Professionals

Mr. Borun is Of Counsel at Marshall, Gerstein & Borun, after having been a partner in the firm for many years. Consistent with the development of experience in chemical, pharmaceutical and biotechnology intellectual property right issues, he has frequently been requested to provide validity and infringement opinions and expert testimony, provide comprehensive state-of-the-art analyses of various life sciences, consult with and advise foreign counsel in foreign patent opposition and litigation proceedings, and consult with business development personnel concerning potential joint ventures and public offerings of stock.

Since joining the firm in 1969, Mr. Borun has represented clients in a wide variety of intellectual property matters, principally involving patent prosecution and litigation. He has extensive experience in domestic and foreign patent prosecution in biotechnology and chemical and pharmaceutical technologies, including appeals and interferences.

Biotechnology matters which have been the subject of his patent prosecution efforts include:

• Development and use of transgenic animals, gene synthesis
• Host/vector expression systems
• Gene therapy
• Recombinant production of procaryotic and eucaryotic gene products including hematopoietic factors, steroid and protein receptors, DNA binding proteins, neurotrophic factors, colony stimulating factors, cellular adhesion molecules, integrins, phosphodiesterases, bactericidal proteins, immunocontraceptive proteins, protein kinases and phosphatases, chemokines, ion channel proteins, signal transduction proteins, growth factors, and growth hormones
• Recombinant product fermentation and purification; protein sequencing
• Nucleic acid amplification methodologies
• Recombinant and affinity chromatographic production of viral proteins for diagnostic and vaccine uses
• Hybridoma technology including the production of monoclonal, humanized and anti-idiotype antibodies for diagnostic and therapeutic uses
• Binding protein, enzyme analog and small molecule screening methodologies
• Multi-gene pathways for selective microbial degradation of organic chemical substrates
• Selective microbial synthesis of amino acids; phytoremediation
• Recombinant HIV, HSV, HBV and other viral protein products and assay systems
• Genomics
• Phage display
• Pluripotent germ cells.

Mr. Borun was born in Milwaukee, Wisconsin, July 25, 1942. He was admitted to the Illinois bar in 1970 after receiving his J.D. from Loyola University in 1970. He received his B.S. in Biological Sciences from The University of Chicago in 1964.

REPRESENTATIVE MATTERS

Adams (Monsanto)* v. Leemans (Bayer CropSciences)
U.S. Patent and Trademark Office Board of Patent Appeals and Interferences
Case Type(s): Patent Interference
Area(s) of practice: Biotechnology

Amgen* v. Cetus
U.S. District Court, Northern District of California
Case Type(s): Patent Infringement
Area(s) of practice: Pharmaceuticals

Amgen* v. Chugai & Genetics Institute
U.S. District Court, District of Massachusetts
Case Type(s): Patent Infringement
Area(s) of practice: Pharmaceuticals

Amgen, Inc.* v. Hoechst Marion Roussel
U.S. District Court, District of Massachusetts
Case Type(s): Patent Infringement
Area(s) of practice: Pharmaceuticals

Armour* v. Swift
U.S. District Court, Northern District of Illinois
Case Type(s): Patent Infringement

Barton v. Fischhoff* (Monsanto) v. Adang (Mycogen Plant Science)
U.S. Patent Office Board of Patent Appeals and Interferences
Case Type(s): Patent Interference
Area(s) of practice: Biotechnology

Boyle* v. Gorman
U.S. Patent Office Board of Patent Appeals and Interferences
Case Type(s): Patent Interference
Area(s) of practice: Pharmaceuticals

Conflict re: Kirin-Amgen, Inc.*
Canadian Intellectual Property Office
Case Type(s): Conflict
Area(s) of practice: Pharmaceuticals

Elsbach (Monsanto)* v. Scott
U.S. Patent Office Board of Patent Appeals and Interferences
Case Type(s): Patent Interference, Appeal
Area(s) of practice: Pharmaceuticals, Biotechnology

Fraley (Monsanto)* v. Zambryski v. Anderson
U.S. Patent Office Board of Patent Appeals and Interferences
Case Type(s): Patent Interference
Area(s) of practice: Biotechnology

Fraley* v. Comai
U.S. Patent Office Board of Patent Appeals and Interference
Case Type(s): Patent Interference
Area(s) of practice: Biotechnology

Fraley* v. Zambryski
U.S. Patent Office Board of Patent Appeals and Interferences
Case Type(s): Patent Interference
Area(s) of practice: Biotechnology
Fritsch v. Lin*
U.S. Patent Office Board of Patent Appeals and Interferences
Case Type(s): Patent Interference
Area(s) of practice: Pharmaceuticals

