Marshall, Gerstein & Borun LLP

IP Litigation

Protecting and Asserting Your IP Rights

Your intellectual property is the product of years of investment and hard work. Marshall, Gerstein & Borun can help ensure that you reap the rewards of your innovations.

Your business may also face challenges from global competitors and other entities, who allege infringement of their supposed intellectual property rights. We can aggressively defend you against such threats.

Our trial attorneys have deep technical knowledge, and can convey the substance and significance of technological innovations to judges and juries in a clear, persuasive manner. Virtually all of our attorneys have technical degrees, with one-third holding advanced degrees in science or engineering. This, together with our substantial jury-trial experience in IP cases, distinguishes us. We have the acumen and experience to protect your interests and advance your goals.

More importantly, we do not seek simply to represent you, but to partner with you -- collaborating in developing the strategies best designed to most efficiently and economically achieve your goals. Our highly competitive rates and willingness to explore creative alternatives to hourly billing further evidence our commitment.

We have successfully represented clients in cases involving some of the most significant issues in intellectual property law over the last fifty years. Many of those cases have resulted in landmark decisions, such as those in Blonder-Tongue and Walker Process -- decisions that established fundamental principles relating to collateral estoppel and antitrust liability under U.S. patent laws. In Amgen v. Chugai, we broke new legal ground with respect to the application of patent principles such as conception, reduction to practice, best mode, and enablement to innovations in the biotech industry. In Eltech Systems v. PPG Industries, we succeeded in obtaining an award of fees against a patentee for asserting infringement in bad faith -- the first such award of its kind.

Case Study

Our substantial experience in both jury and bench trials has involved some of the most significant issues and landmark decisions in intellectual property law.

Amgen Inc. v. F. Hoffmann-LaRoche Ltd. et al., Civ. Action No. 05-cv-12237 (D. Mass.) On October 23, 2007, after a six-week trial, a jury in the U.S. District Court in Boston returned a verdict in favor of Marshall, Gerstein & Borun’s client, Amgen Inc. ("Amgen"), against the defendants F. Hoffman-La Roche Ltd., Roche Diagnostics GmbH, and Hoffman-La Roche Inc. ("Roche").

The case involved Amgen patents relating to the recombinant forms of human erythropoietin ("rEPO"), a hormone that stimulates the production of red blood cells. Amgen’s rEPO product, EPOGEN^®, is one of the most successful biotechnology products ever (in 2006, Amgen’s annual U.S. sales for EPOGEN^® totaled more than $2.5 billion).

The jury found that the production, importation and proposed sale of Roche’s pegylated form of rEPO, referred to as MIRCERA™, would infringe all of the asserted claims-in-suit, and that all of those claims are valid (the district court had earlier granted summary judgment of infringement with respect to one of the claims-in-suit). After a subsequent bench trial, the district court also rejected Roche’s inequitable conduct defense.

Marshall, Gerstein & Borun partner Dr. Kevin M. Flowers served as trial counsel for Amgen along with his co-counsel from Day, Casebeer, Madrid and Batchelder and McDermott, Will & Emory. Dr. Flowers’s in-court trial team consisted of Marshall, Gerstein & Borun partners Mark H. Izraelewicz and Matthew C. Nielsen, and associate Cullen N. Pendleton. Many other Marshall, Gerstein & Borun litigation partners, associates, and professional staff also worked tirelessly on the pre-trial and trial aspects of the case.

Dr. Flowers and other Marshall, Gerstein & Borun attorneys also successfully represented Amgen in two prior patent infringement trials in the Boston federal district court in 2000 and 2003 that prevented Transkaryotic Therapies, Inc. and Hoechst Marion Roussel, Inc. from invalidating Amgen’s patents and marketing another form of rEPO in the United States. That case is currently awaiting a decision by the Federal Circuit on the defendants’ third appeal.

Representative Clients