Morrison Foerster

Firm overview:

Morrison Foerster (MoFo) offers clients around the world a patent prosecution and counseling practice from the earliest stage of technical development to product clearance and licensing.

MoFo represents clients in their highest-profile and most complex patent disputes in the tech, life sciences, and the consumer products industries. The firm has experience with judges in high-volume patent venues, and is adept at explaining cutting-edge technologies to juries.

Over the past five years alone, MoFo has litigated more than 300 patent disputes in the most active district courts in the nation, including the Eastern and Western Districts of Texas, the District of Delaware, and the Northern and Central Districts of California.

MoFo appears before agencies and tribunals such as the International Trade Commission (ITC) and the Patent Trial and Appeal Board (PTAB). At the Federal Circuit or Supreme Court, the firm’s experienced bench of appellate lawyers has helped clients successfully navigate the appellate process. MoFo also has significant experience litigating in global forums, including in Japan and Germany.

Team overview:

Daralyn Durie, in San Francisco, is among the top trial lawyers in the country, acting as go-to trial counsel for both plaintiffs and defendants. Durie is a fellow in the American College of Trial Lawyers, a member of the American Board of Trial Advocates, and an inductee into the California Trial Lawyer Hall of Fame.

Michael (Mike) Ward, in San Francisco, co-chair of the firm’s Life Sciences + Healthcare Group, Patent Group, Intellectual Property Group, and Food + Agriculture Group, is the contact for the firm’s patent prosecution practice.

The co-chairs of MoFo’s global IP Litigation Group are Brian Nash in Austin, Bita Rahebi in Los Angeles, Timothy Chen Saulsbury in San Francisco and Mark Whitaker in DC.

In August 2024 a trio of patent litigators—Todd Krause, Alyssa Monsen and Bindu Donovan—joined MoFo from Desmarais. The life science litigators’ move aimed to capitalise on a growing demand for patent litigation from life sciences and biotechnology companies.

Key matters:

Non-Contentious:

● For more than 15 years, MoFo has provided strategic patent counseling and prosecution services for biotechnology company Genentech, a member of the Roche Group. The MoFo team, led by Daralyn Durie and Catherine Polizzi, has helped develop the company’s strategy for its multibillion-dollar portfolios, including blockbuster cancer drugs Kadcyla, Perjeta, Gazyva, and Tecentriq. MoFo has also assisted Genentech in developing its patent portfolio related to innovations in bioinformatics, artificial intelligence, and machine learning.

Contentious:

● Fibrogen v Hangzhou Andao Pharmaceutical & Kind Pharmaceuticals, Case No. 22-cv-07148-AMO, Northern District of California, 2024

Morrison Foerster secured a complete victory at the pleadings stage for its clients Hangzhou Andao Pharmaceutical and Kind Pharmaceuticals, et al. The dispute centred on a conflict with FibroGen regarding Kind Pharmaceuticals’ hypoxia-inducible factor prolyl hydroxylase inhibitor (HIF- PHI) technology to develop new drugs to treat anaemia in patients with chronic kidney disease.

Shortly before FibroGen’s response to Kind’s renewed motion for sanctions was due, the parties agreed to withdraw all pending legal proceedings between them regarding HIF-PHIs, without payment by any party. As a result, Kind Pharmaceuticals remains free to develop its clinical candidate, AND017, and other HIF-PHIs in its pipeline.

The MoFo team advising Kind was led by partners Daralyn Durie, Ragesh Tangri, and Fitz Collings, and associates Hannah Jiam, Timothy Trost, and Sydney Cooper.

DLA Piper’s Susan Krumplitsch, Ellen Scordino and Stephanie Piper were the counsel for FibroGen. Nancy Gettel was the in-house counsel (now at Apotex Corp.).

Clients:

Non-Contentious: Magic Leap, Mentor Acquisition One, Stryker, Juno Therapeutics, Genetech, Mitre, Bayer, Monsanto Technology, Seagen, Genzyme.

Contentious: Amazon, IEX, Innovyze, Investors Exchange, Kind Pharmaceuticals, Nikon.