Editorial: Patents

01 January 2007

Patent litigation has become an increasingly global business. Complex, multi-jurisdictional suits are commonplace, as companies seek to protect their technologies and innovations from competition in domestic and international markets.

Following six months of independent research into the legal marketplace, a trio of firms emerge that are well represented in several jurisdictions.Howrey LLP dominated the research, with a total of 15 lawyers from six jurisdictions. These numbers are unrivalled by any other firm. Based in San Francisco, managing partner of the firm’s northern California offices Henry Bunsow has a “tremendous record”, representing businesses in high-tech patent disputes, and has won numerous victories in state, federal and appellate courts. For 10 years, he has represented the licensing interests of Harris Corporation, securing the company’s semiconductor and cellular phone patents. During this time Harris’s paid-up royalty revenues have exceeded $600 million. Moving to the Irvine office, clients such as Verizon Communications, Avery Dennison Corp, and Caterpillar call on the services of William Rooklidge, who likewise focuses his practice on litigation and alternative dispute resolution, with extensive experience in appellate cases.

In Washington, DC, co-chair of the IP practice group Cecilia Gonzalez stood out, and has a “solid track record” representing major corporations and high-tech companies in fast-track litigation before the International Trade Commission (ITC). With 25 years of practice including on issues relating to jet-craft engines, fibre optics and semiconductor memory devices, William West performed well in our survey, receiving special mention for his activity in domestic and international arbitration and mediation, in addition to his “great strengths” in patent litigation. John Lynch represents the firm in Texas. Described by a source as “a brilliant litigator”, Lynch has represented Monsanto, Rockwell International, Merck and Westinghouse Electric.

Formerly practising in San Francisco, partner Glenn Rhodes adds further strength and depth, representing clients before the US Patent and Trademark Office and litigating international cases in the chemical, biochemical, agricultural, microprocessor and medical equipment industries. Rhodes practises in the firm’s Taiwan offices and offers expertise in several Asian jurisdictions as well as in international arbitration and mediation.

In Europe, Howrey boasts seven nominees, adding Benoît Strowel, head of the European IP practice, to its total from the previous edition. Strowel was formerly managing partner of NautaDutilh’s office in the Belgian capital. Like fellow nominee and head of the firm's Brussels office, Carl de Meyer, he focuses on the representation of clients in the pharmaceutical and biochemical industries. De Meyer also represents makers of electronic equipment and other manufacturers. The practice generally covers regulatory and contentious and non-contentious matters. Marina Cousté is managing partner of the firm’s Paris office, and a well-recognised figure on the intellectual property speaking circuit. Her practice focuses on biotechnology, hi-tech, pharmaceuticals and life sciences industrial property. Also in Paris, the firm looks to Denis Monégier du sorbier for particular expertise advising French, US and multinational pharmaceutical and computer companies that hold assets in France. Among other appointments, he is president of the French group of AIPPI. Interviewees from across the globe praised the work of Europe managing partner Willem Hoyng, described to researchers as “one of the best”. He is joined in this edition by partner and co-founder of the Amsterdam office Bart Van den Broek, a “star quality litigator” known for his work in compression technologies including MP3s and JPEGs. Richard Willoughby from the London offices completes the line-up for Howrey. He is particularly renowned for pan- European patent litigation, with a focus on the pharmaceutical industry. Mark Hodgson, who was described by one source as “one of the best in the country”. He has tried cases before the English courts, the European Patent Office and the European Court of Justice. Hodgson represented Lilly ICOS in a suit against Pfizer, which concerned patent revocation for the use of phosphodiesterase inhibitors for treating impotence. The firm's desire for a German office was realised in January 2007 with the high-profile hire of Joachim Feldges as managing partner of the Munich office, Researchers note his “experience in biotechnology” matters in particular.

