Practice

Patent Litigation

Clients describe Foley Hoag’s nationally-recognized patent litigation group as “phenomenal” and “highly recommended.” They choose our team to represent them in complex patent infringement cases and invalidity challenges as well as disputes over inventorship, ownership of patent rights, and royalties.  

We represent leading public companies, VC-backed start-ups, and major research institutes in their most important and sensitive patent-related disputes. 

Our approach to each dispute is sophisticated, interdisciplinary, and tailored to the business needs of the client. Our litigators work closely with our deep bench of technically trained patent attorneys to advocate for our clients in federal and state courts, arbitration proceedings, the International Trade Commission (ITC), and the Patent Trial and Appeal Board (PTAB). We also coordinate and manage cross-border patent litigation in multiple foreign jurisdictions to ensure worldwide protection for our clients’ innovations.

We have extensive experience handling disputes in a wide variety of complex technical fields. We specialize in life sciences matters, including cases involving biotechnology, pharmaceuticals, diagnostics, medical devices, and laboratory instruments. We have also handled numerous cases outside the life sciences, from mobile apps to consumer products. Based on our many years of experience working with academic researchers, scientists at early-stage companies, and product development teams preparing to launch products, we understand how a discovery or invention evolves into a commercial product and are adept at developing an evidentiary record that persuasively tells our client’s story to the judge and jury. We combine in-depth knowledge of patent law, aptitude for science and technology, and trial expertise to present our client’s case in clear and persuasive language.

In addition to competitor/competitor patent infringement cases and PTAB validity challenges, we have extensive experience in disputes that arise out of collaborations and other commercial partnerships. We have a demonstrated history of helping clients recapture commercial value when strategic alliances go awry, including in disputes among collaborators over patent inventorship and ownership as well as royalty obligations. We also handle patent-adjacent matters involving claims for breach of contract, unfair trade practices, unjust enrichment, trade secret misappropriation, and conversion. 

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Related Practices & Industries

As our expertise is wide-ranging, our attorneys specialize in these related areas:

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Experience

PATENT DISPUTES – LIFE SCIENCES

  • Representing Enanta Pharmaceuticals in District of Massachusetts patent infringement litigation asserting a patent covering certain protease inhibitors and methods of treating coronavirus against Pfizer in connection with its PAXLOVID® product. 
  • Representing Geneoscopy in patent infringement and false advertising case brought by Exact Sciences in the District of Delaware accusing Geneoscopy's RNA-based test for colorectal cancer of infringing two patents directed to fecal sample processing. Also representing Geneoscopy in two IPR proceedings in the PTAB challenging the validity of the asserted patents; PTAB has invalidated one patent, and IPR on the second is ongoing. 
  • Representing Elysium Health in lawsuit alleging infringement of two patents related to nicotinamide riboside. Obtained PTAB ruling invalidating half the claims of the asserted patents and district court summary judgment ruling invalidating the other half under 35 U.S.C. §101. After the Federal Circuit affirmed the district court's §101 decision, we obtained an "exceptional" case finding under 35 U.S.C. § 285 and award of attorneys' fees, currently on appeal to the Federal Circuit.
  • Representing La Jolla Pharma in an Eastern District of Virginia action pursuing a rarely used procedure under 35 U.S.C. § 145 to challenge the USPTO’s rejection of two patent applications covering the dosage form used for Giapreza®, La Jolla’s flagship drug that treats distributive shock.  
  • Defended Dutch vegetable breeding company Enza Zaden in an action by Seminis Vegetable Seeds in the Middle District of Florida asserting infringement of a patent related to peppers and a plant variety protection certificate. Case settled after filing motion to dismiss the complaint. 
  • Defended Celsee in District of Delaware patent infringement and false advertising dispute with 10x Genomics concerning instruments for single-cell analysis and associated consumables. Obtained favorable settlement just before trial. 
  • Represented Becton, Dickinson and Company in two separate actions to enforce multiple patents covering polymer dye reagents and their use in flow cytometry against competitors Affymetrix and Beckman Coulter in the Southern District of California. Defended the asserted patents against Beckman's PTAB challenges, with the PTAB denying a petition directed to one patent and finding another key claim patentable. Achieved favorable settlements before trial (Affymetrix) and prior to expert discovery in district court (Beckman). 
  • Defended Epicypher in a patent infringement suit brought by Active Motif in the District of Delaware asserting its patent directed to targeted transposition for analysis of protein interactions with DNA. Obtained a favorable claim construction ruling that resulted in early dismissal of all infringement claims. 
  • Represented Bioverativ Therapeutics in an ITC investigation asserting its patent directed to the use of long-lasting Factor IX products against competitor CSL Behring’s extended half-life product Idelvion®. Obtained successful claim construction ruling for infringement claims. Also defeated CSL’s attempt to institute IPR challenges to Bioverativ’s patents.  
  • Represented Biogen in District of Delaware patent dispute with Novartis in which Novartis claimed that use of the GS Gene Expression System™ to make biologics infringed Novartis' patent. Obtained favorable settlement weeks before trial and during the pendency of motions for summary judgment of invalidity and non-infringement. 
  • Represented branded pharmaceutical company in Hatch-Waxman litigations in the District of Massachusetts and the District of New Jersey concerning two different renal care drugs, which resulted in successful settlements.
  • Defended Biogen in patent dispute with Sanofi-Aventis Deutschland involving patents directed to human CMV regulatory sequences. Obtained summary judgment of non-infringement which the Federal Circuit affirmed. 
  • Represented Biogen in defense of patent infringement suit brought by Classen Immunotherapies in District of Maryland. Obtained dismissal of all claims with prejudice, an "exceptional" case finding under 35 U.S.C. § 285, and award of attorneys' fees. 
  • Represented respondents in ITC investigation concerning Ajinomoto patents related to the use of genetically engineered bacteria to produce lysine. After trial, obtained ruling that the two patents were invalid and unenforceable due to inequible conduct. The Federal Circuit affirmed. 
 

