Representative Experience

Won an eight-figure jury award for Bard, including lost profits, price erosion damages, and royalties. The decision was affirmed by the Federal Circuit. 2000 WL 915241 (Fed. Cir.).

Evaluated, on behalf of a pharmaceutical client, patent issues with respect to another pharmaceutical company's anti-infective program (including candidate drugs and assays), to do so under obligations of confidentiality to the anti-infective program owner, and to provide a thumbs up or down recommendation.

Identified, on the eve of FDA approval of one of our client's biopharmaceuticals, a prior public use that would cause a court to invalidate the otherwise blocking patent claims. This enabled our client to negotiate a license under the patent on commercially reasonable terms.

Retained by Harvard University and Massachusetts Institute of Technology, Foley Hoag’s patent practitioners have obtained worldwide patent protection for numerous pioneering inventions in organic chemistry and chemical engineering. For example, the firm has obtained for the institutions domestic and foreign patents protecting asymmetric transition-metal-catalyzed reductions; asymmetric transition-metal-catalyzed cycloadditions; and transition-metal-catalyzed carbon-heteroatom and carbon-carbon bond-forming reactions.

Retained by one of the world's largest pharmaceutical companies, Foley Hoag’s patent attorneys joined a team of in-house management-level scientific and business decision-makers on an IP due-diligence trip to eastern Europe. The team vetted the potential licensor's patent and trade-secret portfolios, and also considered potential associated regulatory and logistical issues.

Patent: Biogen Idec, Inc. v. The Trustees of Columbia University in the City of New York, (D. Mass.)

Represented Biogen Idec, Inc., Genzyme Corp., and Baxter Healthcare in a suit challenging the validity and enforceability of Columbia’s patent on compositions and methods used in producing proteins by recombinant DNA technology. Shortly before trial, we obtained a royalty-free covenant not to sue from Columbia.


CATEGORIES: Intellectual Property Litigation

Patent: Enzo Biochem, Inc. v. Becton Dickinson and Company, et al. (S.D.N.Y.)

Successfully defended Becton Dickinson in a patent infringement action involving DNA probes for detection of bacterial pathogens. The district court’s decision invalidating the patent was affirmed by the Federal Circuit. Enzo Biochem, Inc., v. Gen-Probe, Inc. et al., 424 F.3d 1276 (Fed. Cir. 2005).


CATEGORIES: Intellectual Property Litigation

Patent: Massachusetts Eye and Ear Infirmary v. QLT Inc. (D. Mass.)

Represented QLT in complex patent and trade secret litigation arising out of a collaboration among QLT, Massachusetts Eye and Ear Infirmary, and Massachusetts General Hospital that led to the development of photodynamic therapeutic treatment for age-related macular degeneration. We obtained a district court order correcting inventorship to add QLT’s scientist to the patent, leading to a stipulated dismissal.


CATEGORIES: Intellectual Property Litigation

Patent: Ottawa Heart Institute et al. v. Abiomed, Inc. (D. Del.)

Defended Abiomed in a patent infringement and trade secret action involving the development of transcutaneous energy transmission devices for artificial hearts, including plaintiff’s ultimate dismissal of all patent infringement claims. After trial, the jury returned a verdict for Abiomed on all claims.


CATEGORIES: Intellectual Property Litigation