Anthony J. Fitzpatrick

Representative Matters

• Arthrodesis Technology LLC v. Wright Medical Technology, Inc., Case No. 1:21-cv-00011-MN (D.Del. 2021-23). Lead counsel for Wright Medical in a patent infringement suit related to an ankle arthrodesis nail used for ankle fusion. Resolved case in advance of summary judgment on terms client found favorable.

• PeriphaGen, Inc. v. Krystal Biotech, Inc., et al. (Western District of Pennsylvania, 2020-22) (HSV-1 gene therapy): Co-lead counsel for plaintiff PeriphaGen in complex trade secret litigation. Case settled during discovery with the defendant making an upfront payment of $25 million, plus potential future payments totaling an additional $50 million. Law 360 Report on the Settlement

• In the Matter of Certain Tunable Lenses and Products Containing the Same (International Trade Commission, 2021-22) (focus tunable lenses): Lead counsel for the respondents Optotune and Edmund Optics in patent infringement case before the ITC. Resolved on favorable terms.

• UCB, Inc., et al. v. Catalent Pharma Solutions Inc., et al. (Eastern District of Kentucky, 2021) (pharmaceuticals: locasamide/Vimpat®): Co-lead counsel for Catalent, a leading contract development and manufacturing organization, in patent infringement litigation concerning a treatment for epilepsy. After we defeated the plaintiff’s motion for a preliminary injunction, the plaintiff voluntarily dismissed its case with prejudice.

• KneeBinding, Inc. v. Marker Volkl USA, Inc. (District of Vermont, Patent Trial and Appeal Board, and Court of Appeals for the Federal Circuit, 2015-20) (ski binding technology): Lead counsel for Marker Volkl in long-running patent infringement case concerning ski bindings. The Patent Trial and Appeal Board held that the asserted patent claims were unpatentable, and the Federal Circuit affirmed that decision. The plaintiff then stipulated to entry of judgment in favor of our client Marker Volkl.

• Spineology v. Wright Medical Technology (District of Minnesota and Court of Appeals for the Federal Circuit, 2015-2019) (medical device: surgical reamer): Lead counsel for Wright Medical in patent litigation concerning a surgical reamer. The Court granted summary judgment of non-infringement in favor of our client. Decision affirmed by the Federal Circuit on appeal.
• Alnylam Pharmaceuticals, Inc. v. Dicerna Pharmaceuticals, Inc. (Massachusetts Superior Court, 2016-18) (RNA interference technology): Member of Duane Morris trial team representing Dicerna against claims of trade secret misappropriation brought by Alnylam, a competing biotech company. Dicerna alleged the lawsuit was brought for the ulterior purpose of interfering with its business, and asserted counterclaims for abuse of process, tortious interference, and unfair trade practices. The counterclaims survived three rounds of dispositive motion practice. Case settled on the eve of trial.

• Teva v. Amneal (District of Delaware and Court of Appeals for the Federal Circuit, 2015-2018) (pharmaceuticals: glatiramer acetate/Copaxone®): Lead counsel for Amneal at trial of four-patent case concerning Teva’s multiple sclerosis drug Copaxone®. All patents held invalid for obviousness. Decision affirmed by the Federal Circuit on appeal.

• Depomed v. Actavis (District of New Jersey and Court of Appeals for the Federal Circuit, 2013-2019) (pharmaceuticals: tapentadol/Nucynta®): Lead counsel for Actavis at trial of patent case concerning opioid analgesic. Won judgment of non-infringement of Depomed’s last-to-expire patent. Decision affirmed by the Federal Circuit on appeal.

