How To Choose The Best Intellectual Property Lawyer

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1 Classifieds/Jobs/Office Space : Experts/S MONDY TUESDY WEDNESDY THURSDY TODY TBLE OF CONTENTS Special Reports Top Intellectual Property Lawyers pril 6, 2011 Our annual list of the leading intellectual property litigators and portfolio managers. Plus, a profile of Chief Judge Randall Rader. Editors' Note Being a paid observer of the legal industry brings us a lot of enriching moments. But the absolute best part about our job is watching brilliant people facilitate creative ideas so that they blossom into real solutions. Chief Judge Randall Rader Shoots from the Lip Randall R. Rader, who last year became chief judge of the U.S. Court of ppeals for the Federal Circuit after two decades on the Washington, D.C.-based court that hears all patent appeals, says he needs to be "more careful" in his new role. William F. brams Bingham McCutchen LLP East John llcock DL Piper LLP Jorge rciniega Portfolio Manager / Prosecutor Trademark and copyright counseling; prosecution and commercial exploitation Ian C. Ballon Greenberg Traurig LLP Santa Monica Copyright, trademark Wayne Barsky Gibson, Dunn & Crutcher LLP Steven M. Bauer Latham & Watkins LLP Trade secrets Michael J. Bettinger Michael J. Bettinger K&L Gates LLP

2 Bradley D. Blanche Portfolio Manager / Prosecutor Greenberg Traurig LLP prosecution and counseling; intellectual property Jared Bobrow Weil, Gotshal & Manges LLP Redwood Shores ndrew Bridges Winston & Strawn LLP Media, technology, copyright and trademark litigation Juanita Brooks Fish & Richardson s Henry C. Bunsow Dewey & LeBoeuf LLP Yar Chaikovsky Silicon Valley Thomas T. Chan Chan Law Group LLP, trademark, copyright, trade secrets Neel Chatterjee Orrick, Herrington & Sutcliffe LLP Menlo Park Technology Morgan Chu Irell & Manella LLP Michelle. Cooke Portfolio Manager / Prosecutor Steptoe & Johnson LLP Trademark J. ndrew Coombs J. ndrew Coombs PC Glendale Copyright and trademark Luke L. Dauchot Kirkland & Ellis LLP

3 Intellectual property Richard de Bodo DL Piper LLP s, life sciences Ginger R. Dreger Portfolio Manager / Prosecutor rnold & Porter LLP Biotechnology Dean G. Dunlavey Latham & Watkins LLP Costa Mesa Daralyn J. Durie Durie Tangri LLP, copyright Mark. Flagel Latham & Watkins LLP Mark D. Flanagan Wilmer Cutler Pickering Hale & Dorr LLP Mark D. Fowler DL Piper LLP East Russell J. Frackman Mitchell Silberberg & Knupp LLP Copyright, trademark Robert D. Fram Covington & Burling LLP Thomas J. Friel Jr. Cooley LLP / Gary N. Frischling Irell & Manella LLP Intellectual property Craig Gelfound

4 Portfolio Manager / Prosecutor rent Fox LLP, trademark, copyright Jeffrey D. Goldman Jeffer Mangles Butler & Mitchell LLP Copyright and trademark Robert J. Goldman Ropes & Gray LLP East Susan. Grode Portfolio Manager / Prosecutor Katten Muchin Rosenman LLP Entertainment and media G. Hopkins Guy III Orrick, Herrington & Sutcliffe Menlo Park Lisa. Haile Portfolio Manager / Prosecutor DL Piper LLP Biotechnology, pharmaceuticals John V. Hanley Portfolio Manager / Prosecutor Steptoe & Johnson LLP s Robert T. Haslam Covington & Burling LLP Redwood Shores Benjamin W. Hattenbach Irell & Manella LLP Intellectual property Susan L. Heller Portfolio Manager / Prosecutor Greenberg Traurig LLP Santa Monica Trademarks and brand management Susan E. Hollander K&L Gates LLP Trademark, copyright Geoffrey M. Howard Bingham McCutchen LLP Intellectual property

