighted for its ‘tangible commitment to diversity, particularly with respect to up-and-coming attorneys’. In January 2024 the team saw Ankit Aggarwal and Arash Hamidi promoted to partnership.

Responsables de la pratique:

Christopher Agrawal; Sangwoo Ahn; Les Bookoff; Aaron Johnson; Kirsten Johnson; Jameson Ma; Roland McAndrews; Dinesh Melwani; Elizabeth Shah; Jessica Winchester


Autres avocats clés:

Andrew Peretin; Lauren Sherwood; Ankit Aggarwal; Arash Hamidi


Les références

‘The firm’s commitment to diversity is tangible, particularly with respect to up-and-coming attorneys. Each case sent to Bookoff receives careful and personal attention.’

‘The team’s client contact Jessica Winchester is exceedingly good at providing careful and bespoke customer service. Team member Lauren Sherwood stands out as a particularly strong strategic thinker and communicator.’

‘They are highly skilled technically, and very personable with it. They deliver a great service.’

Principaux clients

Boston Scientific Corporation


Verizon Communications, Inc.


Capital One


Caterpillar


Regeneron


UnitedHealth Group


WorldPay


FIS


Everspin Technologies, Inc.


Safran S.A.


BIC


Yahoo


MicroStrategy


HeartFlow


Paige.AI


BorgWarner


Stryker


Corteva Agriscience


Westlake Chemical


Principaux dossiers


  • Obtained over 1,500 patents for BSC and conducted IP due diligence investigations for BSC’s acquisitions and investments in other medical device companies.
  • Advised Capital One on the strategic development of valuable patent assets to secure it a competitive advantage.
  • Assisting Honeywell, in particular its Aerospace division, with patenting Industrial IoT tech that is poised to revolutionize the aerospace industry.

Cooley LLP

The patent prosecution group of ‘trusted partners’ at Cooley LLP is led from New York by Ivor Elrifi who is experienced handling work in both domestic and international contexts and chairs the firm’s global patent counseling and prosecution practice. Advising on worldwide portfolio development and strategy forms a substantial portion of the group’s workload; it is well-regarded for its ‘unwavering commitment to success’. The team has national coverage; in Palo Alto, Mika Reiner Mayer is a standout for her experience handling matters pertaining to patent due diligence reviews in connection with venture financing, IPOs and acquisitions. Patent acquisition and strategic counseling is an area of expertise of Boston’s Heidi Elracher. At the firm’s Seattle office, Bill Christiansen has capabilities across the remit of patent portfolio cases, while Washington DC's Chris Holly has particular expertise in life sciences-related patent matters. Amy Baker-Mandragouras departed from the Boston office to join Foley Hoag LLP in August 2023.

Responsables de la pratique:

Ivor Elrifi


Autres avocats clés:

Mika Reiner Mayer; Chris Holly; Bill Christiansen; Heidi Erlacher; Carol Laherty; Madhuri Roy; Matthew Pavao


Les références

‘They are trusted partners, navigating the complexities of dispute resolution with unparalleled expertise, unwavering dedication, and an unwavering commitment to success.’

‘With decades of combined experience, the team has tackled the most intricate and high-stakes arbitrations across diverse industries.’

Principaux clients

Cellares


Intuity Medical


Myovant Sciences


Moderna TX


Madrigal Pharmaceuticals, Inc.


Versanis Bio


Zymergen


Nobell Foods


VEIR, Inc.


Provivi


Native Microbials


C16 BioSciences


AgroSpheres


Pivot Bio


OKYO Pharma, Inc.


Black Diamond Therapeutics


Arvinas, Inc.


Magnolia Medical


Principaux dossiers


  • Representing Moderna TX in patent prosecution and counseling matters, recently in their personalized cancer vaccine mRNA-4157 in strategies relating to their phase 3 clinical trial with partner Merck & Co.
  • Representing Intuity Medical in portfolio protection, strategy, as well as patent prosecution of specific technologies, including the POGO® Automatic™ Blood Glucose Monitoring System.
  • Representing VEIR in the development of a worldwide patent portfolio relating to a new form of electric transmission using High Temperature Superconductors (HTS).

