Below are the bio's on the MNTA/Sandoz Attorneys. They look decent.
Can someone give Robert Frank a call tomorrow to make sure he stays on top of the case? He needs to pull all-nighters until we win. His phone # can be found below. Thanks....
Robert S. Frank, Jr.
Partner
617-248-5207
rfrank@choate.com
Harvard Law School, LLB, 1967, cum laude
Bowdoin College, AB, 1964, cum laude, Phi Beta Kappa
“an outstanding lawyer - smart, analytical and aggressive where appropriate”
Chambers USA
Bob Frank is the former Managing Partner and Chairman of Choate as well as a former member of the firm's Executive Committee.
Mr. Frank is listed in Chambers USA, Best Lawyers in America, Massachusetts Super Lawyers Top 100 and PLC - Which Lawyer.
Practice Focus
Litigation: commercial, intellectual, antitrust and varied business disputes
Representative Trial Engagements
Lead counsel for Akamai Technologies in patent infringement case involving the delivery of Internet content. After a three week trial, the jury returned a verdict in favor of Akamai in the amount of more than $45 million. This was the largest verdict in Massachusetts and one of 50 verdicts in the United States.
Akamai Technologies v. Limelight Networks, D Mass
Lead counsel for Data General in copyright infringement/trade secret misappropriation/antitrust case. The case was tried to jury for nine weeks and resulted in a judgment for Data General in the amount of $52.4 million. The judgment was affirmed on appeal.
Data General Corporation v. Grumman Systems Support Corporation, D Mass
Represented Eastman Kodak in what was then the largest patent infringement case in history of the United States. He was responsible for Kodak’s successful defense against Polaroid’s claim that Kodak willfully infringed seven Polaroid patents. Kodak’s potential exposure with respect to this claim was $8 billion.
Polaroid Corporation v. Eastman Kodak Company, D Mass
Lead counsel in Massachusetts and Delaware actions alleging breach of fiduciary duty in connection with Cisco's acquisition of Starent Networks Corp.
Whitmeyer v. Cisco Systems, Mass Sup; Laborers Local 235 Benefit Funds v. Cisco Systems, Del Ch
Representative Appellate Engagements
(In Cases Tried by Others)
Represented affiliates of Hartford Insurance Group in appeal of case in which thirty-four British and continental European reinsurers alleged that they were induced by fraud to enter certain reinsurance treaties. The case presented a variety of insurance, contract and fraud issues. The reinsurers had prevailed at trial. Mr. Frank obtained a reversal of the trial court’s decision. $106 million was at issue.
Compagnie de Reassurance D’lle de France v. New England Reinsurance Company, First Circuit
Represented Clare Inc. in breach of contract case arising out of unsuccessful ASIC development project. $36 million jury verdict reversed.
Lojack Corp. v. Clare Inc., Mass App Ct
Represented Powerscreen Inc. in a patent infringement appeal. $34 million jury verdict reversed.
Read v. Powerscreen Inc., Federal Circuit
Representative Clients
Hewlett-Packard Co.- patent infringement litigation regarding imaging technology and document management technology; antitrust litigation regarding alleged agreement not to compete.
Cisco Systems - actions alleging breach of fiduciary duty in connection with Cisco's acquisition of Starent Networks Corp.
EMC Corporation- copyright infringement and trade secret misappropriation actions (one involving diagnostics sotware, another involving document management systems, breach of contract action arising from a component acquisition agreement).
Cabot Corporation- litigation regarding rights under $300 million Supply Agreement; litigation against Puerto Rico Electric Power Authority over its obligation to engage in competitive bidding.
Voice Signal Technologies- speech recognition patent and trade secret litigation.
Adobe Systems, Inc- internet patent litigation.
AIG- multiple appeals of adverse lower court decisions involving responsibility for cost of defense, alleged bad faith settlement practices and patent infringement.
Wyeth- contract litigation involving recombinant proteins.
John Hancock Life Insurance Co- appeal relating to rights under ERISA Plan.
Harvard University- contract and biotechnology patent infringement action.
Hartford Insurance Group- reinsurance litigation not described above.
Dana Farber Cancer Institute- biotechnology patent litigation, negotiation of Dana Farber/Partners Cancer Center joint venture.
Teradyne, Inc- computer hardware patent litigation.
FileNet Corporation- computer software patent litigation.
New Japan Radio Corp- litigation under the semiconductor Chip Protection Act.
Computer Associates International, Inc- securities fraud, employee non-compete and trade secret litigation.
Eisai Company Limited- pharmaceutical patent litigation.
General Electric Co- water purification patent litigation.
Transkaryotic Therapies, Inc- biotechnology patent litigation.
Phillips North America Corp- false advertising litigation.
