Steven E. Comer

Steven E. Comer

Partner

Tokyo, 81 3 3214 6522

Education

San Diego State University (B.S., 1986)
Vanderbilt University School of Law (J.D., 1991)

Bar Admissions

California
Japan (Gaikokuho-Jimu-Bengoshi)

Steve Comer is a partner in the firm’s Intellectual Property Group. His practice focuses on assisting global companies with litigation in Japan and representing Japanese companies in litigation in the United States. He assists pharmaceutical, software, and electronics companies with disputes in the Tokyo District Court, the IP High Court and the Japan Patent Office, and district courts and the Federal Circuit Court of Appeals in the United States.

Mr. Comer’s recent cases include winning a jury trial for the world’s largest maker of DNA sequencing systems and winning a case in the trial court and on appeal for a maker of advanced homocysteine assays.

Mr. Comer has also represented a number of insurance companies in coverage disputes.

Mr. Comer is ranked as a Leading Lawyer in the 2017 edition of The Legal 500 Asia Pacific for Intellectual Property. Clients describe Mr. Comer as “smart and skillful” in The Legal 500 US 2009 rankings. In 2008, The Legal 500 US also named him one of the “leading lawyers in patent litigation” who “can change a judge’s mind on scientifically complex issues in minutes.” He is also listed in the 2013 edition of Japan’s Best Lawyers for Intellectual Property.

Mr. Comer received his law degree from Vanderbilt University in 1991, where he was managing editor of the Vanderbilt Law Review. In 1989, Mr. Comer served as an extern to the Honorable J. Spencer Letts, United States District Judge for the Central District of California. Mr. Comer was admitted to practice in California in 1991. He is an instructor at the National Institute for Trial Advocacy. He is also a Gaikokuho Jimu Bengoshi in Japan and a member of Daini Tokyo Bar Association.

