Younkin

Jeremy A. Younkin

Partner
Boston

I represent companies and research institutions in high-stakes patent infringement cases and other IP disputes.

Jeremy Younkin is a seasoned IP litigator who handles patent infringement disputes and other IP-related litigation, such as disputes over royalty payments and ownership of IP rights. He has represented life sciences clients in significant IP disputes concerning biotherapeutics, recombinant DNA technology, and tools and methods for cellular analysis. He has also handled cases involving an array of subject matter outside the life sciences, from satellite dishes to cosmetic packaging. Jeremy has successfully served as trial counsel in federal court, state court and the ITC.

Education

  • Harvard Law School, J.D., cum laude
  • Carleton College, B.A., magna cum laude
  • Clerkship: Honorable Lawrence E. Kahn, U.S. District Court for the Northern District of New York

Bar and Court Admissions

BAR ADMISSIONS
  • Massachusetts
COURT ADMISSIONS
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. District Court for the District of Massachusetts
  • U.S. Court of Appeals for the First Circuit
  • U.S. District Court for the Eastern District of Texas

Experience

  • Representing Elysium Health in defense of District of Delaware lawsuit alleging infringement of two patents related to nicotinamide riboside.  Obtained PTAB ruling invalidating half the claims of the asserted patents as anticipated by the prior art and district court summary judgment ruling invalidating the other half under 35 U.S.C. §101.  
  • Represented Celsee in District of Delaware patent infringement and false advertising dispute with 10x Genomics concerning instruments for single-cell analysis and associated consumables. Case settled shortly before trial.  
  • Represented University of Massachusetts in dispute over ownership of patents and patent applications involving siRNA technology.  Obtained Consent Judgment confirming UMass’ ownership rights.
  • Lead counsel for all 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.  
  • Trial counsel for Massachusetts Biologic Laboratories of the University of Massachusetts in 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.
  • 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 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 eight respondents, including European paper manufacturer, in ITC investigation regarding low ignition propensity paper technology. Obtained settlement and worldwide license days before trial.
  • Successfully defended Biogen in patent dispute with Sanofi-Aventis Deutschland involving patents directed to human CMV regulatory sequences. Obtained writ of mandamus from the Federal Circuit ordering the Eastern District of Texas to transfer the case to the Northern District of California. See In re Genentech, Inc. and Biogen Idec Inc., 566 F.3d 1338 (Fed. Cir. 2009). The district court granted summary judgment of non-infringement and the Federal Circuit affirmed. Sanofi-Aventis Deutschland GmbH v. Genentech, Inc. and Biogen Idec, 473 Fed. Appx. 885 (Fed. Cir. March 22, 2012).
  • Trial counsel for respondents in ITC investigation concerning two patents related to the use of genetically engineered bacteria to produce lysine.  Won ITC ruling invalidating both patents and finding that patent owner had committed inequitable conduct.  On appeal, the Federal Circuit affirmed. Ajinomoto Co., Inc. v. ITC, 597 F.3d. 1267 (2010).
  • Trial counsel for leading manufacturer of mobile satellite dish systems in patent litigation in the District of Minnesota. Obtained jury verdict invalidating the sole asserted claim. Plaintiff did not appeal.

Publications

  • Author, Indemnification Issues in Patent Infringement Cases, Corporate Counsel (February 2015)
  • Contributing author, Annual Review of Intellectual Property Law Developments, ABA Section of Intellectual Property Law (2010)
  • Co-author, Facing ITC Investigation? What Chinese Biotechnology Companies Should Know About Patent Litigation in the United States International Trade Commission, ASIA PACIFIC BIOTECH NEWS (July 2009)
FOLEY HOAG ALERTS & UPDATES
  • Supreme Court Holds Equitable Laches is No Longer Available to Limit Patent Damages
  • En Banc Federal Circuit Clarifies Application of On-Sale Bar to Contract Manufacturing
  • Federal Circuit’s En Banc Suprema Ruling Confirms the ITC’s Authority to Exclude Imported Goods Used to Directly Infringe in the United States
  • Supreme Court Rejects Good-Faith Belief of Invalidity Defense to Claims of Inducement of Patent Infringement

Honors & Involvement

INVOLVEMENT
  • Intellectual Property Owners Association, Member
  • Massachusetts Bar Association, Member 
  • Boston Bar Association, Member

Speaking Engagements

  • Speaker, "IP Agreements: Structuring Indemnification and Limitation of Liability Provisions to Allocate Infringement Risk," Strafford CLE Webinar (September 2015)
  • Speaker, "Shifting Sands: What is Discoverable and Admissible for Damages, Willfulness and Other Purposes," IPO Continuing Legal Education Roundtable (March 2011)
  • Speaker, "Local Model Patent Rules," IPO Annual Meeting (September 2009)