Elizabeth A. Howard

Elizabeth Howard, an intellectual property partner in the Silicon Valley office, is co-chair of the Orrick life sciences practice. She focuses her practice on patent infringement litigation, with an emphasis on the life sciences. Her practice also includes trade secrets disputes and handling anti-counterfeiting matters in the pharmaceutical industry. In addition to litigating in numerous federal district courts and California state courts, Dr. Howard has appeared before the U.S. Patent and Trademark Office in interference proceedings, and arbitrated before the International Chamber of Commerce. She is listed in PLC Which Lawyer? - life sciences: intellectual property. The following are some of her more notable engagements.

• Protiva Biotherapeutics, Inc. Dr. Howard was lead counsel for Protiva Biotherapeutics, Inc. in Protiva Biotherapeutics, Inc. v. Sirna Therapeutics, Inc., a trade secrets case filed in the State Court of California involving allegations that defendant Sirna Therapeutics, Inc. misappropriated Orrick client Protiva Biotherapeutics, Inc.'s technology for the systemic delivery of small interfering RNA (siRNA). Dr. Howard argued for and obtained a preliminary injunction for her client; the case subsequently settled.
• Wilbur-Ellis Company. Dr. Howard was lead counsel for Wilbur-Ellis in a patent infringement litigation, Yamashita et al. v. Wilbur-Ellis Co., in the Northern District of California. In defending against allegations that a Wilbur-Ellis fertilizer composition infringed asserted patents, Dr. Howard successfully argued and defeated a motion for a preliminary injunction. This case is now settled.
• Dow AgroSciences LLC. In the Dow AgroSciences litigation, Dr. Howard was a key member of the team representing the company in a more than a half-dozen cases involving the enforcement of patent rights involving genetically modified corn and cotton. The technology at issue in these litigations was at the cutting edge of plant molecular biology and also involved multiple novel legal issues. In Syngenta Seeds v. Dow AgroSciences, Mycogen Plant Sciences and Agrigenetics, she was a key member of the team that obtained a complete defense verdict. After successfully obtaining a Court ruling that two of the three asserted patents were not infringed, Dow's trial team received a jury verdict invalidating the single remaining patent in its entirety on three separate grounds and a substantial subset of the claims on an additional ground. In another patent infringement case, Dr. Howard was a lead member of a team defending the company against a charge of patent infringement. After a year of litigation and before the claim construction hearing was held, the patentee withdrew the patent infringement charge and granted the company a covenant not to sue. Dr. Howard also successfully obtained a dismissal for her client Dow AgroSciences in a 291 action for interfering patents in June, 2005. Dr. Howard presently represents Dow AgroSciences in litigation pending in two separate district courts of North Carolina.
• Affymetrix. Dr. Howard represented Affymetrix in a variety of matters both defending their GeneChip® product from patent infringement allegations of others and enforcing Affymetrix’s GeneChip® patents against infringers. These proceedings occurred in a variety of locations and forums, including the district courts of San Francisco and San Jose, the district court of Wilmington, Delaware, the U.S. Patent and Trademark Office and the United Kingdom.
• Takeda Pharmaceutical Co. Dr. Howard is global counsel for Takeda Pharmaceuticals in their global anti-counterfeiting efforts, and also provides IP counseling to Takeda San Diego and Takeda Pharmaceutical Company.
• Matrix Pharmaceuticals, Inc. Dr. Howard was a member of the team representing Matrix Pharmaceuticals in a trade secrets action brought by Collagen Corp. The matter settled before trial.

Dr. Howard also speaks and publishes regularly on intellectual property matters affecting the life sciences industry. Selected publications and presentations include:

• Co-Author, "Bilski Machine-Transformation Test Applied to Pending Patent Application" Orrick Client Alert, December 19, 2008.
• Co-Author, "Federal Circuit Issues Opinion in Takeda v. Mylan Labs" Orrick Client Alert, December 15, 2008.
• Co-Author, “Federal Circuit Refines Written Description Requirement for Claims Including Antibodies” Orrick Client Alert, November 11, 2008.
• "Factoring Patent Reform, PTO Rulemaking and New Case Law into Your Due Diligence Analysis," American Conference Institute, New York, New York (January 30, 2008).
• "Obviousness After KSR: the American Approach," 81st Annual Meeting of the Intellectual Property Institute of Canada, Vancouver, Canada (October 12, 2007).
• "Integra’s Impact on the Scope of the Safe Harbor," Maximizing Pharmaceutical Patent Life Cycles, American Conference Institute, San Francisco, CA (June 14, 2006).
• “Interpreting 35 USC § 112 and Written Description Requirements," 6th Advance Forum on Biotech Patents, American Conference Institute, San Francisco, CA (February 17, 2006).
• "Claim Construction: Methodology and Tensions," PLI conference on How to Prepare and Conduct Markman Hearings in 2005, San Francisco, CA (July 13, 2005).
• "Stem Cell Ethics, Patents and Politics, a Biotech Roundtable," Pharmaceutical Executive (June 2002).
• "New PTO Guidelines Only Say ESTs Are Protectable," E. Howard, W. Anthony, The National Law Journal (July 23, 2001).

Dr. Howard’s scientific publications include the following:

• “The Vir D2 protein of A. tumefaciens contains a C-terminal bipartite nuclear localization signal: implications for nuclear uptake of DNA in plant cells,” E. Howard et al., Cell 68:109 (1992).
• "Activation of the T-DNA transfer process in Agrobacterium results in the generation of a T-strand-protein complex," E. Howard et al., PNAS 86:4017 (1989).
• "Reproducible and variable genomic rearrangements in the developing somatic nucleus of the ciliate Tetrahymena thermophila," E. Howard and E. Blackburn, Mol. Cell. Biol. 5:2039 (1985).
• "DNA termini in ciliated macronuclei," Blackburn et al., CSHSQB 47:1195 (1983).
• U.S. Patent 5,001,060, Plant Anaerobic Regulatory Element (1991).

Before law school, Dr. Howard was an NSF Plant Molecular Biology Postdoctoral Fellow at the CSIRO Division of Plant Industry in Canberra, Australia, and a Research Geneticist at the University of California, Berkeley.

Admitted in

• California
• United States Patent and Trademark Office

Court Admissions

Supreme Court of the State of California

United States Court of Appeals

• Federal Circuit
• Ninth Circuit

United States District Court

• Northern District of California
• Southern District of California
• Eastern District of Texas

Memberships

• American Intellectual Property Lawyers Association
• American Association for the Advancement of Science
• S.F. Bay Area IP American Inn of Court

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