Patent Interferences / Oppositions
Representative Patent Interference Proceedings
Representative Patent Opposition Proceedings
Marshall, Gerstein & Borun is experienced in the highly specialized area of patent interference proceedings. Our attorneys handle high stakes interferences involving important commercial products for companies around the world.
We represent our clients’ interests by establishing their entitlement to patent rights over the claims of a competing party or where appropriate, formulating a comprehensive strategy to challenge the patent rights of competitors. Our efforts are directed not only to maximizing our clients’ intellectual property position vis-à-vis their competitors, but also toward achieving results that might otherwise be possible only through much more expensive litigation.
When a client’s patent or patent application is brought into an interference, we assist in proving that our client was the first to invent the claimed subject matter and in attacking the competitors’ patent claims. However, in some cases, the best strategy may be to demonstrate that an interference was improperly declared because each party’s application is directed to a distinct invention. Under other circumstances, the preferred strategy may be to settle the dispute amicably.
Our involvement may begin long before an interference is declared, when a client first identifies a competing patent or application. Our efforts may include provoking an interference between the client’s application and that of a competitor, defining the subject matter of that interference broadly and aggressively challenging the patentability or validity of the competitor’s patent claims.
We achieve successful results because of our familiarity with the complex nuances of the rules and case law governing interferences, as well as our ability to master the technical complexity of our clients’ inventions. Equally important is our understanding that success in an interference often results from the ability to evaluate a client’s laboratory notebooks, records and other aspects of the proceeding as early as possible. With early preparation and planning, we can take steps to attempt to redefine the interference count or raise other issues that may determine a favorable outcome for our client.
Representative Patent Interference Proceedings
Adams (Monsanto Company)* v. Leemans
Genetically engineered cornpounds
Allen (NSC Technologies LLC)* v. Sato
Methods of synthesizing chemical compounds
Barry (Monsanto Company)* v. Burrell
Genetically modified potato plants
Barton v. Fishhoff (Monsanto Company)*
v. Adang
Insecticidal protein synthesis in transgenic plants
Birkenbach v. Godiska (ICOS Corporation)*
Transmembrane proteins
Boyle (Amgen Inc.)* v. Gorman
Osteoprotegrin
Chee v. Drmanac (Hyseq Pharmaceuticals, Inc.)*
DNA sequencing methods
Chen v. Hester (Pharmacia Corporation)*
Cyclopropataxol compounds
Chen v. Hester (Pharmacia Corporation)*
Fluorotaxol compounds
Eichholz (Amersham Biosciences Limited)*
v. Tyagi
Wavelength-shifting oligonucleotide probes
and primers
Fraley (Monsanto Company)* v. Comai
Plant gene promoters
Fraley (Monsanto Company)* v. Zambryski
Chimeric plant genes
Fraley (Monsanto Company)* v. Zambryski
v. Anderson
Plant transformation vectors
Fritsch v. Lin (Amgen Inc.)*
Recombinant erythropoietin
Godiska (ICOS Corporation)* v. Li
Chemokine
Hester (Pharmacia Corporation)* v. Bouchard
Cyclopropataxol compounds
Hooykaas v. Shewmaker (Monsanto Company)*
Transgenic monocots
Kellenberger v. Duenk (The Procter &
Gamble Company)*
Absorbent consumer products
Kishore (Monsanto Company)* v. Burrell
Starch synthesis in transgenic plants
Malec v. Daniel (ACNielsen Corporation)*
Automatic electronic data collection, storage
and reporting
Masinovsky (ICOS Corporation)* v. Newman
v. Rice
VCAM-1 antibodies
Mattingly v. Van Tilburg (The Procter &
Gamble Company)*
Absorbent consumer products
McDonald v. Miyazaki (Kirin Brewery Co.)*
Thrombopoietin
Monaco (Keystone Engineering Inc.)* v. Kalina
Railcar cushioning devices
Schilperoort v. Rogers (Monsanto Company)*
v. Barton v. Zambryski
Transgenic plants
Scott v. Elsbach (New York University)*
Bactericidal proteins
Souza (Amgen Inc.)* v. Ono v. Welte
Recombinant colony stimulating factor
Stalker v. Kishore (Monsanto Company)*