Seven nominees from four jurisdictions ensure Bird & Bird maintains a high profile. The firm also takes top honours in the elite group, with London partner Trevor Cook leading in the overall voting. Cook is “one of the leading lights” in intellectual property law, with special focuses on IT, pharmaceutical and biotechnology patents. Joint head of the firm’s IP group Morag MacDonald also finds herself in the very top tier. Interviewees spoke highly of MacDonald’s involvement in pan-European patent cases. She was one of the firm’s lead lawyers in the high profile 2005 victory in the House of Lords in Synthon BV (Synthon) v SmithKline Beecham plc (SKB). Completing the firm’s London contingent, Gerald Kamstra is “an authority in life sciences” and joint head of the firm’s life sciences practice group; Neil Jenkins has a “great reputation” for patent litigation before the UK courts, the CFI and the ECJ. In Brussels, the firm can call on the services of “excellent technician” Bruno Vandermeulen, who heads up its IP practice there. Vandermeulen concentrates on drafting and negotiating licence agreements, and patent litigation. He is a past president of the Benelux chapter of the Licensing Executive Society (LES) and counsel to the board of the Licensing Executive Society International (LESI). Düsseldorf is home to the firm’s head of international IP, Wolfgang von Meibom, described by one interviewee as “one of the best patent litigators in Europe”. He represents clients in the pharmaceutical and life sciences industries, acting on both national and international levels.

Our researchers were given a good impression of Matthew Laight, the managing partner in the firm’s Beijing and Hong Kong offices. He comes recommended for recent work representing large multinational companies, and for expertise across a number of industries including life sciences and electronics.

Lovells is the third firm we profile for its international dimension. Seven experts in four jurisdictions form a highlyrespected contingent, led in the research by London partners Robert Anderson and Nicholas Macfarlane. Anderson focuses on patent litigation in the chemical, biotechnology and pharmaceutical industries, and has acted in notable matters relating to the patenting of metallocene catalysts, slow-release analgesics, hepatitis D and anti- TNF antibodies. He has also been active in serious industrial secrets disputes primarily in the biotechnology field, with clients including DSM. MacFarlane has specialised in providing counsel to leading UK and US pharmaceutical companies on contentious and non-contentious matters. Over 25 years he has also been active in trademarks, copyright and parallel imports. Both London partners were described as “leaders in their fields”, and a “firm foundation for the international IP practice at Lovells”. Former head of the firm’s international IP practice (now a member of its management committee), and a resident in the Düsseldorf office, Andreas von Falck, won widespread admiration for his activities in the German courts and the European Patent Office. His practice is also grounded in transactional matters. Dutch partners Bert Oosting and Klaas Bisschop add “an extra string to the bow” in Europe. Oosting is head of the firm’s intellectual property and information technology group, as well as its pharmaceutical group, from its offices in Amsterdam. Bisschop’s practice emphasises patent litigation, with additional expertise in licensing and arbitration, especially in the biotechnology and pharmaceutical sectors.

Further afield in Hong Kong, Lovells can rely on Henry Wheare, who leads the Asian IP practice and has 30 years’ experience in both contentious and noncontentious IP law and licensing, with a specialty in complex technical patent cases. In Warsaw, we recognise Krystyna Szczepanowska-Kozlowska, who is well-known for handling large pharmaceutical patent cases in the country, and for writing the first book on patent law in Poland. The team from Lovells is undeniably “one of the major forces”.

