Representative Matters
Below are some of the cases Sandip has handled with colleagues at the firm and, occasionally, with co-counsel at other firms. The represented party is denoted with an asterisk.
In one of the first biotech inter partes reviews, AbbVie petitioned the Patent Office to review antibody formulations of its Humira® drug product that included a combination of formulation ingredients that Genentech had taught years earlier. The Patent Office, however, refused to perform the petitioned review. The challenge over these and other patents was resolved through settlement of parallel litigation that our team handled for Amgen. The cases were styled as Amgen Inc.* v. AbbVie Inc.
Represented Amgen in its enforcement and validity defense of several patents on its foundational erythropoietin drug patent estate covering Epogen®, the recombinant form of human erythropoietin that stimulates the production of red blood cells. Our team successfully persuaded a Boston federal court that the defendants’ erythropoietin drug infringed claims in Amgen’s patents and successfully defended these claims against validity challenges. The decision was affirmed on appeal and prevented the defendants from entering the market. The cases were styled as Amgen Inc.* v. Hoechst Marion Roussel et al.
Represented Amgen in its enforcement and validity defense of several patents on its foundational erythropoietin drug patent estate covering Epogen®. Our team successfully persuaded the Boston federal court that Roche’s pegylated version of the drug infringed claims in several Amgen patents. The decision was affirmed-in-part on appeal, and the case concluded in a favorable settlement shortly thereafter. The cases were styled as Amgen Inc.* v. F. Hoffmann-LaRoche LTD et al.
Successfully persuaded the Patent Office to not institute inter partes review of a P&G patent concerning medical imaging technology used to detect cancerous melanomas and other skin-related maladies. The case was Quantificare, Inc. v. The Procter & Gamble Company.*
Successfully represented P&G in a patent interference involving patents claiming an enzymatic method for reducing the amount of acrylamide in thermally processed foods (e.g., potato chips and coffee), and foods produced by that method. We demonstrated that P&G’s scientists conceived and thereafter diligently reduced to practice the method before scientists at Frito-Lay. The case was Zyzak (The Procter & Gamble Company*) v. Elder (Frito Lay North America Inc.).
Successfully represented P&G in the Federal Circuit, where it defended the propriety of Patent Office decisions that canceled its competitor’s sanitary napkin patents in interference proceedings. The case was Correa et al. (Johnson & Johnson) v. Roberts et al. (The Procter & Gamble Company).*
Prepared and prosecuted a patent for P&G that concerned a bio-based plastic water bottle, including those with a blue-colored tint. Coca-Cola later began using that technology to package its Dasani® bottled water product. We successfully defended this patent from Coca-Cola’s validity challenge in a since-antiquated inter partes reexamination proceeding and obtained additional commercially significant claims through that proceeding. The case was Coca-Cola Co. v. The Procter & Gamble Company.*
Successfully represented The Gillette Company in a patent interference concerning multiblade handheld razor products relating to the company’s MACH3® brand products. The proceeding concluded with the Patent Office canceling the opponent’s patent and awarding our client a patent on this technology. The case was Macove v. Luxton (The Gillette Company).*
Represented a Monsanto subsidiary in a patent interference concerning genetically engineered monocot plants (e.g., corn). We demonstrated that Monsanto scientists were the first to invent a method of transforming an ordinary corn plant into one that would resist herbicides and insects by permanently modifying the plant’s genome so that its progeny would similarly carry the genetic modification. The case was Adams (Monsanto)* v. Leemans (Bayer Crop Sciences).
Represented Monsanto in a lengthy and complicated multiparty patent interference concerning genetically engineered dicot plants (e.g., tomato). We demonstrated that Monsanto scientists were the first to conceive a method for introducing into plants genes encoding certain bacterial proteins that are selectively toxic to insects, so that plant cells produce the bacterial insect toxin and are protected from insects that feed on them. The case was Barton v. Fischhoff* (Monsanto) v. Adang (Mycogen Plant Science).