Starch synthesis in transgenic plants
Steitz* v. Bentley
Manual ammunition cartridge loading devices
Stevens (Newell Rubbermaid Inc.)* v. Tamai
Correction tape dispensers
Sytkowski v. Egrie (Amgen Inc.)*
Monoclonal antibodies
* Party represented
Representative Patent Opposition Proceedings
Opposition and Appeal on behalf of Amgen Inc.* re: Genentech
Boards of Appeal of the European Patent Office
Area(s) of practice: Biotechnology, Pharmaceuticals
Opposition re: Amgen Inc.*
Boards of Appeal of the European Patent Office
Case Type(s): Opposition
Area(s) of practice: Pharmaceuticals
Opposition and Appeal re: Amgen Inc.*
Boards of Appeal of the European Patent Office
Case Type(s): Opposition, Appeal
Area(s) of practice: Biotechnology
Opposition and Appeal re: Amgen Inc.*
Boards of Appeal of the European Patent Office
Case Type(s): Opposition, Appeal
Area(s) of practice: Pharmaceuticals
Opposition and Appeal re: Amgen Inc.*
Boards of Appeal of the European Patent Office
Case Type(s): Opposition, Appeal
Area(s) of practice: Biotechnology, Pharmaceuticals
Opposition re: Ciba-Geigy AG
Opposition Division of the European Patent Office
Case Type(s): Opposition
Area(s) of practice: Biotechnology
Opposition re: Chiron Corporation*
Boards of Appeal of the European Patent Office
Case Type(s): Opposition
Area(s) of practice: Biotechnology
Opposition and Appeal re: Genentech, Inc.*
Boards of Appeal of the European Patent Office
Case Type(s): Opposition, Appeal
Area(s) of practice: Pharmaceuticals
Opposition and Appeal re: Genetics Institute, Inc.*
Boards of Appeal of the European Patent Office
Case Type(s): Opposition, Appeal
Area(s) of practice: Pharmaceuticals
Opposition re: Genetics Institute, Inc.
Australian Patent Office
Case Type(s): Opposition
Area(s) of practice: Pharmaceuticals, Biotechnology
Opposition on behalf of ICOS Corporation* re: Protein Design Labs, Inc.
Boards of Appeal of the European Patent Office
Area(s) of practice: Biotechnology, Pharmaceuticals
Revocation Proceedings re: ICOS LLC* v. Pfizer Limited
U.K. High Court of Justice and Supreme Court of the Judicature Court of Appeal
Area(s) of practice: Pharmaceuticals
Opposition re: ICOS Corporation.*
Boards of Appeal of the European Patent Office
Case Type(s): Opposition
Area(s) of practice: Biotechnology
Opposition on behalf of Kirin Brewery Co. Ltd.* re: Genentech
Australian Patent Office
Area(s) of practice: Biotechnology, Pharmaceuticals
Opposition and Appeal re: Kirin-Amgen, Inc.*
Boards of Appeal of the European Patent Office
Case Type(s): Opposition, Appeal
Area(s) of practice: Pharmaceuticals
Opposition and Federal Court Appeal re: Kirin-Amgen, Inc.*
Australian Patent Office
Case Type(s): Opposition, Appeal
Area(s) of practice: Pharmaceuticals
Revocation Proceedings re: Kirin-Amgen, Inc.*
The Court of the Commissioner of Patents for the Republic of South Africa
Area(s) of practice: Pharmaceuticals
Opposition and Appeal re: Lawrence Industries Inc.*
Boards of Appeal of the European Patent Office
Case Type(s): Opposition, Appeal
Area(s) of practice: Chemistry/Chemical Engineering
Opposition on behalf of Ludwig Institute for Cancer Research* re: Genentech Inc.
Australian Patent Office; European Patent Office
Case Type: Opposition
Area of Practice: Biotechnology
Opposition on behalf of Ludwig Institute for Cancer Research* re: Human Genome Sciences Inc.
Australian Patent Office; European Patent Office
Case Type: Opposition
Area of Practice: Biotechnology
Opposition re: Ludwig Institute for Cancer Research* and Licentia Ltd.*
Australian Patent Office and European Patent Office
Case Type: Opposition
Area of Practice: Biotechnology
Opposition on behalf of Monsanto* re: Ciba-Geigy
European Patent Office
Case Type: Opposition
Area of Practice: Biotechnology
Opposition and Appeal re: New York University*
Boards of Appeal of the European Patent Office
Case Type(s): Opposition, Appeal
Area(s) of practice: Pharmaceuticals
Opposition and Appeal re: Pfizer Limited
Boards of Appeal of the European Patent Office
Case Type(s): Opposition, Appeal
Area(s) of practice: Pharmaceuticals
Opposition on behalf of XOMA Ltd.* re: Protein Design Labs, Inc.
Boards of Appeal of the European Patent Office
Area(s) of practice: Biotechnology, Pharmaceuticals
* Party represented
