Intellectual Property

In today’s global economy, patents, trademarks, copyrights and other intellectual property (IP) are among the most valuable assets of market leaders and rising businesses.

From aerospace technology to antiviral drugs, from software and web content to consumer goods, from cartoon character rights to financial services, BakerHostetler has the hands-on knowledge necessary to help clients secure and use IP assets for maximum competitive advantage. In thousands of proceedings spanning more than 100 countries, we protect client’s competitive advantage in negotiations, trials and other dispute resolution proceedings.

As of January 1, 2014, BakerHostetler combined with Woodcock Washburn, one of the country’s most respected IP boutique law firms. With this combination, we doubled our existing IP practice to 140 lawyers and have offices in three additional significant markets—Atlanta, Philadelphia and Seattle. Founded in 1946, Woodcock Washburn is rated one of the top IP law firms in the United States by IP Law & Business. For 11 consecutive years, Chambers USA has listed the firm as the top IP firm in Pennsylvania. Moreover, BakerHostetler has deepened its existing depth of experience in the electrical and mechanical industries and significantly increased technical capabilities in computer sciences, biotechnology, the chemical arts and life sciences.

The lawyers and agents who make up our IP Group have worked as engineers and in-house patent, trademark and copyright counsel for companies and agencies as diverse as Borg-Warner, Canon, Capitol Records, IBM, Union Carbide, McDonnell Douglas, Exxon Mobil, the United States Patent and Trademark Office (USPTO), United States Court of Appeals for the Federal Circuit, the Justice Department and the Federal Trade Commission (FTC). Because of our extraordinary talents and track record of success, BakerHostetler was named a “go-to law firm” for IP law in Corporate Counsel® magazine’s guide to law departments in the nation’s top companies by in-house counsel at Johnson Controls and Thermo Fisher Scientific. Our practices in information-technology, patent and technology law each received a National First-Tier Ranking from The Best Lawyers in America© 2013 edition (Copyright 2012 by Woodward/White, Inc., of Aiken, S.C.).

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Our IP Group encompasses eight teams:

Biotechnology, Chemical and Pharmaceutical Team

Our Biotechnology, Chemical and Pharmaceutical team helps clients leverage their intellectual property assets to create maximum revenue and growth, along with a distinct competitive edge. BakerHostetler's experience covers an extensive array of industries encompassed within the chemical arts field, including life sciences and industrial chemical applications. We proactively work with clients to maximize the value of portfolios, handling everything from portfolio management, licensing, planning to litigation avoidance, third-party diligence, portfolio enforcement and evaluation issues.

Electrical, Mechanical and Computer Science Prosecution Team

Businesses today operate in a global marketplace of ideas in which protecting intellectual property is not simply a necessary defensive exercise, but, instead, a vital component of strategy that can define the efforts of an entire organization. Our Electrical, Mechanical and Computer Software Prosecution team is comprised of more than 40 registered patent attorneys and agents, many of whom are recognized leaders in areas that include semiconductors, software, navigation systems, medical devices, aeronautics and wireless communications and location technologies. Many of our team members hold advanced degrees in electrical, mechanical and computer engineering fields and bring both a technical and legal understanding of these industries through prior experience as engineers, as well as in-house counsel.

Patent Litigation Team

The complexity of today’s technology systems and the high value of intellectual property make industry disputes inevitable. Successful patent litigation requires broad intellectual resources combined with deep technological knowledge and an understanding of client business. Our more than 60 dedicated Patent Litigation lawyers work with our clients as advisors, helping to maximize the value of patent portfolios through licensing and enforcement efforts carefully designed to monetize assets. To form cost-effective legal teams, we draw from our significant bench depth located across the United States.

Copyright, Content, and Platforms Team

BakerHostetler’s experience in handling copyright issues in media spans more than 95 years. Throughout this time, we have worked alongside our clients as they grappled with changes in the way content is distributed, copied and created. Our team of sophisticated attorneys and professionals utilizes its experience in software and reproduction technologies, along with its deep understanding in intellectual property, media, and Internet law, to remain at the forefront of legal issues, including those created by evolving technologies. This broad base of knowledge and skills allow us to provide our clients with focused solutions in a cost-effective manner, regardless of industry type or company size.

