Scope of Estoppel Post-IPR Proceedings Becoming Clearer
A. Antony Pfeffer has extensive experience representing plaintiffs and defendants in intellectual property litigation matters involving patent infringement and trade secret misappropriation, in state and federal courts as well as before the U.S. International Trade Commission (ITC). He is also experienced in conducting patent office proceedings including inter partes reviews (IPR), reexaminations, and interferences.
In addition to helping clients resolve disputes, Antony handles transactional and licensing work that helps to facilitate his clients’ strategic growth. This includes drafting, negotiating, and counseling clients on commercial collaborations, joint research arrangements, and a diverse range of other transactions. In addition, he participates in patent prosecution, review, opinion, and clearance work in various technology areas.
An engineer by training, Mr. Antony is adept at applying his scientific knowledge to develop litigation strategies for clients in a range of industries. He has litigated cases involving diverse technologies including medical imaging, diagnostics (both clinical and consumer use), expression of recombinant proteins, small-molecule pharmaceuticals, nutritional supplements, automotive, electronic devices, and computer software.
Antony’s clients have included Otsuka, Nitto Denko, Medinol, Akzo Nobel, Toyota, GE Healthcare, Barnes & Noble, Human Genome Sciences, Enzon Pharmaceuticals, Iovate, and Imclone Systems, among others.
Otsuka in its acquisition of Neurovance, Inc.,a clinical stage pharmaceutical company focused on the development and commercialization of innovative therapies for attention-deficit hyperactivity disorder and related disorders. Under the terms of the merger agreement, Otsuka will provide $100 million in upfront payments at closing, up to $150 million in additional payments contingent on the achievement of development and approval milestones, and future additional payments contingent on the achievement of sales milestones.
Nitto Denko in its licensing of exclusive worldwide rights for the development and commercialization of Nitto’s investigational siRNA molecules targeting heat shock protein 47 (HSP47) in vitamin A containing formulations, which includes Nitto’s lead asset ND-L02-s0201, currently in Phase 1b study for the treatment of advanced liver fibrosis. The agreement also grants BMS the option to receive exclusive licenses to Nitto's siRNA therapy for the treatment of lung fibrosis and other organ fibrosis. As part of the agreement, BMS will make an upfront payment of $100 million to Nitto. Additionally, Nitto will be eligible to receive subsequent clinical and regulatory milestone payments, royalties, sales based milestone payments, as well as option exercise payments.
Toyota in multiple district court litigation cases originally filed on 24 vehicular safety patents in the Eastern District of Texas and eventually transferred to the Eastern District of Michigan. This included 12 inter partes review proceedings (including as lead counsel on seven) that ultimately resulted in the cancellation or withdrawal of significant patent claims, and voluntary dismissal with prejudice by the plaintiff.
Teva Pharmaceuticals in district court and on appeal in a matter related to Actonel, an osteoporosis drug. Federal Circuit affirmed the lower court’s decision in favor of Teva ruling that plaintiffs’ patents were invalid as obvious.
Barnes & Noble in defending its NOOK eReader products from claims of patent infringement made by Microsoft in the ITC concerning various hardware and software patents.
Barnes & Noble in defending its NOOK eReader products from claims of patent infringement made by Deep9 in the U.S. District Court for the Western District of Washington. The district court granted summary judgment of non-infringement, which was affirmed on appeal.
Enzo Diagnostics against Digene Corporation in a patent infringement lawsuit involving Digene’s diagnostic test for Human Papilloma Virus resulting in a favorable settlement for our client.
Teva Pharmaceuticals and Savient Pharmaceuticals at the district court and appellate level against Novo Nordisk. The U.S. Court of Appeals for the Federal Circuit affirmed a judgment by the U.S. District Court for the District of Delaware that the patent, which was related to recombinant human growth hormone, was unenforceable, and holding the sole asserted claim invalid