Genentech v. Abbott Laboratories*
U.S. District Court, Northern District of California
Case Type(s): Patent Infringement
Area(s) of practice: Pharmaceuticals

General Tire & Rubber Company* v. The Firestone Tire & Rubber Company
U.S. District Court, Northern District of Ohio
Case Type(s): Patent Infringement
Area(s) of practice: Mechanical Arts

Godiska* v. Birkenbach
U.S. Patent Office Board of Patent Appeals and Interferences
Case Type(s): Patent Interference
Area(s) of practice: Biotechnology

Hooykaas v. Shewmaker (Monsanto)*
U.S. Patent Office Board of Patent Appeals and Interferences
Case Type(s): Patent Interference
Area(s) of practice: Biotechnology

Hybritech v. Abbott Laboratories*
U.S. District Court, Central District of California
Case Type(s): Patent Infringement
Area(s) of practice: Biotechnology

Hybritech v. Abbott Laboratories*
U.S. Court of Appeals, Federal Circuit
Case Type(s): Patent Infringement, Appeal
Area(s) of practice: Biotechnology

ICI v. Henkel*
U.S. District Court, Southern District of Delaware
Case Type(s): Patent Infringement
Area(s) of practice: Chemistry/Chemical Engineering

Kishore (Monsanto)* v. Burrell
U.S. Patent Office Board of Patent Appeals and Interferences
Case Type(s): Patent Interference
Area(s) of practice: Biotechnology

Koehring* v. Manitowoc
U.S. District Court, Eastern District of Wisconsin
Case Type(s): Patent Infringement
Area(s) of practice: Mechanical Arts

Koehring* v. TripleF
U.S. District Court, District of Iowa
Case Type(s): Patent Infringement
Area(s) of practice: Mechanical Arts

Li (Human Genome Sciences) v. Godiska (ICOS Corp.)*
U.S. Patent and Trademark Office Board of Patent Appeals and Interferences
Case Type(s): Patent Interference
Area(s) of practice: Pharmaceuticals
Masinovsky* v. Newman v. Rice
U.S. Patent Office Board of Patent Appeals and Interferences
Case Type(s): Patent Interference
Area(s) of practice: Biotechnology

Miller v. Peter Hand Brewery*
U.S. District Court, Eastern District of Wisconsin
Case Type(s): Trademark Infringement
Area(s) of practice: Trademarks

Novo Nordisk v. Pharmacia & Upjohn Co.*
U.S. District Court, District of New Jersey
Case Type(s): Patent Infringement
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: Pharmaceuticals

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 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 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 and Federal Court Appeal re: Kirin-Amgen, Inc.*
Australian Patent Office
Case Type(s): Opposition, Appeal
Area(s) of practice: Pharmaceuticals

Opposition re: Amgen Inc.*
Boards of Appeal of the European Patent Office
Case Type(s): Opposition
Area(s) of practice: Pharmaceuticals

Opposition re: Amgen Inc.*
Boards of Appeal of the European Patent Office
Case Type(s): Opposition
Area(s) of practice: Pharmaceuticals

Opposition re: Chiron Corporation*
Boards of Appeal of the European Patent Office
Case Type(s): Opposition
Area(s) of practice: Biotechnology

Opposition re: Ciba-Geigy AG
Opposition Division of the European Patent Office
Case Type(s): Opposition
Area(s) of practice: Biotechnology

Opposition re: Genetics Institute, Inc.
Australian Patent Office
Case Type(s): Opposition
Area(s) of practice: Pharmaceuticals, Biotechnology

Revocation Proceedings re: Kirin-Amgen, Inc.*
The Court of the Commissioner of Patents for the Republic of South Africa
Area(s) of practice: Pharmaceuticals

Revocation Proceedings re: Lilly 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

Schilperoort v. Rogers (Monsanto)* v. Barton v. Zambryski
U.S. Patent Office Board of Patent Appeals and Interferences
Case Type(s): Patent Interference
Area(s) of practice: Biotechnology

Souza* v. Ono v. Welte
U.S. Patent Office Board of Patent Appeals and Interferences
Case Type(s): Patent Interference
Area(s) of practice: Biotechnology

Stalker v. Kishore (Monsanto)*
U.S. Patent Office Board of Patent Appeals and Interferences
Case Type(s): Patent Interference
Area(s) of practice: Biotechnology

Sytkowski v. Egrie*
U.S. Patent Office Board of Patent Appeals and Interferences
Case Type(s): Patent Interference
Area(s) of practice: Biotechnology

Westwood v. Dow Corning*
U.S. District Court, Eastern District of Michigan
Case Type(s): Patent Infringement
Area(s) of practice: Chemistry/Chemical Engineering

*Party Represented