PATENT DISPUTES – OTHER TECHNOLOGIES

  • Represented five respondents in ITC investigation concerning lip balm products. Complainants withdrew their complaint against three respondents after we moved to terminate the investigation. The investigation was terminated as to the other two on the basis of settlement agreements. 
  • Represented FitNow in District of Utah patent infringement action concerning its mobile application LoseIt! Won judgment on the pleadings invalidating the asserted claims under 35 U.S.C. § 101.  
  • Represented developer of mobile, on-phone pharmacy applications in District of Delaware litigation concerning patent related to refilling a prescription.  
  • Represented eight respondents, including European paper manufacturer, in ITC investigation regarding low ignition propensity paper technology. Obtained settlement and worldwide license days before trial.
  • Represented leading manufacturer of mobile satellite dish systems in patent litigation in the District of Minnesota. Obtained jury verdict invalidating the sole asserted patent claim. Plaintiff did not appeal.
  • Represented numerous technology companies in defense of patent infringement assertions by non-practicing entities.  


INVENTORSHIP AND OWNERSHIP DISPUTES

  • Represented Dana-Farber Cancer Institute in District of Massachusetts litigation against Bristol-Myers Squibb and Ono Pharmaceutical concerning inventorship and ownership of groundbreaking patents directed to PD-1/PD-L1 cancer immunotherapy. Obtained judgment for Dana-Farber correcting inventorship, making Dana-Farber a co-owner of all the patents. The Federal Circuit affirmed.
  • Represented University of Massachusetts (UMass) in a Massachusetts state court dispute concerning ownership of UMass patents and patent applications involving siRNA technology. A clinical stage biopharmaceutical company alleged that the patent filings contained its proprietary information. Obtained Consent Judgment confirming UMass' ownership rights. 
  • Defended UMass in a District of Massachusetts case brought by Max Planck Institute and Alnylam Pharmaceuticals against three co-owners of patent applications directed to therapeutic uses of RNA interference. We obtained judgment in favor of UMass on all claims as well as a global settlement agreement by which UMass became co-owner of Max Planck’s competing patent applications on RNA interference.
  • Defended QLT in a District of Massachusetts patent infringement suit brought by the Massachusetts Eye and Ear Infirmary and asserted a counterclaim to correct inventorship of patented treatment methods for macular degeneration. We obtained a district court order correcting inventorship to add QLT’s scientist to the patent, leading to stipulated dismissal.
  • Defended Johns Hopkins University and Xanthus Pharmaceuticals in a Delaware Chancery Court dispute over ownership of intellectual property, resulting in the negotiation of patent license.


LICENSE AND ROYALTY DISPUTES

  • Represented Dana-Farber in second District of Massachusetts case against Bristol-Myers Squibb and Ono Pharmaceuticals, asserting claims for unjust enrichment and unfair competition for depriving Dana-Farber of its co-ownership rights under eight patents directed to cancer immunotherapy. On the eve of trial, in the face of Dana-Farber's claim for hundreds of millions of dollars in damages, Defendants settled, making a substantial lump sum payment to Dana-Farber and agreeing to make potential additional payments, contingent on future events. 
  • Represented Massachusetts Biologic Laboratories of UMass in a dispute regarding MedImmune’s royalty obligations under an agreement covering Synagis®, an anti-RSV monoclonal antibody. Won ruling in Maryland state court, after an eight-day trial, that MedImmune must continue to pay royalties. Judgment affirmed on appeal. 
  • Defended Biogen in District of Massachusetts litigation brought by Knopp Neurosciences concerning ownership of patient biosamples obtained by Biogen in a phase 3 clinical trial investigating the treatment of ALS. Obtained dismissal with prejudice of Knopp's claim just before trial. 
  • Defended Becton, Dickinson and Company in a contract dispute over the licensing of certain monoclonal antibodies. Obtained favorable settlement after filing summary judgment motion seeking dismissal of claims.

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