David K. Barr’s practice is concentrated in the areas of patent, trade secret, and unfair competition litigation and counseling. David’s experience includes litigation in federal and state courts, appeals to the Federal Circuit Court of Appeals and practice before the US Patent and Trademark Office. David has been lead trial counsel in many complex patent infringement cases, and has counseled clients on product development and strategic patent planning. He has extensive experience in intellectual property transactions, including licenses and acquisitions. David has conducted numerous patent due diligence investigations, and has drafted patent license and related agreements. His patent matters have involved a variety of technologies, including biotechnology, pharmaceuticals, industrial chemistry and biomedical and mechanical devices.
David was recently recognized as an “IP Star” by Managing IP Handbook 2015, and as a “life sciences hot shot” for his work in patent litigation by the IAM Patent 1000 2014 guide of The World’s Leading Patent Practitioners, adding that David is an “extremely diligent lawyer and fine strategist.” In the 2014 and 2015 editions of Euromoney's LMG Life Sciences Guide, David was named a "Life Science Star," and in 2016 was recognized by Who's Who Legal for patent litigation. He was also selected as a “2013 Top Rated Lawyer in Intellectual Property Law” by American Lawyer and Corporate Counsel Magazine. Furthermore, Kaye Scholer’s Patent Litigation Practice was rated as “highly recommended” by the ILA’s Leaders League in 2012, with David noted as a “leading partner” within the practice.
David has authored articles and has lectured on a variety of intellectual property issues. He is a co-author and co-editor of the treatise Pharmaceutical and Biotech Patent Law (Practising Law Institute, 2015).
Representative Patent Litigation Experience
- Novartis in patent litigation relating to Chimeric Antigen Receptor modified T cells used for the treatment of leukemia. Trustees of the University of Pennsylvania and Novartis Pharmaceuticals Corporation v. St. Jude Children’s Research Hospital, Inc. and Juno Therapeutics, Inc. (E.D.Pa.)
- Novartis in Hatch-Waxman action directed to Novartis’ Gleevec® drug product. Sun Pharma Global FZE v. Novartis Pharmaceuticals Corp. and Novartis AG (D.N.J.); Novartis Pharmaceuticals Corp. and Novartis AG v. Amneal Pharmaceuticals, Natco Pharma Ltd., and Roxane Laboratories, Inc.
- Sanofi-aventis in patent infringement litigation against ten drug companies seeking to market generic versions of the Company’s Allegra® antihistamine products. Lead trial counsel for Sanofi-aventis in seven-day bench trial against Dr. Reddy’s. Aventis Pharmaceuticals, Inc. v. Dr. Reddy’s Laboratories, Ltd. et al. (D.N.J.)
- GlaxoSmithKline and Stiefel in defending two patent infringement actions relating to Stiefel’s Veltin™ dermatologic product. Medicis, et al. v. Stiefel Labs (W.D. Tex.); Medicis, et al. v. Stiefel and GlaxoSmithKline (D.N.J.)
- Vivelle Ventures, Noven Pharmaceuticals and Novartis in Hatch-Waxman patent litigation regarding the transdermal estradiol drug product, Vivelle Dot®. Vivelle Ventures, Noven Pharmaceuticals and Novartis v. Mylan Technologies, et al. (S.D.N.Y.)
- Seattle Children’s Hospital and Novartis in Hatch-Waxman patent litigation regarding TOBI®, an inhalable antibiotic formulation for treatment of cystic fibrosis patients. Seattle Children’s Hospital and Novartis v. Teva Pharmaceuticals (D. Del.)
- Novartis in Hatch-Waxman patent litigation against three generic drug companies seeking approval to market generic versions of Novartis’ urinary incontinence drug, Enablex®. Novartis v. Teva Pharmaceuticals, Watson Pharmaceuticals and Anchen Pharmaceuticals (D. Del.)
- Chiron in its successful assertion of its patents covering nucleic acid methods and probes for detecting the presence of the Hepatitis C virus (HCV). Three-year litigation resulted in consent judgment that Chiron’s patents were valid, enforceable and infringed by Roche, and that Bradley breached a prior contract with Chiron. Chiron Corporation v. F. Hoffmann-LaRoche Ltd. and Bradley (N.D. Cal.)
- Rockefeller University and Chiron in litigation asserting infringement of Rockefeller’s patents relating to antibodies to Tumor Necrosis Factor (“TNF”) against manufacturers of Remicade® and Humira®, used to treat rheumatoid arthritis. Rockefeller University and Chiron Corporation v. Centocor, Inc. and Abbott Laboratories (E.D. Tex.)
- DuPont Merck and Imarx in successfully briefing and arguing motions to dismiss, on personal and subject matter jurisdiction grounds, plaintiff’s complaint, which sought to institute an interfering patents action among several owners of patents directed to ultrasound contrast agents. Mallinckrodt Medical, Inc. v. DuPont Merck Pharmaceutical Corp. and Imarx Pharmaceutical Corp., 989 F. Supp. 265 (D.D.C. 1998)
- Marion Merrell Dow in patent infringement action against drug company seeking to market a generic version of MMD’s non-sedating antihistamine Seldane®. Marion Merrell Dow Inc. v. Baker Norton Pharmaceuticals Inc. (S.D. Fla.)
