Four firms won National Institutes of Health contracts last month worth up to hundreds of millions of dollars in total over 10 years. The contracts cover contested proceedings over patents awarded in the biotechnology, chemistry and mechanical/electrical/software fields.
Foley & Lardner, an Am Law 100 firm, will soon begin work on its first NIH contract, worth up to $208 million. It’s the only firm that said it would heavily utilize its D.C.-based attorneys.
Mark Kassel, chair of Foley’s chemical and pharmaceutical practice, said the NIH has a right to review the contracts annually and his firm is unlikely to get $208 million worth of work. “We will see some fraction of that,” he said. “It’s all based on what the need is.”
They’ll be sharing the lucrative contested-proceedings litigation with three firms that have had NIH contracts in the past: San Francisco-based Townsend & Townsend & Crew could get up to $209 million, and Chicago firm Leydig, Voit & Mayer is looking at $183 million. Both firms have Washington offices. McAndrews, Held & Malloy, whose only location is in Chicago, won a contract worth up to $181 million. Both Townsend and Leydig also won other NIH contracts earlier this year and will focus their NIH efforts in their home offices, though the Washington staff may play a backup role, firm spokesmen said.
The NIH Office of Technology Transfer, based in Rockville, Md., hires private lawyers to help it patent technology developed in NIH laboratories and by the U.S. Food and Drug Administration. The office filed 343 U.S. patent applications and received $92.7 million in patent royalties in fiscal year 2008, according to its online statistics.
Kassel said the contract calls primarily for litigation support; patent interferences, which determine who will be awarded the patent when multiple applications are filed; and inter partes re-examinations, where a third party asks the patent office to re-examine the validity of a patent. The bulk of Foley’s interferences will be handled out of the D.C. office, said Washington-based partner George Quillin.
Quillin said he recently won a claim against the NIH concerning an HPV vaccine but now he’s eager to be on the government’s side. The firm’s payday will depend, in part, on how litigious the NIH is. “I’ve been involved in interferences where the other side gives up right away,” he said. “Or it could be a very closely fought, hard fought fight.”
The NIH sent out its request for proposals in April 2007 and asked firms to send thousands of pages of paperwork as part of the two-year application process. Leydig partner John Kilyk Jr., whose firm has worked with the NIH for nearly 20 years, said the process was “just over the top. It was the biggest RFP we’ve ever responded to.”
Kilyk is currently representing the NIH in a case where both the agency and New York University laid claim to the patent on an AIDS test kit. He said the usual yearly haul for the contested proceedings work—subtracting reimbursement for out-of-pocket costs—is in the hundreds of thousands of dollars. “It’s very sexy work. Everyone loves to do it, but it’s up and down,” he said. “In a particular year, when things are contentious, if you hit it right, you could get a couple million.”
For information on other firms that have won NIH contracts this year, see the National Law Journal’s previous coverage.