Donald R. Ware

Partner - Boston

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Contact Information

617.832.1167

617.832.7000

dware@foleyhoag.com Download vCard

Don Ware is chair of the firm’s Intellectual Property Department and past member of the firm’s Executive Committee. He is recognized by Chambers USA, The Best Lawyers in America, IAM Patent Litigation 250, PLC Which Lawyer? and Massachusetts SuperLawyers for his prominence in intellectual property. Don represents leading biopharma manufacturers, information technology companies, and universities in patent and inventorship disputes, technology transfer issues, and intellectual property strategy. He also advises clients on FDA matters, including the FDA's regulatory pathway for approval of biosimilars.

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Education:

  • Harvard Law School, J.D., magna cum laude
  • Yale College, A.B., magna cum laude

Representative Experience

  • Defended Biogen Idec in a litigation brought by Knopp Neurosciences concerning ownership of patient biosamples obtained by Biogen Idec in a phase 3 clinical trial investigating the treatment of ALS. Obtained dismissal with prejudice of Knopp's claim just before trial.
  • Represented Becton, Dickinson and Company in a patent infringement suit brought by Gen-Probe involving methods of automating nucleic acid diagnostic assays and related consumable products. Obtained favorable settlement, including global license to patent estate, just before trial.
  • Represented Biogen Idec in a patent litigation with Sanofi-Aventis involving patents directed to human CMV regulatory sequences.  Obtained Writ of Mandamus ordering transfer of venue from Eastern District of Texas.  566 F.3d 1338 (Fed. Cir. 2009).  Obtained judgment of non-infringement, affirmed on appeal.  473 Fed. Appx. 885 (Fed. Cir. Mar. 22, 2012)
  • Currently representing University of Massachusetts Biologic Laboratories in dispute with MedImmune over royalty obligations under technology license agreement covering MedImmune's Synagis® drug for treatment of RSV.  Additional lawsuits pending in Massachusetts and Maryland state courts. Obtained judgment after trial requiring MedImmune to continue paying royalties.
  • Represented Johns Hopkins University and Xanthus Pharmaceuticals in Delaware Court of Chancery in a dispute over ownership of intellectual property relating to a novel method of treating autoimmune disorders, resulting in negotiation of patent license.
  • Defended University of Massachusetts (UMass) in federal court action brought by Max Planck Institute and Alnylam Pharmaceuticals against three co-owners of patent applications directed to therapeutic uses of RNA interference. Obtained judgment in favor of UMass on all damages claims asserted against it. Thereafter, negotiated global settlement agreement by which UMass became a co-owner of Max Planck’s competing patent applications on RNA interference.
  • Represented Biogen Idec, Genzyme and Baxter Healthcare in multidistrict litigation against Columbia University challenging Axel patent on recombinant DNA technology, resulting in Columbia’s grant of a royalty-free covenant not to sue.
  • Defended Becton, Dickinson in a patent infringement suit brought by Enzo Biochem involving nucleotide sequences used in genetic probes. Summary judgment of invalidity affirmed in Enzo Biochem, Inc. v. Gen-Probe, Inc. et al., 424 F.3d 1276 (Fed. Cir. 2005)
  • Represented Johns Hopkins University and Baxter Healthcare in patent litigation against CellPro involving human stem cell technology. Won jury verdict of willful infringement and awards of treble damages and attorneys’ fees. Judgments affirmed in Johns Hopkins Univ. v. CellPro, Inc., 152 F.3d 1342 (Fed. Cir. 1998).
  • Author of numerous amicus briefs on behalf of professional and trade associations, including Supreme Court briefs in Octane Fitness v. IconMayo Clinic v. Prometheus Laboratories, and Microsoft v. i4i.
  • Co-author with Martha Born, Big Case Management and the Pursuit of Happiness
  • Co-author with Nick Littlefield, Follow-on Biologics and Patent Reform, VENTURE CAPITAL REVIEW (Fall 2007)
  • Patented research tool infringement - the reach-through royalties risk, LIFE SCIENCES LAW & BUSINESS (December 2004/January 2005)
  • Research Tool Patents: Judicial Remedies, 30 AIPLA Q.J. 267 (2002) (cited in Integra Life Sciences v. Merck, 331 F.3d 860 (Fed. Cir. 2003))
  • Co-author with Janice M. Mueller, A Trial Lawyer's Guide to Presenting Evidence on Claim Construction, 22 THE TRIAL LAWYER 152 (1999)

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Honors

  • Recognized in IAM PATENT 1000 as a top-ranked patent litigator and life sciences patent litigator 
  • Listed in THE BEST LAWYERS IN AMERICA for intellectual property law 
  • Recognized by CHAMBERS USA: AMERICA'S LEADING LAWYERS FOR BUSINESS as a Band 1 intellectual property lawyer
  • Recognized by PLC WHICH LAWYER? as a LEADING INDIVIDUAL for intellectual property 
  • Listed in MASSACHUSETTS SUPER LAWYERS for intellectual property 
  • Profiled in IP LAW AND BUSINESS (“The Science Guy,” September 2003) 
  • Editor, HARVARD LAW REVIEW, Harvard Law School

Involvement 

  • Task Force on Local Patent Rules for the District of Massachusetts
  • Federal Circuit Bar Association, Member 
  • American Intellectual Property Law Association, Amicus Committee 
  • Boston Patent Law Association, Member 
  • Boston Bar Association, Member 
  • Former Chairman of Board, American Repertory Theater 
  • Master Plan Committee, Hopkinton, New Hampshire
  • Frequent speaker on patent law issues and biosimilars legislation at conferences and hearings, including: Co-Chairman, ACI's Annual Summit on Biosimilars; FTC Hearings on the Evolving IP Marketplace; BIO Annual Meeting; BIO IP Counsels Committee; AIPLA; Licensing Executives Society; ACI's FDA Boot Camp; Windhover's FDA/CMS Summit; NACUA Workshops; Suffolk Law School IP Conferences; CBI's Biopharma Forum, and others.
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Bar Admissions

  • Massachusetts

Court Admissions

  • U.S. District Court for the District of Massachusetts
  • U.S. District Court for the Eastern District of Texas
  • U.S. Court of Appeals Federal Circuit
  • U.S. Court of Appeals First Circuit
  • U.S. Court of Appeals Ninth Circuit
  • Supreme Court of the United States