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Genentech: Our Winning Partnership to Counsel on and Defend Innovation

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Morrison Foerster is proud to be a long-standing partner to Genentech in protecting the company’s breakthrough and industry-shaping innovations.  

Morrison Foerster is proud to be a long-standing partner to Genentech in protecting the company’s breakthrough and industry-shaping innovations.  For more than 15 years, MoFo has provided strategic patent counseling and prosecution services for Genentech. Our team has helped develop the company’s strategy for its multibillion-dollar portfolios, including blockbuster cancer drugs Kadcyla, Perjeta, Gazyva, and Tecentriq. We have assisted Genentech in developing its patent portfolio related to innovations in the newer red-hot fields of bioinformatics, artificial intelligence, and machine learning.Our team has the requisite experience needed to protect and enforce business-critical patents on behalf of Genentech in past successful matters, which includes acting as counsel in over a half-dozen lawsuits brought against the foundational and groundbreaking Cabilly family of patents, Patent Trial and Appeal Board (PTAB) proceedings against Merck, biosimilar Herceptin litigation, and Hatch-Waxman litigation. We have also successfully defended Genentech’s breakthrough innovations against lawsuits by others, defeating, for example, claims against Kadcyla and obtaining an award of attorney fees.The Result?MoFo’s work on behalf of Genentech has been instrumental to protecting the company’s lifesaving medicines. We have built a powerful industry team that leverages our collective intelligence to assist Genentech in its pioneering work in the biotechnology and pharmaceutical sectors.<div data-reactroot=""><span class="rich-text-component-embed" data-component-info="{&quot;_version&quot;:1,&quot;locale&quot;:&quot;en-us&quot;,&quot;uid&quot;:&quot;bltc67135c80720a8cd&quot;,&quot;table_source&quot;:&quot;&lt;div style=&#x27;position: relative;width: auto;padding: 0 0 120%;height: 0;top: 0;left: 0;bottom: 0;right: 0;margin: 0;border: 0 none&#x27; id=\&quot;experience-64cd36d955b07\&quot; data-aspectRatio=\&quot;0.83333333\&quot;&gt;&lt;iframe allowfullscreen src=&#x27;https://view.ceros.com/mofo/ls-genentech-case-study-short-1&#x27; style=&#x27;position: absolute;top: 0;left: 0;bottom: 0;right: 0;margin: 0;padding: 0;border: 0 none;height: 1px;width: 1px;min-height: 100%;min-width: 100%&#x27; frameborder=&#x27;0&#x27; class=&#x27;ceros-experience&#x27; title=&#x27;LS Genentech Case Study&#x27; scrolling=&#x27;no&#x27;&gt;&lt;/iframe&gt;&lt;/div&gt;&quot;,&quot;title&quot;:&quot;Ceros LS Genentech Case Study&quot;,&quot;publish_details&quot;:{&quot;environment&quot;:&quot;bltf4674cd9142c5020&quot;,&quot;locale&quot;:&quot;en-us&quot;,&quot;time&quot;:&quot;2023-08-17T17:00:15.167Z&quot;,&quot;user&quot;:&quot;blt02c6960575474003&quot;,&quot;_trace&quot;:&quot;array_node;description;publish_details&quot;,&quot;_key&quot;:&quot;publish_details&quot;},&quot;_fetched&quot;:true,&quot;_content_type_uid&quot;:&quot;table_content&quot;,&quot;_trace&quot;:&quot;array_node;description&quot;,&quot;_key&quot;:&quot;key&quot;}" data-component-type="table_content" data-component-inline="false"></div>

Genentech: Our Winning Partnership to Counsel on and Defend Innovation

Daralyn Durie is among the top trial lawyers in the country, acting as go-to trial counsel for both plaintiffs and defendants. Daralyn’s exceptional track record has earned her consistent recognition from leading national publications. Chambers has listed her among the top 10 intellectual property lawyers in the U.S. and Law360 has recognized her as an “Icon of IP” and an MVP. Benchmark Litigation reported that “going against her was like going against a boxer in which you know you’re going to get hurt.” She’s a fellow in the American College of Trial Lawyers, a member of the American Board of Trial Advocates, and an inductee into the California Trial Lawyer Hall of Fame.Daralyn’s legal career began at Berkeley Law, followed by a clerkship for the Honorable Douglas Ginsburg on the U.S. Court of Appeals for the District of Columbia Circuit. She became a partner at a litigation boutique in 1999 and, in 2009, co-founded Durie Tangri, a premier litigation boutique that later combined with Morrison Foerster in 2023.In addition to her courtroom successes, Daralyn is actively involved in the legal community. She is a board member of the National Women’s Law Center, a past president of the Northern California Association of Business Trial Lawyers, and served as an adjunct professor at Berkeley Law, where she taught civil trial advocacy.Life SciencesDaralyn has decades of experience in the life sciences sector. She spearheaded the enforcement of Genentech’s Cabilly family of patents, which generated billions of dollars in licensing revenue. She served as lead counsel in the Herceptin biosimilar litigation and recently achieved a plaintiff-side jury verdict of $178 million in a patent infringement case involving melanoma therapy.TechnologyIn the tech sector, Daralyn recently won defense jury verdicts for Aptiv (USB hubs), Activision (in the Eastern District of Texas), and Redbubble. She served as lead counsel for Google, defending Google Books from copyright infringement claims. Following extensive litigation on copyright and antitrust issues, Google prevailed on summary judgment, resulting in Daralyn being named an Attorney of the Year by California Lawyer magazine.