DLA Piper LLP (US)

The collective at DLA Piper LLP (US) has been significantly bolstered by the arrival to the West Coast offices of a 30-lawyer IP team from Dentons which includes well-known names in patent prosecution; Peter Yim who has impressive experience handling IPR, PGR and re-examination work arrived to the San Diego office; team lead at his former firm Brian Ho, alongside Randy Omid and Parker Kuhl to San Francisco; Christopher Eide to Palo Alto; and Michael Swett to Seattle. Another key name in San Diego is Lisa Haile who has particular expertise in tech-related cases. Biopharma, life sciences and manufacturing are all industry sectors the team’s workload covers; its cases frequently include assisting with the key elements of the granting of worldwide patents, managing and establishing portfolios and representing clients in the array of patent prosecution as well as litigation matters. Sean Cunningham in San Diego, San Francisco-based Gina Durham and Larissa Bifano who works from the firm’s Boston hub collectively oversee the practice.

Responsables de la pratique:

Sean Cunningham; Gina Durham; Larissa Bifano


Autres avocats clés:

Lisa Haile; Peter Yim; Brian Ho; Randy Omid; Parker Kuhl; Christopher Eide; Michael Swett; William Mulholland


Les références

‘The practice team is very helpful in stepping in and providing full service patent prosecution.’

‘We are a very small in house team managing an increasingly large number of patent applications, an the DLA team has made it possible to meet our goals.’

‘Larissa Bifano manages the team well and ensures feedback is addressed. She also is directly involved with the work, which is not always the case at other firms.’

Principaux clients

Caelum Biosciences


Viridos, Inc.


Curasen Therapeutics Inc.


Personal Genome Diagnostics (PGDx)


Codex DNA, Inc.


Alloy Therapeutics


OrphAI Therapeutics


Minovia Therapeutics Ltd.


Sight Machine


Inozyme Pharma


Principaux dossiers


  • Representing the client in patent, contract and general corporate matters, with an exclusive focus on development of a HIV cure.
  • Advising Sight Machine in its obtaining patent protection for its innovations.
  • Act as patent counsel for Personal Genome Diagnostics, having been instrumental in helping obtain worldwide patent coverage for some of their key diagnostic and therapeutic areas.

Haynes and Boone, L.L.P.

Haynes and Boone, L.L.P.‘s ‘incredibly knowledgeable’ patent prosecution collective is led by Andrew Lowes and David O’Dell from Plano alongside Jeffrey Wolfson who has strong capabilities advising the range of companies on patent strategy matters in particular, from Washington DC. Also in Plano is David McCombs who has impressive experience representing clients in complex trial matters. Clients the team assists include such names at Twitter and Paypal. It is experienced representing clients in administrative matters at the USPTO, namely IPRs, CBMs and PGRs before the PTAB; such work is the focus of Austin-based Raghav Bajaj. Further, it ably handles patent prosecution and transactional matters, filing, enforcing and developing well-known clients’ design rights as well as managing their portfolios. Alan Wang departed from the Dallas office in July 2023 to an in-house role.

Responsables de la pratique:

Andrew Lowes; Jeffrey Wolfson; David O’Dell


Les références

‘Incredibly knowledgeable on our sector and business.’

Principaux clients

Nabors Industries, Ltd.


Nice Systems Ltd.


Strides Pharma


BPS Just Energy Technology, LLC


Patrocinium Systems LLC


PayPal, Inc.


TeneoBio


Amgen


Qualcomm Incorporated


SureFire, LLC


GRAIL, LLC


Taiwan Semiconductor Manufacturing Company, Ltd.


Orthofix, Inc.


SeaSpine


Twitter


Continental Automotive Systems, US, Inc.


