Biotechnology & Pharmaceutical

Life-improving innovations in biotechnology and pharmaceuticals require intellectual property counsel with unique technical and legal expertise to protect the assets upon which companies are established and flourish. The Biopharma Group at Brinks includes attorneys and patent agents who counsel a diverse array of clients — from start-ups to prestigious academic institutions to global corporations — on the ever-evolving laws concerning intellectual property in the United States and worldwide. The fast pace of new discoveries and their commercial applications requires a law firm like Brinks that has a comprehensive grasp of the legal issues and the experience and industry expertise to understand the scientific and strategic implications of the discoveries.

Areas of Expertise

Litigation Counseling, Risk Analysis & Licensing Portfolio Management Patent Prosecution

Litigation

Innovation in life sciences comes only after expensive investments. The stakes are high. Investments must be protected—as aggressively as appropriate.

The Biopharma Group at Brinks is deeply versed in Biopharma technology and the applicable law. Our attorneys have significant litigation expertise in this area, including Hatch-Waxman litigation involving generic/brand pharmaceuticals.

We litigate Biopharma cases in a clear and compelling manner. Our attorneys have prevailed in high-profile cases in the courts, including appeals at the Federal Circuit. Please contact us for examples.

We also understand that any litigation should align with your business objectives and strategy, including the budget. We will implement those objectives and strategy during the litigation, while meeting the budget.

Put simply, no other firm presents the breadth and depth of scientific and legal expertise that the Biopharma Group at Brinks brings to the table.

A representative list of compounds that we have worked on is provided below.

Generic Product Branded Product
Bimatoprost Lumigan®
Budesonide Pulmicort® Repulse®
Caspofungin Cancidas®
Choline fenofibric acid TriLipix®
Cefdinir Omnicef®
Dextromethorphan/Quinidine Nuedexta®
Doxercalciferol Hectorol®
Duloxetine Cymbalta®
Enoxaparin sodium Lovenox®
Eptifibatide Integrilin®
Esomeprazole Nexium®
Galantamine Razadyne®
Gemcitabine Gemzar®
Levocetirizine Xyzal®
Methylphenidate patch Daytrana®
Montelukast Singulair®
Omeprazole Prilosec®
Pantoprazole Protonix®
Pregabalin Lyrica®
Repaglinide Prandin®
Repaglinide/metformin PrandiMet®
Ropivacaine Naropin®
Rosuvastatin Crestor®
Sevelamer Renagel®
Venlafaxine Effexor®
Zolpidem Ambien®

The Biopharma Group’s skilled litigators represent major biotechnology and pharmaceutical clients in the courts, including:

Contract All | Expand All

Hatch Waxman

Noven Pharmaceuticals, Inc. v. Watson Laboratories
(D.N.J. 2011). The firm represents the Watson defendants in litigating patents under the Hatch-Waxman Act relating to methylphenidate transdermal patches sold by Noven as Daytrana®.

Abbott Laboratories and Fournier Laboratories Ireland Ltd. v. Watson Laboratories
(D.N.J. 2010). The firm represents the Watson defendants in litigating patents under the Hatch-Waxman Act related to choline fenofibrate sold by Abbott as Trilipix®.

Aventis Pharma S.A. v. Sandoz Inc.
(C.D. Cal. 2006), aff ’d, Nos. 2008-1560, -1563, -1591 (Fed. Cir. 2009). Successfully represented Sandoz Inc. in a patent infringement suit initiated under the Hatch-Waxman Act. Litigation involved a generic form of enoxaparin.

Abbott Labs v. Sandoz Inc.
486 F. Supp. 2d 767 (N.D. Ill. 2007). Successfully defended Sandoz Inc. against request for temporary restraining order and preliminary injunction by Abbott and Astellas before Judge Wayne R. Andersen concerning patents relating to a polymorph of crystalline cefdinir, an antibiotic also sold as Omnicef®.

Appellate

Abraxis Bioscience Inc. v. Navinta LLC
625 F.3d 1359 (Fed. Cir. 2010), reh’g denied (Mar. 14, 2011). Successfully represented appellant in an appeal from a judgment of infringement of three patents related to ropivacaine hydrochloride monohydrate sold by Abraxis and APP Pharmaceuticals as Naropin®. The Federal Circuit held that Abraxis did not have standing to bring suit and remanded with instructions to dismiss.

Boss v. Cabilly
(Fed. Cir. 2010) (Interference No. 105,531). Successfully represented client in an appeal of the decision by the U.S. Patent and Trademark Office Board of Patent Appeals and Interferences that Genentech’s “Cabilly” patent application (No. 08/422,187) has priority over UCB Pharma’s “Boss” patent application (No. 08/450,727) covering recombinant DNA techniques for manufacturing antibodies. The technology is now a foundation for many top-selling cancer-treatment drugs, such as Avastin®, Herceptin® and Rituxan®.

Abbott Labs v. Sandoz Inc.
566 F.3d 1282 (Fed. Cir. 2009) (en banc in part), cert. denied, No. 09-335 (2010). Successfully represented Sandoz Inc. in an appeal before the Federal Circuit dealing with claim construction and the proper interpretation of product-by-process claims. In a landmark decision, the Federal Circuit affirmed the district court’s claim construction, and the en banc Court resolved the long-standing conflict on the interpretation of product-by-process claims between its prior decisions in Atlantic Thermoplastics and Scripps Clinic. Following Supreme Court precedent, the Court upheld the rule in Atlantic Thermoplastics that product-by-process claims are limited by their process steps.

