Sanya Sukduang

Partner

Sanya Sukduang concentrates on patent litigation before the federal district courts and the U.S. Court of Appeals for the Federal Circuit, primarily in the areas of biotechnology, pharmaceuticals, and biologics. He has conducted all aspects of pre-trial, trial, and post-trial proceedings. Mr. Sukduang has extensive experience in cases arising from the filing of Abbreviated New Drug Applications (ANDA). Mr. Sukduang has also advised clients on an array of issues, including due diligence investigations, strategic patent portfolio planning, and reexaminations before the U.S. Patent and Trademark Office.

Mr. Sukduang lectures in the U.S. and abroad on biologics and biosimilars arising under the Biologics Price Competition and Innovation Act (BPCIA) and has authored numerous articles on this topic.

Highlights

• Galderma Labs. v. Tolmar Inc. (D. Del.). Successfully represented Galderma in an ANDA litigation for Differin^® 0.3%, Gel against generic drug manufacturers asserting multiple invalidity and unenforceabilty defenses.
• Eli Lilly and Co. v. Wockhardt Ltd. (S.D. Ind.). Successfully represented Eli Lilly and Company in an ANDA litigation for its blockbuster drug Cymbalta^® against multiple generic drug manufacturers, resulting in orders and judgment maintaining Cymbalta's^® market exclusivity through the end of its patent life.
• Ariad v. Eli Lilly and Co. (Fed. Cir.). Member of appellate team in successful appeal involving the written description requirement under 35 U.S.C. § 112 and overturning a $65M damages award.
• Monsanto v. Syngenta (D. Del.). Represented Syngenta Seeds, Inc. in successfully obtaining summary judgment of non-infringement and invalidity regarding genetically modified corn.
• Lead trial counsel in a pro bono adoption proceeding successfully assisting a foster mother's efforts to adopt her three year old foster daughter.
• Serves as an adjunct professor of Patent Law, Howard University Law School, 2007-present.
• Serves as chair of Finnegan's Diversity and Inclusion Committee.

Professional Recognition

• Listed in LMG Life Sciences as an Intellectual Property: Life Sciences Star, 2012.
• Recipient of Eli Lilly and Company's "Quality Advocate Award," 2011.

Professional Activities

• Asian Pacific American Bar Association (chair of partner’s forum, 2008-2009; newsletter editor, 2007-2008; secretary 2006-2007; vice-president of programs, 2003-2006)
• Maryland Patent Law Association (president 2005-present; vice president, 2001-2005)
• Asian Pacific American Bar Association Education Fund (Board of Directors, 2000-2002)
• Washington College of Law, Dean’s Diversity Counsel (Board of Directors, 2002-present)
• American Intellectual Property Law Association

Select Publications

• Coauthor. "Assessing Materiality and Intent in a Post-Therasense World," BNA's Patent, Trademark & Copyright Journal, Feb. 15, 2013.
• Coauthor. "Summary of FDA Public Hearing Regarding Draft Guidances Relating to the Development of Biosimilar Products," Finnegan IP Update, May 17, 2012.
• Coauthor. "A Summary of the Supreme Court's Prometheus Decision," Finnegan IP Update, March 21, 2012.
• Coauthor. "Summary of FDA Draft Guidance on BPCIA," Finnegan IP Update, March 16, 2012.
• "FDA's Proposed Performance Goals for Biosimilar Applications May Provide Some Certainty for Biologics Companies," Bloomberg Law Reports, June 7, 2011.
• Coauthor. "The FDA's Hearing on Biosimilars: What Did We Learn?" Finnegan IP Update, Nov. 19, 2010.
• Coauthor. "Follow-On Biologics: Is Your Patent Portfolio Ready?" Law360, March 23, 2010.
• Coauthor. "Follow-On Biologics: A Patent Litigation Perspective," Pharmaceutical Commerce, Aug. 22, 2009.
• Coauthor. "Injunction Must Provide Explicit Notice of Conduct Prohibited," Journal of Intellectual Property Law & Practice, Aug. 12, 2008.