WE TAKE ON CASES LARGE AND SMALL AND ROUTINELY COME OUT ON TOP.
What’s our secret to success? In part, it’s practice agility. Bigger is not always better. We do not set a windstorm of untrained associates loose on your case. We focus on your goals and leverage intelligent resources to achieve them. You enjoy the personal attention and dedication of our senior litigators, who strategically guide the case to protect and enforce your intellectual property. Close partnerships with our clients produce results and over time, a reputation for success.
Carlson Caspers assisted DuPont Pioneer in securing a non-exclusive license to the Broad Institute patent portfolio relating to CRISPR-Cas9 (Clustered Regularly Interspaced Short Palindromic Repeats) genome editing technology, as well as negotiating an agreement with Broad on a governance framework and standard licensing terms for the joint out-licensing of CRISPR-Cas9 technology to third parties in certain fields.
Carlson Caspers has led multi-year licensing negotiations for its long-time client, DuPont Pioneer, concerning its in- and out-licensing of CRISPR-Cas9 gene-editing technology.
In addition, Carlson Caspers negotiated an arrangement with Caribou Biosciences that included a 1) cross-license of their respective CRISPR-Cas9 intellectual property portfolios, 2) the creation of a multi-year research collaboration to advance genome editing technology platforms, and 3) an equity investment by DuPont Pioneer in Caribou Biosciences.
Carlson Caspers also led negotiations and completed a technology license agreement with ERS Genomics (“ERS”) that granted DuPont Pioneer exclusive rights to the ERS patent portfolio covering CRISPR-Cas9 genome editing technology in certain fields.
According to DuPont Pioneer’s website, “This ground-breaking technology is expected to help scientists to develop innovative and sustainable solutions for growers similar to those realized through conventional plant breeding practices, but with even greater quality, accuracy and with more efficient development timelines.” DuPont Pioneer is applying CRISPR-Cas as an advanced plant breeding tool to develop seed products for greater environmental resiliency, productivity and sustainability and has defined it as a set of CRISPR-Cas guiding principles.
The Carlson Caspers intellectual property legal team included Brian Hayes, Samuel Lockner, Alexandra Olson and Peter Kohlhepp.
Carlson Caspers claimed a series of victories at both the district court and Federal Circuit to pave the way for Teva to begin selling generic forms of the multi-billion dollar product OxyContin®. Purdue held a large and growing portfolio of patents covering the active ingredient and formulation of OxyContin®. Three of these patents were directed to oxycodone having low levels of an unwanted impurity, called the “Low ABUK” patents, while two of these patents were directed to formulations having tamper-resistant properties, namely, crush resistance and gelling. Following a bench trial, Judge Stein of the Southern District of New York held that the Low ABUK patents were invalid as obvious, the crush resistance patent was invalid as both anticipated and obvious, and the gelling patent was invalid for indefiniteness. With respect to the crush resistance patent, Carlson Caspers convinced Judge Stein that a prior art patent taught formulations that inherently conferred the claimed crush resistance. (This verdict had implications extending beyond OxyContin®, as the crush-resistance patent was listed in the Orange Book as covering additional products, such as Opana ER®.) With respect to the gelling patent, Judge Stein concluded that the claims were so ambiguous that they failed to satisfy the now abandoned “insolubly ambiguous” indefiniteness standard.
In the wake of this win, Carlson Caspers led the efforts in a second trial involving another patent listed in the Orange Book for OxyContin®. This patent was directed to oxycodone dosage forms that yield solutions having high viscosities when dissolved in water in order to prevent illicit injection. Carlson Caspers convinced Judge Stein that these claims were invalid as obvious, and that one of the asserted claims was also invalid for indefiniteness. In reaching his decision, Judge Stein credited significant testimony elicited by direct examinations performed by Carlson Caspers, as well as admissions secured by Carlson Caspers during cross-examination of Plaintiffs’ marquee validity witness.
Purdue appealed the invalidity judgments of the Low ABUK patents and the crush resistance patent to the Federal Circuit. Carlson Caspers defeated these efforts. The Federal Circuit affirmed the court’s judgment of anticipation of the crush resistance patent, finding that while McGinity did not discuss the breaking strength of the tablets, Teva’s expert offered “experimental results [that] indicate[d] unanimously, reliably, clearly, and convincingly that any tablet made according to the McGinity Application would exhibit this characteristic.” The court considered this experimental evidence “pivotal” to Teva’s inherency defense. Purdue’s efforts to challenge these decisions on rehearing en banc were denied.
Purdue had yet more patents covering its products, but these victories enabled Teva to land a settlement agreement permitting it to sell generic versions of OxyContin®.
Carlson Caspers successfully prevailed in Nebraska federal court when a jury awarded its client, lawnmower maker Exmark Manufacturing Company, Inc. (a subsidiary of The Toro Company), $14.38 million in damages after a six-day trial in December of 2018.
Carlson Caspers also successfully prevailed in obtaining an affirmance of a prior determination that the infringement was willful, resulting in the Court awarding an additional $14.38 million in enhanced damages to Exmark.
The judgment required Wisconsin-based Briggs & Stratton Corporation to pay Exmark $28.76 million in damages, plus an additional $5.96 million in interest for patent infringement on a patent issued in 1999, which covers a lawnmower with flow control baffles. The $34.72 million judgment was affirmed by the Federal Circuit on appeal, ending the 10+ year dispute.
The Carlson Caspers intellectual property litigation team included J. Derek Vandenburgh, and Joseph W. Winkels, .
*The case is Exmark Manufacturing Company Inc. v. Briggs & Stratton Corporation, case number 8:10-cv-00187, in the U.S. District Court for the District of Nebraska. The patent-in-suit is U.S. Patent No. 5,987,863.
Phil Caspers, Sam Hamer and Joe Winkels scored a $75 million win for ADC Telecommunications, Inc. Following the dot-com bubble, ADC divested its data transport business unit, but retained the patent assets. Looking to monetize those assets, Mike Ouyang of ADC contacted Phil Caspers to assess the value of a 10-year-old, pending application related to the divested business unit. After some investigation, the team concluded that the application (filed in 1995) may be relevant to the developing 4G wireless standards that incorporate OFDM. Caspers and Hamer developed a long-term strategy for maximizing the value of the pending application, without litigation. That strategy included relentless due diligence into emerging wireless technology and standards and aggressive use of often overlooked Patent Office procedures (including more than 50 accelerated filings and reissue applications) to perfect a broad portfolio of patent rights covering multiple fundamental features of the emerging wireless standards. The team also developed and implemented a world-wide marketing plan to demonstrate to the industry the value of the portfolio and sell it. That long-term strategy paid off. In April of 2011, the team negotiated the sale of the patent portfolio for $75 million to HTC Corporation. The team’s work did not stop there. Following the transaction, Caspers and Hamer assisted HTC in understanding and developing an enforcement strategy for the portfolio, and in an ITC action against Apple, the team provided assistance to HTC’s counsel representing key third party witnesses and defending prosecution counsel in trial depositions, ultimately scoring a successful result against Apple.