In The News

With Eyes on Patent Venue Reform, What Should In-House Counsel Expect?

Corporate Counsel

21 Feb 2017

In this Corporate Counsel article, “With Eyes on Patent Venue Reform, What Should In-House Counsel Expect?”, David A. Manspeizer, partner in the New York office with more than 25 years of experience representing industry-leading, global pharmaceutical and biotechnology companies in complex patent litigation, was quoted.

Many eyes are on the TC Heartland case before the U.S. Supreme Court, which asks the high court to make a determination about which of two statutes should control venue in patent litigation. On top of that, Sen. Orrin Hatch, R-Utah, said Feb. 16 that regardless of what the Supreme Court decides, there will likely need to be "follow-on legislation to prevent future forum-shopping."

There are many powerful and legitimate interests on both sides of this issue, said David Manspeizer, a partner at Morrison & Foerster and a former in-house attorney at pharmaceutical company Wyeth. On one hand, a branded pharmaceutical company may have to litigate against many different generic companies related to a patent, he said, so having to potentially litigate in a number of jurisdictions is concerning. "But on the other hand, I certainly sympathize with companies that are subject to suits in the Eastern District of Texas where they have little or no connection to that jurisdiction."

Going forward, companies should not only be thinking about where a company would be subject to suit and what the courts are like there, but also about playing a role in Congress, Manspeizer said. "Talk to representatives and senators, make them understand how significant this issue is," he said. "I don't think you can sit back and just say, 'Well, we'll just deal with it after Congress decides.' That's probably not the right approach."



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