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Patent Litigation

“Kaye Scholer remains a powerhouse of elite-standard IP litigation, especially with regard to patent disputes of great complexity. The firm has a well-deserved reputation for its work in defense of the interests of some of the world's most eminent manufacturers of branded pharmaceuticals, as well as its representations of clients in the adjacent spheres of biotechnology and medical devices.”—Chambers USA 2013 (NY: Intellectual Property: Patent).

Our partners have strong track records when it comes to trying exceptionally complicated patent infringement cases, particularly in the life sciences and technology industries. With a primary focus on trial and litigation capability, much of the group's work on behalf of clients concerns blockbuster products. Many of our patent lawyers have degrees in chemistry, biochemistry, engineering or computer science, which allows us to quickly grasp the most sophisticated scientific concepts and make them understandable to judges and juries. During pretrial, we stress efficient and productive discovery and, where possible, an early disposition of the issues by summary judgment or tactical settlement.

In the Market

Google patents

We currently represent Google as lead counsel in three patent suits and as coordinating counsel for an additional three more, all pending before the Delaware court. The cases brought against Google by Walker Digital concern method patents related to contextual links in a web page to advertising, as well as online automatic bidding related to auction sites. We also represent Google in three other patent suits, including another Delaware case regarding “related search” functions and one in California related to Google Books and Picasa.

Viagra® patents

For more than 10 years we have been representing Pfizer in connection with IP litigation matters worldwide aimed at preserving Pfizer’s market exclusivity with respect to Viagra®. Most recently, we defeated an attempt by Teva to market a generic version of Viagra® in the US. After a 12-day bench trial, the Eastern District of Virginia ruled that Teva’s proposed copy would infringe a Pfizer patent claiming the use of Viagra® to treat erectile dysfunction. The court rejected Teva’s invalidity and unenforceability arguments and ultimately awarded Pfizer a portion of its attorney fees relating to Teva’s assertion of an unfounded inequitable conduct claim.

Anti-Tumor Necrosis Factor Antibody Patents

We represented Rockefeller University and Chiron (now Novartis Vaccines & Diagnostics) in asserting patents directed to pharmaceutical compositions containing and methods of treatment using antibodies that neutralize Tumor Necrosis Factor against Centocor’s Remicade® product and against Abbott’s Humira® product, both of which are prescribed to treat inflammatory diseases such as rheumatoid arthritis. During litigation in the Eastern District of Texas, Novartis reached a favorable settlement with Centocor (J&J), which took a royalty-bearing license. By agreement, plaintiffs’ patent infringement claims against Abbott were shifted to arbitration and tried to an arbitration panel, resulting in an award to plaintiffs.

Patent litigation victory keeps HD-TV mandate intact

In September 2012, Kaye Scholer won a five-year multi-district patent litigation case before the US Court of Appeals for the Federal Circuit. The suit, filed by Rembrandt Technologies, against long-time firm client Time Warner Cable, Inc. and 10 other cable companies, television networks and related entities, tested the new FCC-mandated ATSC standard, also known as HD-TV. Rembrandt alleged that in complying with the mandate, the defendants infringed the plaintiff’s patent. Had Rembrandt been successful in its claims, consumers could have experienced an indefinite interruption in their broadcast television service. In addition, the damages Rembrandt sought would have placed an undue tax on the television and cable industries.

TOBI® inhalable antibiotic patent

We represented Seattle Children’s Hospital and Novartis in several Hatch-Waxman patent litigations regarding TOBI®, an inhalable antibiotic formulation for treatment of cystic fibrosis patients. The litigation against Roxane resulted in withdrawal of Roxane’s ANDA. We achieved a successful settlement of the litigation against Teva. A case against Akorn is pending in the Northern District of Illinois.

Nintendo in 3D image capture suit

We are defending Nintendo Co., Ltd. and Nintendo of America Inc. in a patent infringement case brought by Tomita Technologies USA, LLC and Tomita Technologies International, Inc., two companies founded by an individual inventor in Japan. The technology at issue relates to 3D image capture and display in the Nintendo 3DS handheld gaming device.

Human Genome patent cases

We are representing Complete Genomics, in two lawsuits relating to Complete Genomics’ disruptive sequencing technology. This groundbreaking technology has driven the cost of sequencing of human genomes well below $5,000 per genome. The first suit relates to a patent to pair wise sequencing. Plaintiff accuses the Complete Genomics Analysis Platform, including its cPal technology, of infringing the patent-in-suit, and seeks an injunction. The second patent concerns sequencing by ligation. Plaintiff accused the client of infringing the patent-in-suit and sought an injunction that would shutter Complete Genomics’ business. On October 16, 2012, the court granted Complete Genomics’ motion for summary judgment that plaintiffs’ DNA sequencing patent was invalid – a huge victory for our client.

Tarceva® in ANDA case

We represented clients OSI Pharmaceuticals, Inc., Pfizer, Inc. and Genentech, Inc. in defeating a challenge by generic drug manufacturer Mylan Pharmaceuticals, Inc. (Mylan), which was seeking FDA approval to market a generic version of Tarceva®. Annual worldwide sales of Tarceva total approximately one billion dollars. The U.S. District Court for the District of Delaware ruled that “Mylan did not meet its burden to demonstrate that the patents are invalid by clear and convincing evidence.” The district court decision is on appeal to the Federal Circuit.

Time Warner Cable patent suits

We are representing the cable giant against a four-patent infringement suit brought by K Tech Telecommunications based on patents that K Tech alleges cover systems and methods for modifying certain channel and carrier frequency information contained in television broadcasts. We won two motions to dismiss on behalf of the client; K Tech appealed, and we are now representing Time Warner Cable in the appeal.