Life Science: Biotechnology

Below is a sampling of biotechnology matters we have handled.

For further information, contact either of our co-heads, David Bilsker or Ray Nimrod.

Exemplary Representations:

• We obtained for our clients Complete Genomics Institute (CGI) and Beijing Genomics Institute (BGI) what is believed to be the largest verdict ever for a Chinese affiliated company, by securing a jury verdict of $333.8 million dollars for Illumina’s willful infringement of two CGI patents on an improved DNA sequencing method. We also invalidated three sequencing patents Illumina asserted against BGI.  Illumina chose to satisfy the judgement rather than face the possibility of the damages being enhanced. 
• As lead counsel for The Broad Institute, Inc. (“Broad”) in patent interference proceedings against the University of California, University of Vienna, and Emmanuelle Charpentier (“CVC”) we secured the Broad’s patent rights covering fundamental CRISPR technology on which the Nobel Prize was awarded. The Federal Circuit affirmed the findings on appeal.  The press has reported this as “an action that could roil a patent market worth billions of dollars.” 
• Our attorneys successfully enforced Lexicon Genetics patents covering methods for creating knock out mice, for which Mario Capecchi and Oliver Smithes, won the Nobel Prize in Medicine.
• We obtained after a six-day jury trial, a $50 million dollar verdict for past damages and a 6% royalty going forward for Shelbyzyme in a patent infringement dispute involving recombinant DNA technology for the treatment of Fabry disease.
• At the ITC, we asserted Bio-Rad’s patents against 10X that covered the creation of single cell libraries using droplets. After a trial, the ITC Commission entered an injunction preventing 10X from supplying the accused products.  
• We represented Genentech in a patent case involving HCMV enhancer technology in which plaintiff sought $1.6 billion in damages. After obtaining a writ of mandamus from the Federal Circuit transferring the action from the Eastern District of Texas to Northern California, we won summary judgment of non-infringement of all asserted claims on the two patents asserted by plaintiff.
• We represented Twist Bioscience in its successful resolution of trade secret misappropriation, breach of contract, and breach of duty of loyalty cases Agilent filed attempting to stifle Twist’s cutting-edge synthetic DNA technology.
• We acted as counsel for Roche against Stanford University in case involving HIV diagnostic test kits and ownership of patent rights to those kits. After the lower courts awarded ownership of the rights to Roche, the Supreme Court affirmed the result in what has become the leading case on patent ownership when an employee works on an invention while at two different institutions. 
• We represented Ortho-McNeil, a Johnson & Johnson subsidiary, in inventorship dispute relating to new biological drugs for the production of red blood cells. After thirty-four days of trial, we obtained a ruling in favor of Ortho McNeil.
• We represented Life Technologies, a subsidiary of Thermo Fisher Scientific, in patent infringement litigation brought against its DNA sequencing systems and consumables, obtaining a dismissal of all claims, with prejudice.
• We represented Bio-Rad and ARUP in patent action involving genetic testing for iron disorders. After obtaining summary judgement of non-infringement, the Federal Circuit affirmed the judgement in a precedential decision.
• We represented Johnson & Johnson subsidiary ALZA in a patent inventorship dispute in which two individuals claimed that they were the inventors of an ALZA patent covering liposomes used for the targeted delivery of pharmaceuticals. After a one-week bench trial, the district court rejected the claim of inventorship and entered judgment in favor of ALZA.
• We defended QIAGEN against charges that it infringed patents owned by Rutgers University covering immunologically based tests for detecting TB.  After a claim construction hearing that went in QIAGEN’s favor, Rutgers decided to quickly settle the matter.
• We represented Genentech and won summary judgment of non-infringement on all claims of two patents asserted by Sanofi-Aventis Deutschland against two highly successful anti-cancer products. The Federal Circuit affirmed.
• We represented Pfizer, Inc. against Amgen over the ownership rights to patents covering monoclonal antibodies that were disputed because a third-party vendor switched the parties samples.
• We represented Myriad Genetics in patent infringement litigation brought against its myRISK® brand tests for genetic mutations associated with an increased risk for cancer, obtaining a dismissal of all claims.
• We represent NexBio (now Ansun Biopharma) in the California Superior Court San Diego in an ongoing breach of fiduciary duty and trade secret misappropriation dispute involving a treatment for flu.
• We represent Natera against CareDX in patent and false advertising cases relating to transplant diagnostic testing and cell-free DNA.
• We represent Merck Sharp & Dohme in district court and IPR proceedings against Genentech in a matter relating to Merck’s KEYTRUDA® product. In both matters, Merck is challenging the validity of Genentech’s Cabilly patents, which relate to recombinant antibody technology.
• We represent Sarepta Therapeutics in a patent litigation filed by Wilson Wolf Manufacturing Corp. alleging that Sarepta’s gene therapy candidate is manufactured using certain devices and methods that infringe one or more claims of three patents assigned to Wilson Wolf.