USA

America is home to 30 per cent of those on our list, for which many firms have provided more than one lawyer. Among these, IP specialist Finnegan Henderson Farabow Garrett & Dunner LLP’s total of seven attorneys at three offices is notable. From the Washington, DC headquarters, Donald Dunner (“a legend in both federal and appeal courts circuits”) was singled out for high praise, and is in the very top tier of practitioners. Dunner chaired the advisory committee to the US Court of Appeals for the Federal Circuit for 10 years from its inception, and played an important role in the drafting of the court’s rules (between 1982 and 1992). He has also been successful in overturning judge and jury verdicts in many significant cases during his career. Ford Farabow is “a great trial lawyer” and an “asset to the firm”. He has represented patentees and companies accused of patent infringement, in federal district, state and appeals courts, as well as international arbitrations and alternative dispute resolution. Brian Brunsvold, also in DC, has “a wealth of experience” in licensing and patent litigation focusing on the chemical, electrical, mechanical and pharmaceutical fields. Former managing partner – now chairman of the firm’s management committee – Thomas Jenkins adds yet more licensing and appellate trial expertise. He is also well known for representing domestic and foreign clients before the US district courts. Across the Potomac River in Virginia, at the firm’s Reston office, David Hill was recommended to researchers for “a broad practice” including elements of arbitration and mediation. In 28 years practising with the firm, Charles Lipsey has built up “a great knowledge base” in pharmaceuticals and biotechnology, with an emphasis on patent infringement litigation in these fields. Michael Elmer, of the Palo Alto office, also performed well in the research, with testimonials citing his record as lead or co-counsel in cases before the appellate courts, the district and federal courts, the US Patent & Trademark Office (board of appeals) and the American Arbitration Association. Elmer has additional experience providing advice on licensing matters.

With lawyers from two offices in this edition, Fish & Richardson PC is notable. “Experienced” patent litigator Frank Porcelli was among the most highly nominated practitioners in Boston. Porcelli has represented 3M in various disputes in the district courts with Johnson & Johnson Orthopedics, Ampad Corporation and Van Leer. Partner – and past president of the Boston Patent Law Association – John Skenyon brings 30 years’ experience of patent litigation, and a “sound reputation”, particularly for his record in Markman hearings, in many of which he has won favourable claim constructions. From the firm’s New York office, senior counsel John Pegram was recommended to researchers as “a distinguished litigator”, with experience in state and federal courts, before the US International Trade Commission and the US Patent and Trademark Office. Pegram was one of the most highly nominated lawyers from the Big Apple, which is home to 26 of our nominees.

A “truly excellent team of lawyers” from Kenyon & Kenyon commands respect in New York. “Fantastic litigator” George Badenoch was complimented for his role in securing a significant jury verdict in a patent trial concerning computerised equipment for custom-designed ductwork. He is co-chair of the firm’s electrical and mechanical practice groups alongside Stuart Sinder, who can count among his practice highlights Telcordia Technologies Inc v Alcatel SA Inc & Alcatel USA Inc and Protex International Corp v Vaguard Products Group. Richard Delucia was mentioned for an “outstanding victory” in Boston Scientific v Johnson & Johnson, which found that Johnson & Johnson had infringed a patent on a drugeluting cardiac stent device belonging to Boston Scientific. Other notable trials include Savient Pharmaceuticals & Teva Pharmaceuticals USA v Novo Nordisk (concerning human growth hormone) and RJR Nabisco v Procter & Gamble (a dispute known as ‘the Cookie Wars’). Another “luminary” in the firm’s New York office is James Galbraith, who brings 30 years’ experience in patent litigation for manufacturers of plastics and catalysts, pharmaceuticals, agricultural chemicals and computer products and components. Galbraith has also represented clients before the United States Court of Appeals for the Federal Circuit.

Fitzpatrick Cella Harper & Scinto fields a trio of lawyers from its New York offices, led by the “undoubtedly excellent” and “number one opponent” for patent litigation: Robert Baechtold. This lawyer’s work for clients in the pharmaceutical industry has moved at least one prominent source to label him “Mr Pharma”. He has acted as lead counsel in litigation for Bristol-Myers Squibb, Warner-Lambert, Merck, Pharmacia, Astellas Pharma, GD Searle, Novartis, AstraZeneca, Sanofi-Aventis, UCB, Sankyo Eisai and SC Johnson (among others). Baechtold emerges from the research as one of the highestranking New York lawyers. Fellow founding partner and former patent examiner and trial attorney in the Antitrust Division of the US Department of Justice, Joseph Fitzpatrick also won widespread admiration. “Still very much at the top of his game,” Fitzpatrick concentrates on patent litigation for large multinational clients, representing them in district and federal courts and before the ITC. The “esteemed” Lawrence Scinto, also a cofounder of the firm, has acted as lead trial and appellate counsel for such household names as ExxonMobile, DuPont and SC Johnson, and also provides advice on licensing matters.