5 Yitai Hu lston & Bird LLP Menlo Park Intellectual property nnette L. Hurst Orrick, Herrington & Sutcliffe LLP Copyright, trademark and trade secrets ndrei Iancu Irell & Manella LLP nthony M. Insogna Portfolio Manager / Prosecutor Jones Day Pharmaceuticals, medical devices, biotechnology Ned Israelsen Portfolio Manager / Prosecutor Knobbe Martens Olson & Bear LLP Biotechnology and pharmaceuticals Mark J. Itri Portfolio Manager / Prosecutor and trademark Michael. Jacobs Morrison & Foerster LLP Copyright, trademark, patent Jonathan S. Kagan Katten Muchin Rosenman LLP Copyright and idea-theft Richard B. Kendall Kendall Brill & Klieger LLP Media and entertainment Kelly M. Klaus Munger, Tolles & Olson LLP Copyright and trademark ntoinette F. Konski Portfolio Manager / Prosecutor Foley & Lardner LLP Biotechnology Robert L. Kovelman Portfolio Manager / Prosecutor Steptoe & Johnson LLP

6 s Rachel Krevans Portfolio Manager / Prosecutor Morrison & Foerster LLP Robert Krupka Kirkland & Ellis LLP Irfan. Lateef Knobbe Martens Olson & Bear LLP s Sabing Lee Portfolio Manager / Prosecutor Knobbe Martens Olson & Bear LLP Medical devices Matthew B. Lehr Davis Polk & Wardwell LLP Menlo Park Mark. Lemley Durie Tangri LLP, copyright Douglas E. Lumish Kasowitz, Benson, Torres & Friedman LLP H. Mark Lyon Gibson, Dunn & Crutcher LLP lexander F. MacKinnon Kirkland & Ellis LLP Kevin G. McBride Jones Day Terrence P. McMahon Menlo Park s Heather J. Meeker

7 Portfolio Manager / Prosecutor Greenberg Traurig LLP Silicon Valley Licensing, open source aron J. Moss Greenberg Glusker Fields Claman & Machtinger LLP Entertainment and intellectual property Kate H. Murashige Portfolio Manager / Prosecutor Morrison & Foerster LLP Biotechnology and pharmaceuticals Craig P. Opperman Portfolio Manager / Prosecutor Reed Smith LLP Software, Internet, related technologies Chris R. Ottenweller Orrick, Herrington & Sutcliffe LLP Silicon Valley Jill M. Pietrini Litigation Manatt, Phelps & Phillips LLP Intellectual property Catherine M. Polizzi Portfolio Manager / Prosecutor Morrison & Foerster LLP Biotechnology and pharmaceuticals Matthew D. Powers Weil, Gotshal & Manges LLP Redwood Shores Erik R. Puknys Finnegan, Henderson, Farabow, Garrett & Dunner LLP Gabriel M. Ramsey Orrick, Herrington & Sutcliffe LLP Menlo Park Intellectual property, cybercrime, digital rights management Joseph R. Re Knobbe, Martens, Olson & Bear, LLP, trademark, trade secrets, unfair competition Edward R. Reines Weil, Gotshal & Manges LLP Redwood Shores

8 Michael G. Rhodes Cooley LLP / Technology George. Riley O'Melveny & Myers LLP, trademark, copyright, trade secrets William C. Rooklidge Jones Day, trademark Kelli L. Sager Davis Wright Tremaine LLP Media, entertainment and intellectual property John P. Schnurer Perkins Coie LLP s Mark D. Selwyn Wilmer Cutler Pickering Hale & Dorr LLP Stefani E. Shanberg Wilson Sonsini Goodrich & Rosati PC David J. Silbert Keker & Van Nest LLP Darin Snyder O'Melveny & Myers LLP, copyright, trade secrets Marc. Sockol Portfolio Manager / e Prosecutor Sheppard Mullin Richter & Hampton LLP Wireless devices and applications, social networks, video games Mark J. Spolyar Portfolio Manager / Prosecutor Baker Botts LLP prosecution, trademark, copyright Gail J. Standish

