Acting As Special Patent Counsel, Allegations Of Fraud On The Patent Office And Sham Litigation Scrutinized In Multiple Antitrust Suits

In re Relafen; In re Ciprofloxacin; In re Augmentin; In re K-Dur; In re Paxil; In re Wellbutrin; In re Tamoxifin; In re Plavix; In re Tricor

As patent counsel, in multiple antitrust litigations, we reviewed and analyzed the work of prior patent prosecution attorneys and patent litigators in the context of allegations of fraud on the Patent Office and sham litigation;


Successfully Represented Inventor of MRI Technology

General Electric Co. v. Prince (2006)

We negotiated a favorable settlement for the inventor-declaratory judgment-defendant in patent litigation involving MRI technology.


Enforcement and Litigation of Basic Patents for DNA Synthesis

Millipore Corp. v. University Patents, Inc.

Applied Biosystems, Inc. v. Crucachem, Inc.

Affymetrix, Inc. v. PE Corp.

Our lawyers litigated the basic patents for DNA (oligonucleotide) synthesis (“gene machine” patents) for over 20 years.  Each case led to a successful settlement and licensing, and our litigation successes resulted in industry-wide licensing of the patents.


Litigation of Patents Related to DNA Sequence Identification Technology

Beckman Coulter Inc. and Orchid Cellmark Inc. v. Sequenom, Inc. (2008)

Orchid Biosciences Inc. v. University of St. Louis (2000)

Our lawyers litigated cutting edge patents in the field of detection and identification of DNA nucleotide and sequence detection.  Our litigation efforts resulted in settlements on favorable terms.


Litigation of Genetic Anti-Sense Patents

Enzo Biochem. v. Calgene (D.Del. 1998)

Our attorneys prosecuted a major litigation involving anti-sense technology patents, which covered methods and structures that aim to control the expression of a particular gene by blocking the translation of the mRNA produced by the transcription of that gene.  Our client was one of the pioneers in the field, and the case involved important questions of patent protection for the technology at issue.  Among other issues, the case dealt with patent enablement, anticipation, infringement, and inequitable conduct.


Negotiation of March In Rights with NIH Related to Synthetic Anti-Sense Patents

Lynx Therapeutics Inc./ Natl. Institutes of Health

Our attorneys were involved in a major negotiation with the National Institutes of Health concerning licensing of synthetic anti-sense technology patents.  By law the NIH may assert “march-in” rights for certain patents that were developed with federal funding.  If the NIH can show the owner has not adequately developed for practical use in the marketplace, it can license the patents to other entities, including competitors.  Our attorneys had extensive negotiations with the NIH and convinced it not to assert these rights against our client.


Patent Prosecution


Secured Patents on Foundational DNA Technology

U.S. Patent No. 7,585,466 Automatic genotype determination

U.S. Patent No. 7,026,117 Method for determining specific nucleotide variations

U.S. Patent No. 6,537,748 Reagent for nucleic acid typing by primer extension

U.S. Patent No. 6,495,363 In-line complete spectral fluorescent

imaging of nucleic acid molecules

U.S. Patent No. 6,387,626 Covalent attachment of unmodified nucleic

acids to silanized solid phase surfaces

U.S. Patent No. 6,337,188 De novo or "universal" sequencing array

U.S. Patent No. 6,294,336 Method for analyzing the nucleotide sequence of a polynucleotide by oligonucleotide extension on an array

Our attorneys prosecuted and secured patents in the areas of DNA sequencing, analysis, genotyping, and single nucleotide polymorphism (SNP) detection provided techniques that are forerunners to those used in current developments in synthetic biology, a field that is leading to the rapid industrialization of biology in areas such as bio-based chemicals, bio-fuels, biomaterials, carbon recycling, and the production of consumer products.


Secured Patents on Antisense Technology

U.S. Patent No. 7,781,575 siRNA targeting tumor protein 53

U.S. Patent No. 8,138,329 siRNA targeting connective tissue growth factor (CTGF)

U.S. Patent No. 8,093,370 siRNA targeting spleen tyrosine kinase

Our attorneys prosecuted cutting edge patents in anti-sense gene regulatory technology, securing around 50 patents to gene silencing technology with a particular emphasis on siRNA applications. The above patents are exemplary of patents in this portfolio that provide valuable tools enabling facile gene regulation and control with the potential for effective therapeutics.  


Patent Office Rejections Overcome To Secure Allowance of Patent Claims Directed To The Use of Statistical Analyses To Determine A Genotype

U.S. Patent Number 7,585,466, Automatic Genotype Determination

We took over prosecution of a patent application based on the use of Bayesian statistics to assign a genotype.  After receiving rejections based on both prior art and failure to comply with the written description and enablement requirements, we successfully overcame the allegations and obtained valuable patent rights.


Parlanca Patent Successfully Opposed In European Patent Office

We prepared and caused to be filed opposition papers in the EPO that resulted in the revocation of EP 0 970 244, which was assigned to Parlanca Limited and directed to a method and system of identification of a meat product by genotyping.


Reexamination By United States Patent Office Caused Of Patent Subject to Litigation

U.S. Patent Number 5,241,972, Method for Debulking Tissue

After analyzing a patent asserted against its client, the Laser Spine Institute, in litigation, our lawyers identified a substantial new question of patentability and caused the United States Patent Office to commence a reexamination proceeding with respect to that patent.


Over Forty-Five Notices Of Allowances Obtained For siRNA Patents

siRNA is a technology that is based on the phenomenon that short double stranded RNA has the ability to silence gene expression.  We drafted and prosecuted to allowance over sixty patents for this technology.

We secured allowance on U.S. Patent No. 6,946,125 directed to method of treating West Nile Virus.

We drafted and prosecuted patents directed to methods of treating West Nile Virus Infections using Interferon.

We performed numerous diligence analyses on Intellectual Property on technology involving medical devices and new biological and pharmaceutical compositions.