• AngleFix and UNC v. Wright Medical Technology (Western District of Tennessee and Patent Trial and Appeal Board, 2013-2017) (medical device: bone screws and plates): Lead counsel for Wright Medical in patent litigation concerning bone screws and plates. Won IPR challenge against 27 of 39 asserted patent claims. In District Court, won motion to exclude key opinions of plaintiffs’ technical expert, and won summary judgment of non-infringement on 8 of 12 remaining claims. In the wake of those rulings, the plaintiffs agreed to dismiss their case with prejudice, bringing a major four-year litigation to an end.
• LifeCell v. TelaBIO (New Jersey Superior Court, 2015-16) (medical device: extracellular matrix technology): Member of Duane Morris team representing biomedical device start-up company in trade secret litigation. Resolved on favorable terms.
• Howmedica and Stryker v. Wright Medical Technology (District of New Jersey and Court of Appeals for the Federal Circuit, 2011-2016) (medical device: hip prosthesis): Lead counsel for Wright Medical in patent litigation concerning total hip arthroplasty devices. Won favorable Markman claim construction ruling and summary judgment of non-infringement. Affirmed by precedential decision of the Court of Appeals for the Federal Circuit.
• Zond v. Taiwan Semiconductor Manufacturing Company Limited (District of Massachusetts, District of Delaware, Court of Appeals for the Federal Circuit, and Patent Trial and Appeal Board, 2013-2015) (semiconductor fabrication): Counsel for TSMC in complex, multi-jurisdiction patent dispute, including lead role in the largest-ever set of inter partes review proceedings before the PTAB. Resolved on favorable terms.
• Commonwealth Laboratories v. Genova Diagnostics (Southern District of Florida, 2014) (diagnostic testing): Lead counsel for Genova Diagnostics in patent litigation concerning diagnostic test for intestinal bacterial overgrowth. After we filed a motion to dismiss and indicated our intent to seek attorneys’ fees, the plaintiff dismissed its case with prejudice.
• Teva v. Actavis, et al. (District of New Jersey, 2013) (pharmaceuticals: rasagiline/Azilect®): Lead counsel in patent case concerning treatment for Parkinson’s Disease. Selected by multi-defendant group to deliver opening statement at trial on behalf of all defendants. Case settled on first day of trial.
• Nilssen v. Costco Wholesale (Northern District of Illinois and Court of Appeals for the Federal Circuit, 2005-11) (compact fluorescent light bulbs): Lead counsel for Costco in patent litigation concerning CFLs. Won summary judgment that the patents in suit were unenforceable due to inequitable conduct, and an award of attorneys’ fees. Both the summary judgment and the fee award were affirmed on appeal. Argued before the Federal Circuit on behalf of multi-defendant group including Wal-Mart and IKEA.
• King Pharmaceuticals v. Actavis (District of New Jersey, 2010-2011) (pharmaceuticals: delayed release morphine/Avinza®): Lead counsel for Actavis in two-week patent trial. We were retained to replace predecessor counsel shortly before trial. Case settled on favorable terms after trial.
• Wyeth v. Apotex (Southern District of Florida, 2008-2010) (pharmaceuticals: venlafaxine extended release/Effexor XR®): Lead trial counsel for Apotex in patent case concerning Wyeth’s blockbuster antidepressant Effexor XR. Case settled on favorable terms after two phases of a three-phase trial.
• Moisin v. Feit Electric (District of Massachusetts and Eastern District of Texas, 2005-2011) (compact fluorescent light bulbs): Settled patent case in Massachusetts on very favorable terms, including general release of claims against our client Feit Electric. When plaintiff filed a later case in Texas on a different patent against a different product, we successfully enforced the settlement agreement and had the new case dismissed with prejudice.
• Saint-Gobain Technical Fabrics America, Inc. v. Checkmate Geosynthetics, Inc. (Middle District of Florida, 2009-10) (fabric-based reinforcement products for construction applications): Lead counsel for plaintiff in patent litigation concerning pavement-reinforcing products. Established personal jurisdiction over foreign defendant based on promotion of its products at a U.S. trade show. Won default judgment of patent infringement, and permanent injunction, based on defendant’s failure to comply with its discovery obligations.
• EPIC Technologies v. Freescale Semiconductor (District of Massachusetts, 2008-09) (semiconductor packaging): Lead counsel for small semiconductor packaging company against industry giant Freescale, in case concerning patent infringement, misappropriation of trade secrets and unfair competition. Case settled on favorable terms.
• Accu-Time Systems v. Zucchetti (District of Massachusetts, 2005-08) (biometric technology): Lead counsel for Italian company in patent case concerning biometric technology. Argued and won a favorable Markman claim construction ruling. Following that ruling, the plaintiff dismissed its case with prejudice and did not appeal.
• Solaia Technology v. OPC Foundation, et al. (Eastern District of Wisconsin, 2003-06) (industrial automation): Lead counsel for standards-setting organization in complex patent-related antitrust litigation. Case dismissed as against our client.
• AccessCardio Systems v. Fincke (Massachusetts Superior Court, Business Litigation Session, 2004) (medical device: automated external defibrillator): Lead counsel for start-up medical device company in litigation against founder who left company. Founder had no written agreement with company, and he refused to assign key intellectual property to the company. Won injunction preserving the company’s rights in the IP.

