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Pending Cases
- Abbott Diabetes Care Inc. v. DexCom Inc.
We are defending DexCom, Inc., a San Diego developer and manufacturer of a device for the continuous monitoring of glucose in people with diabetes, against charges of patent infringement the District of Delaware. The Court granted DexCom’s motion to stay litigation pending reexamination of all four asserted patents. The DexCom team’s patent prosecutors filed requests for reexamination of each asserted patent, all of which were granted. The team’s litigators persuaded the court to strike an amended complaint adding more patents, and then to stay litigation pending the outcome of the four reexaminations. - Chiron Corporation v. Laboratory Corporation of America Holdings et al.
We represent Chiron in a suit alleging patent infringement by the Laboratory Corporation of America and the National Genetics Institute. The Chiron patent relates to DNA-based diagnostic tests for HIV. Chiron’s complaint was filed in the Central District of California. The case has been stayed pending the resolution of two interferences in the PTO. - General Atomics et al. v. Competitive Technologies
We represent General Atomics in the District of Colorado in a patent infringement suit brought by Competitive Technologies, Inc., over General Atomics' homocysteine assay. The patent that Competitive Technologies is asserting was also before the United States Supreme Court in Laboratory Corp. of America Holdings v. Metabolite Laboratories, Inc. We succeeded in getting the U.S. Patent and Trademark Office to agree to reexamine the patent. The litigation is currently stayed. - Juvenon, Inc. v. Vitacost.com, Inc.
We represent Juvenon in its patent infringement lawsuit against Vitacost.com, Inc., claiming infringement of Juvenon’s patent covering a combination of micronutrient supplements marketed to sustain energy and support healthy cells. The complaint, filed in San Francisco Federal District Court, charges that Vitacost is infringing on Juvenon’s patent by selling over the Internet its proprietary technology, which Juvenon has exclusively licensed from the University of California and is protected by United States and international patents. - Stratagene v. Invitrogen Corporation
We represent Invitrogen Corporation in a patent infringement case pending in the District of Maryland involving a patent on polymerase blends for enhanced polymerase chain reaction (PCR). We successfully petitioned the Patent and Trademark Office to reexamine the asserted patent based on new prior art, and have moved the court to stay Stratagene’s lawsuit until the reexamination and a related case are completed. Based on the reexamination and related case, Stratagene stipulated to a stay of the case.
Resolved Cases
- Abbott Laboratories v. Syntron Bioresearch
We successfully represented Syntron Bioresearch in a patent suit brought by Abbott Laboratories alleging that Syntron’s test kits infringed on the ’484 and ’162 patents concerning lateral flow assays. We took over the defense of Syntron Bioresearch from another firm. At that time, the judge had already granted summary judgment of infringement. We immediately sought and won a motion for reconsideration vacating the infringement ruling. One year later, after a three-week trial, a jury returned a verdict of non-infringement as to the two patents asserted by Abbott. On appeal, the Federal Circuit affirmed all issues, except for the construction of a single claim term. The Patent Office also granted our request to reexamine the validity of the last remaining claims. Following remand to the District Court, Syntron reached a favorable settlement. - ACLARA BioSciences, Inc. v. Caliper Technologies Corporation
The firm represented ACLARA in the Northern District of California in multiple actions to protect ACLARA’s rights related to microfluidic devices for genetic analysis, drug screening, and clinical diagnostics. A global settlement came on the eve of trial in ACLARA’s suit against Caliper for infringing ACLARA’s patent, and after a jury trial in a related trade secrets case. - Agen Biomedical Limited v. Synbiotics Corporation
We represented Agen in two patent cases and a supply contract action against Synbiotics Corporation. Agen is an Australian company that manufactures canine heartworm detection kits. After terminating a contractual supply agreement with Synbiotics, Agen began selling its kits in the United States via a third party distributor. Synbiotics filed a lawsuit in the Southern District of California seeking declaratory judgment that Agen’s canine heartworm detection kits infringe Synbiotics’ patent. The case settled before trial after we successfully defended two separate preliminary injunction motions, thus allowing Agen to keep its products on the market, and after Agen successfully obtained a preliminary injunction against Synbiotics in the supply contract action. - Amylin Pharmaceuticals, Inc. v. The Regents of the University of Minnesota
We represented the Regents of the University of Minnesota in a suit by its licensee Amylin, alleging that the University’s patent on an amyloid polypeptide was invalid and did not cover Amylin’s pharmaceutical product. After several years of litigation, the case settled shortly after Morrison & Foerster entered. - Angeion Corporation v. Cardiac Pacemakers Inc.
