An IP Litigation And Dispute Resolution Group Gains Momentum

Thursday, June 1, 2006 - 00:00

Editor: Would you tell us something about your professional background?

Sandercock: My undergraduate degree, from Moravian College, was in chemistry. I went on to the University of Pennsylvania, where I obtained a masters degree in chemical and biochemical engineering in 1980. My law school education was at The Catholic University of America in Washington, DC. I began working part-time with a patent firm my first year, and then full time my second year, which meant that I began attending evening law school. Prior to my final year of school, I began working with a DC patent boutique that had practitioners in the pharmaceutical area, one of whom was very experienced in patent interferences. (Interferences are priority contests conducted by the Patent Office when there is a dispute over who is the first to invent a patentable invention.) During the years that followed, I also spent considerable time drafting and prosecuting patent applications and working on patent litigations. Since that time, my practice has evolved to where the majority of my time is spent on litigation, licensing, due diligence and counseling matters.

Editor: You recently joined Proskauer Rose's IP litigation and dispute resolution group. Will you tell us what attracted you to the firm?

Sandercock: As I mentioned, a considerable amount of my practice now involves litigation, and so my first criteria was a firm with strong IP litigation capability. Proskauer has that. Also, because Proskauer already had strong patent groups in New York and Boston, the firm understood this business, and had an infrastructure and talent pool. Importantly, the firm also offered a great platform; for example, it has one of the world's premier venture capital fund formation practices, which I knew could potentially provide a great source of capital for some of our clients. The firm also has a commitment to the life sciences, including medical devices, which was important to each of us. Finally, I was impressed with the firm's collegiality and focus on teamwork.

Editor: Can you tell us about the development of patent law in the life sciences area?

Sandercock: The science of biotechnology is still relatively new. The fundamental technologies of genetic engineering really came into being in the late 1970s and early 80s, and because it can take five to ten years for disputes to wind their way through the Patent Office and the courts, the technology was way ahead of the law during the 1980s. By the end of the 1980s, there were several patented blockbuster biotech products that were generating litigation. By the early 1990s, decisions began to emerge that provided a framework for analyzing patent cases, and since that time we have seen an increasing volume of guidance from the Federal Circuit and Supreme Court. Certainly there are still a number of unanswered questions and gray areas, but on the whole there is much more certainty today than there was five or ten years ago.

Editor: Are there any particular highlights over the course of your career that you can tell us about?

Sandercock: Beginning in the early 1990s, I worked with a small skin-care company to build a portfolio of 50 to 75 patents in the U.S and abroad covering commercially important skin-care products. Obtaining that portfolio involved winning an interference and prevailing in six or seven patent reexaminations. That portfolio has now been successfully enforced several times with great results. In the mid 1990s, I began working with a small, innovative German biotech company, MorphoSys AG, in a series of lawsuits against a larger British company, Cambridge Antibody Technologies (CAT), relating to CAT's patents on phage display of antibodies. After we won the first suit in the district court, the parties concluded a settlement that gave MorphoSys worldwide freedom to operate, and MorphoSys has had a great run ever since. Another action brought by a later-acquired subsidiary of Eli Lilly & Co. against MorphoSys resulted in a settlement in which Lilly and MorphoSys actually became collaboration partners, which was very rewarding. The past few years, I represented a company licensed under a Stanford University patent in an inventorship dispute with a Boston-based university. We arbitrated the dispute and obtained a win early last year, which removed the cloud over the patent. The victory was very significant for our client. Those are a couple of highlights.

Editor: How important is it for someone in your practice to reside in Washington?

Sandercock: There are many excellent patent attorneys outside of DC, so being in Washington is clearly not essential. There are some advantages, however. Being near the Patent Office is convenient for some of my colleagues who spend a significant part of their practices working with the Patent Office. The DC area is also home to several good law schools with strong IP programs. Typically, a percentage of DC law students are already planning to become IP lawyers, and a number of those are anxious to work full-time and attend law school in the evenings, which means the talent pool is strong here. Washington is also one of the centers of IP law in the U.S., and the Court of Appeals for the Federal Circuit, which handles patent appeals for the entire country, is located here, which makes this city a professionally stimulating place to work

Editor: In addition to you, who are the attorneys who make up this group, and what are their areas of expertise?