In Washington, DC, two other firms deserve a mention. Foley & Lardner LLP can rely on the talents of two nominees, Harold Wegner and Richard Schwaab. Wegner splits his time between the firm’s Washington, DC and Tokyo offices, where he devises strategies for international patent enforcement. Schwaab counsels clients in the biotechnology, medical, chemical, pharmaceutical, electrical and mechanical industries on a range of patent procurement and enforcement matters.

Steptoe & Johnson LLP enjoys global renown for its extensive trade and competition capabilities. In this edition, we recognise Roger Parkhurst as “an authority” on patent litigation, and according to one interviewee, “a very knowledgeable and prominent member of the intellectual property bar”.

California is the base for some of the highestranking patent lawyers in our research. “The cream of the crop” in Orange County is Don Martens of Knobbe Martens Olson & Bear LLP, frequently mentioned in superlative terms for litigation and appellate work. Before joining the firm, where he practises as of counsel, Martens was a patent examiner at the US Patent Office. Partner Joseph re is similarly “well thought of ”, and noted for his activities as an arbitrator.

At Irell & Manella LLP, Morgan Chu picked up nominations from clients and competitors internationally. He was described variously as “an excellent patent litigator” and “very professional”.

Kirkland & Ellis LLP fields a well-regarded representative from its Los Angeles office. Co-head of the intellectual property practice Robert Krupka is among the most highly nominated practitioners in the state, and is said to have “an enviable success rate at trial”.

Douglas Olson, of Paul Hastings Janofsky & Walker LLP in San Diego, has “a fantastic reputation” arguing before the United States Court of Appeals for the Federal Circuit, as well as other federal and appellate courts.

Europe

Our research recognises the vitality of European markets. Jochen Pagenberg of Bardehle Pagenberg Dost Altenburg Geissler the highest-ranking German lawyer and a member of our elite group of practitioners. An “outstanding and highly-respected” lawyer, acknowledged for his experience coordinating multi-lingual, multijurisdictional patent cases, but also for his expertise counselling clients on licensing matters, Pagenberg was also mentioned for his scholarly contribution, as a lecturer and visiting professor at the University of Strasbourg, the Pierce Law Centre (Concord, New Hampshire), and the Max Planck Institute in Switzerland. He is chairman of the International Association for the Protection of Intellectual Property (AIPPI), special committee for European patent litigation, and chairman of the Office of Harmonisation for the Internal Market, a subcommittee of the International Trademark Association (INTA). Former head of the Philips petroleum patent department Bernhard Geissler is qualified to practise in both Germany and the United States, and has “impressive knowledge and experience” in the pharmaceutical, biotechnology, mechanical and electronics fields. Together with Pagenberg, he has written a textbook on licence agreements, which has been translated into several languages. Reinhardt Schuster was also mentioned to researchers as “technically astute” and “active in various industries”. He received particular praise for his work on cases concerning plasma sources, semiconductor technology and chip architecture, enzymes, pacemakers, vascular stents and medical implants. Like his colleagues, Schuster is a prolific writer of articles and a frequent lecturer in intellectual property.

Krieger Mes & Graf von der Groeben in Germany is represented here by Peter Mes and Jochen Bühling, who was singled out by interviewees as “an asset to the firm”. Freshfields Bruckhaus Deringer can call on Peter Chrocziel’s services, who was described to researchers as “a leading German IP lawyer”, with expertise in the IT, software and telecommunications industries. At Feldges Rechtsanwälte, Joachim Feldges was among the most frequently nominated German lawyers. Researchers note his “experience in biotechnology” matters in particular. Thomas Reimann, at Reimann Osterrieth Köhler Haft, also deserves a mention.