We represented the start-up medical devices company Angeion in a suit against Cardiac Pacemakers, a leader in the cardiac rhythm management industry. The suit charged infringement of three Angeion patents covering various inventions relating to microprocessor-based implantable cardioverter defibrillators. The case was settled shortly before trial in the District of Minnesota in early 1999. We also represented Angeion in a patent infringement action recently filed by CPI in Minnesota. The case involved three defibrillator patents allegedly licensed to CPI. This case also settled. - Becton Dickinson v. OMRON Healthcare, Inc.
The firm represented OMRON Healthcare, Inc., an affiliate of OMRON Corporation of Japan, in a patent action filed in the District of Delaware. The complaint alleged that OMRON’s infrared ear thermometer infringed a patent licensed to Becton Dickinson. The court granted a motion to dismiss for lack of standing, and the case was refiled with an amended complaint adding additional plaintiffs. The case was subsequently settled to the satisfaction of OMRON. - Biosys v. University of Florida
We represented Biosys in a dispute with the University of Florida concerning a patent on nematode-based mole cricket pesticides. This case settled. - The Board of Trustees of the Leland Stanford Junior University v. Bayer HealthCare LLC.
We represented Stanford as a plaintiff in a patent infringement case in the Northern District of California. The case involved a method of evaluating the effectiveness of antiretroviral HIV therapy. The court issued a claim construction ruling in Stanford’s favor and the parties settled all claims. - Carnegie-Mellon University v. Chiron Corp.
We defended Chiron against accusations that it infringed two patents covering DNA polymerase in this action originally filed in the Western District of Pennsylvania. On Chiron’s motion, the matter was transferred to the Northern District of California. On April 16, 1999, the court held a hearing on Chiron’s and Hoffmann-La Roche’s summary judgment motions for non-infringement of one of the patents asserted by the plaintiff. The court granted defendants’ motions.
Thereafter, Hoffmann-La Roche filed a motion for summary judgment of invalidity of the second patent. The court granted that motion as well. The plaintiff filed a motion for reconsideration, asking the judge to reinterpret its patent more narrowly to avoid invalidity. The court denied that motion, finding that the plaintiff’s new construction was not supported by the claim language. - Chang v. Luciw
The firm successfully represented Chiron (now Novartis Vaccines and Diagnostics) in the successful conclusion of its long-running dispute with first the National Institute of Health and then Institut Pasteur over who was the first to invent an antibody-based diagnostic test for the AIDS virus, used by blood banks all over the world. After a favorable 2002 decision for our client by the Patent and Trademark Office, Institut Pasteur attempted to appeal the decision by filing an action in Federal District Court under 35 U.S.C. 146. Chiron prevailed in a trial to compel Pasteur to arbitrate whether the Institut could maintain its appeal, and then prevailed again in the arbitration of that issue. The arbitrator’s award was confirmed by the District Court. - Chiron Corp. v. Abbott Laboratories
We represented Chiron in two patent cases, one in the Northern District of Illinois and the other in the Northern District of California, against Abbott Laboratories. The cases involved DNA probes and technology used to screen blood supplies for HIV. These cases settled when Abbott agreed to take a license the evening before trial was scheduled to start. - Chiron Corp. v. Genentech, Inc.