Trademark Team

In this age of instant information and high-tech communications, a company’s success often depends upon the proper protection of its intellectual property, including its trademarks. We are dedicated to helping our clients strategically grow, secure, protect, defend and enforce their valuable trademark assets, particularly in light of the rapidly evolving global marketplace. Our team of sophisticated trademark attorneys and professionals use their knowledge, skills and experience to provide our clients with focused and cost-effective solutions, regardless of the type of industry or size of the company.

Information Technology and Transactions Team

Outsourcing, mergers, acquisitions and virtual technology services and infrastructures enable organizations to vastly increase their reach and speed while dramatically lowering costs—but they pose significant risk, as well. The lawyers on our Information Technology and Transactions team are comprehensive strategic advisers who help clients across all sectors of the economy conduct complex transactions. As advisors, we often help clients choose technology platforms for maximum competitive advantage and profitability, while limiting risk exposure.

Media Law and Digital Content Team

Our digital media content team serves clients in all traditional and digital media. We help top international, national, and regional clients develop Internet platforms and negotiate agreements for Internet sales and distribution, information services and computer games. We advise clients concerning their marketing and advertising activities and we base such advice on broad experience developed in our representation of clients in music, motion pictures, gaming software, and other entertainment fields. Moreover, we are particularly well known for developing First Amendment law for media companies and the journalists and writers who work for them.

Privacy and Data Protection Team

We have one of the nation’s largest practices in the area of data privacy and information security. Our team is ranked with "considerable praise" in the 2013 edition of Chambers USA: America's Leading Lawyers in Business and holds the distinction of being “Recommended for Client Service” and “Recommended for Commercial Awareness.” We emphasize the importance of preparing clients to respond when a breach occurs. We routinely work with clients to prepare for such possibilities because we understand the importance of mitigating the potential impact of media coverage, federal and state investigations and related consent decrees, consumer complaints and other potential issues.

