Services

Complex issues: use of oppositions, protests, inter partes reviews, post-grant reviews and litigation.
Global IP strategy.
Building strong patent portfolios.
Due diligence and freedom-to-operate.
Interface with regulatory exclusivity and FDA regulations. Orange Book patent listings. Patent term extension applications.
IP aspects of licenses and collaborations from term sheets to agreements, sponsored research, technology and material transfer agreements.

Inter Partes Matters

University of California, University of Vienna, and Emmanuelle Charpentier* v. Sigma-Aldrich Co. (Interference 106,132) - CRISPR-Cas9 technology (Co-lead counsel)
University of California, University of Vienna, and Emmanuelle Charpentier* v. Toolgen (Interference 106,127) - CRISPR-Cas9 technology (Co-lead counsel)
University of California, University of Vienna, and Emmanuelle Charpentier* v. Broad, MIT and Harvard (Interferences 106,115 and 106,048) - CRISPR-Cas9 technology (Co-lead counsel)
Adams (Monsanto Company)* v. Leemans -Genetically engineered corn
Barton v. Fischhoff (Monsanto Company)* v. Adang - Insecticidal protein synthesis in
transgenic plants
Chee v. Drmanac (Hyseq Pharmaceuticals, Inc.)* - DNA sequencing methods
Grinna v. Marra (XOMA Ltd.) - Pharmaceutical compositions
Masinovsky (ICOS Corporation)* v. Newman v. Rice - VCAM-1 antibodies
McDonald v. Miyazaki (Kirin Brewery Co.)* - Thrombopoietin
Elsbach v Scott (New York University)* - Bactericidal proteins

* (party represented)

Multiple oppositions on behalf of CRISPR Therapeutics AG* v. The Broad Institute, et al. EP Patents; Re: CRISPR-Cas9 technology
Multiple oppositions to Univ. California, Univ. Vienna and Prof. Charpentier* EP Patents; Re: CRISPR-Cas9 technology
Oppositions to EP Patents & Appeal; Re: checkpoint technology
Sandoz Opposition to InterMune, Inc.* EP Patent; Re: treatment methods
Avanti Opposition to Infectious Disease Research Institute EP Patent (licensee Immune Design Corporation*) & Appeal; Re: vaccines and adjuvant compositions
TheraVectys Opposition to Immune Design Corporation* EP Patent; Re: lentivectors and vaccines
Two Eli Lilly & Co. Oppositions to UCB Pharma* EP Patents & one Appeal; Re: sclerostin antibodies
Teva Pharmaceutical Industries Ltd, Dipharma S.A. and other Oppositions to BioMarin Pharmaceutical Inc.* EP Patent; Re: treatment methods
Mylan Opposition to BioMarin Pharmaceutical Inc.* EP Patent & Appeal; Re: treatment methods
XOMA Ltd.’s* Opposition to Protein Design Labs EP Patent; Re: Humanized antibodies
Amgen’s* Opposition to Genentech EP Patent & Appeal; Re: Gamma interferon
Genentech’s Opposition to Amgen* EP Patent & Appeal; Re: Gamma interferon
* (party represented)

Led team that built an extensive patent portfolio for InterMune, Inc. relating to ESBRIET, a drug that treats idiopathic pulmonary fibrosis (IPF).
Accelerated examination to obtain patent grants in time for the drug’s approval.
Handled the IP due diligence relating to InterMune’s acquisition by a global pharma company for US$8.3 billion.

Built patent portfolio for Marcadia Biotech, Inc., a startup based on university technology.
Handled IP aspects of collaborations with two of the ten largest pharmaceutical companies in the world.
Helped negotiate licenses and other agreements.
Handled the IP due diligence surrounding their acquisition in 2010 by a global biopharma company for up to $537 million.

Advised CRISPR Therapeutics on its intellectual property strategy since its formation.
CRISPR Therapeutics is a biopharmaceutical company focused on the breakthrough gene-editing technology CRISPR-Cas9.

Co-represented a university and its licensee Electrochaea in obtaining patents that cover their innovative microorganism-based technology that converts electricity to methane gas. Electrochaea launched the first commercial scale power-to-gas project.