The firm represented Chiron in patent litigation against Genentech in a case involving Herceptin, a Genentech monoclonal antibody product used to treat certain forms of breast cancer. Herceptin is one of Genentech’s largest selling products. - Chiron HCV Licensing
We represented Chiron Corporation in patent infringement suits filed in support of Chiron’s HCV protease patent licensing program against Gilead Sciences, Agouron, Vertex, and Eli Lilly. All of the cases settled. - Chiron Corp. v. Roche Molecular Systems
We represented Chiron Corporation in a patent infringement arbitration against Roche Molecular Systems, Inc. Chiron alleged that certain Roche HIV nucleic acid tests infringed Chiron’s patent, U.S. Patent No. 6,531,276, issued on March 11, 2003, and thus, fell within the parties’ license agreement. Roche, in turn, contested the validity and enforceability of the ’276 patent. After the arbitration hearing in June 2004 before a retired federal judge, Roche agreed to settle the matter stipulating to the validity and enforceability of the patent, allowing Chiron to retain all funds paid by Roche while the matter was in dispute, and paying Chiron an additional lump sum of $78 million. Total value of the settlement was approximately $100 million. - Chiron Corp. v. SmithKline Beecham
We represented Chiron in parallel actions against SmithKline Beecham in the ITC and District Court regarding Chiron’s patents on technology used to make Hepatitis B vaccine. These cases were resolved when SmithKline Beecham took a worldwide license to Chiron’s technology. - Classen v. Kaiser Permanente
We represented Kaiser Permanente in defending this infringement action involving vaccine technology in the District of Maryland. We were able to obtain a dismissal of the case on a Rule 11 motion. - Collagen Corp. v. Bioplasty Inc.
We represented Collagen in a patent infringement action involving a biochemical compound used for soft tissue augmentation through injection. This case settled. - Composite Rotor v. Beckman Coulter, Inc.
The firm represented Beckman Coulter in defense of a patent infringement action filed by Composite Rotor in the Northern District of California regarding a medical centrifuge patent. Beckman obtained summary judgment of non-infringement, which was affirmed by the Federal Circuit. - Coval v. Green Cross and Alpha Therapeutics
The firm represented Alpha Therapeutics in this case in the U.S. District Court in Washington involving a patent on intravenous gamma globulin purification. The case settled after jury selection and opening argument. Although the parties were far apart on settlement going into the trial, Coval accepted our client’s previously pending settlement offer after opening statements. - Diasonics v. Acuson
We represented Acuson as the defendant in a major patent case concerning ultrasound medical technology. After a several-week trial in the Northern District of California, the jury rendered an inconsistent verdict, and the case settled. - Electro-Medical Systems v. Cooper Life Sciences and Dentsply International
We represented Electro-Medical Systems of Switzerland in a patent infringement action in the Southern District of New York concerning dental equipment. We were engaged in this case at the post-trial motion stage. In an appeal to the Federal Circuit, we obtained a reversal of a judgment of willful infringement and an award of attorneys’ fees. We subsequently represented EMS in a malpractice claim against its prior law firm. That claim settled after a mediation. - Genentech Inc. v. Celltech Therapeutics
We represented Celltech in a District Court review of an interference proceeding on a patent relating to recombinant expression of humanized antibodies. The parties reached a settlement, which was approved by the District Court and the Patent Office. - Genentech Inc. v. Chiron Corp.
