Sanya Sukduang concentrates on patent litigation before federal district courts and the U.S. Court of Appeals for the Federal Circuit, and post-grant proceedings before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO), primarily in the areas of biotechnology, pharmaceuticals, biologics, diagnostics, and medical devices. He has conducted all aspects of pre-trial, trial, post-trial, and inter partes review (IPR) proceedings before the PTAB. Mr. Sukduang has extensive experience in cases arising from the filing of Abbreviated New Drug Applications (ANDA). He advises clients on an array of issues concerning biologics, including due diligence investigations and strategic patent portfolio planning.
Mr. Sukduang lectures in the United States and abroad on biologics and biosimilars arising under the Biologics Price Competition and Innovation Act (BPCIA) and has authored numerous articles on this topic.
- Forest Labs v. Apotex (D. Del.). Successfully represented Forest Labs as co-lead counsel in an ANDA litigation for its Savella® (milnacipran) product for the treatment of fibromyalgia against multiple generic drug manufacturers, resulting in a finding of infringement and validity of all asserted claims.
- Eli Lilly and Co. v. Wockhardt Ltd. (S.D. Ind.). Successfully represented Eli Lilly 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.
- Boston Heart v. Health Diagnostic Laboratories (PTAB). Successfully represented HDL as lead counsel in an IPR brought by Boston Heart related to HDL’s patent directed to screening methods for pre-diabetes, resulting in PTAB denying instituting the petition.
- Bonutti v. ConforMIS, Inc. (D. Del.). Lead counsel in obtaining a successful settlement for ConforMIS in a case relating to customizable knee implants.
- Monsanto v. Syngenta (D. Del., Fed. Cir.). Represented Syngenta Seeds in successfully obtaining summary judgment of non-infringement and invalidity regarding genetically modified corn.
- Boston Heart v. Health Diagnostic Laboratories (D. Mass.). Lead litigation and ex parte reexamination counsel in defending HDL against patent infringement allegations related to HDL’s SLCO1B1 genetic test.
- Medac Pharma Inc. v. Antares Pharma Inc., (D.N.J., PTAB). Lead litigation and IPR counsel in obtaining a successful settlement for Antares against allegations of infringement concerning Antares' Otrexup® (subcutaneously injectable methotrexate).
- Forest Labs v. Sigmapharm (D. Del.). Co-lead counsel representing Forest Labs in an ANDA litigation for its Saphris® (asenapine) product for the treatment of schizophrenia and bipolar disorder against multiple generic drug manufacturers.
- Served as chair of Finnegan's Diversity and Inclusion Committee, 2014-2016.
- Serves as an adjunct professor of Hatch-Waxman litigation, Washington College of Law, 2013-present, and previously as an adjunct professor of patent law, Howard University Law School, 2007-2012.
Click here for full list of litigation experience highlights.
- Recognized as a Washington D.C. "Rising Star," 2013; and "Super Lawyer," 2014-2016, in Intellectual Property and Intellectual Property Litigation, Super Lawyers published by Thomson Reuters.
- "Intellectual Property: Life Sciences Star", LMG Life Sciences, 2012-2015.
- Recipient of the National Asian Pacific American Bar Association’s "Best Lawyers Under 40," 2013.
- Recipient of Eli Lilly and Company’s "Quality Advocate Award," 2011.
- 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 Council (Board of Directors, 2002-present)
- American Intellectual Property Law Association
- Coauthor. "Amgen and Sandoz: Battle over Neupogen Biosimilar "Shall" Continue," BioPharm International, June 5, 2015.
- Coauthor. "Zarxio's® Approval: Some Insights and Unanswered Questions Regarding the Future of U.S. Biosimilars," AIPLA Food and Drug Committee Newsletter, March 2015.
- Coauthor. "Leveraging the U.S. Design Patent System to Protect Innovative Product Designs," ABPI Magazine, July/Aug. 2014.
- Coauthor. "Inter Partes Review in Generic Drug Litigation—Why the USPTO Should Exercise Its Discretion to Deny IPR Petitions in Appropriate Hatch-Waxman Act Disputes," pharmaphorum, March 7, 2014.
- Coauthor. "Drug Patents Under Fire in Brazil," Pharmaceutical Executive, June 4, 2013.
- 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.