Professionals

Name Title Office Email
Margaret A. Abernathy Associate Washington, D.C.
Hussein Akhavannik Partner Washington, D.C.
Michael E. Anderson Partner Washington, D.C.
Christopher M. Arena Partner Atlanta
Lauren T. Attard Staff Attorney Los Angeles
David R. Bailey Partner Philadelphia
Brian P. Bartish Associate Cincinnati
Miriam C. Beezy Partner Los Angeles
William C. Bergmann Partner Washington, D.C.
Ava L. Blake Associate Atlanta
Kevin M. Bovard Partner Philadelphia
Jared A. Brandyberry Associate Denver
Mark E. Braun Associate Philadelphia
Barry E. Bretschneider Of Counsel Washington, D.C.
Craig M. Brown Associate Philadelphia
David M. Brown Associate Philadelphia
Erin C. Caldwell Associate Atlanta
Eduardo M. Carreras Of Counsel Atlanta
Charles C. Carson Counsel Washington, D.C.
Timothy D. Casey Partner Seattle
Jack Chang Associate Seattle
Soonwuk "Tony" Cheong Ph.D. Staff Attorney Washington, D.C.
Thomas J. Clare Associate Philadelphia
Brendan E. Clark Associate Cleveland
Lisa N. Collins Partner Atlanta
Melanie S. Corcoran Staff Attorney Cleveland
John P. Corrado Of Counsel Washington, D.C.
Craig L. Cupid Associate Atlanta
William R. Daugherty Counsel Houston
Thomas W. Dekleva Ph.D. Partner Philadelphia
Erdal R. Dervis Partner Washington, D.C.
John P. Donohue Jr. Partner Philadelphia
Timothy J. Doyle Associate Philadelphia
Jeremy M. Dukmen Associate Seattle
Michael P. Dunnam Partner Philadelphia
Christopher M. Durkee Counsel Atlanta
Kenneth R. Eiferman Partner Philadelphia
Stephen S. Fabry Partner Washington, D.C.
Erich M. Falke Partner Philadelphia
David N. Farsiou Partner Philadelphia
R. Scott Feldmann Partner Costa Mesa
Gerald J. Ferguson Partner New York
Adam A. Fleckenstein Associate Atlanta
Adam J. Forman Partner Philadelphia
Nancy R. Frandsen Partner Philadelphia
Wanda D. French-Brown Counsel New York
Hilmar L. Fricke Of Counsel Philadelphia
Alan L. Friel Partner Los Angeles
Harold H. Fullmer Partner Philadelphia
Randal L. Gainer Partner Seattle
Han Gim Partner Seattle
Daniel J. Goettle Partner Philadelphia
Linda A. Goldstein Partner New York
Laura R. Gordon Associate Philadelphia
Michael David Graham Patent Agent Washington, D.C.
Jason P. Grier Associate Atlanta
Gregory A. Grissett Associate Philadelphia
Lesley M. Grossberg Associate Philadelphia
Felicity E. Groth Partner Philadelphia
Wade C. Haaland Ph.D. Associate Philadelphia
Robert L. Hails Jr. Partner Washington, D.C.
John A. Harrelson Jr., Ph.D. Counsel Philadelphia
Thomas W. Hartin Associate Philadelphia
James B. Hatten Associate Atlanta
Dale M. Heist Partner Philadelphia
John S. Hilten Partner Washington, D.C.
David B. Hoffman Counsel Philadelphia
Herbert E. Hoffman Associate Philadelphia
Jason F. Hoffman Partner Washington, D.C.
Lavonne Burke Hopkins Associate Houston
Robert B.G. Horowitz Partner New York
Benjamin C. Hsing Partner New York
Irene E. Hudson Partner New York
David P. Kardian Associate Washington, D.C.
Ronald C. Kern Jr., Ph.D. Associate Philadelphia
Edward J. King Associate Philadelphia
Kevin W. Kirsch Partner Cincinnati
David E. Kitchen Partner Cleveland
Peter J. Knudsen Partner Seattle
Theodore J. Kobus III Partner New York
M. Scott Koller Counsel Los Angeles
Mark H. Krietzman Partner Costa Mesa
P. Alan Larson Counsel Washington, D.C.
Jeffrey W. Lesovitz Partner Philadelphia
Jacqueline M. Lesser Counsel Philadelphia
John S. Letchinger Partner Chicago
Alan Leung Associate Washington, D.C.
Gary H. Levin Partner Philadelphia
Stephanie A. Lodise Ph.D. Partner Philadelphia
Carrie A. Longstaff Counsel New York
C. Dennis Loomis Partner Los Angeles
Joseph Lucci Partner Philadelphia
Krista L. Lynch Counsel Washington, D.C.
Charlie C. Lyu Associate Philadelphia
Kassity L. Mai Associate Washington, D.C.
David A. Mancino Partner Cincinnati
Mark F. Mashack Associate Washington, D.C.
Shannon V. McCue Partner Cleveland
Heather J. McDonald Partner New York
Melinda L. McLellan Partner New York
Samuel A. McMahon Associate Philadelphia
Brandon S. Mecham Associate Philadelphia
Rakesh H. Mehta Ph.D. Counsel Philadelphia
Kathryn C. Mellinger Associate Philadelphia
Holly A. Melton Partner New York
Christina J. Moser Partner Cleveland
John M. Mueller Counsel Cincinnati
John F. Murphy Partner Philadelphia
Phong D. Nguyen Partner Washington, D.C.
Robert E. Niemeier Associate Washington, D.C.
Jason S. Oliver Partner New York
Joseph P. O'Malley Counsel Philadelphia
Tracy U. Palovich Patent Agent Philadelphia
Stephanie M. Papastephanou Associate Philadelphia
Henrik D. Parker Partner Philadelphia
Tayan B. Patel Partner Washington, D.C.
F. Paul Pittman Associate Cincinnati
Paul E. Poirot Partner Washington, D.C.
William C. Powell Associate Seattle
Frank A. Pugliese Partner New York
Katrina M. Quicker Partner Atlanta
Aaron B. Rabinowitz Partner Philadelphia
Robert T. Razzano Partner Cincinnati
Michael J. Riesen Partner Atlanta
Steven J. Rocci Partner Philadelphia
Jeffrey H. Rosedale Ph.D. Partner Philadelphia
Douglas S. Rupert Partner Chicago
Chad A. Rutkowski Partner Philadelphia
Steven B. Samuels Partner Philadelphia
Nikki L. Sanford Associate Seattle
Brian L. Saunders Associate Philadelphia
David C. Schleifer Associate Seattle
John H. Scott III Associate Seattle
Shubhrangshu Sengupta Patent Agent Washington, D.C.
Peter B. Shapiro Associate New York
David J. Sheehan Partner New York
Kenneth J. Sheehan Partner Washington, D.C.
Thomas H. Shunk Partner Cleveland
Scott S. Simpkins Associate Philadelphia
Hans P. Smith Associate Costa Mesa
William F. Smith Of Counsel Seattle
Allen M. Sokal Counsel Washington, D.C.
Michael D. Stein Partner Seattle
Michael J. Swope Partner Seattle
Mark H. Tidman Partner Washington, D.C.
S. Maurice Valla Partner Philadelphia
Carol R. Van Cleef Partner Washington, D.C.
Monica S. Verma Partner Cleveland
T. Cy Walker Partner Washington, D.C.
Kevin M. Wallace Associate New York
Miranda Aiqing Wang Technical Advisor Seattle
Oren J. Warshavsky Partner New York
Jessica H. Watkins Associate Philadelphia
John H. Weber Partner Washington, D.C.
Theresa M. Weisenberger Associate Atlanta
Robert C. Welsh Of Counsel Los Angeles
Jonathan S. Werner Associate Washington, D.C.
Deborah A. Wilcox Partner Cleveland
Shawnna M. Yashar Partner Washington, D.C.