Boxabl


Principaux dossiers


  • Advise Nabors Industries with patent counseling, IP-related agreements, IP due diligence, including in connection with M&A activity, and in other practice areas.
  • Advising Orthofix, Inc./SeaSpine on IP matters of a healthcare nature that pertain to the client’s durable medical equipment and other medical device products.
  • Advising Paypal as its primary outside patent law firm, handling a majority of its work across the country and internationally.

McDermott Will & Emery LLP

Global head of the IP practice group William Gaede who splits his time between Silicon Valley and San Franciso, and global head of the patent prosecution group and ‘well-recognized thought leader’ Ahsan Shaikh who splits his time between Silicon Valley and Chicago, oversee the practice at McDermott Will & Emery LLP. The team is highlighted for its ‘distinctive ability to focus on their client’s key value drivers’. The design and implementation of patent filing strategies and the management of portfolios forms a predominant portion of the team’s workload; it notably works on patent application drafting and examination strategies for Meta Platforms. Life sciences and tech are the focus areas for the group. Team changes include the departures of Michael FogartyTokashi Saito, Tomoki TanidaJenny Chen, and Michael Siekman.

Responsables de la pratique:

William Gaede; Ahsan Shaikh


Autres avocats clés:

Judy Mohr


Les références

‘The McDermott patent prosecution team is uniquely equipped to understand their clients’ goals, competitors and the business and legal strategies that can help companies excel in today’s competitive global market.’

‘A distinguishing factor of the team comes from their approach to innovation – primarily, McDermott’s patent prosecution team prioritizes using innovation and implementing comprehensive patenting strategies while building portfolios. The team has a distinctive ability to focus on their client’s key value drivers, future revenue streams and any potential liabilities that may have an adverse impact on a company’s IP rights.’

‘The team brings a unique, business-focused perspective that helps clients maximize the value of their portfolios through licensing, enforcement and other commercialization strategies.’

Principaux clients

Amgen Inc.


QuidelOrtho Corporation


Heron Therapeutics, Inc.


Delpor, Inc.


Turn Biotechnologies, Inc.


Meta Platforms


Electronic Arts, Inc.


StubHub


Shutterstock


Splunk


Ava Labs


AppDirect


Sendoso


ResMed Inc.


Priceline.com


See6


CRISPR Therapeutics


Cogent Biosciences


One Home Brands, Inc. dba Blueland, Inc.


Principaux dossiers


  • Designed and implemented worldwide patent filing strategies for manages the patent filings related to Heron’s FDA approved products SUSTOL, and CINVANTI, and APONVIE.
  • Advising and working on patent application drafting and examination strategies for Meta Platforms (formerly Facebook).
  • Handling numerous matters for CRISPR, including patent prosecution matters relating to their immuno-oncology programs.

Morrison Foerster

The life sciences, food and agribusiness, and high-tech industries are focus areas for Morrison Foerster‘s ‘fantastic’ patent prosecution group which is equipped to handle high-value and often cross-jurisdictional work. Michael Ward who works between Boston and San Francisco oversees the practice and harnesses a niche specialism in crop protection and plant IP work, as well as impressive experience handling patent portfolios and securing protection for new plant varieties. Also standouts in San Francisco are Jie Zhou and Anita Choi. Biopharma and tech are areas of particular focus in an IP context for Catherine Polizzi in Palo Alto. In San Diego, Karen Potter is focused on assisting companies with patent preparation, prosecution, and strategic counselling. Potter and Polizzi, along with San Francisco-based Jie Zhou, are described as ‘exceptional patent practitioners’. Boston-based Jonathan Bockman leads the practice on the East Coast; Bockman has noteworthy capabilities handling domestic and international level portfolio management, prosecution, due diligence and validity determination cases, as well as related litigation.

Responsables de la pratique:

Michael Ward


Autres avocats clés:

Catherine Polizzi; Jonathan Bockman; Karen Potter; Janet Xiao; Jie Zhou; Anita Choi


Les références

‘Jie Zhou, Karen Potter, and Catherine Polizzi are all exceptional patent practitioners. They have a wealth of knowledge and experience in drafting and prosecuting life science patents. If you have a platform case, there is no team I would trust more to get meaningful patents granted.’

