| Biography:
Colin G. Sandercock is a partner in the Litigation and Dispute Resolution Department of Proskauer Rose LLP, co-chair of our Life Sciences Group, and is co-managing partner of the Washington, D.C. office. He practices in the area of life sciences, including licensing, patent and trademarks, and intellectual property. Colin was named in the 2007 and 2008 editions of The Best Lawyers in America in the field of biotechnology law, and in the 2008 edition of Washington DC Super Lawyers, as one of the top attorneys in the Washington, DC, Metro Area in the field of Intellectual Property law.
Since 1984, Colin has counseled clients in life science matters including district court litigation, interferences, licensing and the management of domestic and foreign patent portfolios. His technical experience includes biotechnologies, pharmaceutical chemistry, organic and inorganic chemistry, medical devices, and chemical and biochemical engineering.
Colin has served as an adjunct professor of law at George Washington University Law School, lecturing on the licensing of intellectual property rights. Colin served on the AAA Patent Advisory Committee for patent disputes, and previously chaired the Electronic Records ad hoc Subcommittee of the AIPLA Interference Committee. He also chaired the Annual Electronic Records Conferences in London in 1999, 2000, 2002 and 2004. He has served as legal counsel to CENSA (Collaborative Electronic Notebook Systems Association) and frequently lectures on the topics of electronic record keeping for use in research, litigation and interferences.
Colin obtained his B.S. in chemistry and mathematics from Moravian College in 1978 and his M.S.E. in chemical and biochemical engineering from the University of Pennsylvania in 1980, where he was a recipient of the Ashton Fellowship from 1979-1980. He received his J.D. from The Catholic University of America in 1984.
Colin is admitted to practice in the District of Columbia; the U.S. Court of Appeals for the Federal Circuit; the United States Supreme Court; the U.S. Patent and Trademark Office; and the District Courts of the District of Columbia and the Western District of Wisconsin. He has been admitted to appear for purposes of specific litigations in several other courts around the country.
Colin is a member of the District of Columbia Bar Association, the Licensing Executives Society, the American Intellectual Property Law Association, the New York Biotechnology Association, and the Federal Circuit Bar Association.
Representative Matters
Cerner Corp. v. Visicu (W.D. Miss 2005); and Visicu v. iMDsoft and LVH (E.D. Pa 2007)
- Currently represents patent holder Visicu in two actions against accused infringers of Visicu's patents relating to systems and methods for remotely monitoring Intensive Care Unit patients. The action against Cerner was stayed pending reexamination of one of Visicu's patents, but reexamination is now successfully completed and discovery is now ongoing in both cases.
Innogenetics N.V. v. Abbott Laboratories; Innogenetics N.V v. Third Wave Technologies, Inc. (W.D. Wisc. 2005)
- Represented Innogenetics in an action for patent infringement against Abbott Laboratories on Innogenetics’ patent for genotyping Hepatitis C Virus. We obtained verdicts of infringement of the three asserted claims, no invalidity, and no unenforceability, sanctions, damages and an injunction preventing further sales by Abbott of its infringing HCV assays. On appeal, the Federal Circuit affirmed the infringement and validity of two of the three claims (and remanded the third for re-trial on one of the patents), affirmed the sanctions and damages, and replaced the injunction with a permanent a compulsory license that required Abbott to pay royalties to Innogenetics for any further sales of infringing HCV assays. The parties resolved the litigation by in April 2008 with Abbott agreeing to pay Innogenetics $9.5 million dollars plus a royalty for future HCV genotyping assays in exchange for a worldwide license under Innogenetics HCV and HBV genotyping patents.
Innogenetics N.V v. Third Wave Technologies, Inc. (W.D. Wisc. 2005)
- Represented Innogenetics in an action for patent infringement against Third Wave Technologies on Innogenetics’ patent for genotyping Hepatitis C Virus. Following initial discovery, the parties settled favorably to Innogenetics, with Third Wave taking a license to the Innogenetics patents.
Regents of the University of California and Boston Scientific Corp. v. Microtherapeutics Inc et al. (N.D. Cal. 2004)
- Represented MTI in an action for infringement brought by the Regents for infringement of 12 patents relating to the repair of brain aneurysms by implanting platinum microcoils therein. Nine other corresponding worldwide litigations, as well as several EPO oppositions also were ongoing. MTI counterclaimed for antitrust violation against the Regents and Boston Scientific Corp. The litigation was successfully completed in March 2008, with MTI receiving a worldwide license to operate under all of the asserted patents.
PPC v. Corning Gilbert; PPC v. Arris International (W.D. Wisc. 2003) (W.D. Wisc. 2003)
- Represented PPC in jury trials against a Corning division and Arris International over a coaxial cable connector patents. Obtained jury verdicts for PPC in both cases, resulting in Corning Gilbert discontinuing sales of infringing products and Arris licensing its infringing products.
Ecolab v. JohnsonDiversey (D. Minn. 2003)
- Represented accused infringer JohnsonDiversey in case involving high speed bottling conveyor lubricants. Successfully defeated Ecolab’s motion for a preliminary injunction to stop JohnsonDiversey from selling its lubricants to PepsiCo; case settled favorably to JohnsonDiversey following remand by the Court of Appeals for the federal Circuit.