9 Winston & Strawn LLP, securities and complex commercial litigation Bob Steinberg Litigation Latham & Watkins LLP Intellectual property Claude M. Stern Quinn Emanuel Urquhart & Sullivan LLP Silicon Valley, trademark, trade secrets Gregory P. Stone Munger, Tolles & Olson LLP, antitrust and unfair competition Roderick M. Thompson Farella Braun & Martell LLP, trademark, copyright Gail Migdal Title Katten Muchin Rosenman LLP Copyright Robert Van Nest Keker & Van Nest LLP s Charles K. Verhoeven Quinn Emanuel Urquhart Sullivan LLP, trademark, copyright Gerard von Hoffmann Portfolio Manager / Prosecutor Knobbe Martens Olson & Bear LLP Medical devices Michael R. Ward Portfolio Manager / Prosecutor Morrison & Foerster LLP Life sciences, biofuels Nan Wu Portfolio Manager / Prosecution Cooley LLP Biotechnology, pharmaceuticals, diagnostics, medical devices Daniel N. Yannuzzi Portfolio Manager / Prosecutor Sheppard Mullin Richter & Hampton LLP

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11 Classifieds/Jobs/Office Space : Experts/S MONDY TUESDY WEDNESDY THURSDY TODY TBLE OF CONTENTS Jorge rciniega Jorge rciniega Previous Next Bookmark Reprints Trademark and copyright counseling; prosecution and commercial exploitation rciniega noticed the past few years that companies increasingly are taking heed of what they've got in their intellectual property portfolios, with a view toward mining the commercial possibilities. "In a downturn in the economy, you get creative thinking of other ways to make money," he said. For rciniega, he can't think of a time when the legal industry has been hit as hard as it's been. But he's managed to keep busy for his many clients that include Jenny Craig Inc., Hollywood Tans Brands LLC and Univision Communications Inc., billed as the largest Spanish language media company in the United States, and the operator of the country's fifth largest television network. In 2010, he advised Univision on several matters related to the expansion of the company's traditional television and radio content into digital platforms - work, he said, that included sophisticated analysis of intellectual property rights. rciniega also advised the company on a new global trademark protection strategy. "I've seen a modernized system at the trademark office, and, for the most part, I am pleased at the advancement," he said. "Things seem to be moving more smoothly." He's also seeing new opportunities with the rise in new platforms, over which intellectual property content can be distributed. "With every new platform or technology, we always have to question the rights our clients have to this particular content and how it extends to new apps." For example, he said, say a book retailer is offering, along with the digital edition of a book, technology that allows customers to listen to the book through speakers. "The question is, do the rights of the retailers to sell the book give them the right to also offer buyers the audio version of that same book?" rciniega said. Since technology tends to move faster than legislators can pump out laws, his practice is always a challenge. "More often than not, you are able to address these gaps by going back and taking another look at what the principles were that the law was originally designed to protect," he said. "You can then extrapolate on how the law should treat this new medium." - Pat Broderick Previous Next HOME : CLSSIFIEDS : EXPERTS/SERVICES : CLE : DIRECTORIES :

12 Classifieds/Jobs/Office Space : Experts/Ser MONDY TUESDY WEDNESDY THURSDY TODY TBLE OF CONTENTS Yar Chaikovsky Previous Next Bookmark Reprints Yar Chaikovsky Silicon Valley Chaikovsky successfully fought to halt a patent infringement lawsuit against client Zumbox Inc., a digital postal system that was sued by Pitney Bowes Inc., which manufactures postage meters and other software, hardware and services for packaging and shipping. Pitney Bowes accused Zumbox of infringing on three patents related to converting traditional paper mail into paperless mail that gets delivered and sorted in an inbox. In addition to defending the case in court, Chaikovsky also went to the U.S. and Trademark Office - which is tasked with determining whether a patent is valid and "patentable" - to argue that the three patents in question were invalid. lthough the trademark office found two of the three patents were in fact valid, a judge in the Central District of California still stayed the case (Pitney Bowes Inc. et al v. Zumbox, Inc., CV (C.D. Cal., filed Oct. 13, 2009). "We thought all three were going to be found invalid, and two out of the three were confirmed," said Chaikovsky. "But she still stayed the case, with no precedential support for that position. I'm not aware of any other case where one or more patents had claims confirmed by the patent office and the judge still stayed the case." The decision was huge for Zumbox, a small company that could have been devastated by expensive, drawn-out litigation. "I staved them off from spending massive amounts of litigation fees," he said. "The whole point there was to save them money." Other recent matters Chaikovsky has been involved with: Lead counsel for Yahoo Inc., a defendant in a patent infringement case brought by Bedrock Computer Technologies LLC, which is accusing several Internet companies of infringing on its patent, a component of the Linux operating system that allows websites to store Internet Protocol addresses. Lead counsel for mazon.com, dobe Systems Inc. and 32 other companies in a patent infringement lawsuit brought by Side Update Solutions LLC relating to search engine optimization technology. - Catherine Ho Previous Next HOME : CLSSIFIEDS : EXPERTS/SERVICES : CLE : DIRECTORIES : S