‘They have an excellent technical understanding of the company’s core technology and have developed a patenting strategy, including scope and timing of patent protection, that has favorably impressed potential collaborators and investors. The MoFo team of attorneys, technical advisors, paralegals and administrators meets all of our needs in a timely and cost efficient manner.’

‘Karen never fails to bring good considerations and suggestions to discussions, and the process proceed efficiently. Karen Potter has frequently interfaced with company investors, collaborators and senior management, and without fail those interactions have produced results that all parties are happy with.’

Principaux clients

10x Genomics


Abraxis Bioscience


Aimmune Therapeutics


Ally Bridge Group


Alpine Immune Sciences


Aspen Neuroscience


Bayer


Benson Hill


Bristol-Myers Squibb; Juno Therapeutics and Celgene (acquired by BMS)


California Table Grape Commission


Cartography Biosciences


Cartography Biosciences


CG Oncology, Inc.


Cornell University


Cytokinetics


Dewpoint Therapeutics


Driscoll’s


Dynavax Technologies


Enza Zaden


Eureka Therapeutics, Inc.


Genentech


Gilead Sciences


Hofseth Biocare


Inari


Indapta Therapeutics


Invaio


Johnson & Johnson


Juno Therapeutics


Lyndra Therapeutics


Magic Leap, Inc.


Maze Therapeutics


Pillar Biosciences


Pliant Therapeutics


Praxis Biotech


Santen Pharmaceutical Co.


Seagen


SNIPR Biome


SoFresh


Terviva


Triastek, Inc.


Tropic Biosciences


Principaux dossiers


  • Provided strategic patent counseling and prosecution services to Genentech, developing the company’s strategy for its multibillion-dollar portfolios, including blockbuster cancer drugs Kadcyla, Perjeta, Gazyva, and Tecentriq.
  • Advised Driscoll’s on vital patent strategy that keeps the company at the top of the ultra-competitive berry market.
  • Advised Ally Bridge Group since its inception to conduct IP due diligence on its investment deals.

Arnold & Porter

Arnold & Porter‘s patent prosecution cohort is co-led from Washington DC by experienced trial lawyer Matthew Wolf and from Chicago by Dina Hayes. The team frequently acts as counsel in defense of its client’s patent portfolios against post-grant challenges and in appeals and re-examinations; the team is experienced defending IPR and PGR challenges before the PTAB. The industry sectors the practice’s client list spans include pharma and biotech. David Marsh is a key name in DC whose expertise is in IP counseling, inter partes and ex parte cases, Hatch-Waxman Act-related issues and patent procurement work. Senior associate Alice Ho is a name to note at the same office for her work across the biotech, medical devices, pharma and life sciences industry sectors.

Responsables de la pratique:

Matthew Wolf; Dina Hayes


Autres avocats clés:

David Marsh; Alice Ho; Bonnie Qin


Principaux clients

Bayer AG (formerly Monsanto)


Hemanext Inc.


Bruin Biometrics, LLC


Terray Therapeutics


Finch Therapeutics


Pfizer


NeuExcell


BerGenBio ASA


Regeneron Pharmaceuticals, Inc.


Principaux dossiers


  • Providing extensive representation in patent prosecution of transgenic plants, traditionally bred plants, and in many other areas of plant genetics for Bayer AG, which includes numerous appeal and multi-party opposition proceedings in the US and abroad.
  • Advising Hemanext in patent portfolio strategies relating to improving the quality and safety of blood products for transfusion through deoxygenation of red blood cells.
  • Serving as lead counsel to defend Regeneron’s patents protecting EYLEA®, Regeneron’s flagship product, against US patent office post-grant challenges.

