Marshall, Gerstein & Borun LLP is at the forefront of intellectual property law. The Firm’s professionals understand the hard science behind clients’ innovations and how to devise, evaluate, and execute intellectual property strategies. Fortune 500 corporations, small to midsize companies, non-profits and start-ups turn to Marshall Gerstein for comprehensive intellectual property solutions tailored to their needs. With over 90 attorneys supported by a full team of patent agents, technical specialists and paralegals, the Firm assists clients with protection, enforcement, and transfer of intellectual property rights throughout the world.
Over 80% of the Firm’s attorneys and patent agents are admitted to practice before the United States Patent and Trademark Office
Nearly 90% of the Firm’s attorneys have science or engineering degrees
Over70% of the Firm’s patent agents and technical specialists have a Ph.D. or other advanced technical degrees
Marshall Gerstein represents clients by providing intellectual property law services across a full range of industries, including aerospace, agriculture, automotive, biotechnology, chemical, cleantech and renewables, consumer goods, e-commerce, electrical and software engineering, electronics, energy, engineering, entertainment, fashion and apparel, finance, food and beverage, furniture and home furnishings, government, health care, industrial operations, insurance, Internet and cyberlaw, life sciences, manufacturing, materials science, mechanical, media, medical devices, nanotechnology, non-profit technology transfer, pharmaceutical, retail, and software technology.
Main Areas of Practice: The breadth of the technical and legal training of the Firm’s professionals allows them to effectively serve clients’ intellectual property needs in virtually all intellectual property services and business sectors. The Firm’s practice areas include:
• Design Patents
• Intellectual Property Litigation
• Intellectual Property Transactions
• Patent Prosecution
• Post-Grant Patent Proceedings
• Trade Secrets
Biotechnology & Life Sciences and Pharmaceuticals Industries: Marshall Gerstein offers continuity and predictability along the challenging path to biotech success. The Firm’s professionals have advised start-ups on the road to initial public offerings and acquisitions, helped middle-market businesses crack the Fortune 500, and counseled multinational companies on how to protect key assets around the world. The Firm has vast experience helping biotech clients devise successful intellectual property strategies that build U.S. and foreign patent portfolios, protect commercial products and processes, maximize returns, and extend patent life cycles. Marshall Gerstein focuses on client goals first and foremost, while maintaining a laser focus on legal, scientific, and industry developments that could require strategic adjustments. Marshall Gerstein develops and deploys creative, forward-looking intellectual property strategies that align with rapidly changing technology in a variety of biotechnology industries:
• Biopharmaceuticals and immunotherapy
• Diagnostics and personalized medicine
• White biotech
• Agricultural biotech
Intellectual Property Litigation: Marshall Gerstein has earned a national reputation for patent and trademark litigation. The Firm has success fully represented clients in cases involving some of the most significant issues in intellectual property law during the last 60 years, many resulting in major victories and landmark decisions. Almost all of the Firm’s attorneys have technical degrees, with one-third holding advanced degrees in science or engineering. Because the Firm’s trial attorneys have deep technical knowledge, they are able to convey the substance and significance of technological innovations to judges and juries in a clear, persuasive manner.
Intellectual Property Transactions, Licensing, and Technology Transfer: With seasoned licensing attorneys having experience as in-house general counsel, patent counsel, and technology transfer managers, the professionals at Marshall Gerstein understand intellectual property transactional issues and deliver practical solutions. The professionals craft comprehensive agreement structures that implement clients’ priorities, minimize unallocated risks, and allow for changing circumstances. The Firm’s transactions practice includes the full range of agreements relating to intellectual property assets, such as alliance and collaborations, in and out licenses, confidentiality, joint venture, material and technology transfer, research, clinical trial and testing, manufacturing, distribution and supply, consulting, trademark, trade secret, open-source, and other agreements. The Firm has significant experience with universities and other not-for-profit research institutions that enable the Firm to deal effectively with many of the issues these institutions commonly face, including invention evaluation, inventorship disputes, research collaboration and license agreements, deal maximization, and negotiating with inventors who have external priorities.
Patent Prosecution, Portfolio Management, and Counseling: Marshall Gerstein, with a team of over 60 patent prosecution attorneys and patent agents, has one of the largest patent prosecution practices in Chicago and has the advantage of broad and deep experience across every major technical field and industry in managing large and interrelated U.S. and foreign patent portfolios. The Firm helps clients evaluate inventions, perform patentability assessments, draft and prosecute patent applications, obtain and license patents throughout the world, and assist with inventorship disputes. The Firm’s prosecution professionals are experienced with inter partes and postgrant patent prosecution matters, including U.S. interference proceedings, U.S. reexamination and reissue proceedings, and assisting foreign counsel with opposition proceedings. The Firm also has substantial experience in preparing freedom-to-operate opinions that evaluate issues of validity, enforceability, and/or infringement. The Firm also performs due diligence intellectual property reviews in support of corporate transactions.