Represented the University of Michigan in defense of inventions claimed in its patent application, which a startup company alleged the university’s scientists derived from the startup’s founders. We succeeded in persuading the Patent Office that the allegations lacked merit and the startup failed to satisfy the statutory requirements to support its allegations. The case was Biocrede, Inc. v. Regents of the University of Michigan.*
In a lengthy and complicated multiparty interference, successfully represented Pharmacia & Upjohn Company scientists in their attempt to obtain a patent on a taxol variant useful as a cancer therapeutic and succeeded in canceling an overlapping patent the Patent Office improvidently granted to Bristol-Myers Squibb. The cases were styled as Chen (Bristol-Myers Squibb Co.) v. Hester (Pharmacia & Upjohn Co.)* v. Bouchard (Aventis Pharma S.A.).
Represented Newell Rubbermaid in its appeal of a Patent Office interference decision that awarded priority of invention to its competitor on a patent relating to electric typewriter correction-tape dispensers. On appeal, we persuaded the Federal Circuit to reverse the Patent Office’s decision and award judgment to Newell Rubbermaid. The case was Stevens (Newell Rubbermaid Inc.)* v. Tamai (Seed Rubber Company).
Successfully represented ACCO Brands in multiple patent interferences concerning paper shredders electromechanically designed to avoid paper jamming. We demonstrated to the Patent Office that engineers at ACCO Brands were the first to invent and first to make these shredders. The proceedings concluded with the Patent Office canceling the competitor’s patents. The cases were Aries (ACCO Brands Corporation) * v. Matlin (Fellows Brands Corporation).
Our client, a Canadian company, patented an enzymatic process for removing carbon dioxide from industrial gas streams with a biochemical fluidized bed reactor. We persuaded the Patent Office to maintain the patent’s commercially significant claims during an inter partes review. The case was Akermin, Inc. v. CO2 Solutions Inc.*
In a multiparty interference, we represented a Japanese company in an interference concerning compositions and methods for increasing platelet production involving functional fragments of thrombopoietin. We successfully persuaded the Patent Office to cancel the competitor’s licensor’s patent as one having been obtained through fraudulent behavior. The case was McDonald (University of Tennessee) v. Miyazaki (Kirin Brewery Company Ltd.).*
With European patent counsel, prepared, prosecuted, and later successfully defended validity of claims in European Patent Office proceedings concerning a patent directed to processes for purifying biological materials. The case was heard first by the Opposition Division and later by the Technical Board of Appeals at the European Patent Office. The patents were owned by Baxter International Inc.* and Baxter Healthcare S.A.*
With European patent counsel, successfully attacked the validity of claims the European Patent Office issued to our client’s competitor on vapor degreasing solvents used to clean sensitive electronic parts on, for example, jet engines powering Boeing and Airbus commercial aircraft. The case was heard first by the Opposition Division and later by the Technical Board of Appeals at the European Patent Office. The patent was owned by a Japanese company, Dipsol Chemical Co., Ltd.
As part of a coordinated litigation strategy involving parallel litigation, our team prepared, prosecuted, and later defended several patents in post grant review challenges. The patents claim processes for producing polyunsaturated fats (PUFAs) in transgenic plants, where, before this invention, such PUFAs were available predominantly only from fish. The matters were resolved via a favorable global settlement of these and other litigation. The cases were styled as Commonwealth Scientific and Industrial Research Organisation v. BASF Plant Science Company GmbH.*
Successfully represented BASF in a multi-patent interference regarding plant herbicide compositions. The case was Refsell (Valent USA Corp. and Sumitomo Chemical Co) v. Sievernich (BASF SE).*
Successfully represented Groupon in several post-grant review proceedings that led the Patent Office to cancel patent claims owned by a non-practicing entity that asserted in a Delaware federal court that Groupon infringed. Our team also successfully defended those decisions on appeals at the Federal Circuit. The case was Groupon, Inc. v. Kroy IP Holdings, LLC.
Represented a generic pharmaceutical company in ANDA litigation in a New Jersey federal court regarding cancer therapeutics (cisplatin). The matter was resolved via a favorable settlement. The case was Research Corp. Techs. and Bristol-Myers Squibb Co. v. Ben Venue Labs* et al.
Represented Keystone Industries in a patent interference concerning patents claiming train railcar shock absorbers. The matter was resolved via a favorable settlement. The case was Monaco (Keystone Industries)* v. Kalina (FM Industries).