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Developments in Pharmaceutical and Biotech Patent Law 2020


Speaker(s): Benjamin C. Hsing, Daniel L. Reisner, David K. Barr, Ian Lodovice, Jennifer Gordon, Ph.D., Jonathan A. Harris, Sanjay K. Murthy
Recorded on: Dec. 7, 2020
PLI Program #: 277953

Ben Hsing is an accomplished trial lawyer with significant experience litigating patents across a broad range of technologies, including pharmaceutical compounds and formulations, telecommunication cables, treatment methods, genetically engineered seeds, medical devices, memory chips, light switches, imaging devices, and pet products. Ben has secured favorable results for major pharmaceutical and technology companies in numerous high-profile cases.

Ben regularly calls upon his experience as a patent examiner to provide comprehensive counsel to clients on matters before the U.S. Patent and Trademark Office (USPTO), including post-grant and contested patent office proceedings. He also conducts intellectual property (IP) due diligence investigations in connection with acquisitions and licensing deals. He is deeply involved in his clients’ matters, ensuring that he understands all aspects of their businesses and cases so that he can identify, dissect, and solve potential challenges facing his clients.


Daniel Reisner has an undergraduate degree in Physics from Wesleyan University and obtained his J.D. from New York University School of law.

He focuses on patent and trade secret litigation and intellectual property transactions. Mr. Reisner has represented large and small clients through trial in numerous matters, patent office proceedings and arbitrations involving a wide range of pharmaceutical products including Celebrex®, Viagra®, Praluent®, Gleevec®, HCV diagnostics, PocketECG arrythmia remote monitoring, Glynase® and technologies including VoIP, DOCSIS, VOD, networking, image recognition, plastic injection molding, defense and aerospace.


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.


Ian Lodovice is currently Head of Intellectual Property at Korro, Bio.  At Korro, Bio, Ian is responsible for developing and executing IP strategy to create a portfolio around Korro, Bio’s products and platform technology, to develop and execute on risk mitigation strategies related to this portfolio, and to direct IP due diligence for Korro, Bio’s business development activities. Prior to joining Korro Bio, Ian was Assistant General Counsel, IP Counsel at Biogen, Inc, and a Principal in the Life Science Practice Group at Fish & Richardson. 


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, and The American Chemical Society. 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.


Jonathan Harris is a partner in the Corporate and Litigation Departments and a member of the Life Sciences Practice Group. A patent lawyer and business-minded MBA with over two decades of experience, Jonathan helps clients protect, license and exploit their most critical innovations. He advises established and emergent life science companies on all aspects of IP matters, including patent licenses and strategic alliances, litigation, IP diligence, freedom to operate, and prosecution.

Clients describe Jonathan as “an excellent patent analyst” and “skilled at translating complex technical subjects into English.” He works with start-ups to develop and license key IP assets. He has also worked extensively with global industry leaders on products worth billions of dollars. Given his MBA, Jonathan tries to see the bigger picture of every matter — not only from a legal, but also a commercial perspective. His many years of high stakes patent litigation experience help clients see around corners and reduce litigation risk. He serves as outside general counsel to clients and their boards of directors.

Jonathan has also prepared and prosecuted over two hundred patents and served as lead or co-lead trial counsel in numerous Paragraph IV actions over pharmaceutical products, including Cialis® (tadalafil), Diclegis® (doxylamine succinate, pyridoxine HCl), Focalin® (dexmethylphenidate HCl), Ritalin® (methylphenidate HCL), Trilipix® (fenofibric acid), and Zometa® (Zoledronic Acid), among others. He is intimately familiar with the overlying FDA regulatory regime in the pharmaceutical area.   

Education

- University of Connecticut School of Law  (J.D.)

- cum laude

- University of Connecticut School of Business  (M.B.A.)

- cum laude

- Duke University  (B.S.)

Bar Admissions

- Connecticut


Sanjay K. Murthy is a partner in the Intellectual Property practice in the Chicago office of Morgan Lewis and a nationally recognized trial attorney with over 20 years of experience representing 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).  He has been identified as a leading practitioner by IAM Patent 1000, The Legal 500 and as a “Patent Star” by Managing Intellectual Property. He has also been recognized by The American Lawyer and Crain’s Chicago Business for his victories.

Sanjay has worked on a wide array of life science related technologies, such as pharmaceuticals, methods for manufacturing recombinant proteins, CAR-T and stem cells, and medical devices.  He has represented a number of leading pharmaceutical and medical device companies, such as Takeda/Shire, GSK, Boehringer Ingelheim, and Baxter, among others.

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.