Pursuant to the Board’s June 18, 2016 Notice of Filing Date (Paper 3) and
37 C.F.R. §§ 42.10(c) and 42.22, Patent Owner Voip-Pal.com, Inc. (“Voip-Pal”)
hereby moves for an Order allowing William R. Zimmerman of Knobbe, Martens,
Olson & Bear, LLP to appear pro hac vice on behalf of Voip-Pal in the abovecaptioned
case. Patent Owner Voip-Pal has conferred with Petitioner Apple, Inc.
(“Apple”), and Apple does not oppose Voip-Pal’s motion to allow Mr. Zimmerman
to appear pro hac vice in this matter.
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A highly qualified lawyer in my opinion.....seems like VPLM is planning ahead to prepare in the event that there is a Federal Appeal....
WILLIAM R. ZIMMERMAN:
William R. Zimmerman is recognized nationally for his trial and appellate work. He represents clients in all aspects of intellectual property disputes, focusing primarily on patent cases at both the district court and appellate levels.
Mr. Zimmerman has worked extensively in the pharmaceutical and biosimilars areas. He is well-versed in the Abbreviated New Drug Application process and the complexities of litigation involving pharmaceuticals under the Hatch-Waxman Act. He has served as lead counsel in over 100 pharmaceutical litigations, and has represented companies on some of the largest-selling drugs of all time. He also has experience in obtaining and licensing pharmaceutical-related intellectual property.
Mr. Zimmerman has been widely recognized for his expertise in pharmaceutical matters, being named the “Hatch-Waxman Litigator of the Year – Generic” in the 2016 LMG Life Science Awards and repeatedly named one of “The World’s Leading Patent Professionals” by IAM. In 2008, Mr. Zimmerman was named one of the top fifty intellectual property lawyers under the age of forty by IP Law & Business magazine.
Before joining the firm in 1998, Mr. Zimmerman served as a law clerk to the Honorable Alvin A. Schall, Circuit Judge of the United States Court of Appeals for the Federal Circuit.
Mr. Zimmerman was a summer associate with the firm in 1996, before joining the firm in 1998. He became a partner in 2003.
Clerk Experience
Law clerk to the Honorable Alvin A. Schall, Circuit Judge of the U.S. Court of Appeals for the Federal Circuit, 1997-1998
Education
Harvard Law School (J.D. 1997), cum laude, Member - Harvard Journal of Law & Technology, Member - Harvard Environmental Law Review
University of Notre Dame (B.S. Chemical Engineering 1994), summa cum laude, Tau Beta Pi - Engineering Honor Society
PRACTICE AREAS
IP Strategy
Opinions and Counseling
Litigation
Appellate Practice and the Federal Circuit
Complex/Joint Defense Litigation
Hatch-Waxman Litigation
Medical Device Litigation
Nationwide Litigation
Trials
USPTO Trials and Post-Grant Proceedings
Inter Partes Review
INDUSTRY EXPERIENCE
Biosimilars
Biotechnology
Chemical
Medical Devices & Procedures
Pharmaceuticals
AWARDS & HONORS
Bill has received multiple awards and has been honored in both national and international forums for his legal accomplishments:
Recognized as a "Washington D.C. Super Lawyer" by Super Lawyers magazine for his intellectual property litigation practice (2015-2017)
Named in Who's Who Legal's 2017 edition of the international "Who's Who Legal: Patents" list
Selected as a "Life Science Star" by Legal Media Group (LMG) Life Sciences (2012-2016). He was noted as an outstanding attorney for high-stakes pharmaceutical litigation. He was further recognized for his work in biologics, biosimilars, combination products, allergenics, antibiotics, vaccines, and dental devices. He was also noted for helping client Ranbaxy receive a favorable decision, allowing the company to market a generic version of Lipitor, the world’s best-selling drug. In 2016, he was recognized for his work in cardiovascular drugs, drug formulations, and transdermals.