Admissions

• Republic of Ireland
• Massachusetts
• Supreme Court of the United States
• U.S. Court of Appeals for the Federal Circuit
• U.S. Court of Appeals for the First Circuit
• U.S. Court of Appeals for the Sixth Circuit
• U.S. District Court for the District of Massachusetts
• U.S. District Court for the Eastern District of Wisconsin

Education

• Boston University School of Law, J.D., 1993
• The Honorable Society of King's Inns, Barrister at Law, 1988
• University College Dublin, B.C.L., 1986

Experience

• Duane Morris LLP
  - Partner, 2000-present
  - Associate, 1999
• Burns & Levinson LLP, Boston, Massachusetts
  - Associate, 1993-1999
• Looney & Grossman, Boston, Massachusetts
  - Foreign Associate, 1989-1993

Professional Activities

• Law360's Editorial Advisory Board for Massachusetts, 2024

• Boston Bar Association
  - Board of Editors, Boston Bar Journal, 2001-04
  - Certificate of Distinguished Service, 2004
  - Amicus Committee, 2004-16
  - President's Award, 2016

Honors and Awards

• Listed in IAM Patent 1000: The World's Leading Patent Professionals, 2024
• Named a Massachusetts Go To Lawyer for IP Law by Massachusetts Lawyers Weekly, 2023
• Shortlisted by LMG Life Sciences for its General Patent Litigator of the Year: New England Awards, 2019, 2022, 2023

• Listed in LMG Life Sciences Intellectual Property Stars, 2018-2023

• Named as an "IP Star" in Managing Intellectual Property, 2013, 2015-2023

• Listed in Massachusetts Super Lawyers and New England Super Lawyers, 2004-2012 and 2014-2020

• Named on multiple occasions to the Irish Legal 100, which is Irish America magazine's listing of the leading Irish and Irish-American lawyers practicing in North America

Selected Publications

• Quoted in "What Mass. Attys Will Be Watching In The 2nd Half Of 2024," Law360, July 30, 2024
• Co-author, "FDA Adopts ISO Standard for Device Makers in New Rule," Duane Morris Alert, March 18, 2024
• Quoted in "What To Watch In Massachusetts Courts In 2024," Law360, January 1, 2024
• Quoted in "FDA's Lack Of Power May Limit FTC's Patent Challenge," Law360, November 17, 2023
• Author, "Life Sciences Trade Secrets: Emerging Trends," Life Sciences Intellectual Property Review, May 7, 2023
• Quoted in "Humira: Lessons From 20 Years of Patents, Pricing and Profits," Life Sciences Intellectual Property Review, March 23, 2023
• Co-author, "Federal Circuit Holds That, for Venue Purposes, Patent Infringement Occurs Only in Districts Where Actions Related to ANDA Submissions Occur," Duane Morris Alert, November 18, 2020
• Quoted in "Rare HHS Patent Suit May Impact HIV Drug Pricing, Access," Law360, November 14, 2019

• Quoted in "Baker vetoes patent reform language in last-minute blow to tech industry," Boston Business Journal, August 13, 2018

• Quoted in "One of Boston's Best-Known Companies is on the Verge of Trademarking 'Boston 2024," Boston Business Journal, June 10, 2015

• Co-author, "Supreme Court Establishes 'Totality of the Circumstances' Framework for Determining Whether Attorney's Fees Should Be Shifted in Patent Cases," Duane Morris Alert, May 6, 2014

• Quoted in "Drug Maker's Legal Battle with the FDA Delays Generic Competition," InsideCounsel, January 28, 2013
• Co-author, "Biosimilars Now Just About Ready to Roll," Genetic Engineering & Biotechnology News, September 1, 2012
• Quoted in "A Comeback for the Federal Circuit: This term, the Supreme Court is no longer the 'court of correction'," ABA Journal, September 2011
• Quoted in "Special Report: A Quick Summary of the New U.S. Supreme Court Decisions," Intellectual Property Watch, June 24, 2011
• Author, "Winning Patent Cases in a Challenging Legal Environment," chapter in Litigation Strategies for Intellectual Property Cases (Thomson Reuters/Aspatore 2011)
• Quoted in "Bilski Headlines Influential IP Rulings in 2010," IP Law360, January 1, 2011
• Profiled by Law 360, July 8, 2009