- Bayer in patent infringement litigation against drug company seeking to market a generic version of Bayer’s leading antibiotic Cipro®. Case settled prior to trial. Bayer A.G. v. Barr Laboratories (S.D.N.Y.)
Lead IP counsel on numerous transactions, including Novartis’ acquisitions of Alcon, Nektar, GSK’s oncology portfolio, and CoStim Pharmaceuticals; Alcon’s acquisition of WaveTec Vision; Pfizer’s acquisition of InnoPharma; Novartis’ collaboration with the University of Pennsylvania on chimeric antigen receptor modified T cells (“CART”) and Novartis’ collaboration with Aduro Biotech on cancer immunotherapies.
Other Counseling Matters
Patent Counseling and Opinions
Counseled and prepared numerous patent opinions in various technologies including biotechnology, pharmaceuticals, chemical compounds and synthesis, recombinant DNA technology, genetically modified plants and seeds, research tools, including the use of recombinantly-engineered cells for high throughput screening in drug development, monoclonal antibody technology, pharmaceutical formulations, delivery systems, and methods of treatment.
Patent and IP Due Diligence Investigations
Conducted numerous due diligence investigations in advising clients on patent and IP issues relating to transactions, including licenses, asset transfers and acquisitions.
Patent Licensing and Settlement Agreements
Drafted patent licenses and settlement agreements in a variety of technologies.
Patent Audits and Freedom-to-Operate Analyses
Counseled and conducted patent audits and freedom-to-operate studies involving analyses of worldwide issued patents and published patent applications. Work included creation of searchable databases.
- Pharmaceutical and Biotech Patent Law (Practising Law Institute, 2015) (Editor and co-author).
- “Developments in the Law of Patentable Subject Matter and Utility Under 35 U.S.C. 101 Impacting Pharmaceutical and Biotech Inventions” (Practicing Law Institute, 2010).
- “Structural Obviousness of Pharmaceutical Compounds after KSR,” New Jersey Intellectual Property Law Association, 22nd Annual Pharmaceutical/Chemical Patent Practice Update, December 9, 2008.
- “Patentability of Active Pharmaceutical Ingredients,” published in Developments in Pharmaceutical and Biotech Patent Law (Practising Law Institute, 2007).
- “The Utility Requirement and the Patentability of Nucleic Acid Sequences” (presented at the American Conference Institute’s Third Advanced Forum on Biotech Patents, March 2004).
- “High Court Declines to Reassess ‘Brulotte’” (New York Law Journal, February 3, 2002) (co-author).
- “Memorializing Advice of Patent Counsel” (New York Law Journal, July 29, 2002).
- “Recent Federal Court Decisions on Interpretation of Agreements Relating to Patents,” published in Technology Licensing and Litigation 1997 (Practicing Law Institute, 1997).
- International Intellectual Property (Prentice-Hall, 1992) (contributing author on biotechnology law).
- Co-chair of Practicing Law Institute’s annual conference on “Developments in Pharmaceutical and Biotech Patent Law.” These annual conferences gather leading speakers from the bar, bench, and industry to review and analyze the most significant developments in pharma and biotech. (2008-2016)
- “Myriad: Revisiting the Question of Patentable Subject Matter,” August 2011 (PLI webcast)
- “Recent Developments In Patent Law Impacting The Pharmaceutical Industry: A Perspective,” Annual Executive Summits co-sponsored by Pharmaceutical Executive Magazine and Young & Partners (2007-2011)
- “Structural Obviousness of Pharmaceutical Compounds after KSR,” New Jersey Intellectual Property Law Association, 22nd Annual Pharmaceutical/Chemical Patent Practice Update (December 9, 2008)
- “Pharmaceutical and Biotech Patent Law: Recent Developments,” December 13, 2007 (PLI webcast)
Awards and Rankings
- Who’s Who Legal Patent Litigation (2016)
- Euromoney’s LMG Life Sciences Guide “Life Science Star” (2014, 2015)
- Managing IP Handbook “IP Star” (2013, 2014, 2015)
- Ranked in IAM Patent 1000 (2013, 2014, 2015)
- American Lawyer and Corporate Counsel Magazine “Top Rated Lawyer in Intellectual Property Law” (2013)
- Burton Award for Legal Achievement in Writing (2004)
In The Market
- Kaye Scholer Represents Lonza in Acquisition of InterHealth Nutraceuticals August 16, 2016 • Client Successes
- IAM Patent 1000 2016 Recognizes Kaye Scholer IP Practice and Leading Practitioners June 8, 2016 • Recognitions
- Who’s Who Legal 2016 Honors Kaye Scholer Lawyers February 2016 • Recognitions