Named "Hatch-Waxman Litigator of the Year - Generic" in the 2016 LMG Life Sciences Awards by Legal Media Group (LMG)
Named one of "The World's Leading Patent Professionals" for litigation in the Patent 1000 guide by Intellectual Asset Management (IAM) magazine (2013-2016)
Recognized for his outstanding intellectual property legal work in Managing Intellectual Property "IP Stars" Guide (2014-2016)
Named in the Intellectual Asset Management (IAM) Life Sciences 250 – The World’s Leading Life Sciences Patent Litigators (2010)
Named one of the top 50 intellectual property lawyers under the age of 40 by IP Law & Business magazine (2008)
Representative Matters
iCeutica Pty Ltd. and Iroko Pharmaceuticals, LLC v. Lupin Ltd. and Lupin Pharmaceuticals, Inc., Case No. 14-cv-01515 (2017). Represented the Lupin defendants in a patent infringement action in the District of Delaware on patents relating to diclofenac acid (the active ingredient in Iroko’s Zorvolex® product). Achieved favorable case-dispositive settlement for client.
Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359 (Fed. Cir. 2016) and Case IPR2013-00517 (2015). Represented Illumina and obtained final IPR written decision and affirmance of IPR final written decision upholding the validity of all challenged claims from a patent directed to DNA sequencing-by-synthesis.
Ariosa Diagnostics, Inc. v. Illumina, Inc., Case IPR2014-01093 (2016). Represented Illumina in an IPR proceeding defending a patent directed to noninvasive prenatal screening methods. Obtained final written decision upholding the validity of all challenged claims.
Gilead Sciences, Inc. et al. v. Lupin Pharmaceuticals, Inc. et al., Case Nos. 15-cv-01956 and 15-cv-02793 (2016). Represented the Lupin defendants in a patent infringement action in the District of Maryland on a patent relating to olseltamivir (the active ingredient in Gilead’s Tamiflu® products). Achieved favorable case-dispositive settlement for client.
Forest Laboratories Holdings Ltd., et al v. Apotex Corp., et al., Case Nos. 13-cv-01602 and 13-cv-01604 (2016). Represented the Lupin defendants in a patent infringement action in the District of Delaware on patents relating to milnacipran hydrochloride (the active ingredient in Forest Laboratories’ Savella® product). Achieved favorable case-dispositive settlement for client following a full bench trial.
Merck Sharp & Dohme Corp. v. Xellia Pharmaceuticals, ApS et al., Appeal No. 2015-1905 (2016). Represented the Xellia defendants on appeal in a patent infringement action relating to caspofungin diacetate (the active ingredient in Merck’s Cancidas® products). Achieved favorable case-dispositive settlement for client.
Jazz Pharmaceuticals, Inc., et al. v. Amneal Pharmaceuticals, LLC et al., Case Nos. 13-cv-00391 and 15-cv-08229 (2016). Represented the Ranbaxy defendants in a patent infringement action in the District of New Jersey on patents relating to sodium oxybate (the active ingredient in Jazz’s Xyrem® product) and patents relating to the REMS system for the product. Achieved favorable case-dispositive settlement for client.
Teijin Ltd., et al. v. Lupin Ltd., et al., Case No. 14-cv-00184 (2016). Represented the Lupin defendants in a patent infringement action in the District of Delaware on a patent relating to febuxostat (the active ingredient in Takeda’s Uloric® product). Achieved a favorable case-dispositive settlement for client.
Roche Molecular Systems Inc. v. Illumina, Inc., Case IPR2015-01091 (2015). Defended Illumina against a petition for IPR regarding a patent for noninvasive prenatal screening methods. Obtained decision denying petition and rejecting all challenges raised against Illumina’s claims.
Eisai Co., Ltd., et al. v. Lupin Ltd., et al., Case Nos. 13-civ-1279 and 13-civ-1281 (2015). Represented the Lupin defendants in a patent infringement action in the District of Delaware on patents relating to rufinamide (the active ingredient in Eisai’s Banzel® product). Achieved favorable case-dispositive settlement for client.
Endo Pharmaceuticals Inc. v. Ranbaxy Laboratories, Ltd., et al., Case No. 13-cv-4343. Currently representing the Ranbaxy defendants in patent infringement actions in the Southern District of New York and Delaware on patents relating to oxymorphone (the active ingredient in Endo’s Opana® ER product).