Baker McKenzie LLP

‘Seasoned partner in patent prosecution’ Richard Wells who is based in Washington DC, is a key name to note in Baker McKenzie LLP‘s patent prosecution team, which has IP litigation specialist John Flaim at its helm. At the same base, Mackenzie Martin is focused on litigation, counseling, licensing and portfolio strategy matters while Vas Vedantam has particular expertise assisting in patent procurement relating to software and hardware tech. Jessica Greenwald, also in Dallas, is experienced managing and strategizing portfolios with international scope. The practice’s caseload features matters involving prosecuting patent applications to issuance, assisting in USPTO proceedings, and securing and safeguarding invention rights.

Responsables de la pratique:

John Flaim


Autres avocats clés:

Richard Wells; Mackenzie Martin; Vas Vedantam; Jessica Greenwald


Les références

‘Richard Wells has consistently provided timely services. The standard of professionalism is first-class.’

‘Richard Wells is a seasoned partner in patent prosecution. Richard manages his team with efficiency and a professional standard that is consistent with top-tier law firms.’

‘The team work in a very collaborative way, both internally as well as with their clients which is where a big part of the value-add.’

Principaux clients

Veeva Systems


Zespri International Limited


Schlumberger Corporation


Coflex S.A


Robowash


IXL Learning


CEC Northstar


Swift Textile Metalizing


Xamax Industries


D.I. Optical


Robotics Plus


Principaux dossiers


  • Handling the strategic prosecution and patent opposition (quasi-litigation) for Veeva Systems, as well as providing pre-litigation advice.
  • Assisted Zespri with the prosecution, strategy development, risk management and enforcement of its global IP rights portfolio covering Zespri’s proprietary kiwifruit varieties including plant variety rights and plant patents.
  • Managing patent prosecution work for Schlumberger.

BakerHostetler

BakerHostetler‘s patent prosecution group is noted for its ‘integrated approach of highly skilled professionals in multiple practice areas’. Its workload consists of patent prosecution and portfolio management often for longstanding clients spanning sectors including pharma, higher education, manufacturing and tech. The cases the team handles are frequently cross-jurisdictional in nature. Mark Tidman oversees the group from Washington DC. Names to note include Denver-based Timothy Worrall who is ‘well-versed in strategic patent strategy and patent development’, the ‘wonderful’ Brendan Clark who works from Cleveland, the ‘exceptional’ Mark Krietzman and Mark Itri, both based in Costa Mesa, and Ronald Kern and Felicity Groth who are both based in Philadelphia and well-regarded for their provision of ‘expert legal guidance’.

Responsables de la pratique:

Mark Tidman


Autres avocats clés:

Ronald Kern; Felicity Groth; Timothy Worrall, Winston Kirton; Mike Moyer; Timothy Casey; Stephanie Lodise; Brendan Clark; David Farsiou; Mark Krietzman; Mark Itri


Les références

‘The integrated approach of highly skilled professionals in multiple practice areas makes this practice and firm stand-out. The firm acts as an in-house counsel team, focusing on the interests of its clients instead of the interests of the firm.’

‘Timothy Worrall is well-versed in strategic patent strategy and patent development. As to diversity, the firm cares about the quality of attorneys, period, which in fact results in one of the most diverse group of attorneys.’

‘Timothy Casey has a wealth of experience in the areas in which I work with him. He has a pragmatic and client-focused approach to getting things done, and is a great problem-solver.’

Principaux clients

Nordson Corporation


Transdigm Group, Inc.


LinQuest Corporation


Teleflex


Meta Platforms, Inc.


Culligan International Company


Johnson & Johnson


Johnson Matthey


Servier Pharmaceuticals LLC


Kajeet, Inc.


Principaux dossiers


  • Handled all of Nordson Corporation’s patent prosecution work which supports its business, including providing counselling and opinion services re patents and tech.
  • Preparing and filing numerous patent applications for TransDigm, which has included worldwide filing and prosecution of numerous patent applications for TransDigm.
  • Handling all forms of counselling related to patents and tech for Johnson & Johnson, including the purchase, sale and licensing of tech, as well as M&A deals related to same.