Professional and Community Involvement
Mr. Frank has been an active participant in his community of Winchester, Massachusetts, serving as a member of the Winchester Town Meeting since 1979. He has also served as Chairman of the Winchester School Committee and the Winchester Finance Committee.
Mr. Frank is a Fellow of the American College of Trial Lawyers and a member of the American Bar Association and the Boston Bar Association.
Eric J. Marandett
University of Pennsylvania Law School, JD, 1992
Tufts University, BA, 1988, magna cum laude
Eric Marandett represents biotech, pharmaceutical and technology companies in high stakes patent litigation and other intellectual property and commercial disputes. Mr. Marandett’s approach to litigation combines a keen business savvy with the courtroom skills of a seasoned trial lawyer. Mr. Marandett was named by the National Law Journal as one of the nation’s top lawyers under age 40 and has been listed repeatedly as a Massachusetts Super Lawyer.
Mr. Marandett is the chair of Choate’s Intellectual Property Litigation Group and has been a member of the firm’s Executive Committee.
Practice Focus
Intellectual Property Litigation: patent infringement (including Hatch-Waxman litigation), licensing disputes and other intellectual property litigation on behalf of major pharmaceutical and biotech companies and clients in the high tech industry.
Complex Commercial Litigation: securities and antitrust litigation, unfair competition, theft of trade secrets, state and federal investigations of Medicare and Medicaid Fraud, anti-kickback and drug record keeping violations.
Intellectual Property Counseling & Due Diligence: assessment of freedom to operate and patentability, valuation of intellectual property, Orange Book and other regulatory and strategic questions in connection with collaborations, acquisitions and joint ventures, particularly in the life sciences industries.
Representative Engagements
Patent Litigation
Lead counsel for Wyeth (now Pfizer) in patent infringement litigation involving industry leading genetically engineered porcine circovirus vaccines.
Wyeth v. Intervet, Inc and Boehringer Ingelheim Vetmedica, Inc, D Del
Lead counsel for Millennium in patent infringement action relating to combinatorial phage display libraries.
Pieczenik v. Abbott Laboratories, et al., D NJ
Lead counsel for Wyeth in Hatch-Waxman patent action brought against Teva relating to prescription sleep aid marketed by King.
King Pharmaceuticals and Wyeth v. Teva, D NJ
Lead counsel for Iovate in patent infringement action relating to novel nutritional supplements.
Iovate Health Sciences v. Allmax Nutrition, D Mass
Lead counsel for Cypress and Hawthorn in patent infringement relating to cough and cold medicine.
Tiber Laboratories, LLC v. Hawthorn Pharmaceuticals, Inc, D Northern District of Georgia
Tiber Laboratories, LLC v. Cypress Pharmaceuticals, Inc, Southern District of Mississippi Jackson Division
Counsel to Eisai, Inc and Eisai Research Institute of Boston, Inc (collectively “Eisai”), one of 11 major pharmaceutical companies sued for infringement of four patents to certain cell-based screening assays.
Housey Pharmaceuticals, Inc v. Abbott Pharmaceutical Corp et.al., D Del Counsel for Eisai Co, Ltd
Obtained judgment on appeal reversing $34 million verdict against Powerscreen. The Read Corporation, et al v. Powerscreen International, PLC, et al, D Mass
Lead counsel for Sapidyne in patent infringement action involving antibody affinity assays.
Sapidyne Instruments, Inc v. Gyros US, Inc, D Mass
Counsel for Genetics Institute in patent infringement and breach of contract litigation relating to the development of recombinant Factor VIII.
Genetics Institute v. Baxter International, Inc, D Mass
Along with co-counsel, represented defendants TKT and HMR in patent infringement litigation brought by Amgen to prevent TKT from commercializing its patented gene-activated erythropoeitin product.
Amgen, Inc v. Hoechst Marion Roussel, Inc and Transkaryotic Therapies, Inc, D Mass
Along with co-counsel, represented Berlex Laboratories in patent infringement litigation involving recombinant beta interferon for treatment of multiple sclerosis.
Biogen v. Berlex Laboratories, D Mass
Other Intellectual Property and Commercial Litigation
Lead counsel for Wyeth in breach of contract dispute relating to Celera’s genomics database products. Applera Corp., d/b/a Celera Genomics Group v. Wyeth, Montgomery County Maryland Circuit Court
Counsel to Astellas Pharma in breach of contract and unfair competition litigation relating to drug formulation collaboration.
Alamo Pharmaceuticals v. Astellas Pharma Inc, Central D of CA
One of three partners representing Genetics Institute in contract dispute relating to the manufacture of recombinant Factor VIII for treatment of hemophilia A.
