The BLT: The Blog of Legal Times

Let the Trading Begin

Right after the New Year, the legal world begins to look a bit like the NFL draft.

For starters, Sterne, Kessler, Goldstein & Fox has picked up a team of four intellectual property lawyers from the Washington office of Blank Rome, including former Blank Rome IP litigation practice group leader H. Keeto Sabharwal. The pick-up also includes Daniel Yonan, who joins as of counsel, and associates Nirav Desai and Dennies Varughese.

Sabharwal said he wasn't looking to leave Blank Rome, but when he met with Sterne Kessler’s managing director Michael Ray, he was "blown away" by the firm.

"I knew of the firm and was impressed by them – their technical expertise and the experience of their trial lawyers. When I spoke with my clients they felt the same way, so it was an exciting combination," Sabharwal said. His team brings with it clients including Torrent Pharmaceuticals Ltd., Glenmark Pharmaceuticals, and EnvisionWare.

As previously reported, Blank Rome, for its part, landed partner Raymond Mullady Jr., who joins its product liability, mass torts, and insurance group from the Washington office of Orrick, Herrington & Sutcliffe. At Orrick, Mullady chaired the Washington litigation practice and has represented pharmaceutical giant Wyeth, Roche Molecular Systems Inc., and Hoffmann-LaRoche Inc.

Mullady said he was attracted to Blank Rome’s “competitive” rate structure and its focus on its life sciences practice. He also pointed to the firm's geographic footprint which he says works well for life sciences clients, many of which are headquartered in locations where Blank Rome has offices, including Philadelphia, New Jersey, Delaware and southern California. “It's a very well managed firm," Mullady said. "The firm really had the right balance of what clients need."

And Orrick has announced that it swiped Robert Reznick from the Washington office of Hughes Hubbard & Reed, where he co-chaired the pharmaceutical and health care industry and product safety practice groups.

Reznick, who represents Merck Sharp & Dohme Corp. in litigation related to the publishing of average wholesale drug prices, said he joined Orrick to take advantage of the firm's international presence. "Orrick has an antitrust and competition as well as a life sciences presence in all of the world's economic markets, which is a major plus," Reznick said.

Mel Kiper Jr., you and the rest of the ESPN crew better keep the Big Board close at hand. The trading season has begun.

Lucrative NIH Contract to Bring IP Work to D.C.

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.

Appeals Court Weighs Patent Dispute in Export Case

The U.S. Court of Appeals for the Federal Circuit met en banc Friday afternoon to examine a hot button issue in the intellectual property world: whether patents on processes are protected by a law that says a company can be held liable for infringement for exporting the components of an invention patented in the United States to be manufactured abroad.

The case, Cardiac Pacemakers and Guidant Sales Corp. v. St. Jude Medical and Pacesetter, generated considerable amicus attention from the technology sector, and both the American Intellectual Property Law Association and the Federal Circuit Bar Association urged the court not to expand the scope of the law already on the books.

The law, amended in 1984, declares it illegal to supply from the United States “the components of a patented invention” for purposes of combining those components outside the United States in a way that would infringe the patent if done here. St. Jude exports pacemakers in a default mode; they are programmed overseas. A panel decision in the Federal Circuit held that St. Jude infringed on Cardiac Pacemaker’s patent on a method of heart stimulation.

St. Jude’s lawyer, Mark Perry of Gibson, Dunn & Crutcher, argued that Congress did not intend for the law to apply to process patents but only to product patents. He also said that applying the law to the process patent would improperly invade the sovereignty of foreign countries and patent policy abroad.