Choate, Hall & Stewart

From the firm’s Boston base, pharma research specialist Kristen Buteau and Brian Reese co-lead Choate, Hall & Stewart‘s patent prosecution group which is noted as making ‘everything so easy for the client’. The team has a focus on life sciences-related work in particular; expert in the sector Brenda Herschbach Jarrell is a standout member of the cohort, who is highlighted as being ‘particularly creative with her IP solutions for many prosecution, diligence and other matters’. The ‘truly exceptional’ Charles Lyon is equipped to assist investors and life sciences companies in their IP matters, while Stephanie Schonewald has particular expertise handling potentially contentious cases for biotech and pharma companies. Attorney John Rearick departed to Dechert LLP in July 2023.

Responsables de la pratique:

Kristen Buteau; Brian Reese


Autres avocats clés:

Brenda Herschbach Jarrell; Charles Lyon; Stephanie Schonewald


Les références

‘Brenda Herschbach Jarrell is particularly creative with her IP solutions for many prosecution, diligence and other matters.’

‘The stand-out partner is Brenda Herschbach Jarrell. She is extremely open, which we appreciate.’

‘The Choate team makes everything so easy for their clients. Work product is always timely, and I trust its accuracy. They are great at making the answer very clear in their work product, and I don’t have to spend hours poring over the work product in order to understand the key messages.’

Principaux clients

BioNTech


Carisma Therapeutics


Radius Health


Nextpoint Therapeutics


Dechert LLP

Dechert LLP‘s Boston-based patent prosecution team is well-known for its capabilities in all patent prosecution matters as well as in portfolio management for its clients. The team’s workload includes advising on IP due diligence and negotiations, and on the sale and acquisition of patent portfolios. The cases are often of considerable value and vary between domestic and international in scope. The life sciences industry is the team’s key focus area and it also has an increasing focus on biologics. The team heads Andrea Reid and Andrew Wilkins are described as being ‘very experienced, engaged and responsive lead partners’, with key attorney to note in the team being Chad Davis.

Responsables de la pratique:

Andrea Reid; Andrew Wilkins


Autres avocats clés:

Chad Davis


Les références

‘Very experienced, engaged, and responsive lead partners.’

Principaux clients

4E Therapeutics


Aer Therapeutics


Agenus


Akamis Bio


Aldeyra Therapeutics


Atlas Ventures


Arcutis


argenx SE


AVEO Oncology / AVEO Pharmaceutical


Bayer Healthcare


Bicycle Therapeutics Limited


Canaan Management


Chiesi Farmaceutici S.p.A.


DiffusionRx


Forbion Capital Partners


Homology Medicines


Ikena Oncology


Ipsen Biosciences


Karuna Therapeutics


Kymera Therapeutics


Longwood Fund


Merck KGaA


Nimbus Therapeutics


Novo Holdings


Ocuphire Pharma


Parthenon Therapeutics


PIC Therapeutics


Rectify Pharmaceuticals


ROME Therapeutics


Solu Therapeutics


SRS Aquiom


Third Harmonic


Vertex Pharmaceuticals


Principaux dossiers


  • Handled the patent strategy work on behalf of Nimbus Therapeutics’ highly selective, allosteric TYK2 inhibitor portfolio to address multiple immune-mediated diseases, which was acquired by Takeda in December 2022 for $6bn.
  • Advised Chiesi Farmaceutici S.p.A. on IP analysis in its $1.48bn all-cash transaction to acquire Amryt Pharma Plc.
  • Handled the patent strategy and IP diligence on behalf of argenx SE on its transcontinental share offering raising $1.1bn in new funds.

Eversheds Sutherland

At the helm of Eversheds Sutherland‘s patent prosecution team are multiple specialists, being Kevin King and Peter Pappas who are both based in Atlanta and have experience representing clients in global IP matters, San Diego’s Christopher Bolten and Nash Zogaib who works from the Austin office. Managing patent portfolios and providing strategic and technical advice therein for its client list which spans industry sectors including manufacturing, telecoms, medical devices and tech, makes up a large portion of the team’s caseload. Further, the team is equipped to handle PTAB-related work. Umar Bakhsh is a name to note in Atlanta for his specialism handling IP procurement, enforcement, and transactional matters.

