Managing IP Americas Awards 2018 winners revealed
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!
CANADA NATIONAL AWARDS
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)
US NATIONAL AWARDS
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
US REGIONAL AWARDS
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
INDIVIDUAL ACHIEVEMENT – OUTSTANDING IP LITIGATORS
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