13 Classifieds/Jobs/Office Space : Experts/Ser MONDY TUESDY WEDNESDY THURSDY TODY TBLE OF CONTENTS Mark J. Itri Previous Next Bookmark Reprints Mark Itri and trademark With patent trolls stalking and competitors looming, it doesn't hurt to have a little leverage. So says Itri, who has seen his reexamination practice heating up. The way he sees it, asking the patent office to take another look at a patent can level the playing field, and it is significantly cheaper than litigation. "No one wants to see their patent invalidated," Itri said. "Some courts will halt all proceedings if a reexamination is in place. But it has to be done very strategically. It's an under utilized tool." Itri also is noticing another shift taking place in the IP world - the emergence of software as the technology star, overshadowing the hardware. "Now, they give away the hardware and charge for the software," he said. "It's causing us to increase the number of attorneys we're hiring to service more work." lternative energy also is keeping Itri and his firm McDermott Will busy these days, from dealing with new inventions to matters related to wind, water and nuclear power. Nanotech, he added, is especially taking off. "We're getting a lot more work," Itri said. "There are so many applications for this kind of technology." With a roster of clients that include Google Inc., QULCOMM, Lockheed Martin Corp. and Toshiba Corp., Itri is responsible for managing and overseeing several thousand issued and pending patent and trademark files for his U.S. and foreign-based clients. Itri also heads up the firm's IP prosecution, transactions and strategy practice group, which includes about 90 registered patent lawyers and agents. Not all of Itri's work involves deal-making. Sometimes, he gets to be a crime fighter, working on cyber security and privacy issues. "It's being able to protect trademarks, copyrights and information on our clients' websites that are being take by others out there," he said. "It's a crime, and we've used Scotland Yard, the FBI and local police to bring these people to justice. cross the board, it's another growing area." - Pat Broderick Previous Next HOME : CLSSIFIEDS : EXPERTS/SERVICES : CLE : DIRECTORIES : S

14 Classifieds/Jobs/Office Space : Experts/Ser MONDY TUESDY WEDNESDY THURSDY TODY TBLE OF CONTENTS Previous Next Terrence P. McMahon Terrence P. McMahon Bookmark Reprints Menlo Park With both an undergraduate degree and a law degree from Santa Clara University, McMahon thinks of himself as "indigenous" to Silicon Valley. For more than three decades, he has practiced intellectual property law while the region blossomed into a start-up hotbed. It wasn't just a boom time for companies, he says, but for law firms, too. "Every law firm on the planet moved into Silicon Valley to open an office," he said. In 1995, one of those firms, Orrick brought on McMahon to help seed the firm's intellectual property group. "When I got there, the IP department was, like, one," he said. "It was me." He drew other intellectual property lawyers to the fledgling practice group, and it grew. By the time he left for in 2001, McMahon says the IP group at Orrick topped 80 lawyers. But while his roots have long been planted in the soil of Silicon Valley, his practice branches nationwide. Cases regularly sweep him across the country, bouncing him from one airport to another before bringing him back to his Menlo Park office. Last year, McMahon successfully defended software maker Sybase Inc. in the U.S. District Court for the Eastern District of Virginia. TeleCommunication Systems Inc. alleged that Sybase had infringed on patents surrounding two-way messaging protocols. He also filed a patent case on Sybase's behalf against TeleCommunication Systems on multiple patents. TeleCommunication Systems Inc. v. Sybase 365 Inc., CV (E.D. Va.) and Sybase 365 LLC v. Telecommunication Systems Inc., CV (E.D. Va.) In 2009, he won a favorable settlement for plaintiff Research Corporation Technologies Inc. in a 10-year battle against Microsoft Corp. over a process to optimize images on computer screens. Fifteen minutes before the jury was to hear opening arguments, says McMahon, the two companies entered a settlement approved by the judge. Research Corp. v. Microsoft Corp., CV (D. riz.) - Ben dlin Previous Next HOME : CLSSIFIEDS : EXPERTS/SERVICES : CLE : DIRECTORIES : S