Representative Experience

• Represented Becton, Dickinson in a patent infringement suit brought by Gen-Probe Incorporated involving methods of automating nucleic acid diagnostic assays and related consumable products. Obtained dismissal or summary judgment as to four of eight asserted patents, and narrowed asserted claims from 140 to twenty-two. Case settled favorably on the eve of trial.
• Represented the University of Massachusetts in federal court action brought by Max Planck Institute and Alnylam Pharmaceuticals against UMASS and two other co-owners of patent applications involving RNA interference. Obtained judgment in favor of UMass on all damages claims asserted against it. Case settled with global agreement by which UMass become a co-owner of Max Planck’s competing patent applications on RNA interference.
• Represented the respondent in a Section 337 investigation of patents involving low ignition propensity cigarette paper.
• Filed an amicus brief in the U.S. Supreme Court on behalf of the American Intellectual Property Law Association in Microsoft Corp. v. i4i, concerning the standard of proof required to invalidate a patent.
• Represented Johns Hopkins University and Xanthus Pharmaceuticals in a dispute over ownership of intellectual property relating to a novel method of treating autoimmune disorders, resulting in negotiation of patent license.