Deborah Fishman focuses her practice on intellectual property, with a particular emphasis on biopharmaceutical and medical device patent litigation. She also handles antitrust, trade secret, and general commercial disputes. Deborah has successfully represented Fortune 500 companies in business-critical patent cases and commercial disputes, and has litigated cases worth more than US$1 billion through trial.
As an IP litigator, Deborah has represented leading life sciences companies like Regeneron, Alexion Pharmaceuticals, and Olympus Surgical in all aspects of complex patent litigation. Her experience includes bringing and defending patent infringement actions concerning biologic therapeutics (such as recombinant proteins and antibodies) and medical devices (such as bipolar surgical instruments and ophthalmic imaging techniques). She is also registered to practice before the USPTO and has an active practice in post-grant contentious proceedings before the Patent Trials and Appeals Board (PTAB), before district courts, and on appeal to the Federal Circuit.
Experience
- Regeneron as lead counsel in the defense of patents protecting EYLEA®, Regeneron's flagship product, against U.S. Patent Office post-grant challenges, including two ex parte reexaminations, seven inter partes reexaminations, and two post-grant reviews. USPTO, PTAB (2020-present).
- Alexion Pharmaceuticals Inc. in defending against a claim brought by the former shareholders of Syntimmune that Alexion failed to use commercially reasonable efforts to develop an acquired anti-FcRn antibody and in asserting counterclaims including for indemnification. Del. Chancery. Ct. (2020-present).
- Sanofi and Regeneron in re-trial and appeal of an action brought by Amgen to enforce its patents directed to anti-PCSK9 antibodies that it asserted against Sanofi/Regeneron's therapeutic antibody, Praluent. The Arnold & Porter team invalidated Amgen's antibody functional genus claims on enablement grounds in post-trial briefing and sustained that victory on appeal to the Federal Circuit, and at the U.S. Supreme Court. Amgen v. Sanofi/Regeneron, D.Del. (2017-2023).
- Elan Pharmaceuticals as lead counsel in defending a patent infringement suit involving four patents directed to a genetic mutation, assays, and animal models related to early onset Alzheimer's Disease that were asserted against Elan's Phase 3 antibody therapeutic for the treatment of Alzheimer's Disease. Deborah's team was hired as replacement counsel in March 2011 and, in August 2012, obtained summary judgment in Elan's favor and dismissal with prejudice against Alzheimer's Institute of America based on its lack of standing to assert the patents-in-suit. Deborah and her team also obtained an exceptional case award of attorneys' fees — more than 90% of the fees requested — and successfully defended that award on appeal to the Federal Circuit. Alzheimer's Institute of America v. Elan Pharmaceuticals Inc., N.D.Cal. (2011-2017).
- AAT Bioquest as lead counsel to enforce its calcium ion indicator patent against a competitor. Deborah's team obtained early summary judgment of no invalidity and no inequitable conduct and entry of permanent injunction. Following a bench trial, AAT Bioquest was awarded trebled lost profits damages. Her team successfully defended the district court's judgment on appeal to the Federal Circuit. AAT Bioquest v. TEFLabs Inc., N.D.Cal. (2014-2017).
- Olympus America as lead counsel in defending a patent infringement action relating to bipolar surgical instruments in the Northern District of California, as well as in inter partes review proceedings before the PTAB and before the Federal Circuit. Her team obtained entry of partial judgment of on-sale bar for one of the two patents-in-suit and cancelled claims of the other patent through inter partes review, which was affirmed by the Federal Circuit on appeal. Perfect Surgical Techniques, Inv. v. Olympus America Inc. et al., N.D.Cal., PTAB (2013-2017).
- Miotox as lead counsel to enforce the terms of a License Agreement related to the use of Botox® to treat migraine headaches and to defend patent counterclaims asserted by licensee Allergan. Case settled on favorable terms. Miotox LLC v. Allergan Inc., C.D.Cal. (2014-2017).
- Callidus as lead counsel in a patent infringement suit brought by Versata involving incentive compensation software. Deborah's team challenged all of Versata's asserted patents in five CBM proceedings before the PTAB and moved to stay district court proceedings. When the district court denied stay, her team successfully appealed to the Federal Circuit, which reversed the district court in a precedential opinion, identified by the Intellectual Property Owner's Association as having a significant impact on patent law. At the same time, Callidus developed prior art defenses in the district court, and cross-asserted three patents. Deborah negotiated a global settlement and perpetual covenant not to sue. Versata v. Callidus Software Inc., D. Del., PTAB, Fed. Cir. (2012-2014).