Responsables de la pratique:

Kevin King; Peter Pappas; Christopher Bolten; Nash Zogaib


Principaux clients

Cardiologs Technologies


Corcym


Distalmotion


JenaValve Technology


Mainstay Medical


Lumen Technologies


CenturyLink


Level 3 Communications


Tufts Medical Center


Gyrus Capital Partners


Pfenex


Bright Peak Therapeutics


V-Wave


MD Start


Moon Surgical


Sequana Medical


Sofinnova Partners


Axial Medical Printing


Gaiaca


CorWave


FEops


Georgia-Pacific


Angelini Pharma


Fameccanica.Data


Florence Healthcare


Principaux dossiers


  • Serving as Rheem Manufacturing Company’s lead outside counsel, responsible for management of its entire global IP portfolio, which includes more than 1,500 active patent and trademark matters.
  • Representing Lumen Technologies in patent prosecution and tech transactions across various networking technologies.
  • Managing V-Wave’s patent portfolio globally.

Greenberg Traurig

Greenberg Traurig‘s ‘top-notch’ team has strong national coverage of the US with co-heads of the practice Barry Schindler, Melissa Hunter-Ensor and Heath Briggs working from the firm’s New Jersey, Boston and Denver offices respectively; the three also co-chair the firm’s global patent prosecution group. The Atlanta team was bolstered in August 2023 with the arrival of patent specialist Trenton Ward from Finnegan, Henderson, Farabow, Garrett & Dunner LLP. The team is equipped to advise clients from start-ups to such well-known companies as Yahoo and Capital One on the array of patent matters. In Boston, ‘very well-respected attorney’ Chinh Pham has experience representing start-ups, while the ‘brilliant’ David Dykeman has notable expertise in life sciences and medical tech work.

Responsables de la pratique:

Barry Schindler; Melissa Hunter-Ensor; Heath Briggs


Autres avocats clés:

Trenton Ward; Chinh Pham; David Dykeman; Roman Fayerberg; Chase Means; Andrew Tibbett


Les références

‘Our company has used this practice for our intellectual property strategy and execution and the experience has been excellent. The quality of the work is exceptional and the partners and associates are top-notch in their field.’

‘We have predominantly worked with Chinh Pham at Greenberg Traurig’s Boston office. Chinh is a very well-respected attorney and was previously the President of the Boston Bar Association. Chinh brings an IP strategy that is highly focused on value creation. This strategic focus works exceptionally well for us as a start-up because so much of the value of our company is in the IP itself.’

‘The Greenberg Traurig teams we use are incredibly effective, they maximize efficiency and communicate with us often in order to stay on track. The teams have a leader who has great strategic skills to maximize the utility of the patents to our company’s corporate goals, and has professionals with the unusual combination of technical and interpersonal skills which is very important.’

Principaux clients

Yahoo Inc.


Unilever


Broadridge Financial Services, Inc


Capital One


GoDaddy


Embecta Corp.


IlluminOss Medical, Inc.


Provention Bio


Carter’s Inc. / Skip Hop Inc.


The Home Depot, Inc.


PayPal, Inc.


Aspira Women’s Health (formerly Vermillion)


Arconic Corp.


Principaux dossiers


  • Serving as the primary provider of IP services for Broadridge Financial Services, a provider of trade-processing technology.
  • Managing, developing and assisting Yahoo Inc. in growing a major portion of its worldwide patent assets.
  • Helping Provention Bio Inc. with the IP aspects of its completion a $2.9bn acquisition by Sanofi.

