Q&A With Fox Rothschild’s Gerry Norton

March 19, 2013 – In The News

Gerard P. Norton, Ph.D., is a partner in Fox Rothschild LLP's Princeton, N.J., office and chairman of the firm's intellectual property department. He has litigated complex matters pertaining to patents, trademarks, copyrights, trade secrets and breach of contract. He also counsels clients in the life sciences regarding: validity and scope of intellectual property rights; portfolio development; strategic positioning of corporate assets, opinion work and evaluating legal risk; evaluating third-party intellectual property rights and related U.S. Food and Drug Administration issues; representation of intellectual property matters; and transactions relevant to corporate acquisitions and divestitures. His clients include Fortune 100 companies as well as universities and other not-for-profit organizations.

Q: What is the most challenging case you have worked on and what made it challenging?

A: My most challenging matter was a multidistrict, seven-year, six-case, patent infringement litigation involving pioneering, gene-splicing technology. We represented Genentech against Eli Lilly and Company and The Regents of The University of California. The cases involving Lilly settled after two years of our involvement, with Lilly paying Genentech $145 million. Genentech was the accused infringer in the lawsuit involving UC, and damages were claimed at $2.2 billion. After a six-week trial that ended in a hung jury, the case settled 11 months later as we were preparing to retry it. Throughout the winding path of this litigation, I remembered the Golden Rule from my childhood and learned the importance of a good team as well as to not to take myself too seriously.

Q: What aspects of your practice area are in need of reform and why?

A: The outrageous costs of discovery in patent infringement litigations are having a chilling effect on the ability of small companies to bring these types of suits, and judges now seem to appreciate this fact. We represent one of 70 defendants in a patent infringement case where the judge sua sponte ordered limits on e-discovery: Email production requests shall identify the custodian, search terms and time frame. Specifically, the judge ordered that each requesting party limit its email production requests to a total of eight custodians and a total of eight search terms per producing party for all such requests. Relief such as this from the bench will help mitigate client litigation costs.

Q: What is an important issue or case relevant to your practice area and why?

A: The America Invents Act will obviously have a significant impact on how we practice patent law in the United States in the future. The change from first-to-invent to first-to-file creates friction between an applicant’s race to the patent office and its possession of sufficient written description and enablement of the patent application. It’s similar to the “Seinfeld” episode — when is a pizza really a pizza: when you place it in the oven or when you take it out? The post-grant review proceeding will also have a major impact on the practice of patent law. The burden of proof is less than in the district court.

In addition, my patent practice is focused on the life sciences industry, and recent and pending U.S. Supreme Court decisions — specifically Prometheus on patent ineligible subject matter involving personalized medicine and Myriad, currently on its second appeal and involving isolated DNA and screening methods — are materially impacting the way we advise clients.

In Prometheus, the claims at issue were directed to an application of a natural phenomenon — namely, the relationship between the concentration in the patient’s blood of certain metabolites following treatment with thiopurine drugs and the likelihood that the drug dosage will be ineffective or induce harmful side effects. The Supreme Court stated that “the relation is a consequence of the ways in which thiopurine compounds are metabolized by the body – entirely natural processes. And so a patent that simply describes that relation sets forth a natural law.” The Federal Circuit held that Myriad’s composition claims to "isolated" DNA molecules cover patent-eligible subject matter because each of the claimed molecules represents a non-naturally occurring composition of matter.

Q: Outside your own firm, name an attorney in your field who has impressed you and explain why.

A: I had the good fortune to be mentored for 10 years in patent litigation by Leora Ben-Ami of Kirkland & Ellis LLP. Leora has a national reputation as one of the finest pharma/biotech patent trial lawyers. Her trial work has been recognized by The American Lawyer, which named her one of "45 Under Forty-Five: The Rising Stars of the Private Bar," and The National Law Journal, which featured her jury trial verdict on behalf of ARIAD Pharmaceuticals against Eli Lilly in its annual "Defense Hot List." I hold a doctorate in biomedical sciences from Mount Sinai School of Medicine and a postdoctoral fellowship from Merck & Co. While I am able to understand complex small molecule and biotechnology cases with relative ease, Leora taught me the importance of simplifying the most complex technical issues so judges and jurors can understand and appreciate them.

Leora also showed me the art of cross-examination of your adversary’s expert witness. For example, pin the noninfringement expert down on what issue the expert disagrees with. Then ask the expert if the jury disagrees with him on that issue then the defendant infringes, correct. If the expert is truly an independent expert, then you will get the sound bite for the jury that you can focus on later in the trial.

Q: What is a mistake you made early in your career and what did you learn from it?

A: Fifteen minutes before the start of my first trial, I was kneeling on the floor and blocking the aisle while going over the files (more than 100 bankers boxes) that were on the perimeter of our side of the courtroom when Judge Constance Baker Motley entered the court from the same doors that everyone else uses. I was still on the floor blocking the aisle. One of the senior associates was trying to get my attention and finally said, “Gerry, Judge Motley is trying to get by.” I promptly stood up, bowed and apologized for being in her way. Needless to say, we won the case.

I learned that the courtroom is a special place, and one must always be aware of everything that is going on. After that trial, I wrote a 20-page memorandum for future team members on the dos and don’ts of going to trial. Top on the "don’t" list: Do not eat in court. I witnessed Judge Motley throw the adversary’s damages expert out of her court for reading the paper, drinking coffee and eating a doughnut during the trial. Top on the "do" list: Bring plenty of copies of the patent-in-suit to court each day. They are like ice at a picnic — you never have enough.

The opinions expressed are those of the author and do not necessarily reflect the views of the firm, its clients, or Portfolio Media Inc., or any of its or their respective affiliates. This article is for general information purposes and is not intended to be and should not be taken as legal advice.