Patricia Thayer, Co-Chair of the Intellectual Property Litigation Practice Group, joined the firm in 1999 and concentrates in intellectual property litigation and counseling.  She is admitted to practice before the U.S. Patent and Trademark Office, and has experience in patent prosecution, patent interferences, and proceedings before the Trademark Trial and Appeal Board.

Experience

Ms. Thayer focuses on complex patent litigation for life sciences companies, including biopharmaceuticals, diagnostics, drug delivery systems and medical devices.  She also has represented a wide range of life science, Internet and retail companies in litigation and arbitration involving trademark, trade secret, and copyright disputes.  A number of her clients also retain her for intellectual property counseling and opinions, particularly focusing on patent infringement and validity issues. In addition, she has been retained as an expert witness on patent and trademark matters.

Ms. Thayer has frequently spoken at intellectual property conferences and has written on trade secret, copyright, and other intellectual property issues.  In 2003 and 2004, she chaired the Sedona Conference on Patent Litigation.  Ms. Thayer is also past Chair of the Intellectual Property Section of the State Bar of California (1996/97).

Representative Engagements

(Firm Client in Bold):

• General Electric v. SonoSite, Inc. (W.D. WI.)  Ongoing defense and counterclaims regarding patents on features of ultrasound instruments.
•  Integra Life Sciences v. Merck KGaA, The Scripps Research Institute (S.D. Cal.)  Successful defense of patent infringement litigation related to small peptides and angiogenesis research, including appeal to U.S. Supreme Court.
• Genentech, Inc., et al. v. Insmed Incorporated, et al. (N.D. Cal.)  Prevailed on all patent infringement claims after jury trial concerning recombinant DNA technology and the treatment of children with a severe growth disorder.
• Fogarty Engineering v. Revivant Corporation (N.D. Cal.)  Successful defense of dispute regarding patent royalties and patent inventorship with respect to automated CPR device.
• U.S. Gypsum Corp. v. Pacific Award Metals (N.D. Cal.)  Successful Markman and summary judgment rulings followed by settlement of patent infringement litigation related to building construction materials.
• Depomed v. Bristol-Myers Squibb (N.D. Cal.)  Successful settlement of lawsuit for patent infringement and breach of contract involving polymer matrix drug delivery systems.
• Applied Molecular Evolution v. Morphosys AG (D. Mass.)  Successful defense — including summary judgment award by magistrate judge — of patent infringement litigation related to libraries of stochastic DNA and peptides.
• Genentech, Inc. v. Amgen (N.D. Cal.)  Successful settlement of patent infringement litigation related to recombinant cloning vehicles and methods of microbial expression of polypeptides.
• BioGenex v. Lab Vision, Dako Corporation, et al. (Santa Clara County.)  Successful defense through trial and appeal of trade secret litigation involving immunohistochemistry methods, compounds and robotic instruments.
• Codon Devices v. Blue Heron (D. Del.)  Defense of patent infringement litigation regarding gene synthesis methods.

Publications

• "Anticipation Through Inherency: An Old Doctrine With A New Twist,"  The Fifth Annual Sedona Conference on Patent Litigation  5.4.2005
• "Enforcing U.S. Method Patents: How Much Protection Does 35 U.S.C. Section 271(g) Really Provide?”   The Third Annual Sedona Conference on Patent Litigation  11.7-8.2003
• "Tendering Advice Of Counsel In Patent Litigation: Damned If You Do, Damned If You Don’t,"  The Second Annual Sedona Conference on Patent Litigation   11.15.2002
• Enforcing U.S. Method Patents: How Much Protection Does 35 U.S.C. Section 271(g) Really Provide?  The Third Annual Sedona Conference on Patent Litigation  11.7.2002
• “Inter Partes Reexamination: The United States Joins Europe and Japan in Providing an Adversarial Administrative Procedure for Testing Patent Validity,"   Patent World   05.dd.2001
• “Induced Patent Infringement: New Use of an Old Doctrine To Block Generic Competition?”   Fall 2001   mm.dd.2001
• “The Research Exemption To Patent Infringement: The Time Has Come For Legislation,”   The Journal of Biolaw & Business - Fall 2000  mm.dd.2000

Speaking Engagements

•  “Best Practices in a Patent Trial from the Judge’s and Bar’s Perspective,” Daily Journal/West Legalworks (December 2007)
•  “Integra’s Aftermath:  The Impact of Research Tool Patents and Reach Through Claims on FTO Determinations,” American Conference Institute on Freedom to Operate (October 2005).
• “The Non-Obviousness and Inherency Doctrines,” Stanford Program in Law, Science & Technology (March 2005).
• Chairperson, Sedona Conference on Patent Litigation – Sedona, Arizona (November 2004).
• Chairperson, Sedona Conference on Patent Litigation – Sedona, Arizona (November 2003).
• “Claim Construction and Willful Infringement,” Sedona Conference on Patent Litigation – Sedona, Arizona (November 2002).
• “Requirements for Patent Disclosures,” Advanced Patent Law Institute – San Jose, California (December 2001).
• "Tendering Advice of Counsel in Patent Litigation,” Sedona Conference on Patent Litigation – Sedona, Arizona (November 2001).
• “How to Prepare Documents and Negotiations that Have Maximum Effectiveness,” AIPLA Mid-Winter Meeting – Boca Raton, Florida (January 2001).
• “Patent Reexamination, Rocket Dockets and Videotaped Depositions,” PLI Patent Litigation 2000 – San Francisco, California (October 2000).
• “Business Methods Patents,” CEB: Advanced Intellectual Property Litigation – San Francisco, California (October 1999).
• "Patent Year in Review,” Annual Meeting of San Diego and Orange County Intellectual Property Law Associations – San Diego, California (May 1999).
• “Ethics and Patent Infringement Due Diligence,” Mid-Winter Meeting of the AIPLA – Palm Springs, California (January 1998).
• “Summary of Patent Law,” Retreat of the District Judges for the Northern District of California – Monterey, California (September 1996).