Joshua Rosenkranz discusses his successful representation of Merck KGaA
New York appellate attorney Joshua Rosenkranz of Orrick discusses how he represented Merck KGaA in a Supreme Court case that the National Law Journal described as “the most significant patent infringement case to confront the biotech and pharmaceutical industries in a generation.”
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So it was a patent case, as you just said, and it threatened to shut down research, pharmaceutical research, in the United States. The Federal Circuit, which sits on all patent appeals, had come up with a ruling that it is patent infringement when you take a molecule, a compound, and use it in scientific research – even if you’re not gonna end up marketing that patented drug – but you’re using it to build upon it, to apply it as a control against other things that you are testing, to modify it in a way that makes it a no longer patented drug. And for Merck and many pharmaceutical companies that would have meant that they would have to go out of the United States if they wanted to do pharmaceutical research.
So it was a devastating blow to pharma and, particularly, biotech which, unlike Merck, doesn’t have overseas operations. Very often they’re just, you know, in California or New York, in their own little small laboratories. So I’ll never forget. This is, as you said, 2005, and I sat down with the client and I said, “Look, you have to seek Supreme Court review. This is too consequential for you to just take this without going higher. But I have to warn you. The Supreme Court does not take patent cases. It’s like one every three years. So the odds are overwhelmingly against you, but we have to go forward.” And we wrote this what I thought was a very compelling cert petition. The court granted cert, and that was the first in what has now been an almost deluge of patent cases that the Supreme Court has started taking.