We represented Chiron in an action Genentech filed in the Northern District of California to review a ruling of the Patent and Trademark Office awarding Chiron a patent relating to IGF-I (Insulin-Like Growth Factor-I). Chiron prevailed in the Federal Circuit, confirming that Chiron was entitled to a patent on the disputed technology. - General Atomics, Diazyme Laboratories Division (“General Atomics”) v. Axis-Shield ASA
We represented General Atomics in an action filed in the Northern District of California against Axis-Shield ASA for declaratory judgment that General Atomics’ Diazyme Laboratories Divisions’ enzymatic homocysteine assay does not infringe certain patents held by Axis-Shield ASA, and that those patents are invalid and unenforceable. On Morrison & Foerster’s advice, General Atomics filed an early motion for summary judgment of noninfringement, which Judge Susan Illston granted, holding that General Atomics’ enzymatic assay does not infringe any claims in either of the two remaining patents in the case. - In re Bell
We represented Chiron in a successful appeal to the Federal Circuit from a final rejection by the Patent and Trademark Office of claims to DNA encoding Insulin-like Growth Factors I and II. - In re Deuel
We filed a brief amicus curiae in the Federal Circuit on behalf of the Bay Area Bioscience Center and BIO (the Biotechnology Industry Organization). The brief urged the result the court reached: reversal of the Patent and Trademark Office’s final rejection of claims to DNA encoding heparin binding growth factors. - Inverness Medical, et al. v. ACON Laboratories
We represented ACON Laboratories in two cases brought by Inverness, alleging that ACON’s test kits infringe a total of nine patents. Inverness won a preliminary injunction prohibiting another company, Pfizer, from selling its e.p.t product (the market leader). Inverness filed a similar motion against Acon, asserting the same patent it had used against Pfizer, but Inverness withdrew its motion after being informed of Acon’s arguments. Over the last two years, Inverness made repeated attempts to secure a preliminary injunction. Although the District Court issued a preliminary injunction in November of 2004, we obtained an immediate stay from the Federal Circuit. The dispute was fought in the U.S. and Europe for almost three years and settled when Inverness Medical Innovations agreed to acquire ACON’s rapid diagnostics business for $175 million. - Kaiser Permanente v. Biomedical Patent Management
We represented Kaiser in a suit against Biomedical Patent Management Corporation (“BPMC”) to invalidate a patent used to demand millions of dollars in royalties from providers of a common prenatal test for birth defects. BPMC gave Kaiser a covenant not to sue on the patent and dismissed its claims. - Lumenis Ltd., et al. v. Syneron Medical Ltd., et al.
We successfully defended Syneron Medical Ltd., an Israeli developer of dermatological and cosmetic medical devices, and its subsidiaries, Syneron Inc. and Syneron Canada Corp., in a patent infringement action relating to medical devices used for non-invasive treatment of vascular abnormalities and hair removal. The plaintiffs alleged infringement of six patents, seeking a temporary restraining order and preliminary injunction in the Central District of California. The District Court granted in part and denied in part Lumenis’s motion for a preliminary injunction. Lumenis subsequently appealed the decision to the Federal Circuit Court of Appeals, and Syneron then filed a notice of cross-appeal. Thereafter, a settlement was reached pursuant to which Syneron obtained a worldwide non-exclusive license to the patents at issue. - Lumenis Ltd., et al. v. Syneron Medical Ltd., et al.
We successfully defended Syneron Medical Ltd., an Israeli developer of dermatological and cosmetic medical devices, and its subsidiaries, Syneron Inc. and Syneron Canada Corp., in a patent infringement action relating to medical devices used for non-invasive treatment of vascular abnormalities and hair removal. The plaintiffs alleged infringement of six patents, seeking a temporary restraining order and preliminary injunction in the Central District of California. The District Court granted in part and denied in part Lumenis’s motion for a preliminary injunction. Lumenis subsequently appealed the decision to the Federal Circuit Court of Appeals, and Syneron then filed a notice of cross-appeal. Thereafter, a settlement was reached pursuant to which Syneron obtained a worldwide non-exclusive license to the patents at issue. - McKesson Information Solutions, Inc. v. Bridge Medical, Inc.
We represented Bridge Medical, Inc., in a patent infringement case filed against it in the Eastern District of California accusing Bridge’s software of infringing McKesson’s patent on a patient identification and verification system. The court held a bench trial on Bridge’s inequitable conduct affirmative defense in May 2006. The trial evidence included adverse testimony over several days from the attorney who prosecuted the patent, and competing expert testimony from two former Patent and Trademark Office examiners and two technical experts. The court determined that Bridge had proven by clear and convincing evidence that the patent was procured through fraud on the PTO. The court entered judgment that the patent is unenforceable, entered judgment for Bridge Medical in the entirety of the patent litigation, and closed the case. - MedImmune v. Celltech R&D Ltd.
The firm represented Celltech in this declaratory relief action seeking to invalidate patents on antibody humanization technology. This case settled on terms favorable to the client. - MedImmune Inc. v. Genentech Inc., City of Hope and Celltech R&D Ltd.