- Callidus as lead counsel in enforcing its patents and asserting business tort and breach of contract claims against its competitor. The case settled on favorable terms. Callidus Software v. Xactly Corporation, N.D.Cal. (2012-2013).
- Callidus as lead counsel in defending a patent infringement suit related to generic methods of symmetric encryption in the Eastern District of Texas, as well as in parallel proceedings before the PTAB. The case settled with a walk-away settlement for Callidus. TQP v. Callidus, E.D.Tex., PTAB (2013).
- Optovue as lead counsel in defending a patent infringement action relating to an ophthalmic imaging technique (optical coherence tomography) brought by a competitor against its core product line. Developed invalidity defense by nationalizing foreign inventor prior art, cross-asserted in-licensed patents, and prepared and filed ex parte reexamination proceedings that resulted in the cancellation of all claims of an assignor estoppel patent asserted in the litigation. Negotiated settlement on terms very favorable to Optovue. Carl Zeiss Meditec Inc. v. Optovue Inc., D. Del., D. Mass, SPTO (2010-2012).
- Fluxion Biosciences in defending a patent litigation in the Northern District of California and prosecuting three inter partes patent reexaminations and one ex parte patent reexamination before the U.S. Patent and Trademark Office on patents relating to microfluidics and high-throughput patch clamp technology. Cellectricon AB v. Fluxion Biosciences, N.D. Cal., USPTO (2010-2011).
- Amgen in enforcing its U.S. erythropoietin (EPO) patents against Roche first before the ITC and then in a patent litigation action before a jury. Took a lead role in preparing Amgen's rebuttal validity case regarding obviousness and obviousness-type double patenting (ODP), including at a jury trial and in a bench hearing regarding ODP. The jury returned a verdict in Amgen's favor on both infringement and validity for each of the asserted patents and the court entered final judgment and a permanent injunction in Amgen's favor. Amgen Inc. v. F. Hoffman La-Roche Ltd., D. Mass, ITC, Fed. Cir. (2005-2008).
- Amgen in a contractual dispute with Johnson & Johnson regarding J&J's demand to seek separate FDA licensure on Amgen's recombinant EPO. Prepared and presented key contract witness at arbitration and assisted in the presentation and cross-examination of other witnesses at trial. Johnson & Johnson v. Amgen Inc. / Arbitration for Separate BLA (2004-2006).
- Amgen in enforcing its EPO patents against Hoechst Marion Roussel and TKT. Participated as a member of the trial team in a bench trial before the District Court of Massachusetts and assisted with appellate briefing. Amgen Inc. v. Hoechst Marion Roussel (Aventis) and Transkaryotic Therapies (TKT), D.Mass., Fed. Cir. (1999-2001; 2003).
Perspectives
Recognition
Northern California Super Lawyers
(2013-2023)
Managing Intellectual Property
"Patent Star" (California) (2017-2023)
"Top 250 Women in IP" (2017-2019, 2023)
Litigation (2014)
"Top 250 Women in IP" (2017-2019, 2023)
Litigation (2014)
LMG Life Sciences Guide
"Life Sciences Star" — General Patent Litigation (2018-2022)
"Life Sciences Star" — Hatch-Waxman Patent Litigation (2020)
"Life Sciences Star" — Intellectual Property (Palo Alto) (2016-2018)
"Life Sciences Star" — Hatch-Waxman Patent Litigation (2020)
"Life Sciences Star" — Intellectual Property (Palo Alto) (2016-2018)
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Credentials
Education
- J.D., Columbia Law School, 1998
- B.S., Biology, Stanford University, 1995, with honors
- B.A., Political Science, Stanford University, 1995, with honors and distinction
Admissions
- California
- U.S. District Court, Northern District of California
- U.S. District Court, Central District of California
- U.S. District Court, Eastern District of California
- U.S. Court of Appeals for the Federal Circuit
- U.S. Court of Appeals for the Ninth Circuit
- U.S. Patent and Trademark Office
Activities
- Editor-In-Chief, BNA's Patent Litigation Strategies Handbook; Co-Author Chapter 9: "Biosimilars: The New Abbreviated Regulatory Approval Pathway"; Co-Author Chapter 10: "Biotechnology Patent Litigation"
- Member, Steering Committee, Patent Litigation Best Practices, Sedona Conference Working Group #10, Co-Chair of Bio-Pharma Drafting Group
- Member, SF Bay Area Intellectual Property Inns of Court