Daralyn Durie

Partner

Intellectual versatility combined with incisive, pragmatic counseling and business acumen is the hallmark of Catherine’s practice.Catherine helps emerging and established companies through the challenging process of obtaining patents, and provides strategic, effective portfolio counseling and management, as well as strategic advice surrounding freedom of operation and other forms of IP assessment. She develops valuable, strategic portfolios around breakthrough therapies in a variety of areas including cancer, cancer immunotherapy, autoimmune diseases, inflammatory diseases, infectious diseases, cardiovascular diseases, metabolic disorders, and neurodegenerative diseases such as Alzheimer’s disease.She also has significant experience in a wide spectrum of technology areas, including biologics (such as antibodies, antibody-drug conjugates (ADC), and polypeptides), nucleic acids, precision medicine, diagnostics, cell therapy including T cell technologies, such as chimeric antigen receptors, drug formulation technologies, drug delivery technologies, such as nanotechnologies, microfluidics, drug screening systems, AI solutions for life sciences including discovery platforms, amplification technologies, genetic screening, sequencing technologies including next generation sequencing, regenerative medicine, nutraceuticals, spectroscopy, and organic chemistry, including small molecule drugs.Catherine’s unique background, ability to integrate IP with a given business model to translate into meaningful valuation, risk assessment and advice, and highly effective communication skills in critical settings such as R&D, all phases of product development, and investment contexts, enable her to provide effective, creative solutions to the significant challenges often faced by clients. Catherine is an acquisition and value enhancement driver as well, a critical conduit for companies as they grow from startup through IPO, exit, and beyond.IP Leadership for Transactions, Financings, and Acquisitions. Catherine’s practice also includes due diligence evaluation and counseling in the context of venture investment assessments and in connection with public and private financing, spin-offs, partnerships, and mergers and acquisitions, where her IP strategies have helped drive the value of multibillion dollar deals.Representative transactions resulting from Catherine’s leadership include:<ul><li>The $74 billion acquisition by Bristol Myers Squibb (BMS) of Celgene Corporation, the largest pharmaceutical-company acquisition ever to date.</li><li>Celgene Corporation’s $9 billion acquisition of client Juno Therapeutics and earlier $2.9 billion acquisition of client Abraxis BioScience.</li><li>The $2.6 billion acquisition of Nestle Health Science of client Aimmune Therapeutics.</li><li>The up to $1.1 billion development collaboration with Bristol Myers Squibb on behalf of Volastra Therapeutics, which was recognized as one of the most promising early-stage biotechnology companies in the industry by Fierce Biotech’s 2022 Fierce 15, to discover, develop, and commercialize new oncology medicines.</li><li>Dewpoint Therapeutics’ $239 million collaboration with Pfizer for the development of new treatments for a rare kind of muscular dystrophy, the $305 million collaboration with Merck on a novel approach for the treatment of HIV, and the up to $100 million partnership with Bayer to research new treatments for cardiovascular and gynecological diseases.</li><li>SQZ Biotechnologies’ $125 million partnership with Roche to work on antigen-presenting cells designed to trigger killer T cell attacks against tumors.</li><li>Frontier Medicines’ $55 million collaboration with AbbVie to develop molecules against hard-to-drug targets.</li><li>Myriad Genetics’ $375 million acquisition of Counsyl, Inc.</li><li>Turnstone Biologics’ acquisition of Myst Therapeutics.</li><li>The $14 billion acquisition by Pfizer of client Medivation, as well as the previous $225 million Pfizer investment in Medivation.</li></ul>Catherine was retained by BMS, Pfizer, Celgene, and Juno (following the acquisitions of both by BMS) for ongoing patent strategy and counseling work on the existing patent portfolios and with expanded representation of the parent companies following these acquisitions. Other representative transactions where her astute leadership has proved invaluable include:<ul><li>Johnson & Johnson’s acquisition of TARIS Biomedical, with a focus on transforming the treatment of bladder cancer.</li><li>Frontier Medicines’ Series A Preferred Stock financing of $67 million. </li><li>SQZ Biotech’s $65 million Series D financing.</li><li>Dewpoint Therapeutics’ $150 million Series C financing, $77 million Series B financing and $60 million Series A financing.</li><li>Lyndra Therapeutics’ $55 million Series B financing.</li><li>Alpine Immune Sciences’ $48 million Series A financing and subsequent $90 million merger with Nivalis Therapeutics, resulting in a publicly traded company.