Smartphone Litigation
Member of team that successfully handled high-profile smartphone cases in Japan.
Pharmaceutical Development Dispute
Representation of an American pharmaceutical company in a dispute before the Japan Commercial Arbitration Association over development of a new drug.
General Atomics v. Axis-Shield ASA
(Northern District of California). Represented General Atomics (GA) and Carolina Liquid Chemistries in a declaratory relief case filed against Axis-Shield. Axis-Shield threatened to sue General Atomics, claiming that GA's new enzymatic homocysteine assay technology infringes four of Axis-Shield’s patents. To clear the negative market effect of the accusation, GA brought a declaratory relief action. The district court granted GA's motion for summary judgment of noninfringement. Axis-Shield then changed its infringement contentions, so GA brought a second motion for summary judgment of noninfringement as to the new theory, which was also granted. The Federal Circuit affirmed the rulings in all respects. A recording of the appellate argument is available at: http://oralarguments.cafc.uscourts.gov/ (enter caption “general atomics”; Steve's argument is for the respondent, starting at 14:00).
Competitive Technologies, Inc. v. General Atomics
(District of Colorado). Represented GA in the District of Colorado in a patent infringement suit brought by Competitive Technologies over GA's enzymatic homocysteine assay. Competitive Technologies’ patent was previously at issue in the U.S. Supreme Court in Laboratory Corp. of America Holdings v. Metabolite Laboratories, Inc. Succeeded in getting the U.S. PTO to agree to reexamine the patent and the district court to stay the case.
Abbott Laboratories v. Syntron Bioresearch
(Southern District of California). Represented Syntron Bioresearch against claims that its immunoassays infringed two Abbott patents. Before Morrison & Foerster was retained, the court had granted Abbott’s motion for summary judgment of infringement. Mr. Comer assisted in successfully persuading the court to reconsider its ruling and allow Syntron to proceed to trial. He then second-chaired a three-week jury trial, which resulted in a verdict of noninfringement on all claims.
Syntron Bioresearch v. Genix Biotek
(California Court of Appeals for the Fourth Appellate District). Represented Syntron Bioresearch in a trade secret and trademark case against its former employees accused of stealing monoclonal antibodies, hybridoma cell lines, and production processes used in manufacturing immunoassays. Mr. Comer and partner Craig Celniker led a two-and-a-half-month trial that resulted in a judgment of $12.5 million and a permanent injunction.
Watson v. H.J. Heinz
(Southern District of California). Represented Heinz in a case brought by an individual who claimed to have invented and patented the “trap cap” used on Heinz ketchup bottles. The case was dismissed.
Smartphone Litigation
Member of team that successfully handled high-profile smartphone cases in Japan.
Challenge to Validity of Japanese Patent on Hepatitis C Antigen
Representation of a major European pharmaceutical company in an IP High Court appeal and a separate invalidity trial in the Japan Patent Office regarding assays for detecting Hepatitis C.
Defense Against Infringement of Japanese Patent on Electronic Interface
Representation of a large American consumer electronics and software manufacturer and its Japanese subsidiary in a $150 million patent infringement action in Tokyo District Court in which the petitioner alleged that portable music players infringed its Japanese patent.
Oracle
Representation of Oracle in a proceeding brought by a patentee seeking an opinion from the Japan Patent Office that Oracle’s datagrid software infringes a Japanese patent. Obtained a finding of noninfringement.
Pharmaceutical Development Dispute
Representation of an American pharmaceutical company in a dispute before the Japan Commercial Arbitration Association over development of a new drug.
General Atomics v. Axis-Shield ASA
(Northern District of California). Represented General Atomics (GA) and Carolina Liquid Chemistries in a declaratory relief case filed against Axis-Shield. Axis-Shield threatened to sue General Atomics, claiming that GA's new enzymatic homocysteine assay technology infringes four of Axis-Shield’s patents. To clear the negative market effect of the accusation, GA brought a declaratory relief action. The district court granted GA's motion for summary judgment of noninfringement. Axis-Shield then changed its infringement contentions, so GA brought a second motion for summary judgment of noninfringement as to the new theory, which was also granted. The Federal Circuit affirmed the rulings in all respects. A recording of the appellate argument is available at: http://oralarguments.cafc.uscourts.gov/ (enter caption “general atomics”; Steve's argument is for the respondent, starting at 14:00).
Competitive Technologies, Inc. v. General Atomics
(District of Colorado). Represented GA in the District of Colorado in a patent infringement suit brought by Competitive Technologies over GA's enzymatic homocysteine assay. Competitive Technologies’ patent was previously at issue in the U.S. Supreme Court in Laboratory Corp. of America Holdings v. Metabolite Laboratories, Inc. Succeeded in getting the U.S. PTO to agree to reexamine the patent and the district court to stay the case.
Applera Corporation – Applied Biosystems Group v. Illumina and Solexa
(Northern District of California). Represented the world’s largest maker of DNA sequencing systems, Applied Biosystems (AB), against one of its biggest competitors, Illumina, seeking a declaratory judgment that AB’s newest DNA sequencing system did not infringe patents held by Illumina and that the patents were invalid. The patents involved biotechnology, electronics and software elements. AB prevailed on a key summary judgment ruling of noninfringement on one of the four asserted claims. During trial, eliminated one other claim as invalid, and another as not infringed. After a three-week trial, the jury agreed that AB’s probes did not infringe the remaining claim. All rulings were affirmed on appeal.
Inverness Medical Switzerland and Unipath Diagnostics v. Acon Laboratories
(District of Massachusetts). Represented Acon Laboratories and its customers in 16 patent infringement cases brought by Inverness in the U.S., the U.K., and Germany. Inverness alleged that Acon’s immunoassay test kits infringed nine U.S. patents and their European counterparts. Inverness won a preliminary injunction prohibiting Pfizer from selling its e.p.t product (the market leader), then filed a similar motion against Acon, but it lost that case. Over the course of two years, multiple phases of a trial, and an appeal, Inverness made numerous additional attempts to obtain an injunction, but it never succeeded in shutting down Acon’s operations. The cases were resolved when Inverness acquired Acon for approximately $200 million.
Abbott Laboratories and Wisconsin Alumni Research Foundation v. Sandoz Inc.
(District of Delaware). Represented Sandoz in a case brought by Abbott Laboratories and the Wisconsin Alumni Research Foundation (WARF) alleging that Sandoz’s abbreviated new drug application (ANDA) for a generic version of Zemplar (paricalcitol) infringed several patents.
Abbott Laboratories v. Syntron Bioresearch
(Southern District of California). Represented Syntron Bioresearch against claims that its immunoassays infringed two Abbott patents. Before Morrison & Foerster was retained, the court had granted Abbott’s motion for summary judgment of infringement. Mr. Comer assisted in successfully persuading the court to reconsider its ruling and allow Syntron to proceed to trial. He then second-chaired a three-week jury trial, which resulted in a verdict of noninfringement on all claims.
Syntron Bioresearch v. Genix Biotek
(California Court of Appeals for the Fourth Appellate District). Represented Syntron Bioresearch in a trade secret and trademark case against its former employees accused of stealing monoclonal antibodies, hybridoma cell lines, and production processes used in manufacturing immunoassays. Mr. Comer and partner Craig Celniker led a two-and-a-half-month trial that resulted in a judgment of $12.5 million and a permanent injunction.
Beckman Coulter v. The Trudeau Institute
Represented Beckman in successfully persuading Trudeau to cease selling MHC tetramers covered by Beckman’s patents.
Goglanian Bakeries v. H.J. Heinz
(California State Court, Orange County) Represented Heinz in a case alleging that it misappropriated trade secrets relating to the machinery for making its Weight Watchers Pizza. The case was settled on very favorable terms.
Watson v. H.J. Heinz
(Southern District of California). Represented Heinz in a case brought by an individual who claimed to have invented and patented the “trap cap” used on Heinz ketchup bottles. The case was dismissed.

Mr. Comer is ranked as a Leading Lawyer in the 2017 edition of The Legal 500 Asia Pacific for Intellectual Property. Clients describe Mr. Comer as “smart and skillful” in The Legal 500 US 2009 rankings. In 2008, The Legal 500 US also named him one of the “leading lawyers in patent litigation” who “can change a judge’s mind on scientifically complex issues in minutes.” He is also listed in the 2013 edition of Japan’s Best Lawyers for Intellectual Property.

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