• Featured in "Patent Litigation Roundtable: Recent Decisions Mean Big Changes," GC New England, May 2008

• Quoted in "Lawyer Fitzpatrick Comments on U.S. Supreme Court Patent Case," Bloomberg News, June 26, 2006
• Quoted in "Buyer Beware; An IT vendor's legal entanglements can snare its customers" and sidebar "Protect Yourself," Computerworld, January 25, 2007
• Co-author, "New Terrain," 8-K: The Legal Magazine for Business Executives, Fall 2006
• Quoted in "Supreme Court Set to Review Obviousness," IP Law360, June 26, 2006
• Quoted in "Patent Holders Suffer a Setback," Lawyers USA, June 5, 2006
• "Dealing With Patent Trolls," Counsel to Counsel, January 2006
• Co-author, "Automatic Disclosure Requirements in Federal Court - Avoiding the Bark Behind the Bite," Boston Bar Journal, May/June 2004

• Co-author, "The Internet Domain Name Landscape in the Wake of the Government's 'White Paper'," Boston Bar Journal, November/December 1998

• Co-author, "Preliminary Injunctions in Biotechnology Patent Cases," High Technology Law in the Twenty-First Century, September 1997 The Journal of Biolaw and Business, Summer 1998

• "Law and the Internet," Insights, Newsletter of the American Consulting Engineers Council of New England, May/June 1998

• Co-author, "Electronic Theft Could Create Vicarious Liability," The National Law Journal, April 17, 1995

• "Copyright Law and the Public Domain," National Association of Desktop Publishers Journal, January 1995
• "Writing the Book on Multimedia Copyrights," National Association of Desktop Publishers Journal, December 1994

Selected Speaking Engagements

• Speaker, "How are the Courts Approaching Product Hopping?" Pharma Law USA Conference, October 8, 2024
• Panelist, “Business and Legal Trends Impacting Emerging Technologies: How to Protect IP in an Increasingly Challenging Legal Environment,” Duane Morris Life Sciences GC Bootcamp Series, May 23, 2023

• Speaker, "PTAB Practice Post-SAS - What You Need to Know," Boston Bar Association, December 3, 2018

• Speaker, "Patent Venue After TC Heartland: What We've Learned So Far," Boston Bar Association, September 27, 2017

• Speaker, "Concurrent Proceedings before PTAB and District Courts," 12th Annual Advanced Patent Law Institute, United States Patent and Trademark Office, Alexandria, VA, March 9, 2017

• Chair, 18th Annual New England Intellectual Property Conference, Massachusetts Continuing Legal Education, Boston, June 15, 2015

• Speaker, 17th Annual New England Intellectual Property Conference, Massachusetts Continuing Legal Education, Boston, June 19, 2014

• Speaker, "Scary Monsters and Super Creeps? Strategies for Dealing with Patent Assertion Entities, Non-Practicing Entities, and 'Patent Trolls,'" MedTech Intellectual Property Issues Round-Up, Waltham, Massachusetts, September 13, 2013

• Participant, American Conference Institute's Paragraph IV Disputes Conference, New York City, April 23, 2012

• Speaker, "Biosimilars: Emerging Legal Challenges," Strafford Legal Briefings, December 6, 2011

• Speaker, "Patents and Standards-Setting," Connectivity Week Smart Grid Conference, Santa Clara, California, June 10, 2009
• Moderator, "Inequitable Conduct: Which Standard? What Evidence?" panel discussion, Intellectual Property Association 2008 Annual Meeting, San Diego, California, September 23, 2008
• Panelist, "Defending Against the Patent Troll Threat," Strafford Legal Briefings, March 14, 2006

• Speaker, "Venue in Patent Litigation: New Strategies After Genentech and TS Tech USA, Determining the Best Forum for Pursuing or Defending Patent Infringement Claims," Strafford Legal Briefings, August 4, 2009

• Speaker, "Patent Litigation in the Wake of the Supreme Court's eBay Decision," IP Law360 seminar, September 13, 2006