Trademarks & Copyrights: Marshall Gerstein provides seasoned advice on the risks and advantages of branding objectives and assists in clearing, registering and protecting clients’ trademarks. The Firm provides the full range of trademark-related services in the U.S. and abroad, including registering, enforcing, opposing and defending trademark rights. The Firm represents aggrieved brand owners and alleged infringers in the resolution of disputes involving trademark, design and trade dress infringement.
2019 LMG Life Sciences Stars:
Pamela L. Cox, Partner and Chair, Intellectual Property Transactions
Founded in 1978 and based in Washington, D.C., Sterne Kessler is a premier law firm dedicated exclusively to the protection, transfer, and enforcement of intellectual property rights. The firm has more than 160 lawyers, registered patent agents, students, and technical specialists number over 170 and include some of the country’s most respected practitioners of IP law. Most of these professionals hold an advanced level degree, including more than 50 masters degrees and more than 50 doctorate degrees in science or engineering -- credentials wide and deep enough to fill the faculty of a science oriented university.
For over 40 years, the patent prosecution group has been preparing and prosecuting patent applications. This renowned group prosecutes and enforces utility and design patents for Fortune 500 companies with extensive, active patent portfolios, as well as small startup companies that rely on the patent system to obtain funding and to head off competition.
The trial & appellate group practices before Federal District Courts throughout the United States in complex IP cases involving software, biotech products, medical devises, pharmaceuticals, electronics, and consumer products. With more than 50 PhDs on staff, the group seamlessly blends disciplines to ensure the right team is handling the legal and technical challenges specific to the IP dispute at hand. The group provides counsel across a broad spectrum of IP issues, including patent infringement actions, trademark and copyright issues, licensing disputes, breach of contract, trade secrets and Lanham Act matters to name a few.
Since the inception of the U.S. America Invents Act (AIA) in 2012, the patent office litigation practice has worked on more AIA reviews than any other law firm at the United States Patent and Trademark Office Patent Trial and Appeal Board -- the PTAB. The group has handled more than 1000 IPRs and other post-grant reviews on behalf of both patent owners and third party requesters. The PTO litigation group represents both petitioners and patent owners, in a wide range of the PTAB’s technology centers-- biotech and chemical, electrical, and mechanical.
The appellate litigation practice handles appeals to the U.S. Court of Appeals for the Federal Circuit, as well as circuit courts around the U.S. The practice handles appeals from district courts, the U.S. International Trade Commission, and the PTAB.
International Trade Commission:
The ITC Section 337 investigations team represents complainants and respondents of international companies before the US International Trade Commission (ITC). The team uses its technical expertise and proximity to the ITC headquartersin Washington, DC to assist clients in navigating the multifaceted process related to Section 337 investigations. These complex, fast-paced matters require a unique and essential blend of skills in litigation, administrative law, and patent law, as well as technical skills. The team’s clients include commercial manufacturers and importers, in addition to retailers of accused products. The team is highly experienced in managing the fast track nature of the ITC proceedings, the complex issues involved in accused technologies, and following the precise agency rules associated with investigations. Sterne Kessler has more experience at the ITC than 95% of firms appearing there since 2015, and the firm successfully took 5 investigations through trial throughout 2018-19.
Trademark & Brand Protection:
The Trademark & Brand Protection Practice draws on more than 30 years of experience meeting the intellectual property needs of companies developing and maintaining strong brands around the world. Comprehensive and strategic IP protection and enforcement helps businesses both differentiate their product and service offerings from those of competitors, and helps them achieve their full market potential.
The practice’s well-thought-out IP strategies guard against patent, trademark, and copyright infringers, knock-offs and counterfeiting, online fraud, and idea theft by competitors, insiders, partners, and manufacturers – all of which can harm the reputation and brand of companies large and small.
Paul Hastings is an IP litigation powerhouse, protecting the interests of life sciences, healthcare, and technology clients in patents and trade secrets litigation with litigation and trial success at all levels in key forums and venues.
We are strategic, nimble, efficient, and dedicated to our clients, with a deep bench of diverse, award-winning attorneys who excel in high-stakes life sciences IP enforcement and defense. Our approaches to cases and seamless integration of strategy for Patent Trial and Appeal Board (PTAB) proceedings, as well as district and appellate court proceedings, has propelled us to represent innovator life sciences companies including in bet-the-company cases.
