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Managing IP Americas Awards 2018 winners revealed

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The Americas Awards Dinner was held at the Essex House in New York on March 15, and recognised the best law firms and individuals nationally and regionally in Canada, Latin America and the US

Managing IP’s Americas Awards winners were announced at the Essex House in New York last night. They recognise the best firms and individuals for intellectual property in Canada, Latin America and the US.

Details of the winners and photos from the dinner will be published online soon and in the May issue of Managing IP. Read this shortlists here.

This Americas dinner followed the year's announcement of the EMEA winners on March 8 in London. The Asia winners will be announced on March 21 during a newly-launched ceremony in Hong Kong.

Americas Awards were presented in the following categories this year. Congratulations to all the winning firms!


Patent Prosecution Bereskin & Parr

Patent Contentious Smart & Biggar/Fetherstonhaugh

Trademark Prosecution Borden Ladner Gervais

Trademark Contentious Gowling WLG

Copyright McCarthy Tétrault

IP boutique Smart & Biggar/Fetherstonhaugh

Outstanding IP practitioner Gunars Gaikis, Smart & Biggar/Fetherstonhaugh


Argentina Patent Marval O’Farrell & Mairal

Argentina Trademark Marval O’Farrell & Mairal

Argentina Copyright Marval O’Farrell & Mairal

Brazil Patent Dannemann Siemsen Bigler & Ipanema Moreira

Brazil Trademark Barbosa Müssnich Aragão

Chile Patent Carey

Chile Trademark Alessandri

Chile Copyright Sargent & Krahn

Chile Anti-counterfeiting Albagli Zaliasnik

Colombia Patent Cavelier Abogados

Colombia Trademark Lloreda Camacho & Co

Mexico Patent Arochi & Lindner

Mexico Trademark Goodrich Riquelme y Asociados

Mexico Copyright Olivares

Peru Patent Estudio Colmenares & Asociados

Peru Trademark Barreda Moller

Latin America Firm to Watch Berton Moreno + Ojam (Argentina)

Latin America Influential Individual Heidi Lindner – Arochi & Lindner (Mexico)


Patent Prosecution Fenwick & West

Patent Contentious Fish & Richardson

Trademark Prosecution Kelly IP

Trademark Contentious Finnegan Henderson Farabow Garrett & Dunner

Copyright Goodwin Procter

Appellate Hughes Hubbard & Reed

International Trade Commission Finnegan Henderson Farabow Garrett & Dunner

Life Sciences IP Litigation Fish & Richardson

Plaintiff IP Firm Quinn Emanuel Urquhart & Sullivan

Transactional Firm Fenwick & West

PTAB Fish & Richardson

Specialty IP Firm Finnegan Henderson Farabow Garrett & Dunner

US Firm To Watch Caldwell Cassady & Curry


Patent Prosecution Northeast Sterne Kessler Goldstein & Fox

Patent Prosecution South Haynes and Boone

Patent Prosecution Midwest Leydig Voit & Mayer

Patent Prosecution West Fenwick & West

Patent Contentious Northeast Finnegan Henderson Farabow Garrett & Dunner

Patent Contentious South Haynes and Boone

Patent Contentious Midwest Marshall Gerstein & Borun

Patent Contentious West Fish & Richardson

Trademark Prosecution Northeast Arent Fox

Trademark Prosecution South Haynes and Boone

Trademark Prosecution Midwest Dorsey & Whitney

Trademark Prosecution West Kilpatrick Townsend & Stockton

Trademark Contentious Northeast Kirkland & Ellis

Trademark Contentious South Kilpatrick Townsend & Stockton

Trademark Contentious Midwest Pattishall McAuliffe Newbury Hilliard & Geraldson

Trademark Contentious West Kirkland & Ellis

Copyright East Goodwin Procter

Copyright West Arnold & Porter


California Juanita Brooks, Fish & Richardson

Colorado Mindy Sooter, WilmerHale

Delaware Jack Blumenfeld, Morris Nichols Arsht & Tunnell

District of Columbia Matthew Wolf, Arnold & Porter

Georgia Mitchell Stockwell, Kilpatrick Townsend & Stockton

Illinois Robert Unikel, Arnold & Porter Kaye Scholer

Massachusetts William Lee, WilmerHale

Michigan John LeRoy, Brooks Kushman

Minnesota Dorothy Whelan, Fish & Richardson

New Jersey John Connell, Archer & Greiner

New York James Dabney, Hughes Hubbard & Reed

Pennsylvania Martin Black, Dechert

Texas Phillip Philbin, Haynes and Boone

Virginia Charles Lipsey, Finnegan Henderson Farabow Garrett & Dunner

Washington State David Tellekson, Fenwick & West

PTAB Eldora Ellison, Sterne Kessler Goldstein & Fox

Appellate James Dabney, Hughes Hubbard & Reed


Professor Hugh Hansen


· Amgen v Hospira (District of Delaware)