London provides a significant proportion of nominees and some appear in our elite list. Sally Field of Bristows ranks as “one of the very best” and “an authority in the field”. In addition to litigation before the English courts and coordination of multijurisdictional cases in Europe, she is also an accredited mediator – with experience in alternative dispute resolution methods – and was 2006-2007 chair of the legislation and regulatory analysis committee for INTA. Partner Edward Nodder brings an emphasis in life sciences where he has represented clients in matters concerning protein synthesis, immunosuppression and diagnostics. He has won significant judgments in several cases, including, 3M v Rennicks and 3M v Plastus Kreativ. Both Field and Nodder were among the most frequently nominated English lawyers in the research.

Taylor Wessing boasts three nominees from its London offices. Richard Price was also enthusiastically supported in the nominations, with several interviewees mentioning his record in cases before the highest English courts (the House of Lords and the Privy Council). Significant victories in these instances include appeals made on behalf of Asahi Chemical and Canon. Senior partner Gary Moss has 25 years’ experience in IP, and has worked on significant cases such as SKM v Wagner Spraytech, Brugger v Medic-Aid Ltd and Kirin-Amgen v Transkaryotic Therapies & Aventis. Collectively, they form “a superb team [and] a recognisable force in the London market and abroad”. Simmons & Simmons is represented by two lawyers who made strides in the research, with both receiving a significant level of support from clients and competitors. Kevin Mooney is “great for pharmaceuticals” – his matters include representation of 3M in a case relating to aerosol products, and GlaxoSmithKline in a case involving patent expiry for the drug Seroxat – he finds himself among the most highly regarded. The firm also has an “excellent litigator” in Rowan Freeland, who specialises in complex multi-jurisdictional patent litigation for clients in the pharmaceutical, telecommunications, oil-drilling equipment and chemicals industries.

Two London partners “command respect” for Linklaters. Nigel Jones, who is head of the firm’s IP group and chair of its healthcare group, and Ian Karet, a specialist in patent litigation for clients in the biotechnology, healthcare and high-tech industries, were both recommended as “among the best in the country”.

Lawyers from three French firms vie for top status alongside Monégier du Sorbier. With one partner named in our elite group of practitioners, Véron & Associés claims particular honours. Pierre Véron is described as “a real authority on French patent law”, specialising in patent litigation. He is joined in these pages by Isabelle romet, whose practice has a similar focus. Romet is a member of AIPPI, the European Patent Lawyers Association and the French Licensing Executive Society. Cabinet Gaultier Lakits Szleper also fields two representatives: Jean Frederic Gaultier and Dariusz Szleper. Finally, at Cabinet Hirsch & Associés, Marc-Roger Hirsch received a raft of nominations.

Our research in Spain indicates that Grau & Angulo maintains a prominent market position thanks to the inclusion of two individuals. Jorge Grau emerges as one of the country’s leading experts and is accompanied on the following pages by the equally respected Alejandro Angulo. Other notable achievers in the Spanish research include the “outstanding” Gonzalo Ulloa y Suelves, head of the IP department at Gómez-Acebo & Pombo Abogados, who was particularly recommended for his work in the fields of chemicals and pharmaceuticals. Miquel Montaná is based in the Barcelona offices of Clifford Chance SL and was consistently recommended to researchers. Rated as a “major player,” he emerges as one of the most respected IP lawyers in Spain.

We also uncovered a wealth of experience in Italy. Mario Franzosi, of Franzosi Dal Negro Pensato Setti, was lauded as the “master of patent litigation in Italy”. Fabrizio Jacobacci of Studio Legale Jacobacci & Associati is another of the country’s heavy hitters, praised as “the best source for advice on Italian patents” and “an excellent lawyer”. The “absolutely top-notch” Gabriel Cuonzo also fared particularly well. Luca Trevisan joins Cuonzo in our book, making their firm the only Italian outfit represented twice on our list.