Baxter HealthCare, Inc v. Genetics Institute, Inc, Delaware Chancery Court
Counsel to KiOR in breach of contract and misappropriation of trade secrets litigation involving biomass catalytic conversion technology.
KiOR, Inc v. George Huber, et al., D Mass
Publications and Presentations
“Patent and IP Overview: Hatch-Waxman, Trade Dress and More,” panelist, ACI’s FDA Boot Camp, September 2010.
“How the Dynamics of Follow-On Biologics Will Change the Hatch-Waxman Landscape,” panelist, ACI’s Hatch-Waxman Boot Camp, July 2010.
“Biotechs Face Higher Bar For Induced Infringement," co-author, Intellectual Property Law360, June 2010.
“The Mysteriously Vanishing Injunction, and Other Developments in Remedies Law,” panelist, Bio IP Counsels Committee Fall Conference, October 2009.
“Patent & IP Spotlight: Hatch-Waxman, the Patenting Process and More,” panelist, American Conference Institute’s FDA Boot Camp, September 2009.
“Positioning Your Patent/Product for Success at Trial: Crafting the Initial Pleadings, Seeking Declaratory Judgment and Managing the Markman Hearing” panelist, American Conference Institute’s 3rd annual Paragraph IV Disputes Conference, April 2009.
“Consequences of Banning Reverse Payments,” co-author, Intellectual Property Law360, April 2009.
"Navigating the Dynamic Labyrinth of Recent Cases, Rules and Regulations on the Company's Due Diligence Analysis," panelist, American Conference Institute's Pharma/Biotech Due Diligence Conference, January 2009.
“Does Your Intellectual Property Need Protecting After Quanta Computers v. LG Electronics?”, panelist, Boston Patent Law Association Seminar, December 2008.
“BioPharma IP Strategies in the post KSR World," moderator, BIO 2008, June 2008.
"Throwing Down the Gauntlet: The Paragraph IV Notice Letter – Delivery and Receipt”, panelist, American Conference Institute’s 2nd Annual Paragraph IV Disputes Conference, April 2008.
"Evaluating Various Courtroom Strategies in Different Cases," moderator, IQPC's 4th Patent Strategies Conference, September 2007.
“Patent and IP Overview for Drugs and Biologics:Hatch-Waxman, Trade Dress and More,” panelist, American Conference Institute’s Pharma/Biotech Patent Boot Camp, September 2007.
“Solving Identified Problems During the Diligence Process,” panelist, American Conference Institute’s Life Sciences IP Due Diligence for Buyers Forum, April 2007.
Professional and Community Involvement
Mr. Marandett is a member of the American Bar Association Intellectual Property and Litigation sections, the American Intellectual Property Law Association, the Boston Bar Association and the Massachusetts Bar Association. He is also active in the Dana Farber Leadership Council.
Sarah Chapin Columbia, Partner
Harvard Law School, J.D. (magna cum laude), 1987
John F. Kennedy School of Government, MPP, 1987
Wesleyan University, B.A., 1982
Sarah Chapin Columbia is a partner in the law firm of McDermott Will & Emery LLP and is head of the Intellectual Property Litigation Practice Group. Her practice focuses on intellectual property litigation including patent, trademark, copyright and trade secret matters. She also counsels clients on overall intellectual property strategy and positioning, including litigation avoidance. She also has extensive experience in representing clients in private arbitration proceedings under the rules and procedures of the International Chamber of Commerce, Swiss Chamber of Commerce, World Intellectual Property Organization, American Arbitration Association and other organizations.
Sarah has appeared in several state, federal district and appellate courts. She represents clients across several industries including semiconductor, biotechnology, internet, hardware and software, medical device and manufacturing companies.
Sarah is active in her local community. She is an officer on the board of Family Service of Greater Boston, a member of the Boston Athenaeum, the Museum of Fine Arts, the Museum of Science and the New England Aquarium and has previously served on the board of the Boys and Girls Club of Charlestown. She also participates in the Wesleyan University Alumni Association and Alumni Schools Committee.
She is the author of “Irreparable Harm and Injunctions,” 2007 Leadership Forum, PricewaterhouseCoopers, February 2007 and the co-author of “Beware Patent Trolls,” Risk Management Magazine, April 2006.
Sarah has been highly recognized as a leader in her field by Chambers USA, The Legal 500 United States and Benchmark Litigation. She is also recognized by Best Lawyers in America (2011). Sarah earned her J.D. from Harvard Law School, magna cum laude, her MPP from the John F. Kennedy School of Government and her B.A. in economics from Wesleyan University. She is a member of the American Intellectual Property Law Association, the Boston Bar Association and the Massachusetts Bar Association. She is admitted to practice in Massachusetts, the U.S. Courts of Appeal for the Federal Circuit, First Circuit, Second Circuit, Ninth Circuit, Supreme Court of the United States, and the U.S. District Court for the Eastern District of Texas.