Mallinckrodt LLC v. Lupin Ltd. et al., Case No. 12-cv-01087 (2014). Represented the Lupin defendants in a patent infringement action in the District of Delaware on patents relating to diclofenac sodium (the active ingredient in Nuvo’s Pennsaid® product). Achieved favorable case-dispositive settlement for client.
UCB, Inc., et al. v. Ranbaxy Laboratories, Ltd., et al., Case No. 13-cv-01215 (2014). Represented the Ranbaxy defendants in a patent infringement action in the District of Delaware on a patent relating to lacosamide (the active ingredient in UCB’s Vimpat® products). Achieved a favorable case-dispositive settlement for client.
Ranbaxy Labs, Ltd. and Ranbaxy v. Vertex Pharms., Inc., Case IPR2013-00024 (2013). Represented Ranbaxy in one of the first IPR proceedings challenging a patent relating to fosamprenavir (the active ingredient in ViiV's Lexiva® product). Achieved favorable case-dispositive settlement for client.
Purdue Pharma, L.P. et al. v. Ranbaxy Inc., et al., Case Nos. 10-civ-3734, 11-civ-2401 and 11-civ-7104 (2013). Represented the Ranbaxy defendants in a patent infringement action in the Southern District of New York on patents relating to oxycodone (the active ingredient in Purdue’s Oxycontin® product). Achieved favorable case-dispositive settlement for client.
GlaxoSmithKline v. Anchen Pharmaceuticals et al., Case No. 11-046 (RGA) (MPT) (2011). Represented the Anchen defendants in patent infringement action in the District of Delaware on a patent relating to pharmaceutical compositions of dutasteride (the active ingredient in GSK’s Avodart® product) and a combination of dutasteride and tamsulosin (the active ingredients in GSK's Jalyn® product). Achieved favorable case-dispositive settlement for client.
Lupin Atlantis Holdings S.A. v. Ranbaxy Labs. Ltd. et al., 2:11-cv-03851 (2011). Represented defendants in patent infringement action in the Southern District of New York on two patents relating to pharmaceutical compositions of fenofibrate (the active ingredient in Lupin’s Antara® product). Achieved favorable case-dispositive settlement for client.
Roche Palo Alto v. Ranbaxy Labs. Ltd., 2009 U.S. Dist. LEXIS 90804 (D.N.J. 2009). Represented defendants in patent infringement action in the District of New Jersey on a patent relating to valganciclovir (the active ingredient in Roche’s Valcyte® product). Obtained a successful judgment of noninfringement following trial.
Pfizer Inc. et al. v. Ranbaxy Labs. Ltd. et al., 1:08-cv-00164 (2008). Represented defendants in patent infringement action in the District of Delaware on two patents relating to methods of making atorvastatin (the active ingredient in Pfizer’s Lipitor® product). Achieved favorable case-dispositive settlement for client.
Pfizer Inc. et al. v. Ranbaxy Labs. Ltd. et al., 1:08-cv-00162 (2008). Represented defendants in patent infringement action in the District of Delaware on two patents relating to methods of making atorvastatin (one of the active ingredients in Pfizer’s Caduet® product). Achieved favorable case-dispositive settlement for client.
Pfizer Inc. et al. v. Ranbaxy Labs. Ltd. et al., 1:07-cv-00138 (2007). Represented defendants in patent infringement action on method patent relating to the use of atorvastatin calcium/amlodipine besylate (the active ingredients in Pfizer’s Caduet® product). Achieved favorable case-dispositive settlement for client.
Pfizer Inc. v. Ranbaxy Labs. Ltd., 457 F.3d 1284 (Fed. Cir. 2006). Represented defendant and invalidated one of the patents protecting atorvastatin (the active ingredient in Pfizer’s Lipitor®).
Astellas Pharma Inc. et al. v. Ranbaxy Labs. Ltd. et al., 3:05-cv-02563 (2005). Represented defendants in patent infringement action in the District of New Jersey on patent relating to tamsulosin (the active ingredient in Astellas’ Flomax® product). On appeal, the case settled prior to a decision by the Court of Appeals for the Federal Circuit.
