Most Highly Regarded Firms: Illinois 2006 - Patents

According to the State of Illinois, it is America’s 4th largest industrial state, boasting over 11,800 Illinois based manufacturers.

The state’s location within the industrial and geographical centre of the country contributes to its position as one of the nation’s manufacturing leaders and the healthy research and manufacturing industry encourages strong patent output. The US Patent and Trademark Office records that 7,833 patent applications were filed in Illinois in 2005. The research for this chapter has identified 20 leading practitioners in Illinois. We have focused our research on preeminent patent litigators – excluding, where possible, patent attorneys (or patent agents). The inclusion of a large number of individuals from specialised intellectual property firms highlights the weight that such outfits carry within the market. 

There are four individuals that despite being the only ones from their firms on our list are of such renown they ensure their firms are well regarded in the market. Jenner & Block LLP can boast the “top-shelf ” Harry Roper, who performed exceptionally well in the nominations. During the course of our research it became apparent that clients and peers “think the world of him”. He chairs the firm’s intellectual property practice and was praised as a “highly skilled patent litigator”. During his career he has represented companies such as Dow Chemical, Johnson & Johnson and Phillips Petroleum in patent infringement cases. Roper was recently lead trial counsel for Alza, a Johnson & Johnson subsidiary, successfully defending Alza’s patent on a major anti-cancer drug from claims of inventorship by the plaintiff.

Michael Warnecke from Mayer Brown Rowe & Maw LLP brings a “superb reputation” to the table. Before entering private practice, Warnecke was a patent examiner for the US Patent and Trademark Office in Washington DC. He has an “impressive national and international practice” that includes providing counsel to the Chinese government. Warnecke is, according to one source, “a force to be reckoned with” and he was placed in the upper ranks of our list. 

Another individual with respected international experience is Leydig Voit & Mayer’s Michael Hartmann. Before joining the firm, he was employed as an engineer by Mobil Oil Corporation and completed an internship with a German patent firm. He puts this experience to use in a diverse and highly technical patent practice. Hartmann specialises in patent litigation in the area of international technology transfer and patent enforcement. He represents clients from diverse technical fields, including geophysical surveying equipment, polymeric soft contact lenses, molecular sieve zeolites, machine tools, ethylene oxide catalysts, and polymeric membranes. 

Edward O’Toole practises at McCracken & Frank LLP and is known for his “deep industry knowledge”. His practice concentrates on patent infringement litigation. He has asked for clients in the chemical, biotechnology, pharmaceutical, and mechanical industries throughout his illustrious career. These clients include such names as General Tire & Rubber Co, Dow Chemical Co, Abbott Laboratories and General Mills. O’Toole is also known for his in-depth knowledge of Markman hearings, writing and speaking on this topic frequently. 

Jones Day partner David Witcoff features in this chapter; his degree in Electrical Engineering stands him in good stead to deal with high-technology patent disputes. Examples of such cases include the recent successful defence of Motorola and Freescale against allegations of infringing a patent generally related to simulation of a semiconductor fabrication plant in Information Technology Innovation v Motorola and Freescale Semiconductor. Witcoff also defended IBM against charges of patent infringement relating to updating and displaying electronic catalogue product information over the internet in Charles E Hill & Associates v Amazon.com et al (including IBM Corporation). 

Moving from the chapter’s pre-eminent individuals to the top-tier teams that shape the Illinois patent market, there are six firms providing two or more practitioners for the pages that follow. 

Brinks Hofer Gilson & Lione is a dedicated intellectual property firm with a firm grip on the Illinois patent market. It houses three individuals that performed exceptionally well in the nominations. Leading the way for Brinks Hofer with a “superb reputation” is Roy Hofer. His practice currently has a focus on federal circuit cases and Hofer has acted as chair of a three-arbitrator panel in a dispute between two Fortune 100 companies in 2005 that involved a patent licence regarding digital subscriber line technology. Another name that “should be on everybody’s list” is that of partner Gary Ropski. He successfully represented ZF Friedrichshafen AG and ArvinMeritor in a section 337 patent infringement matter before the International Trade Commission in Washington, DC. The complainant sought, and was denied, penalties of over US$40 million. Jerold Jacover is the other expert we identify at this “top firm”. With an impressive client list, Jacover has in the course of his career represented companies including Abbott Laboratories, The Coca-Cola Company and Motorola. Jacover is adept at handling cases involving a broad range of technologies, highlighted by one of his more recent matters in which he defended RJ Reynolds in a large patent suit pertaining to a method for treating tobacco. He is also on the National Board of Directors of the American Society for Technion. 

