Concentration

Summary

Over his career, Mr. Familant has handled matters concerning a wide array of technologies in the life sciences, including: apheresis devices; balloon catheters and stents; drug screening and development; methods of disease detection, treatment and prevention; nucleic acid amplification techniques; and recombinant therapeutics and techniques.

Mr. Familant is a frequent lecturer and author and is also a member of the American Intellectual Property Law Association, and New York and New Jersey Intellectual Property Law Associations.

While in law school, Mr. Familant interned for Judge Marion Blank Horn at the Federal Court of Claims, handling various matters within the court’s Tucker Act jurisdiction. While at Cornell, he performed honors research in biochemistry, characterizing the voltage-regulatory site of the acetylcholine receptor.

Representative Engagements

• Boston Scientific Corp. v. Johnson & Johnson (N.D. Cal.) – defended J&J and its subsidiary, Cordis Corp., against allegations of infringement with respect to their sales and marketing of various balloon catheters
• Haemonetics Corp. v. Baxter Healthcare Corp. (D. Mass.) – defended Baxter against allegations of infringement with respect to the sales and marketing of its blood apheresis device ALYX
• MedImmune, Inc. v. Genentech, Inc., (C.D. Cal.) – part of a team that defended Genentech in a declaratory judgment action seeking to have Genentech’s patent covering the recombinant production of antibodies declared invalid and unenforceable
• SmithKline Beecham PLC v. Teva Pharmaceuticals USA, Inc. (D.N.J.) – represented Glaxo in its claims that the sales and marketing of generic versions of Avandia®, an anti-diabetic, would infringe on patents held by Glaxo
• Chiron Corp. v. Roche Molecular Systems, Inc. (N.D. Cal.) – defended RMS against allegations of infringement with respect to its HCV-PCR detection technology. Mr. Familant was also part of an international team of attorneys that coordinated companion foreign proceedings and succeeded in defeating Chiron’s efforts to secure a cross-border injunction in Europe.
• Hoffmann-La Roche, Inc. v. Schering-Plough Corp. (D.N.J.) – represented HLR in its claim that Schering’s pegylated interferon alpha product, PEG-Intron®, infringed HLR’s patent
• Housey Pharm. v. Hoffmann-La Roche, Inc. (D. Del. ) – defended multiple Roche affiliates against allegations of infringement with respect to the use of various cell-based screening assays in drug discovery. This was an unusual instance where the plaintiff conceded both invalidity and non-infringement following a favorable Markman ruling, which was affirmed on appeal.
• ICN v. Hoffmann-La Roche, Inc. (C.D. Cal) – defended HLR against allegations of infringement with respect to its sales and marketing of ribavirin to treat HCV.
• In re Sigco Research (BPAI; Fed. Cir.) – secured reexamined claims directed to sunflower seeds and oils having unique oleic and linoleic acid contents
• Ostex Int’l, Inc. v. Osteometer Biotech A/S (W.D. Wash.) – defended Osteometer against allegations of infringement with respect to its sales and marketing of a bone collagen immunoassay kit, CrossLaps
• Purdue Pharma L.P. v. Faulding Inc. (D. Del.) – represented Purdue in its claim that the administration of Kadian® infringed its patent on a method of treating pain with a sustained-release opioid analgesic
• Roche Molecular Systems, Inc. v. Promega Corp. (N.D. Cal.; Fed. Cir.) – represented RMS in its claims that Promega engaged in a range of sales and marketing activities that infringed the client’s Nobel Prize-winning and patented PCR technology. Mr. Familant also assisted in related proceedings abroad.

Publications, Speeches and Presentations

• “Litigating Enablement Under 35 U.S.C. § 112, 1: How To Make And Use Your Record Most Effectively,” PLI’s Patent Litigation Coursebook, November 2009
• “Prosecution History Estoppel Under Festo: A Doctrine Still In Flux,” IP Litigator, November 2005
• “Step-Plus-Function Claiming: Are Life Sciences Claims The Next Target?” The Journal of BioLaw and Business, October 2005
• “Kinik: Raising The Stakes For Importing Products Derived From U.S. Patented Processes Practiced Abroad,” Journal of Commercial Biotechnology, July 2005

Speeches and Presentations

• “Conducting Freedom To Operate Reviews,” ACI’s 7th National Conference On Life Sciences IP Due Diligence, January 21, 2010, New York
• “The Assault On Diagnostic And Treatment Claims Under Bilski,” NJIPLA’s Monthly Dinner, February 11, 2009
• “Preparing And Prosecuting A Patent That Holds Up In Litigation,” PLI’s Patent Litigation Seminar, November 6, 2006, New York
• “Recent Developments In The Law On Inherent Anticipation,” NJIPLA’s Pharmaceutical/Chemical Patent Practice Update, December 5, 2005, New Jersey
• “Festo: Where Are We Now And Where Are We Going?,” ACI’s Sixth Advanced Forum on Biotech Patents, September 19-20, 2005, New York