AstraZeneca AB et al. v. Ranbaxy Labs. Ltd. et al., 3:05-cv-05553 (2005). Represented defendants in patent infringement action in the District of New Jersey concerning six patents related to esomeprazole magnesium (the active ingredient in AstraZeneca’s Nexium® product). Achieved favorable settlement for client.
Ranbaxy Labs. Ltd. v. Abbott Labs. et al., 1:04cv8078 (N.D. Ill.). Represented declaratory judgment plaintiff with respect to clarithromycin. In responding to a motion for preliminary injunction, showed a likelihood that two patents relating to extended release formulations of clarithromycin (the active ingredient in Abbott’s Biaxin XL®) were likely invalid for inequitable conduct.
Ranbaxy Pharms. Inc. v. Apotex, Inc., 350 F.3d 1235 (Fed. Cir. 2003). Represented declaratory judgment plaintiff and defeated both a motion for temporary restraining order and a motion for preliminary injunction in the district court. Sustained denial of the preliminary injunction on appeal, and on remand obtained summary judgment of noninfringement.
Smithkline Beecham Corp. v. Ranbaxy Labs. Ltd., 03-cv-2158 (D. N.J.). Represented defendant and obtained favorable settlement relating to valacyclovir (the active ingredient in Glaxo’s Valtrex®).
Glaxo Group Ltd. v. Ranbaxy Pharms. Inc., 262 F.3d 1333 (Fed. Cir. 2001). Represented defendant and obtained vacature of a preliminary injunction. On remand, the district court conducted a six-week bench trial and granted judgment that defendant did not infringe Glaxo’s patent relating to cefuroxime axetil (the active ingredient in Glaxo’s Ceftin®).
Gart v. Logitech, 254 F.3d 1334 (Fed. Cir. 2001), cert. denied, 122 S. Ct. 921 (2002). Represented plaintiff patent owner and obtained reversal of noninfringement ruling.
Talbert Fuel Sys. Patents Co. v. Unocal Corp. et al., 275 F.3d 1371 (Fed. Cir. 2002). Represented defendant and sustained summary judgment of patent noninfringement.
Geneva Pharms., Inc. et al. v. Glaxosmithkline, PLC, 213 F. Supp. 2d 597 (E.D. Va. 2002) and 189 F. Supp. 2d 377 (E.D. Va. 2002).
Articles, Speeches & Seminars
Craig Summers and William R. Zimmerman. Case law update: Recent IP cases that impact your business. IP Impact – Seattle 2012: Innovative Intellectual Property Litigation Strategies. Seattle, WA (February 29, 2012).
Carol Pitzel Cruz and William Zimmerman. In-Depth Review of Recent Decisions and Trends in Hatch-Waxman Litigation. 4th Annual Product and Pipeline Enhancement for Generics Conference: Navigating Regulatory Pathways and Patent Strategies to Ensure Market Sustainability. (July 27, 2011).
Stephen R. Auten, David M. Fox, William R. Zimmerman, and Charles E. Van Horne, Patent Certification/Litigation. Brands, Generics, and Hatch-Waxman: New Challenge; Unabated Controversy, Food and Drug Law Institute (June 24, 2011).
Christopher J. Kelly and William R. Zimmerman. The Master Class on Settling Paragraph IV Disputes: Drafting and Negotiating Strategies for Brand-Names and Generics – A Hands-On, Practical Approach. Paragraph IV Disputes Post-Conference Workshop (May 5, 2011).
William R. Zimmerman. Recent Court Decisions You Need to Know About. IP Impact – Research Triangle Park 2010: Innovative Intellectual Property Strategies for Emerging Technology Companies. Chapel Hill, NC (September 23, 2010).
William R. Zimmerman. 3rd Annual Product and Pipeline Enhancement for Generics Conference: Navigating Regulatory Pathways and Patent Strategies to Ensure Market Sustainability. (June 28-30, 2010).
William R. Zimmerman Recent Developments in Patent Law. IP Impact- Research Triangle 2009: Innovative Intellectual Property Strategies for Emerging Technology Companies. Chapel Hill, NC (September 29, 2009).