Sandercock: The partners in our group, in order of seniority, are John Isacson, Paul Booth and David Laub. John Isacson is a very experienced biotech attorney, with whom I have worked since the early 1990s. John has a strong pharmaceutical industry practice and is a recognized interference expert. He also has considerable experience dealing with patent issues that involve FDA law. Paul Booth, with whom I have worked for 12 years, has both a Ph.D. in pharmaceutical organic chemistry and a post-doctorate in molecular biology and worked in the biotech industry for a number of years. Paul specializes in handling patent portfolios in the biotech and chemistry areas. David Laub, whom I also have known for ten-plus years, is one of the best mechanical engineers in the patent business. David previously was a Patent Office examiner and an in-house patent counsel for a Siemens automotive division. He handles medical devices and anything mechanical, including, of course, automotive products.

Editor: What kinds of clients do you serve in your practice?

Sandercock: We serve a fairly wide range of clients. We represent a number of small, medium and large pharmaceutical and biotech companies. We represent small and large medical device companies, several universities, organizations that fund research, a venture capital fund, and some individual inventors. David also represents several industrial and automotive clients.

Editor: How does the group connect with other practices across the firm? Are you able to draw upon the expertise of other groups?

Sandercock: As I mentioned, we were attracted to Proskauer because of the established litigation, IP and corporate practices. In our first two months, we already have worked with litigators in New York and Washington, the patent groups in New York and Boston, corporate and bankruptcy attorneys in New York, licensing attorneys in New York, and labor lawyers in Washington and New Jersey, and I probably am overlooking a few others.

Editor: With globalization, patents and IP law - the quintessential domestic practice in terms of the way it is regulated - have developed a distinct international dimension. Would you share your thoughts about how this trend is evolving?

Sandercock: Good question. Over the past decade, I have seen a trend evolve most significantly in terms of companies seeking to enforce patents against competitors on a global basis. About ten years ago, I was part of a litigation team that included attorneys from more than ten countries where litigation over a single product was occuring. At that time, such multinational litigation was fairly rare, but it is becoming increasingly common. For example, I currently am working on a case involving 12 U.S. patents and four counterpart European patents that are being litigated in the U.S, three European countries and the European Patent Office. In these cases, we even successfully invoked a U.S. law that permitted us to obtain discovery in the U.S. for use in the European proceedings. The importance of coordinating patenting and litigation strategy in such cases is obvious. There also is an important case pending before the Federal Circuit in which a U.S. company is seeking to enforce both a U.S. and foreign patent against a defendant in a U.S. Court. If the Federal Circuit approves this practice, it would represent a monumental shift in the way companies will try to enforce their global patent rights.

Editor: What are the principal issues today in your practice area?

Sandercock: The protection of intellectual property continues to be at the heart of our practice. What is essential today, however, is that this be done in a holistic manner, taking into account how the client is internally and externally generating IP, how it is partnering, and how it is competing in the marketplace. In other words, prosecution, licensing and enforcement strategies really should be coordinated to achieve the client's business goals.

Editor: As you know, our publication is directed at general counsel and the members of corporate legal departments. Are there particular pitfalls in the IP area that should be called to the attention of corporate counsel?

Sandercock: Probably the biggest pitfalls I see occur when two organizations and/or groups of individuals collaborate and generate IP. In some cases, they do this before all of the paperwork has been completed, which invariably generates problems. More often, the collaboration agreement allocates ownership of new patent rights based on inventorship, which often generates inventorship disputes. These disputes can adversely affect the parties' rights in ways they won't even suspect until the patents become valuable. The other main pitfall I see is the failure of companies to be obsessive, or at least appropriately diligent, about their IP. Too often I see companies that are not sufficiently diligent or careful with their patent applications, only to find that their ability to file an application has lapsed due to delay, or more often that their patents do not contain claims that can stop their competitors.

Editor: Where would you like this practice to be in five years?

Sandercock: I certainly look forward to growing our practice at Proskauer. I anticipate that our Washington group will expand significantly in size, and hope that we will increasingly serve the IP needs for a number of Proskauer's corporate and venture clients.

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