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Developments in Pharmaceutical and Biotech Patent Law 2017


Speaker(s): Benjamin C. Hsing, Daniel L. Reisner, David K. Barr, Jennifer Gordon, Kenneth H. Sonnenfeld, Ph.D., Sanjay K. Murthy
Recorded on: Nov. 1, 2017
PLI Program #: 209336

Ben Hsing is a partner at McGuireWoods LLP.  Ben’s practice is focused on patent litigation and counseling in the life sciences industry.  Ben is an accomplished trial lawyer, having tried numerous high-profile cases on behalf of major pharmaceutical and technology companies.  Ben is also well versed in USPTO proceedings and assists clients in post-grant and contested patent office proceedings.  In addition, Ben is experienced in conducting intellectual property due diligence investigations in connection with acquisitions and licensing deals and rendering freedom-to-operate, patentability, validity and infringement opinions.  According to Chambers USA 2014, Ben is a “favorite of high-profile branded drug companies.” Chambers USA 2018 describes Ben as “a very detail-oriented attorney.”  Ben is an active member of the legal community and frequently speaks on topics involving intellectual property and litigation.  Ben graduated with highest honors from George Washington University Law School.


Daniel Reisner focuses on patent and trade secret litigation involving biotechnology, pharmaceuticals, ANDA filings, medical devices and telecommunications.

For over two decades Mr. Reisner has worked on numerous trials and has broad experience in all phases of litigation for a variety of clients including Pfizer, Novartis, GSK, Sanofi and Regeneron.  His cases have involved a multitude of therapeutics and devices including Celebrex, Viagra, Gleevec, cardiac monitoring and HCV detection.

Along with David Barr, Mr. Reisner has served as the co-editor and a principal author of Pharmaceutical and Biotech Patent Law.


David K. Barr concentrates in the areas of patent, trade secret, and unfair competition litigation and counseling. Mr. Barr's experience includes litigation in federal and state courts, appeals to the Federal Circuit Court of Appeals and practice before the US Patent and Trademark Office, including contentious inter partes proceedings. Mr. Barr has been lead trial counsel in many complex Hatch-Waxman and biotech patent infringement cases, and has counseled clients on product development and strategic patent planning. He has extensive experience in intellectual property transactions, including licenses and acquisitions. Mr. Barr has also conducted numerous patent due diligence investigations, and has drafted patent license and related agreements. His patent matters have involved a variety of technologies, including biotechnology, pharmaceuticals, industrial chemistry and biomedical and mechanical devices.

Mr. Barr has authored articles and has lectured on a variety of intellectual property issues. He is a co-author and co-editor of the treatise Pharmaceutical and Biotech Patent Law (Practising Law Institute, 2016).

Mr. Barr received his law degree from the George Washington University Law School, where he was an Associate Editor of the George Washington Journal of International Law and Economics.


Jennifer Gordon is skilled in life sciences-related patent law. She has extensive experience in complex patent litigation involving biotechnology, pharmaceutical and other life sciences and chemistry-related patents. She has tried cases to judges and juries and argued appeals before the Court of Appeals for the Federal Circuit.

EXPERIENCE

Dr. Gordon also has extensive experience in client counseling (including validity, infringement and freedom-to-operate analyses; strategic planning in patent procurement; as well as IP due diligence investigations related to corporate transactions). She has been involved with various patent office proceedings in the United States and abroad, including reexaminations, inter partes reviews and oppositions. She has worked with foreign counsel to coordinate and implement strategies for procuring, enforcing and defending patent rights on a worldwide basis.

Over her career, Dr. Gordon has litigated, procured and counseled on a vast array of patented technologies in the life sciences, such as nucleic acid amplification technologies (PCR), recombinant DNA technologies, cell culture methodologies, biological therapeutics (interferons, human growth hormone, monoclonal antibodies, receptor decoys, stem cells and antisense oligonucleotides), growth factors, enzymes, vaccines, genetically engineered plants, pharmaceutical compounds (cefadroxil, ezetimibe, rosiglitazone, capecitabine and valsartan), medical devices (stents) and medical diagnostics (PCR, in situ hybridization, immunoassays and NMR contrast agents).

Dr. Gordon is a member of the American Intellectual Property Law Association, The Federal Circuit Bar Association, The New York Intellectual Property Law Association, The New Jersey Intellectual Property Law Association, The American Chemical Society and The American Association of the Advancement of Science. She is a frequent lecturer on numerous intellectual property topics, particularly with respect to biotechnology patent law. Ms. Gordon has been named in publications such as Chambers USA.


Kenneth Sonnenfeld specializes in intellectual property, particularly in the field of biotechnology and pharmaceutical law. As a partner in our Intellectual Property, Patent and Trademark Litigation practice, Ken represents multinational corporations and start-up companies in related IP matters.

With nearly 30 years of IP experience and a doctorate in pharmacology, Ken represents biotechnology and pharmaceutical companies in a full range of patent law matters. He advises clients on inter-party matters such as due diligence, litigation, foreign oppositions and licensing. He also handles complex strategic patent prosecution in the U.S. Patent and Trademark Office, as well as supervising foreign prosecution.

Recognized as one of the nation’s leading intellectual property lawyers in the field of biotechnology and pharmaceutical patent law, Ken is a frequent speaker at biotechnology patent law conferences. He has been ranked highly by IAM Patent 1000—The World's Leading Patent Professionals guide for litigation, patent prosecution and licensing, as well as by Chambers USA and Legal 500.


Sanjay K. Murthy is partner in the Intellectual Property practice in the Chicago office of Morgan, Lewis, & Bockius LLP.  He has over 15-years of patent litigation experience representing leading life science and technology companies in US District Courts, before the Patent Trial and Appeal Board, and in Section 337 investigations in the US International Trade Commission (ITC).

Sanjay has successfully tried cases to juries on both US coasts on behalf of Fortune 500 companies, has first-chaired Markman hearings, and has argued numerous motions throughout the United States. In addition to his trial court experience, he has successful appellate experience and has handled matters before the US Courts of Appeals for the Federal and Ninth Circuits and the ITC. Sanjay has also successfully represented a number of clients in inter partes review proceedings.  In 2017, Sanjay was named as one of the "Most Influential Minority Lawyers in Chicago" by Crain’s Chicago Business.

Sanjay has worked on a wide array of life science related technologies, such as medical devices (e.g., dialysis machines, drug infusion pumps, and stent grafts), pharmaceuticals, methods for manufacturing recombinant proteins (e.g., Factor VIII and alpha-1 antitrypsin), and stem cells.  His representations include handling litigation and IPRs for Baxter Healthcare, Baxalta, Shire, and Praxair, among others.  Most recently, he won an 11-patent ANDA case in the District of Delaware against Mallinckrodt.

Sanjay received an LLM in intellectual property law from The George Washington University Law School, a J.D. from California Western School of Law, where he was a dean’s full-tuition scholarship recipient, and a B.S., Biology with a minor in Chemistry from Loyola University.