Kennth R. Adamo, Eric M. Albritton, Cynthia E. Kernick, Charles F. Schill, and William R. Zimmerman. Litigating in Popular Jurisdictions. BNA Legal and Business Edge: Using Today’s Patent Laws to Protect Tomorrow’s Technology – New Litigation Strategies (October 6, 2008).
William R. Zimmerman. Life Cycle Management Considerations. The Increasing Role of Antitrust Principles in Defining Patent Rights. IPO Conference (June 9, 2008)
Brian Way, Jeremiah Chan, William R. Zimmmeran, and Adeel Akhtar. Recent Supreme Court Cases (and Seagate). IP Impact Seminar 2007: Intellectual Property Law Gets Down to Business (October 11, 2007).
William R. Zimmerman, Complying with Standards for Expert Work Product, Law Seminars International (March 20, 2006).
William R. Zimmerman, Coordinating Worldwide Pharmaceutical Disputes, Henry Stewart Conference (September 28, 2005).
Don W. Martens and William R. Zimmerman, Recent Decisions In Patent Law, presented by Don W. Martens to the San Diego Intellectual Property Law Association (October 24, 2002), published at www.sdipla.org.
William R. Zimmerman and Nathan Engels, The Supreme Court Addresses Amendment-Based Prosecution History Estoppel, OCPLA Newsletter (June, 2002).
William R. Zimmerman, The Patent Year In Review, presented by William R. Zimmerman to the OCPLA/SDIPLA Spring Seminar (March 24, 2002).
Don W. Martens and William R. Zimmerman, Perspective Impact Of Recent Decisions Affecting Intellectual Property Litigation, presented by Don W. Martens to the CLE International Conference On Intellectual Property Issues In Biotechnology Law (March 14-15, 2002).
Don W. Martens and William R. Zimmerman, Recent Developments In Claim Interpretation And Other Patent Law Issues Relating To Biotechnology, A Presentation to Genentech (February 8, 2002).
Don W. Martens and William R. Zimmerman, The Recent Narrowing Of Literal Claim Scope And The Permissible Range Of Equivalents In The United States, Patent World (Nov. 2001, No. 137).
Don W. Martens and William R. Zimmerman, Recent Patent Decisions, presented by Don W. Martens to the 26th Annual IP Institute, IP Section of the State Bar of California (Nov. 16-17, 2001).
Don W. Martens and William R. Zimmerman, The Recent Narrowing Of Literal Claim Scope And The Permissible Range Of Equivalents, presented by Don W. Martens to the Joint Session AIPLA and the IP Entertainment Law Committee of the IBA Section on Business Law (Cancun, Mexico Nov. 2, 2001)
Don W. Martens and William R. Zimmerman, The Recent Narrowing Of Literal Claim Scope And The Permissible Range Of Equivalents, presented by Don W. Martens to the San Francisco Intellectual Property Law Association (September 19, 2001).
Don W. Martens and William R. Zimmerman, The Recent Narrowing Of Literal Claim Scope And The Permissible Range Of Equivalents, presented by Don W. Martens on behalf of the American Intellectual Property Law Association in Moscow, Russia (June 5-6, 2001).
Karen Vogel Weil and William R. Zimmerman, Recent Developments In Invalidity Under 35 U.S.C. § 112 At The United States Court Of Appeals For The Federal Circuit, American Intellectual Property Law Association 2001 Road Show -- Advanced Patent Litigation Seminar (presenter in Boston, MA June 1, 2001; Chicago, IL June 8, 2001; Los Angeles, CA June 22, 2001).
Karen Vogel Weil and William R. Zimmerman, Recent Developments In Invalidity Under 35 U.S.C. § 112 At The United States Court Of Appeals For The Federal Circuit, presented to the Orange County Patent Law Association (July 18, 2001).
Don W. Martens and William R. Zimmerman, Recent Patent Decisions, 25th Annual Intellectual Property Institute, The Intellectual Property Section of the State Bar of California (Nov. 10, 2000).
Don W. Martens and William R. Zimmerman, Recent Patent Decisions, USPTO Academy (July 18, 2000).
William R. Zimmerman, Unifying Markman and Warner-Jenkinson: A Revised Approach To The Doctrine Of Equivalents, 11 Harv. J. L. & Tech. 185 (1997).
