Deborah Fishman focuses her practice on intellectual property, with a particular emphasis on biopharmaceutical and medical device patent litigation. She also handles antirust, trade secret and general commercial disputes. Ms. Fishman has litigated more than five US$1 billion-plus cases through trial and represents clients before the US Patent Trial and Appeal Board, the International Trade Commission in Section 337 proceedings, and on appeal.
Ms. Fishman serves as an Editor-In-Chief for BNA’s Patent Litigation Strategies Handbook, for which she authors chapters on Biotechnology Patent Litigation and Biosimilar Patent Litigation. She is also an active member of the Sedona Conference Working Group #10 on Patent Litigation Best Practices. As a leader in her field, Ms. Fishman has been recognized by Legal500 US (2016) in Intellectual Property – Patent Litigation, IAM Patent 1000 (2014-2016)and Managing IP (2014). In 2013, Law360 named her a Rising Star.
- Miotox as lead counsel to enforce the terms of a License Agreement related to the use of Botox® for migraine headaches and to defend patent counterclaims asserted by Allergan. Miotox LLC v. Allergan, Inc., C.D.Cal. (2014-present).
- Olympus America as lead counsel in defending a patent infringement action relating to bipolar surgical instruments in the Northern District of California, as well as in inter partes review proceedings before the Patent Trials and Appeals Board (“PTAB”) and before the Federal Circuit. Her team obtained early summary judgment of on-sale bar for one of the two patents-in-suit and cancelled claims of both patents through inter partes The PTAB’s final decisions are currently on appeal to the Federal Circuit. Perfect Surgical Techniques, Inv. v. Olympus America, Inc. et al., N.D.Cal., PTAB (2013-present).
- AAT Bioquest as lead counsel to enforce its calcium ion indicator patent against a competitor. Her team obtained early summary judgment of no invalidity and no inequitable conduct and entry of permanent injunction. Following a bench trial, AAT Bioquest was awarded trebled lost profits damages. AAT Bioquest v. TEFLabs Inc., N.D.Cal. (2014-present).
- Elan Pharmaceuticals as lead counsel in defending a patent infringement suit involving a genetic mutation related to early onset Alzheimer’s Disease. Ms. Fishman’s team was hired as replacement counsel in March 2011 and, in August 2012, obtained summary judgment in Elan’s favor and dismissal with prejudice against Alzheimer’s Institute of America based on its lack of standing to assert the patents-in-suit. Most recently, Ms. Fishman and her team obtained an exceptional case award of attorneys’ fees from the N.D. Cal. court. Alzheimer’s Institute of America v. Elan Pharmaceuticals Inc., N.D.Cal. (2011-present).
- Callidus as lead counsel in a patent infringement suit brought by Versata involving incentive compensationHer team challenged all of Versata’s asserted patents in five CBM proceedings before the PTAB and moved to stay district court proceedings. When the district court denied stay, her team successfully appealed to the Federal Circuit, which reversed the district court in a precedential opinion, identified by the Intellectual Property Owner’s Association as having a significant impact on patent law. At the same time, Callidus developed prior art defenses in the district court, and cross-asserted three patents. Ms. Fishman negotiated a global settlement and perpetual covenant not to sue. Versata v. Callidus Software Inc., D. Del., PTAB, Fed. Cir. (2012-2014).
- Callidus as lead counsel in enforcing its patents and asserting business tort and breach of contract claims against its competitor. The case settled on favorable terms. Callidus Software v. Xactly Corporation, N.D.Cal. (2012-2013).
- Callidus as lead counsel in defending a patent infringement suit related to generic methods of symmetric encryption in the Eastern District of Texas, as well as in parallel proceedings before the PTAB. The case settled with a walk-away settlement for Callidus. TQP v. Callidus, E.D.Tex., PTAB (2013).
- Optovue as lead counsel in defending a patent infringement action relating to an ophthalmic imaging technique (optical coherence tomography) brought by a competitor against its core product line. Developed invalidity defense by nationalizing foreign inventor prior art, cross-asserted in-licensed patents, and prepared and filedex parte reexamination proceedings that resulted in the cancellation of all claims of an assignor estoppel patent asserted in the litigation. Negotiated settlement on terms very favorable to Optovue. Carl Zeiss Meditec Inc. v. Optovue, Inc., D. Del., D. Mass, USPTO (2010-2012).
- Fluxion Biosciences in defending a patent litigation in the Northern District of California and prosecuting three inter partespatent reexaminations and one ex parte patent reexamination before the U.S. Patent and Trademark Office on patents relating to microfluidics and high-throughput patch clamp technology. Cellectricon AB v. Fluxion Biosciences, N.D. Cal., USPTO (2010-2011).
- Amgen in enforcing its U.S. erythropoietin (EPO) patents against Roche first before the ITC and then in a patent litigation action before a jury. Took a lead role in preparing Amgen’s rebuttal validity case regarding obviousness and obviousness-type double patenting (“ODP”), including at a jury trial and in a bench hearing regarding ODP. The jury returned a verdict in Amgen’s favor on both infringement and validity for each of the asserted patents and the court entered final judgment and a permanent injunction in Amgen’s favor. Amgen Inc. v. F. Hoffman La-Roche Ltd., D. Mass, ITC, Fed. Cir. (2005-2008).
- Amgen in a contractual dispute with Johnson & Johnson regarding J&J’s demand to seek separate FDA licensure on Amgen’s recombinant EPO. Prepared and presented key contract witness at arbitration and assisted in the presentation and cross-examination of other witnesses at trial. Johnson & Johnson v. Amgen Inc. / Arbitration for Separate BLA (2004-2006).
- Amgen in enforcing its EPO patents against Hoechst Marion Roussel and TKT. Participated as a member of the trial team in a bench trial before the District Court of Massachusetts and assisted with appellate briefing. Amgen Inc. v. Hoechst Marion Roussel (Aventis) and Transkaryotic Therapies (TKT), D.Mass., Fed. Cir. (1999-2001; 2003).
In The Market
- Ten Kaye Scholer Practices Recognized, 29 Individuals Cited in Legal 500 US 2016 June 15, 2016 • Recognitions
- Kaye Scholer Secures Another PTAB Win for Olympus June 14, 2016 • Client Successes
- IAM Patent 1000 2016 Recognizes Kaye Scholer IP Practice and Leading Practitioners June 8, 2016 • Recognitions