Chambers and Partners has individually ranked six of our IP Partners, and our New York life sciences team is ranked for "Intellectual Property: Patent." Chambers also reports that we are known for "renowned counseling and representation of innovator pharmaceuticals and biotechnology companies." The Legal 500, U.S. News & World Report & Best Lawyers, Benchmark Litigation, and Managing IP all rank our practice as Tier 1 Nationally for IP and Patent Litigation. BTI Consulting lists us each year as a "Go-To Litigation Firm" and "Best for Complex IP Litigation" in its annual Intellectual Property Outlook report.
In addition to the rankings mentioned above, our IP practice as a whole has been recognized by third-parties and rankings organizations including:
Intellectual Asset Management recognizes us as among "The World's Leading Patent Professionals" each year for patent litigation, Federal Circuit appeals, ITC 337 Investigations;
Law360 recognized us as "Most Valuable Players" for Life Sciences, Technology, and IP as well as "Practice Group of the Year" for Life Sciences;
The American Lawyer recognized us as 2018 "IP Transatlantic Team of the Year" for work we performed for a branded pharmaceutical company; and
National Law Journal named several IP partners "Intellectual Property and Litigation Trailblazers."
We offer clients the following four key benefits–present in combination–which we believe differentiate us from the relatively small group of other life sciences IP practices with whom we compete:
Substantial experience handling parallel proceedings before the PTAB:
Our Patent Office practice has extensive experience with post-grant challenges, including post-grant review (PGR) and inter partes review (IPR) proceedings, resulting in a strategic and cost-efficient defense to litigation. Our attorneys have been involved in over 500 post-grant proceedings, and are undefeated at the PTAB in life sciences matters. Managing both district court and Patent Office proceedings, we are able develop efficient, coordinated strategies that take account of the differences between the two venues, while maintaining consistency in positions and taking the approach most likely to protect key patents through all proceedings.
Third parties have recognized us as a go-to-firm for post-grant proceedings. Chambers and Intellectual Asset Management recognizes us as experts in PTAB practice. In fact, we helped form the PTAB Bar Association and maintain professional relationships with other members of the Bar and Judges.
Diverse bench of nearly 40 legal professionals and PH.D.-trained scientific advisors: Besides being skilled trial lawyers, nearly all of our life sciences IP attorneys hold technical degrees, including advanced degrees in the life sciences, chemistry, materials science, or engineering, and many have hands-on experience from work at leading research institutions and large life sciences companies. Our technical acumen allows us to field efficient litigation teams that possess deep insight into the technology and understand how to present technical issues in the most persuasive way. We work efficiently and closely with inventors and experts to develop the strongest legal positions backed up by solid scientific positions. We are deeply committed to diversity, equity, and inclusion, and nearly half of the attorneys in our life sciences intellectual property practice are diverse, beginning with our award winning partner and of-counsel ranks. We recruit the best and brightest from leading law schools and work with a range of organizations to build our diverse and inclusive talent base, which has resulted in our being consistently recognized for our commitment to advancing diverse leaders.
Unwavering commitment to innovator clients: We are dedicated to seamless client communication, and we promise that our lead counsels give focused attention to matters throughout the course of the case. We do not have conflicts being adverse to generics. We are experts in the nuances of Hatch-Waxman and biotech patent litigation, including strategies to win cases in federal district court while navigating intersecting regulatory issues involving the FDA. We have litigated against virtually every generic drug company and generic law firm. We look to outmaneuver the generics' firms, including by staying attuned to the trends and tactics evolving in the generic corps. We also have substantial experience in biosimilars patent litigation practice under the BPCIA, providing key strategic advice and representing both reference product sponsors and biosimilar applicants companies in litigation and related PTAB proceedings involving multi-billion dollar biologics products.
Proven track record of success: Whether judge or jury–we know how to try case–and we win. And because our opposition knows we are not afraid to go to trial we are able to leverage our skill and reputation to deliver successful results through settlements where beneficial for our clients. Our success does not end at trial. Leveraging Federal Circuit clerkships and deep appellate experience, we partner with our clients through appeal.
Our clients trust Paul Hastings to protect their most important products and processes. Together, our nationally ranked IP litigation and appellate practices shape a formidable team that serves our clients well.
Williams & Connolly has a long-standing reputation as one of the nation’s premier litigation firms, with a cadre of top-tier trial lawyers. The firm is regularly recognized as a leader in lifesciences, intellectual property, and products liability by Managing IP, LMG Life Sciences, and Chambers USA, among others. Recent recognitions include The National Law Journal’s 2017 “Washington Litigation Department of the Year” for Products Liability, and one of the top four patent litigation practices nationally for 2017 by IAM Patent 1000 - The World’s Leading Patent Practitioners.
