BakerHostetler

Firm overview:

With more than 13,000 patent applications under management, BakerHostetler is clearly a go-to firm for patent prosecution matters. The firm focuses on the broad categories of chemical, computer science, electrical, mechanical and pharmaceutical for patent prosecution work, and has a team of 75 dedicated patent attorneys assisting clients from Fortune 100 companies to emerging businesses in specialised areas.

The firm’s capacity for large-scale patent work is exemplified by its handling of more than 1,000 applications across more than 20 divisions of a company that manufactures precision dispensing equipment. The team has also prosecuted more than 225 patent applications for a multinational software technology company over the past three years.

BakerHostetler also has a deep bench of patent litigators, trial lawyers and registered attorneys to defend or enforce clients’ rights in court and other forums when needed. A client notes the firm’s success in defending a patent against invalidation in an inter partes review matter at the US Patent and Trademark Office (USPTO), praising the team’s good communication in devising and executing the winning strategy. Attorneys Jason Hoffman and Jeffrey Lesovitz are “very solid, very client-oriented”, the client says.

Team overview:

Seattle IP leader and partner-in-charge Timothy Casey draws on his extensive in-house experience for large corporations in Silicon Valley and Washington DC to assist clients with all aspects of technology transactional matters. Casey has written and prosecuted thousands of patents worldwide and has more than 30 years of experience in IP and technology law.

Theresa Weisenberger co-leads BakerHostetler’s AI practice from the Atlanta office, counseling on emerging technologies and the changing legal landscape. Weisenberger provides AI training programmes and works with a range of tech companies to develop IP protection and enforcement strategies.

Leif Sigmond, co-chair of the firm’s Patent Litigation Group, chair of the Software Industry Group and partner-in-charge of the Chicago office, has over three decades of experience in high-stakes IP litigation. Sigmond has litigated cases involving software, wind turbines, TV set-top boxes and telecoms equipment, among other products, and strives to devise business-driven solutions to disputes.

In Washington, DC, Jason Hoffman stands out on the litigation side, with his court wins including 10 jury trial victories, six summary judgment rulings on non-infringement, and 10 victories at the Federal Circuit. An authority on patent law, Hoffman frequently writes on the topic and presents an annual webinar every February highlighting key Federal Circuit and Supreme Court decisions.

Also in Washington, DC, Robert (Bob) Hails excels in handling high-stakes patent infringement matters, particularly related to electrical engineering disciplines such as computer architectures, integrated circuit designs and semiconductor manufacturing.

Philadelphia-based Jeffrey Lesovitz focuses his practice on representing tech companies in the consumer electronics, semiconductor, telecommunications, software, manufacturing and medical device industries. He has considerable experience in Section 337 ITC investigations and has clinched numerous wins in court for major clients.

Key matters:

Prosecution:

• Meta Platforms

BakerHostetler partners Cory Davis (Atlanta) with Tayan Patel (Washington DC / New York), and Craig Cupid (Atlanta) advise Meta Platforms, formerly Facebook, based in Menlo Park, California. Meta, which owns Facebook, Instagram, and WhatsApp, is one of the world's most valuable companies and one of the Big Five American information technology companies, alongside Alphabet, Amazon, Apple, and Microsoft.

Cory Davis is the Meta relationship attorney and leads the firm’s Meta intellectual property practice, with Craig Cupid serving as a supervising partner for Meta’s patent preparation and prosecution practice.

BakerHostetler has advised Meta on AI and machine learning technology inventions involving Meta AI as well as virtual reality (VR), augmented reality (AR), and mixed reality (MR) technology; this includes Meta’s VR/AR/MR headsets, smart glasses and Meta Quest headsets.

Cory Davis, Craig Cupid and the prosecution team have handled significant portfolios of Meta’s patent inventory, and are one of Meta’s go-to counsel handling some of Meta’s important technology focus areas, for example, involving Meta AI. Meta recently upgraded its Meta AI and released its newest large language model i.e., Llama 3.1 as well as a suite of new Meta AI tools and products many of which the prosecution team was involved with protecting.

Litigation:

• Brumfield v IBG et al, Case No. 1:10-cv-00715, US Court of Appeals, Federal Circuit, 2024

BakerHostetler secured a precedential win for its client Harris Brumfield, in a dispute involving trading software patents.

The dispute began when Chicago-based software vendor of professional trading software, Trading Technologies International (TT), sued IBG and its subsidiary Interactive Brokers in 2010, alleging infringement of several TT-owned patents.

TT is now majority-owned by individual Brumfield, a trustee of rights holder Ascent Trust. TT filed an appeal to the Federal Circuit from the US District Court for the Northern District of Illinois.

After a 14-year dispute, the victory was pivotal: judges found that for any domestic act of infringement, a patent holder may request compensation from foreign sales.

Michael David Gannon argued for Brumfield, supported by Jennifer Kurcz, Leif Sigmond Jr, and Alaina Lakawicz. For IBG were Wilson Sonsini attorneys Michael Sommer, Steffen Nathanael Johnson, Kelsey Curtis Catina, Granville Clayton Kaufman, and others.

Clients:

Aerion, Asphalt System, Blackhawk Network, BoozAllenHamilton, Brumfield, Chestek, Comcast, Dragonfly Endscopy, Hewlett-Packard, IGT, Klas Group, L3 Harris Technologies, Lockheed Martin, Nordson, Reliant Value, ServiceTitan, Siemens Gamesa Renewable Energy, Sony, Syngenta, TomTom, Top Product Innovations, Trading Technologies International, Transdigm Group, USAA, Vrise Therapeutics, Wolfspeed, Xencor.