MorphoSys Ag v. Cambridge Antibody Limited (D.D.C. 1999) (D.D.C. 2000) (D.D.C. 2001)
- Represented MorphoSys AG as declaratory judgment plaintiff in a series of three lawsuits against Cambridge Antibody Technologies (CAT) relating to antibody phage display technology. The first was tried to a hung jury in March 2001. Following post-trial briefing, we successfully obtained summary judgment of non-infringement in that lawsuit in March 2002. Following numerous other procedural victories by MorphoSys in the other three suits, CAT settled seven litigations and oppositions worldwide with MorphoSys in December 2002 and granted it a worldwide license to its phage display technology.
Applied Molecular Evolution v. MorphoSys Ag (D. Mass. 2001)
- Represented MorphoSys AG as defendant in suit brought by AME on a series of five patents relating to molecular evolution. In January 2003, the magistrate recommended granting MorphoSys’ motion for summary judgment of noninfringement (and holding MorphoSys’ other summary judgment motions for invalidity of the AME patents as moot). Thereafter, the Judge held a Markman hearing. Following acquisition of AME by Eli Lilly & Co. in 2005, MorphoSys and Lilly settled the case, with Lilly entering into a collaboration and license agreement with MorphoSys to develop antibodies using MorphoSys' phage display technology.
Incyte v. Gene Logic (N.D. Cal 1999)
- Represented accused infringer Gene Logic against Incyte on three patents relating to reagents for making RNA samples and one bioinformatics patent relating to DNA/protein databases. The case settled in January 2001 with Gene Logic receiving licenses under all patents-in-suit.
Nutrinova AG v. SanHe (I.T.C. 1997)
- Represented German manufacturer of high potency sweetener Acesulfame K (found in Pepsi One) in International Trade Commission action against Chinese manufacturer. No infringement found.
Amgen v. Boehringer Mannheim
- From 1996 to 1999, served on worldwide litigation team for Boehringer Mannheim in its European patent disputes with Amgen relating to erythropoietin. BM was purchased by Roche in 1999 and all European cases ultimately were settled favorably to Roche.
NeoStrata v. Neoteric (D. Conn. 1994)
- Represented patentee in infringement action on patent cover the use of alpha hydroxy acids for treatment of dry skin. Case settled favorably after discovery.
Colin also has served as counsel in several litigations involving license and numerous inventorship disputes, including (i) acting on behalf of the Wisconsin Alumni Research Foundation in its litigation with Geron Corporation over a license involving stem cells and stem cell patents WARF v. Geron Corp (W.D. Wisc. 2001), which ended with a successful settlement, (ii) serving as the arbitrator in a license dispute involving the University of California and an international pharmaceutical company over the patent rights resulting from UC's research in the area of certain infectious diseases; serving as counsel in a license dispute involving commercial rights to therapeutic antibodies (successfully settled); (iii) acting on behalf of a licensee of Stanford University in a successful arbitration against a Massachusetts research institution over inventorship of a drug for treating psychotic major depression; (iv) serving as an expert on US Licensing law for Pasteur Institute in its ongoing French litigation with Abbott Laboratories over royalties for HIV assays, and (v) serving as counsel to Agrevo in a licensing dispute with Monsanto (ultimately settled) over rights to transgenic plant patents. Colin also obtained a patent portfolio of over seventy patents for alpha hydroxy acids dermatological products for treating wrinkles and aging related skin changes, and patents from that portfolio have been successfully asserted in over a dozen litigations and have generated well over $75 million dollars in both litigation damages and licensing fees.
Publications
- "Let's Make a Deal," Legal Times,
November 4, 2002.
- “In-licensing Agreements for Biotech Demand Due Diligence from All Parties,” Legal Times, November 4, 2002.
- “Database Systems Evolve in a Biotechnology Arena: Bioinformatics Has Sparked New Methods to Store Info and Innovative Ways to Protect It,” The National Law Journal, March 27, 2000.
- “Under Strict Rules, Electronic Records Can Enter,” The National Law Review, June 22, 1998.
- “Hilton Davis: The Discussion Heats Up on the Doctrine of Equivalents,” International Legal Strategy, 1996.
- “Guidelines for Creating Reliable Electronic Records to Prove a Date of Invention,” Journal of the Japanese Group, AIPPI, 1996.
- “Creating Reliable Records on the Internet,” Symposium on Strategic Use of the Internet to Accelerate Drug Development, 1996.
- “Hilton Davis: What Does (Will) It Mean?” AIPLA Basic Biotechnology and Chemical Practice Seminar, 1996.
- “Interferences and Reexaminations in Biotechnology Cases,” ATCC Biotechnology Patent Forum, 1995.
- “GATT and WTO Practice Changes,” FordhamUniversity Patent Forum, 1995.
- “Creating Reliable Electronic Records,” Electronic Records Consortium sponsored by the U.S. Patent & Trademark Office, 1995.
- “Biotechnology Litigation,” Patent Resources Group, 1993-1997, co-author.
- “Federal Circuit Patent Practice,” series, AIPLA Selected Legal Papers, 1988-1990, co-author, co-editor.
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