The firm represented Celltech R&D Ltd. in this patent litigation and antitrust dispute. The plaintiff challenged the legality of a settlement between Celltech and Genentech over priority rights to a patent that first issued in 1989 and covering fundamental technology for artificial synthesis of antibody molecules. The PTO decided an interference in favor of Celltech in 1998, but following the introduction of new evidence during review proceedings in the District Court the parties settled and priority was awarded to Genentech. After a new patent subsequently issued to Genentech, MedImmune complained that this created a “29 year patent” and filed suit. The district court granted summary judgment to Celltech and Genentech on all antitrust and unfair competition claims based on the Noerr-Pennington doctrine. In October 2005, the Federal Circuit affirmed the district court judgment in all respects, holding that MedImmune could not challenge the validity and enforceability of a patent while simultaneously licensing the patented technology. It also affirmed the rejection of MedImmune’s claim that the Genentech-Celltech settlement violated antitrust laws. In a published opinion authored by Judge Pauline Newman, the Federal Circuit wrote that upholding MedImmune’s claim would “discourage if not prevent settlements, placing unnecessary burdens on the courts.” - Medtronic v. Endoscopic Technologies
We represented Medtronic in a suit concerning beating-heart surgery patents filed in the Northern District of California. This case settled. - NeoRx v. Immunomedics
We represented NeoRx in this action in the District of New Jersey concerning patents on radioimmundiagnosis and therapy of cancer and other diseases. After our client prevailed on a motion for summary judgment, the case settled. - Nichols Institute Diagnostics v. Scantibodies Clinical Laboratory, Inc.
Following a month-long jury trial in Southern District of California, a nine-member jury returned a verdict in favor of our clients, Scantibodies Clinical Laboratory, Inc., and Scantibodies Laboratory, Inc. Scantibodies develops antibodies and immunoassays to detect parathyroid hormone (PTH) in human blood, which is crucial to diagnosis and treatment of, among others, kidney dialysis patients. Nichols, the largest producer of PTH test kits in the United States, sued Scantibodies for patent infringement premised on Nichols’s licensed rights to the ’790 patent. After deliberating for five days, the jury returned the verdict for Scantibodies before U.S. District Judge Rudi M. Brewster. The jury found that the ’790 patent asserted by Nichols was invalid on the grounds of failure to disclose the best mode, lack of written description and lack of enablement. The jury also found for Scantibodies on noninfringement of one of their two accused products. This verdict invalidates the ’790 patent and prevents Nichols from attempting to enforce the patent. On appeal following the District Court's ruling on post-trial motions, the Court of Appeals for the Federal Circuit held that the asserted patent is anticipated by prior art and therefore invalid. - QMed, Inc. v. Lifemasters Supported Selfcare, Inc.
We represented Lifemasters Supported Selfcare, Inc., in a patent infringement action in the District of New Jersey. The asserted patent involved a disease management system for remotely monitoring the symptoms of patients with certain disease states and developing a comprehensive management and prognosis report to assist doctors in the treatment of the patients. The parties reached a settlement, after we stopped the patent action by asserting an arbitration clause. - The Regents of the University of California v. Eli Lilly
We represented the Regents of the University of California in the appeal of an adverse outcome from a trial in which UC was represented by a different law firm. The case involved the manufacture of recombinant human insulin and also raised interesting 11th Amendment issues. The Federal Circuit affirmed the judgment in favor of Lilly but reversed a finding of inequitable conduct, thus saving the University approximately $19 million. - The Regents of the University of California v. Genentech Inc.
We represented the Regents of the University of California in a patent infringement suit against Genentech involving Genentech’s human growth hormone drugs, Protropin and Nutropin. After nine years of litigation and a six-week jury trial, the case settled for a payment of $200 million to the University. - The Regents of the University of California v. Kucharczyk
We represented the Regents of the University of California in a breach of contract and patent infringement and civil rights suit filed in the Northern District of California, against John Kucharczyk and Michael Mosley involving magnetic resonance imaging technology patents. The case settled after motions for summary judgment were decided in favor of the University of California. - The Regents of the University of California v. Monsanto Co.