Recognition

  • Chambers USA:
    • Intellectual Property in Ohio (2011 to 2016)
    • Intellectual Property in Pennsylvania (2014 to 2016)
    • Intellectual Property: Trade Mark & Copyright in New York (2014 to 2016)
  • BTI Client Service 30: BakerHostetler advanced 19 positions to #9 (2016)
  • U.S. News – Best Lawyers "Best Law Firms" (2017)
    • Copyright Law: National Tier 2
    • Information Technology Law: National Tier 2
    • Litigation - Intellectual Property: National Tier 1
    • Litigation - Patent: National Tier 1
    • Patent Law: National Tier 1
    • Technology Law: National Tier 1
    • Trademark Law: National Tier 1

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In The Blogs

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IP Intelligence: Insight on Intellectual Property
SCOTUS Declares That Time Has Expired for Laches Defense in Patent Cases
March 23, 2017
On March 21, the Supreme Court of the United States held in Hygiene Products Aktiebolag v. First Quality Baby Products that laches is not a defense to a damages claim when the Patent Act’s six-year statute of limitations has yet to expire...
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Data Privacy Monitor
New Mexico passes data breach notification and protection bill
By Erich M. Falke
March 20, 2017
Then there were two. On March 16, 2017, the New Mexico state legislature passed a bill requiring that New Mexico residents be notified if their “personal identifying information” was affected by a breach of electronic data. Upon signature...
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Data Privacy Monitor
Unexpected Consumer Data Collection Concerns FTC
March 15, 2017
The Federal Trade Commission (FTC) has been turning its attention to consumer data collection and use that consumers may not expect, such as tracking of TV viewing by smart TVs, and use of cross-device technologies and techniques to try to...
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IP Intelligence: Insight on Intellectual Property
Availability of Reissue After an Invalidity Determination
March 14, 2017
A recent law review article discusses reissue as a potential cure for patentees who have had their claims invalidated by a court or the Patent Trial and Appeals Board (PTAB).[1] Under 35 U.S.C. § 251, reissue is available when “any patent...
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IP Intelligence: Insight on Intellectual Property
Federal Circuit Appears to Narrow the Exceptions to 35 U.S.C. § 101
By Allen M. Sokal
March 13, 2017
Unquestionably, the narrower a patent’s claims, the more likely they are to pass muster under 35 U.S.C. § 101. But if you have an invention with broad applicability, how broadly can you claim it without running into eligibility problems...
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