Norton Rose Fulbright

Norton Rose Fulbright‘s patent prosecution practice is well-equipped to handle the gamut of matters, including filing and prosecuting patent and design applications; performing due diligence and infringement studies; and handling post-grant proceedings. Key team members at the practice include ‘go-to’ attorney Eagle Robinson who is based in Austin. At the same office, Gina Shishima who also spends time at the New York hub, stands out for her biotech/pharma specialism. Tim Kenny in Minneapolis is another name to note. In San Francisco, Jason Novak and Roger Kuan are key practitioners. Robinson and Kenny co-head.

Responsables de la pratique:

Eagle Robinson; Tim Kenny


Autres avocats clés:

Roger Kuan; Gina Shishima; Michael Krawzsenek; Darren Smith; Jason Novak


Les références

‘The firm’s key strengths and capabilities are innovation sensing, strategic counseling, invalidity and infringement analysis cases, opinion work and freedom-to-operate analysis cases as well as patent drafting and prosecution.’

‘The practice has deep expertise in AI/ML modeling and applications to biopharma large molecule manufacturing, process development and also in biological and cell therapy drug development.’

‘Diverse and inclusive hiring practices. The firm has a talented pool of legal and scientific experts, and very responsive and personable personnel. A pleasure to work with.’

Principaux clients

BJ Energy Solutions, LLC


Attends Healthcare Products (Attends)


3D Systems Corporation


10x Genomics, Inc.


MEKONOS, Inc.


Venn Biosciences Corporation


Helaina, Inc.


Robert Bosch


Knorr – Bremse


Yanmar Co., Ltd.


Angel Group Co., Ltd.


Mary Kay


Principaux dossiers


  • Managing Qualcomm’s patent prosecution and portfolio management of over 1,500 patent applications, both domestic and foreign filings, across technologies including 5G, 6G, Wi-Fi, Computer Vision and AI.
  • Scoped and prepared a patent portfolio to protect 3D printed artificial organ program.
  • Handling the patent portfolio, including more than 1,500 US and foreign patents, for Mary Kay Inc. in skincare and makeup.

Paul Hastings LLP

Paul Hastings LLP‘s patent prosecution practice has Washington DC-based Naveen Modi at its head. Modi leads the team in collaboration with Bruce Wexler and Eric Dittmann  who both work from the firm’s New York office. Post-grant proceedings matters are a fundamental aspect of the team’s workload, including representing its clients in IPR, PGR and CBM review cases before the PTAB. In DC alongside Modi are key attorneys Joseph Palys who has a particular focus on leading PTAB trials across a wide-range of technologies and Phillip Citroën who has experience representing clients before the PTAB, district courts, Federal circuit, and the ITC.

Responsables de la pratique:

Naveen Modi; Bruce Wexler; Eric Dittmann


Autres avocats clés:

Joseph Palys; Phillip Citroën; Chetan Bansal; Daniel Zeilberger


Les références

‘Naveen Modi has an incredible track-record.’

‘The team is anchored by Naveen Modi and Eric Dittmann. The two are the perfect complement, both bring strategy and expertise based on a long track-record of success. They work with clients and are open to leveraging client’s strengths to achieve best outcomes. They are also very open to structuring fee arrangements that make sense for the client.’

‘Naveen Modi is very knowledgeable in the ways of patent office proceedings and patent strategy, he stands out because he is able to think outside the box in a way that generates results for his clients.

Principaux clients

Chevron Oronite Company, LLC


Google LLC (Virentem)


Samsung Electronics Co., Ltd. (KEYnetik)


Samsung Electronics Co., Ltd. (Lynk Labs)


AbCellera Biologics Inc. and The University of British Columbia


JSR Life Sciences, LLC and JSR Corporation


Medtronic Inc.


Google LLC (Jenam Tech)


Google LLC (IPA Technologies)


Google LLC (Motion Offense)


Samsung Electronics Co., Ltd. and Google LLC (Scramoge)


Samsung Electronics Co., Ltd. (UUSI)


Samsung Electronics Co., Ltd. (G+ Communications)


VirnetX


Fitbit Inc.


Snap Inc.