Patent litigation and licensing disputes. Williams & Connolly is the “go-to” intellectual property litigation firm for many of the biggest companies and most important cases. The patent litigation group marries the experience of seasoned firstchair trial lawyers with that of a team of scientifically trained lawyers, including ten former Federal Circuit clerks and thirteen members of the patent bar. Their collective strength is in mastering the technical and scientific issues raised by patent disputes, providing a nuanced understanding of the relevant legal issues, and describing them in ways that both judges and juries easily can understand.
Williams & Connolly represents both U.S. and international market leaders, large and small, in a wide range of sectors for which patent litigation is a critical and essential component of the company’s asset-protection strategy. In the pharmaceutical and biotech sectors companies such as Pfizer, Eli Lilly, Genentech/Roche, AstraZeneca, and its division MedImmune, Bayer, and Novartis and its division Alcon entrust critical patent litigation to the firm.
The firm has represented both patentees and alleged infringers in litigation and post-grant review proceedings spanning a wide range of technologies, including pharmaceuticals, medical devices, biotechnology, electronics, and software. Williams & Connolly’s patent lawyers are outside counsel of choice for many leading corporations in the life sciences arena in matters including:
• Hatch-Waxman pharmaceutical litigation against generic companies • Wide-ranging patent, licensing, and trade secret litigation for biotechnology companies
• Patent and licensing disputes on behalf of medical device manufacturers • Representing petitioners and patent owners in inter partes review proceedings • Representing major law firms in professional responsibility claims of malpractice rising from their patent litigation or prosecution work
Recent practice highlights include: • Successful representation of Pfizer and several of its subsidiaries at trial and on appeal against a generic manufacturer attempting to sell a version of a Pfizer anticancer drug. • Successful representation as lead counsel for Bayer in several Hatch-Waxman cases relating to Bayer’s erectile dysfunction drug products
Levitra® and Staxyn®. • Successful defense of Eli Lilly in two bench trials over the validity and infringement of a Lilly patent protecting its blockbuster anticancer drug Alimta®, which has annual U.S. sales of over $1 billion. • Successful representation of Mirowski Family Ventures in a jury trial that returned a $309 million verdict against Boston Scientific Corporation for breach of contract and patent licensing issues related to its implantable cardioverter defibrillator and won on appeal.
Williams & Connolly is also a recognized force in the products liability arena, and is home to some of the most successful products trial lawyers in the country. The team has extensive experience representing pharmaceutical and medical device makers and distributors in all aspects of national and international litigation as lead trial counsel, national or global coordinating counsel, “endgame”/resolution counsel, and appellate counsel. With several dozen attorneys who spend more than half their time on products litigation, the firm regularly represents many of the world’s leading companies in highstakes litigation in the U.S., Europe, Africa and Asia.
Recent practice highlights include: • Representation of Bayer, Genentech, Stryker, Pfizer, Merck, AstraZeneca, Medtronic, and Endo Pharmaceuticals in products litigation • Several recent trial victories for life sciences clients, including jury trial wins for Alcon and for Pfizer/Wyeth • Several recent appellate victories on the issue of “innovator liability” • Multiple defeats of class certification
• Serving as lead national counsel in diabetes products litigation, national counsel on Viagra- melanoma litigation, resolution counsel on two major litigations (each involving thousands of cases), and trial counsel in multiple drug and device litigations
Williams & Connolly lawyers handle virtually every kind of complex commercial litigation imaginable for businesses in the life sciences, pharmaceutical and healthcare industries, with a particular emphasis on preparing and taking cases to trial.
Recent practice highlights include: • Defended Alcon Research against $400+ million in contract and trade secret claims: 2017 jury trial defense verdict on contract claims, and defense summary judgment on trade secret claims. • Represented Pfizer in $100+ million commercial dispute: 2017 arbitration award on all claims before the AAA’s International Centre for Dispute Resolution (ICDR). • Representation of Eli Lilly, Cardinal Health, Pfizer, AstraZeneca, Omnicare, and Bristol- Myers Squibb in a range of complex cases.
Antitrust, white collar and government investigations
Life sciences clients, including those in the pharmaceutical and other healthcare sectors, also look to Williams & Connolly in the face of significant and complex antitrust, white collar and government investigation matters.
Recent practice highlights include: • Representation of many significant life sciences and healthcare companies navigating government investigations including Pfizer, Wyeth, CVS Health, Medco Health Solutions, Express Scripts, Cardinal Health, Emerge Medical, Liberty Health Care, Omnicare, and Sunrise Senior Living. • Successfully defending AstraZeneca in landmark antitrust litigation seeking $60 billion in alleged damages.