</li><li>Indapta Therapeutics’ $50 million Series A financing.</li><li>Cartography Biosciences' $57 million Series A financing.</li></ul>Strategist in Legal Challenges and a Key Member of Litigation Teams. In addition to helping create value and commercialize her clients’ technologies, Catherine devises strategies and defenses to fortify their patents in the event of legal challenges by competitors. Accordingly, she renders advice on all aspects of patent positioning, including opinions on patentability, validity, freedom of operation, infringement, and competitor IP evaluation. She also works in the area of third–party challenges, such as inter partes review (IPR) and oppositions.A Recognized Leader. Catherine formerly served as the chair of the firm’s Patent Prosecution & Counseling Group and co-chair of the firm’s Intellectual Property Group. Chambers USA noted that Catherine “maintains a strong reputation for her capabilities advising biotechnology clients on portfolio management and other IP matters,” while clients note that she is “a great strategic thinker, great at flagging the high–level questions and brings a good business perspective,” and praise her for “bring[ing] a good business perspective to IP efforts which is not always evident with other IP attorneys.” Catherine has also received many awards and accolades throughout her career, including the following:  <ul><li>Recommended as a leading lawyer by Legal 500 U.S. for 2012–2024</li><li>Recognized among World’s Leading Patent Practitioners by IAM Patent 1000 for 2014-2024</li><li>Recognized as a Best Lawyer in Biotechnology and Life Sciences by Best Lawyers for 2023 and 2024</li><li>Selected as one of the Top 100 Intellectual Property Lawyers in California by the Daily Journal for 2009–2022</li></ul>Catherine is patent counsel to numerous publicly traded and privately held companies, with many new client relationships resulting from her strong reputation in the life sciences industry. A selection of her representative matters include the following:<ul><li>Genentech, the world’s first and most successful biotechnology company, relies on Catherine’s strategic patent counseling and prosecution services for its most difficult and challenging patent matters. Her work involves developing overall patent strategy, patent application drafting, and prosecution for key technologies. Her high–value work for Genentech also includes strategic assessment of key and novel technologies, as well as inter partes review and patent litigation support and advisement.</li><li>Juno Therapeutics has continuously relied on Catherine for patent strategy and prosecution. Juno is one of the best–funded start–ups in biotechnology history. It went on to become a publicly traded company in 2014 and ultimately was acquired by Celgene in 2018 for $9 billion; the strength of the patent portfolio that Catherine crafted helped drive the valuation for the deal. She led the IP team on the acquisition.</li><li>Celgene calls on Catherine for its patent strategy, drafting, and IP due diligence matters. She worked with Abraxis BioScience for many years in a similar capacity to help develop their IP position for the highly successful cancer drug, Abraxane. Catherine then counseled the company through its $2.9 billion acquisition by Celgene Corporation, including providing significant IP strategy and due diligence counseling. This IP platform was a major component of the valuation of the company. She was subsequently engaged by Celgene following the acquisition.</li><li>Dewpoint Therapeutics hired Catherine to lead their patent strategy. Dewpoint is on the cutting edge with technology relating to condensate biology, a new and paradigm-shift area of drug development. Catherine led the IP strategy and due diligence for their partnership with Bayer to research new treatments for cardiovascular and gynecological diseases. The work that Dewpoint is doing is seen as a significant move forward in the biopharma industry and opens the door to many potential new discoveries in biology through biomolecular condensates. For example, in January 2021, Dewpoint teamed up with Pfizer to develop new treatments for a rare kind of muscular dystrophy. In July 2020, Dewpoint announced their collaboration with Merck to evaluate a novel approach for the treatment of HIV.</li><li>Some of Catherine’s additional representative clients include clinical–stage and start–up companies, such Dynavax Technologies, Cytokinetics, Alpine Immune Sciences, Aimmune Therapeutics, 10x Genomics, Sonoma Biotherapeutics, CohBar, Sangamo Therapeutics, Seagen (formerly Seattle Genetics), Frontier Medicines, Maze Therapeutics, Myst Therapeutics, Sana Biotechnology, Sirenas, and Volastra Therapeutics and Boston–based SQZ Biotechnologies, Lyndra Therapeutics, Dewpoint Therapeutics, TARIS Biomedical, and Cartography Biosciences.</li></ul>

Catherine Polizzi

Life Sciences + Healthcare