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
The Ballard Spahr Life Sciences Industry Practice is a destination practice for life sciences businesses at every stage of the corporate lifecycle, serving clients from innovation and commercialization through licensing, enforcement, defense, and the implementation of growth strategies.
Our lawyers—many of whom hold advanced degrees in the sciences—understand the complex, industry-specific issues at play. Our dedicated team includes attorneys who focus on antitrust and anti-competition law, corporate law, intellectual property litigation, licensing litigation, patent counseling & prosecution, internal and government investigations and real estate matters specific to the life sciences industry, and include areas of focus such as small molecules, vaccines, antibodies, cell and gene therapy, biologics, diagnostics, immunotherapy, chemicals, medical devices, nutraceuticals, bioinformatics, food additives over the counter products, and cosmetics.
A top patent/IP litigation trial practice with a deep life-science technical bench and a record of success challenging and defending patents, both in district court and in parallel PTAB proceedings.
A national life science litigation team that has successfully handled significant disputes—as both plaintiff and defendant—in complex licensing, joint development, supply, and other critical strategic life science agreements, including “diligent efforts” cases, inventorship and IP ownership cases, non-competition clauses, supply breaches, and disputes over rights to milestone and royalty payments.
A dedicated team of transactional lawyers across the U.S. who focus on mergers, acquisitions, joint ventures, partnerships, capital-raising, and licensing within the life sciences sector.
More than a dozen attorneys with doctorates and other advanced degrees in an array of scientific fields, from biochemistry and genetics to engineering and zoology.
A soup-to-nuts real estate practice that has helped life sciences companies achieve their goals-from start-ups and joint ventures to global leaders— concerning acquisitions, development, zoning and land use, leasing, financing and environmental and sustainability issues.
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.
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.