McDonnell Boehnen Hulbert & Berghoff LLP is another specialised IP firm that achieved excellent results in the research. Three of its founding partners make the final chapter. The “innovative and exciting” John McDonnell “leads where others follow” in complex healthcare matters including biotechnology, pharmaceuticals and diagnostics, with a particular focus on advising those investing in such companies. Sources “heard nothing but good things” about his practice and McDonnell gained first-hand experience from working inhouse with Abbott Laboratories for five years as head of the diagnostic patent operations. Daniel Boehnen deals with all forms of high-tech patent disputes and was described to us as “extremely thoughtful and thorough”. Paul Berghoff is an experienced lead counsel for complex patent litigations both at home and abroad with clients that include Fortune 500 companies from a variety of industries. Alongside his contentious work are equally successful patent interference and counselling practices, within which Berghoff specialises in the evaluation of potential litigation risks and opportunities. Niro Scavone Haller & Niro is home to two of the “top names in Chicago”. The “formidable” Raymond Niro and the “great” Thomas Scavone. Niro was described as a “jury trials lawyer that has great success on the plaintiff side” with an incredible number of patent related successes to his name. These include Acumed LLC v Stryker Corp in which the jury found that Stryker had wilfully infringed Acumed’s valid patent. The district court subsequently ordered permanent injunction, enhanced damages and attorneys’ fees for a substantial amount. Thomas Scavone maintains a reputation as a “real star” and he can call upon knowledge gained from a Masters Degree in Engineering and his time as an examiner in the US Patent and Trademark Office. Over the past five years, Scavone has represented clients in patent disputes and licensing resulting in recoveries exceeding US$20 million. 

Niche firm McAndrews Held & Malloy possesses the combined experience of leading lights George McAndrews and Timothy Malloy in the chapter. George McAndrews is a “superb litigator” taking on diverse patent matters and, according to one source, “always comes out on top”. Timothy Malloy, the other half of this “very accomplished team” focuses his patent litigation on high-technology cases, chiefly in the areas of electrical, mechanical, and medical devices. In June 2006, Malloy presented at a Markman hearing on behalf of defendant Alaris in the case of ICU v Alaris. 

Sidley Austin LLP has three members of its Illinois-based IP practice listed – more than any other international outfit. David Pritikin is chair of this practice group and is based in the Chicago office. His focus is on patent litigation and he is renowned for his pharmaceutical-related work – including over 12 Hatch-Waxman cases. Pritikin has acted as lead counsel for defendant Baxter Pharmaceutical in a patent infringement suit involving an anaesthetic product in Abbott Laboratories et al v Baxter Pharmaceutical, et al. Hugh Abrams is a “superb high-tech patent litigator” with a “unique style and real presence” and these combined attributes make him “one of the go-to guys” for such matters. Richard Cederoth is an expert in litigating patent cases involving computer, software and semiconductor matters. 

Kirkland & Ellis LLP has an IP department of around 200 members and William Streff serves as one of the practice group leaders. Streff concentrates his practice on high technology matters. Partner Russell Levine joins him in this chapter. Levine was recommended as a “force to be reckoned with” and has a particular expertise in patent infringement and licensing matters. Levine is chair of the patent and technology licensing committee of LESI (Licensing Executives Society International) and was consistently recommended to researchers.

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Nominees have been selected based upon comprehensive, independent survey work with both general counsel and private practice lawyers worldwide. Only specialists who have met independent international research criteria are listed.

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