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John Lu

Partner

ロサンゼルス

Dr. John Lu is an intellectual property partner in Orrick’s Los Angeles office who focuses on patent and trade secret disputes.

Primary Focus & Experience

Dr. Lu’s practice focuses on patent, trade secrets, and life sciences litigation. He has represented clients in matters involving patent infringement, U.S.-China trade secret misappropriation, biosimilars, ANDA litigation, and licensing disputes. He also represents clients in connection with proceedings before the Patent Trial and Appeal Board. His clients have included Genentech, Tris Pharma, Rosenberger, Natera, and Gilead.

Recognition & Accomplishments

Dr. Lu has been on the editorial advisory board for Law360 Life Science publications and was named to Benchmark Litigation’s “40 and Under Hot List,” which honors the achievements of the nation’s most accomplished litigators under 40. He was also named to the Southern California Rising Stars list by Super Lawyers.

Dr. Lu has authored a number of publications, including: “Thryv: opposing policies in the Supreme Court,” World Intellectual Property Review (June 5, 2020); “The Growth of Online Universities: How to Solve the Accreditation Dilemma, Protect Students, and Expand Access to Higher Education,” a chapter in “Education and Social Media: Toward a Digital Future,” MIT Press (2016); “Senate Gridlock Causes En Banc Uncertainty,” and “Intellectual Property Special Report,” The Recorder (July 15, 2013); and “Promotion and Market Share in the Proton Pump Inhibitor Market: A Case Study,” Journal of Pharmaceutical Marketing & Management, Volume 17, Issue 3, 39-59 (2007).

Dr. Lu is the chair of the board of directors for Asian Pacific American Dispute Resolution Center (APADRC), a nonprofit organization. He was also a Fellow of the Leadership Council on Legal Diversity.

Prior to private practice, Dr. Lu was a law clerk to the Honorable William Alsup of the U.S. District Court for the Northern District of California.

Dr. Lu received his J.D. from Yale Law School, where he was Notes Editor of the Yale Law Journal and Executive Editor of the Yale Journal of Law & Technology. While in law school, he was an extern for the Honorable John T. Noonan of the U.S. Court of Appeals for the Ninth Circuit, and an intern for the U.S. Attorney’s Office for the District of Connecticut.

Prior to law school, Dr. Lu earned his Doctor of Pharmacy, with highest distinction, from the University of North Carolina, and worked in pharmaceutical marketing.

Dr. Lu is conversant in Mandarin Chinese.

    • CommScope, Inc., v. Rosenberger Technology (Kunshan) Co. Ltd., et al. and CommScope Technologies, LLC, v. Rosenberger Site Solutions, LLC, et al. Defeated a preliminary injunction motion filed against the world’s third largest manufacturer of base station antennas, China-based Rosenberger Technology, and related companies in trade secret misappropriation and patent infringement lawsuits filed by its competitor, US-based CommScope. John and his team appeared in the litigation after the court had ordered an ex-parte seizure against Rosenberger pursuant to the Defend Trade Secrets Act. CommScope has alleged that Rosenberger misappropriated software-related and hardware-related trade secrets concerning the design of base station antennas, which are complex equipment that broadcast signals supporting wireless telecommunications. In a later-filed action, CommScope alleged that Rosenberger infringed 9 patents related to the design of base station antennas. Many of the underlying facts occurred in and witnesses are based in China. With his Mandarin-language abilities, John has been uniquely well positioned to litigate this action. Both cases remain pending.
    • Tris Pharma, Inc. V. Actavis Laboratories FL Inc. and Teva Pharmaceuticals USA – Maintained exclusivity until patent expiration for Tris Pharma’s two highest grossing drugs. Secured an important victory on behalf of Tris Pharma, Inc. in the District of Delaware in a lawsuit against Actavis on patents that cover Tris's Quillivant XR® product. The district court found Actavis directly and indirectly infringed all asserted claims and that all asserted claims are not invalid. This ruling will prevent Actavis from commercializing its generic version of Quillivant XR® at least until 2031, when the infringed patents expire. In the District of New Jersey, secured an important victory following a bench trial against Teva on patents that protect Tris’s QuilliChew ER® product. This victory will prevent Teva from commercializing its generic version of QuilliChew ER® until at least 2033, when the infringed patents expire.
    • Genentech and Biogen v. Celltrion and Teva; Genentech and Biogen v. Sandoz. Represented Genentech and Biogen in patent litigation under the BPCIA relating to their blockbuster drug, Rituxan. One lawsuit settled on favorable terms shortly before the court was scheduled to begin a four-day trial on Genentech and Biogen's motion for a preliminary injunction against Celltrion and Teva. In addition to multiple district court litigations, we defended Genentech and Biogen against 25 IPR petitions at the PTAB and secured 16 non-institution decisions, four adverse judgments against petitioners (who abandoned the proceeding), and three final written decisions rejecting the attack on all claims.
    • Boehringer Ingelheim v. Genentech and Biogen; Celltrion v. Genentech and Biogen; Pfizer v. Genentech and Biogen; and Sandoz v. Genentech and Biogen. Defended Genentech and Biogen in connection with 25 IPR petitions in the PTAB for multiple patents relating to methods of using Rituxan. Secured 16 non-institution decisions, 4 adverse judgments against petitioners (who abandoned the proceeding), and 3 final written decisions rejecting the attack on all claims. Only 2 of the 25 proceedings resulted in loss of patent claims in final written decisions, one of which is pending appeal and another that was settled before appeal. The petitioners are competitors who filed, or planned to file, applications with the FDA to market biosimilar versions of rituximab under the Biologics Price Competition and Innovation Act.
    • AIDS Healthcare Foundation, Inc. v. Gilead Sciences Inc. et al. Secured dismissal of a lawsuit challenging Gilead's new HIV and hepatitis B medication, tenofovir alafenamide (TAF). AIDS Healthcare Foundation brought the lawsuit alleging that five patents owned or licensed by Gilead are invalid and that Gilead violated antitrust and unfair competition laws by first releasing TAF as part of multidrug products. Judge William Alsup of the US District Court for the Northern District of California granted Gilead's motion to dismiss all claims after extensive briefing and a lengthy oral argument. The Federal Circuit affirmed the dismissal.
    • MSD Consumer Products, Santarus, Inc. et al. v. Zydus Pharmaceuticals, Dr. Reddy's, Perrigo. Represented plaintiffs in this series of Paragraph IV cases involving proposed generics for an over-the-counter proton pump inhibitor. Secured favorable resolutions of these cases before trial.
    • Santarus Inc. v. Par Pharmaceutical Inc. Represented appellant Santarus Inc., a small innovative pharmaceutical company based in San Diego, in this case involving Santarus' drug Zegerid, which is used to treat disorders related to excess stomach acid. The district court found all of the asserted claims in the patents covering Zegerid to be obvious over the prior art. On appeal, the Federal Circuit held that 11 asserted claims in two patents were not obvious and reversed the district court on those claims. Because Par's generic was found to infringe the claims that were held to be valid, this decision cleared the way for a trial on damages. As a result of the victory, two days following the decision Par announced that it had voluntarily ceased further distribution of the infringing product. News of the victory caused Santarus' stock price to soar over 14 percent in one day. Par ultimately agreed to pay $100 million in damages.