Patent Litigation
Represented Akamai in two separate patent litigations involving internet content delivery and traffic management technology. Akamai Technologies, Inc. v. Speedera Networks, Inc., D Massachusetts and Akamai Technologies, Inc. v. Limelight Networks, Inc., D Massachusetts
Represented Akamai in patent infringement litigation involving live streaming content over the internet. Two-Way Media LLC v. Akamai Technologies, Inc., SD Texas
Represented Ciba Vision Corporation in patent infringement litigation involving contact lenses. Johnson & Johnson Vision Care, Inc. v. Ciba Vision Corporation, MD Florida
Lead counsel for Citrix in a patent case accusing Citrix' Go-to-Meeting and Go-to-Webinar products. The case is pending. Pixion v. Citrix, ND California.
Represented plaintiff in patent litigation involving process for ultra violet grafting on non-woven polymer films. Crane & Co. v. Holingsworth & Vose Corp., D Massachusetts
Represented Furukawa Electric North America and its subsidiary, OFS-Fitel, in patent infringement litigation involving optical fiber products and methods for manufacturing them. Furukawa Electric North America, Inc. v. Yangtze Fibre & Cable Company, Ltd., D Massachusetts
Lead counsel for Infineon in a case brought by Syspatronics alleging patent infringement in the field of semiconductor chip encryption. The case is pending. SPA Syspatronics v. Infineon, ED Pennsylvania.
Represented Infineon N.A. and Infineon A.G. in patent infringement litigation involving wireless LAN technology. Wi-LAN, Inc. v. Westerll, et al., ED Texas
Represented defendants in patent infringement litigation involving switching mechanisms for power converters. VLT v. Lucent Technologies, Inc. and Tyco Electronics Power Systems, Inc., D Massachusetts
Represented Lycos, Inc. in patent infringement litigation involving recommendation software. Lycos, Inc. v. Blockbuster, et al., D Massachusetts
Lead counsel for MKS in three cases. The plaintiff, Brooks asserts infringement of several patents in the fields of mass flow controllers and monometers. The cases were filed in April 2010 and are just getting underway. Brooks Instruments v. MKS Instruments, ED Texas (two cases) and D Massachusetts.
Lead counsel for Novartis Vaccines in an action under 28 USC 146 for District Court review of an interference decision by the Board of Patent and Trademark Appeals and Interferences. Obtained summary judgement for Novartis on all asserted claims. Alpha Vax v. Novartis Vaccines, D Massachusetts.
Represented Teradyne Diagnostics and Teradyne, Inc. in patent litigation involving diesel engine diagnostic test equipment. Teradyne Diagnostic Solutions, Ltd. v. Mission Valley Ford Truck Sales, Inc., ED Michigan; Mission Valley Ford Truck Sales, Inc. v. Teradyne, Inc., ND California
Lead counsel for Tria in a patent infringement action in which Palomar asserted infringement of two patents in the field of laser hair removal. The case is pending, with claim construction briefing just completed. Palomar Corp. v. Tria Beauty, D Massachusetts.
Represented defendant in patent infringement litigation involving embroidering methods. Chien-Lu-Lin v. Twins Enterprises, CD California
Represented Voice Signal in three separate patent litigations involving speech recognition and mobile communications technology. ScanSoft, Inc. v. Voice Signal Technologies, Inc., D Massachusetts; Nuance Technologies, Inc. v. Voice Signal Technologies, Inc., D Massachusetts; Voice Signal Technologies, Inc. v. Nuance Technologies, Inc., WD Pennsylvania
Arbitration
Represented claimant in action for breach of acquisition agreement an d fraud against sellers of WED. Aseco Corp. v. WED, International Chamber of Commerce arbitration proceeding, London, England
Represented respondent in arbitration under Share Purchase Agreement. Nitto Boseki Co. Ltd. v. Diego Scari, International Chamber of Commerce proceeding, Milan, Italy
Represented respondent in arbitration under License Agreement. Balazs v. Pharmacia AB, American Arbitration Association proceeding, Boston, Massachusetts
Other Litigation
Represented declaratory judgment plaintiff in trademark infringement litigation involving wine labeling. JuiceBox Wine Company LLC v. Constellation Wines U.S., Inc., D Massachusetts
Represented defendants in theft of trade secrets and breach of non-competition dispute. Cambridge Technology Partners v. Gen3 Partners, Middlesex Superior Court (Massachusetts)
Represented defendant in purported class action alleging failure of insulated glass window units. Wasco Products Inc. v. Southwall Technologies Inc., ND California
AI