The jury awarded Amgen $70 million in patent damages against Pfizer subsidiary Hospira in one of the first lawsuits under the Biologics Price Competition and Innovation Act to reach trial.

Representing Amgen was Marshall Gerstein & Borun, as well as Morris Nichols Arsht & Tunnell, Paul Weiss Rifkind Wharton & Garrison and Richards Layton & Finger

· Aqua Products v Matal (Federal Circuit)

The court ruled on motions to amend in IPRs at the PTAB, noting the burden of persuasion of amended claims lies with the petitioner.

Representing Aqua Products was Finnegan Henderson Farabow Garrett & Dunner, as well as Abelman Frayne & Schwab

· Helsinn Healthcare v Teva (Federal Circuit)

The court clarified the post-AIA on-sale bar, ruling it does not require a finding that the offer or sale disclosed the details or claimed features of the invention.

Representing Teva was Winston & Strawn

· Impression Products v Lexmark International (US Supreme Court)

The court ruled that a patentee’s decision to sell a product exhausts all of its patent rights in that item.

Representing Impression Products was Mayer Brown

· In re Cray (Federal Circuit)

The court provided guidance on patent venue in light of TC Heartland.

Representing Cray was Fenwick & West

· Matal v Tam (US Supreme Court)

The court ruled the disparagement clause of the Lanham Act is unconstitutional under the First Amendment's Free Speech Clause.

Representing Simon Tam in the case was Archer & Greiner

· Sandoz v Amgen (US Supreme Court)

In a biosimilars case, the court ruled that an injunction is not available under federal law and an applicant may provide notice before obtaining a licence from the FDA.

Representing Sandoz was Morrison & Foerster

· SCA Hygiene Products v First Quality Baby Products (US Supreme Court)

The court ruled that laches cannot be invoked as a defense against a claim for damages brought within a 6-year limitations period.

Representing SCA – which now actually called Essity as of this year – was Dechert

· Star Athletica v Varsity Brands (US Supreme Court)

The court ruled a feature incorporated into the design of a useful article is eligible for copyright protection only if it can be perceived as a two- or three-dimensional work of art separate from the useful article and would qualify as a protectable pictorial, graphic, or sculptural work.

Representing Varsity was Goodwin Procter

· TC Heartland v Kraft Food Group Brands (US Supreme Court)

The court clarified venue under the Patent Act: the court said: “As applied to domestic corporations, “reside[nce]” in §1400(b) refers only to the State of incorporation.”

Representing TC Heartland was Hughes Hubbard & Reed

· TCL v Ericsson (Central District of California)

Judge Selna ruled that Ericsson’s licence offers were not FRAND, and determined his own FRAND rates in the case, only the fourth US bench trial in which this has happened.

Representing TCL was Sheppard Mullin Richter & Hampton

· AstraZeneca Canada v Apotex (Canadian Supreme Court)

The “excessively onerous” promise doctrine was abolished. The ruling clarified the requirement for patent utility:

Representing AstraZenecka was Smart & Biggar

· Dow v Nova (Canadian Federal Court)

Dow was awarded approximately $645 million Canadian dollars for Nova infringing upon Dow’s patent on a packaging material, the highest ever patent award amount in Canada by quite some way.

Representing Dow was Smart & Biggar and DLA Piper

· Packers Plus Energy Services v Essential Energy Services (Canadian Federal Court)

Fracking company Packers Plus’ patent was found not valid because it was an “obvious” improvement on existing techniques and had been publicly disclosed before the patent application was filed.

The law firms for the defendants were: Blake Cassels & Graydon for Essential Energy, Borden Ladner Gervais for Weatherford and Torys for Resource Well

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