INTELLECTUAL PROPERTY FIRM PROFILES
Intellectual Property Litigation The Intellectual Property Litigation Group is the largest practice group in the firm and includes over 100 lawyers and science advisors with advanced technical degrees. When The American Lawyer named its first “IP Litigation Department of the Year,” it chose Robins, Kaplan, Miller & Ciresi LLP. In 2009, Law360 Litigation Almanac ranked the firm in the top five list of general practice firms with the largest IP practice in the United States. Several members of the firm are Fellows in the American College of Trial Lawyers and three of the firm’s members have been named to the National Law Journal’s Annual List of the “Top Ten Litigators” in the United States. Life Sciences and Hatch-Waxman Intellectual Property Litigation At Robins, Kaplan, Miller & Ciresi LLP, we represent companies in the generic pharmaceutical, biopharmaceutical, biotechnology, and medical device industries in patent, trade secret, and other disputes involving intellectual property. Among others, the technologies have included pharmaceutical formulations and active drug compounds, polymers, biofuels, MRI and catheter technologies, erythropoietin products, protein production from host cells, recombinant DNA technology, and transgenic mice. When it comes to litigation under the Hatch-Waxman Act, the firm has worked the full spectrum of cases—representing small and large generic pharmaceutical companies, biotechnology companies, and start-ups. The group also draws on the knowledge and experience of our lawyers and science advisors who have relevant technological backgrounds, including advanced degrees in biology, chemistry, biochemistry, biomedical engineering, pharmacology, and physics. The firm’s lawyers have extensive experience litigating and trying cases under the Hatch-Waxman Act for both generic and, before joining the firm, branded pharmaceutical companies. The firm is currently representing Novel Laboratories, Inc. in two first-to-file, Hatch-Waxman, patent-infringement litigations in the District of New Jersey. The case involves the filing of Novel Laboratories’ Abbreviated New Drug Applications for approval to manufacture and sell a generic alternative to SUPREP, a sulfate saltbased product used to clean the colon before colonoscopy and other surgical procedures, and a generic alternative to INTERMEZZO, a low-dose zolpidem sublingual product used to treat middle-of-the-night-sleeplessness. In addition, the firm is also currently representing Upsher-Smith Laboratories in a first-to-file generic case seeking to market a testosterone replacement therapy. The Life Sciences-Hatch Waxman Litigation group publishes Generically Speaking, a quarterly bulletin summarizing recent court decisions, ANDA approvals, generic product launches and generic/brand company settlements. Select cases include: • Prometheus Laboratories, Inc., et al. v. Quest Diagnostics, Inc.: Represented Quest Diagnostics, Inc. in patent case involving genotyping technology in which all claims were dismissed. • Fonar v. General Electric: Represented Fonar Corporation and Dr. Raymond V. Damadian in a patent infringement action against General Electric involving patents on magnetic resonance imaging (MRI) machines. At trial the jury awarded Fonar $110.5 million. The Court of Appeals for the Federal Circuit affirmed almost the entire award, ordering General Electric to pay $103.4 million, reported at the time to be the largest patent infringement jury verdict ever upheld on appeal (IP Worldwide). Fonar Corporation v. General Electric Co., 107 F.3d 1543 (Fed. Cir.), cert. denied, 118 S.Ct. 266 (1997). After the Supreme Court denied certiorari, General Electric paid Fonar $128 million (judgment plus interest). • TriStrata Technology, Inc. v. Mary Kay Inc.: Patent infringement case relating to alpha-hydroxy acid (AHA) anti-aging skin technology. Our client, TriStrata Technology, Inc., was awarded $26,359,405 in damages plus interest. The jury ruled in TriStrata’s favor on all issues of infringement and validity. The US District Court for the District of Delaware in Wilmington, Del. issued a final judgment March 31, 2006 granting prejudgment and post-judgment interest to TriStrata Technology, Inc. bringing the total award to over $43 million. Case was summarily affirmed by the Federal Circuit on January 10, 2007. • Forest Laboratories, Inc. v. Torrent Pharmaceuticals Ltd.: Represented client in litigation to bring generic Bystolic® (nebivolol) to market. Recently settled for value for generic company. • Medicis Pharmaceutical Corporation v. 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