Lenz & Staehelin has entries in the Switzerland section, led in the voting by the “vastly experienced” Martin Lutz and joined by Thierry Calame. Patrick Troller of Troller Hitz Troller & Partners, was recommended by some of the practice area’s leading figures, as was Kamen Troller of LALIVE

Canada

Smart & Biggar/ Fetherstonhaugh vies for dominance in a market comprised of large full-service firms and specialist boutiques. John Bochnovic continues to command respect and comes “very highly recommended” from the firm’s Toronto office, alongside the “excellent” David Morrow. In Vancouver, the firm can turn to Michael Manson, who was described as “brilliant”. Gowling Lafleur Henderson LLP finds two lawyers nominated from its Ottawa and Toronto offices respectively. “Trail blazer” Scott Joliffe has acted as senior counsel in several significant cases, and is joined by fellow Toronto partner Neil Belmore, whose expertise lies in the pharmaceutical industry. From the Ottawa office, Anthony Creber was recommended for his work for biotechnology companies in the federal courts and the Supreme Court of Canada; Alexander Macklin QC has “a wealth of experience” representing Canadian, US and foreign companies through trial and appeal processes in the Canadian courts. The firm also has a presence in our Russia section thanks to the inclusion of Vladimir Dementiev in Moscow. At IP boutique Bereskin & Parr, the “distinguished” Daniel Bereskin QC has made a name for himself as a registered patent agent in both Canada and the US, and as an arbitrator and mediator before ADR chambers; he also acts as IP judge for the Private Court. Head of the firm’s litigation group, Robert Macfarlane, is also a registered patent agent in the US and Canada, and brings almost 30 years’ experience trying cases before various Canadian courts. He is a “well-respected” figure among a particularly competitive field.

A number of highly rated individuals build upon their performances in our previous research. Donald MacOdrum of Lang Michener LLP is rated as a “top notch lawyer” and is past chair of the firm’s IP group. Brian Gray, of Ogilvy Renault LLP is recognised as “one of the very best around”. Donald Cameron of Cameron Mackendrick LLP continues to impress, as does Ronald Dimock of Dimock Stratton LLP (an “outstanding talent”).

Other Regions

Israeli patent lawyers made a very positive impression in the research, with two attorneys singled out for high praise. Shlomo Cohen of Dr Shlomo Cohen & Co “leads the field for patent law in Israel”, and comes recommended for handling the Israeli aspects of international IP cases. At Sanford T Colb & Co, Sanford Colb “really knows his stuff ”.

In Japan, Seiji Ohno, of Ohno & Partners, tops the nominations. The “excellent” Eiji Katayama of Abe Ikubo & Katayama was consistently endorsed by admirers of his litigation practice, which covers chemicals, electronics and machinery. Yoshio Kumakura – currently managing partner of leading IP firm Nakamura & Partners – was recommended in superlative terms.

Our Korea research identifies Young Kim and Jay Young June Yang, whose nominations underscore the market position maintained by Kim & Chang. Yoon Bae kim at Kims & Lees, is “always my first port of call in the country”, according to one prominent source.

In Australia, two lawyers take their places among the most frequently nominated worldwide. Desmond Ryan (a “doyen” of patent law in Australia) appears as the highest-ranking lawyer from Davies Collison Cave Solicitors, alongside two colleagues – Rodney De Boos and Richard Jarvis. From Allens Arthur Robinson, Michael Dowling – a past executive president of AIPPI – has over 30 years of experience in IP law, with a focus on dispute resolution. He is likewise joined by two partners: the “talented” Phillip Kerr and Richard Hamer. All three Allens Arthur lawyers repeat strong performances in the previous edition.

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