On behalf of the University of California, we obtained a settlement, whose total value is expected to exceed $250 million, on the eve of an extended patent litigation trial against the Monsanto Company. Morrison Foerster assisted the University to prosecute its claims from the pre-trial investigation to the expected trial in March 2006. The University’s patent claimed fundamental recombinant DNA technology that made Monsanto’s multi-million dollar bovine growth hormone product, known as POSILAC, possible. It was the largest biotech patent settlement/judgment in 2006 according to Portfolio Media, New York (December 29, 2006). - Rohr v. McNulty
Successfully represented Johnson & Johnson affiliate DePuy Orthopaedics against Zimmer, Inc., in a patent interference relating to ultra high molecular weight polyethylene bearing materials for replacement knees and hips. After a decision of the PTO Board of Patent Appeals and Interferences in DePuy’s favor, all of Zimmer’s patent claims were canceled and DePuy Orthopaedics emerged with a patent covering its technology. - SRI International, Inc. v. Advanced Technology Laboratories, Inc.
We represented SRI in a claim against ATL for the use of a time-varied filter in an ultrasound application. The U.S. District Court entered summary judgment in favor of SRI on all liability issues, and its ruling was subsequently affirmed by the U.S. Court of Appeals for the Federal Circuit. The District Court awarded SRI almost $33 million in trebled damages, pre-judgment interest and attorneys’ fees. The Federal Circuit has recently affirmed the District Court’s award. - TAP Pharmaceutical Products, et al. v. Atrix Laboratories, Inc.
We were brought in to represent QLT USA (formerly known as Atrix Laboratories) in the damages phase of a patent infringement lawsuit brought in the Northern District of Illinois by TAP Pharmaceuticals, Takeda Pharmaceutical, and Wako Pure Chemical Industries. In an earlier phase of the proceeding, QLT and its co-defendant, Sanofi Aventis, were held liable for patent infringement through the manufacture and sale of a late-stage prostate cancer drug, Eligard, which competes with plaintiffs’ product, Lupron Depon. The worst-case damages award then sought by plaintiffs could have been crippling to the client. Morrison & Foerster achieved a reversal of fortune by arguing the Federal Circuit appeal of the district court’s claim construction, while simultaneously conducting fact and expert discovery in the damages phase of the district court proceedings. We kept pressure on the plaintiffs by also pursuing motions to dismiss one plaintiff for lack of standing and to dismiss plaintiffs’ lost profits claims. As a result, before receiving decisions on the appeal or the motions to dismiss, the parties reached a favorable licensing settlement that allowed QLT USA to continue marketing and selling Eligard. - Target Therapeutics v. SciMed and Cordis
We represented Target in litigation in the Northern District of California aimed at enforcing its patent for flexible microcatheters. We successfully obtained a preliminary injunction barring manufacture or sale of infringing catheters. Cordis and SciMed appealed the preliminary injunction, and the Federal Circuit stayed enforcement of the preliminary injunction pending the appeal. In the meantime, Cordis filed a separate action against Target on three different patents. This case settled. - Trimedyne v. Surgical Laser Technologies
We represented SLT in an action in the Central District of California alleging infringement of three patents for surgical lasers. Our client prevailed on motions for summary judgment disposing of all three patent infringement claims. The plaintiff appealed two of the rulings. The Federal Circuit affirmed one summary judgment and reversed and remanded the other to the District Court for litigation of the third patent. This case has since settled. - University of Rochester v. Pfizer, Inc.
We represented the University of Rochester Medical Center in a patent infringement lawsuit against Pfizer involving the drug, Celebrex. - Weisman v. OMRON Healthcare, Inc.
We defended OMRON against accusations that its blood pressure monitoring devices infringed three patents owned by the plaintiff. While discovery on all other issues was stayed, we recently tried OMRON’s affirmative defense of laches before Magistrate Judge Ashman in the Northern District of Illinois and prevailed on that defense. The case settled thereafter.