Chiron Corporation v. Genentech, Inc.
363 F.3d 1247 (Fed. Cir. 2004) cert. denied, 125 S.Ct. 870 (2005). The firm represented Genentech at the Federal Circuit in the appeal of a jury verdict that Chiron’s asserted patent is invalid and Genentech’s revolutionary breast cancer drug Herceptin® does not infringe. The Federal Circuit issued a precedential decision upholding the verdict.

Bio-Technology General Corp. v. Genentech, Inc.
267 F.3d 1325 (Fed. Cir. 2001). Brinks represented Genentech before the Federal Circuit and successfully obtained reversal of a finding of patent invalidity as well as a remand of Genentech’s patent infringement counterclaim.

Patent Infringement

Oxford Gene Technology Ltd v. Motorola, Inc.
(N.D. Ill. 2001-2002). A team of Brinks attorneys defended Motorola in a suit brought by Oxford Gene Technology alleging infringement of patents directed to DNA micoarrays.

 

Counseling, Risk Management

From proteomics to atomic force microscopy, innovations in biotech, nanotech and pharmaceuticals have amplified the need for intellectual property counsel who understand not only what drives the science of your business, but also what drives its success. In today’s high-tech world, strong intellectual property rights are essential to success. The diverse array of talents possessed by attorneys at Brinks enable our attorneys to counsel clients as varied as small start-ups, prestigious academic institutions, and global corporations on the ever-evolving body of law promoting and protecting innovation in the U.S. and throughout the world.

Patent Evaluations

The Biopharma Group evaluates patents for pharmaceutical and biotechnology companies, as well as for venture capitalists. These projects range from evaluating a single competitor’s patent to evaluating large portfolios of acquisition or investment targets, together with freedom to operate studies.

While details of patent evaluations are confidential, Biopharma Group attorneys have opined on patents for large and small pharmaceutical and biotechnology companies, as well as venture capitalists.

Portfolio Management

Licenses and Other Agreements

The Biopharma Group negotiates and drafts agreements for BioPharma clients, ranging from licensing a single patent to the formation of complex joint ventures. Technologies at issue have ranged from discovery platforms, to new chemical entities, and to diagnostic applications.

We have helped bring technology and business together by crafting licenses and other agreements in fields from drug discovery to carbon nanotubes.

Patent Prosecution

Before coming to Brinks, many of our attorneys and agents obtained advanced degrees in fields such as organic chemistry, biophysics, molecular biology, genetics , and pharmacology. Coupled with this world-class foundation in science, Brinks attorneys have world-class expertise in every area of IP law and practice. Brinks attorneys and agents have drafted and prosecuted patent applications regarding BioPharma inventions in the U.S. and internationally.

Post-grant Proceedings at the USPTO and Internationally

The Biopharma Group has significant experience in USPTO proceedings concerning BioPharma patents. We are especially experienced in post-grant proceedings at the USPTO, such as Inter Partes Review (IPR) of an issued patent. We work hard to protect our clients' patents from challenges initiated by third parties, and we aggressively challenge patents held by our clients’ competitors where appropriate.

Patent Examples

US 8,153,818

Triazolyl Phenyl Benzenesulfonamides

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PTO

US 8,137,661

Controlled release interferon drug products and treatment of HCV infections using same

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PTO

US 8,093,247

Heteroarylsulfonamides and CCR2

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PTO

US 8,067,466

Cycloalkyl-hydroxyl compounds and compositions for cholesterol management

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PTO

US 7,994,207

Process for preparing fluoromethyl- substituted heterocyclic compounds

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PTO

US 7,855,285

Methods for Selective N-9 Glycosylation of Purines

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PTO

US 7,811,814

Tetracycline-regulated adeno-associated viral (AAV) vectors for gene delivery to the nervous system

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PTO

US 7,776,842

Amino Sugar Chelates

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PTO

US 7,705,177

Ketone Compounds and Compositions for Cholesterol Management and Related Uses

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PTO

US 7,683,176

Triazolyl Pyridyl Benzenesulfonamides

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PTO

US 7,649,011

Inhibitors of Human Tumor-Expressed CCXCKR2

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PTO

US 7,470,771

Secreted and Transmembrane Polypeptides and Nucleic Acids Encoding the Same

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PTO

US 7,081,837

Nucleic Acids Encoding Secreted Polypeptides That Stimulate Release of Proteoglycans from Cartilage

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PTO

WO/2012/021788A2

Dipeptide Calpain Inhibitors

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PTO

WO/2012/015904A2

Biomarkers for Prostate Cancer and Methods Using the Same

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PTO

WO/2011/137181A1

Synthetic Oligosaccharides for Moracella Vaccine

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PTO

US 5,661,133

Expression of a protein in myocardium by injection of a gene

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PTO

US 4,670,444

7-amino-1-cyclopropyl-4-oxo-1, 4-dihydro-quinoline and napthyridine-3-carboxylic acids and antibacterial agents containing these compounds

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PTO