Charles E. Lipsey
Charles Lipsey focuses his practice on intellectual property litigation, particularly patent infringement litigation. He has handled cases covering a diverse spectrum of mechanical, chemical, and electrical technologies, with an emphasis on cases involving biotechnology and pharmaceutical chemistry. Since joining Finnegan in 1978, Mr. Lipsey has amassed a wealth of experience in patent infringement litigation, patent arbitration proceedings, and patent interferences.
- Novozymes A/S v. DuPont Nutrition Biosciences (Fed. Cir.). Lead appellate counsel for DuPont in connection with alleged infringement of
modified-enzyme patent. JMOL in favor of DuPont sustained on appeal.
- Cephalon Inc. v. Mylan Pharmaceuticals Inc. (D. Del.). Lead trial counsel for Cephalon seeking to prevent generic competition with respect to narcolepsy drug Armodafinil. Trial court judgment for patent owner.
- Alzheimer's Institute of America, Inc. v. Avid Radiopharmaceuticals (E.D. Pa.). Lead trial counsel for Avid in suit brought by patent owner of technology used in searching for drugs to treat Alzheimer's Disease (AD). Jury verdict for Avid on issue of inventorship and patent ownership in April 2012. The trial disposed of a series of suits by AIA against numerous companies engaged in AD research.
- Eli Lilly and Co. v. Actavis Elizabeth LLC (D.N.J., Fed. Cir.). Lead trial and appellate counsel for Eli Lilly in suit to prevent generic competition for the ADHD drug Strattera®. Adverse judgment on issue of validity stayed pending appeal and ultimately reversed by the Federal Circuit.
- Sun Pharmaceutical Inds. v. Eli Lilly and Co. (E.D. Mich., Fed. Cir.). Lead trial and appellate counsel in action to prevent generic competition for
anti-cancer drug Gemzar®. One patent sustained. Second method patent found invalid based on expansion of law of double patenting. Left standing on petition for rehearing by 5-4 vote.
- Eli Lilly and Co. v. Sicor Pharmaceuticals, Inc. (S.D. Ind.). Lead trial counsel for Eli Lilly in suit to prevent generic competition for anti-cancer drug Gemzar®. One patent sustained at trial, recovery on second patent barred by Sundecision.
- AstraZeneca Pharmaceuticals LP v. Mylan Pharmaceuticals Inc. (D. Del., Fed. Cir.). Lead trial and appellate counsel for AstraZeneca in action to prevent generic competition with respect to cholesterol lowering drug Crestor®. Judgment for patent owner on all issues.
- Ariad v. Eli Lilly and Co. (D. Mass., Fed. Cir.). Lead trial counsel (on equitable defenses) and appellate counsel for Eli Lilly, sued for infringing patent on NF-ĸB inhibition. Federal Circuit issued landmark en banc opinion on the written description requirement and reversed adverse trial court judgment.
- Eli Lilly and Co. v. Teva Pharmaceuticals USA, Inc. (S.D. Ind., Fed. Cir.). Lead trial and appellate counsel for Eli Lilly in action to prevent generic competition with respect to osteoporosis drug Evista®. Two of three patent families in suit found valid and infringed.
- Eli Lilly and Co. v. Zenith Goldline Pharmaceuticals, Inc. (S.D. Ind., Fed. Cir.). Lead trial and appellate counsel for Eli Lilly in action to prevent generic competition with respect to antipsychotic drug Zyprexa®. Judgment for patentee on all issues affirmed on appeal.
- Bonito Boats Inc. v. Thundercraft Boats, Inc. (S. Ct.). Invited by the Court to brief and argue in support of lower court's judgment (in Thundercraft's favor). Case related to the constitutionality of state
anti-direct-molding statutes. Thundercraft prevailed by unanimous court.
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- Fellow, American College of Trial Lawyers.
- Recognized by Chambers USA as a leader in the field of intellectual property law, 2003-2016; and life sciences, 2009-2016.
- Recognized by The Legal 500 U.S. as one of the leading lawyers in patent litigation, 2011-2016.
- Recognized by Intellectual Asset Management as a leading patent litigator in the D.C. area, 2011-2016; and before the Federal Circuit, 2011-2016.
- Featured as one of the top ten U.S. life sciences patent litigators, June 2012; as an "Outstanding IP Litigator in Virginia," 2013; and as an "IP Star" in Virginia by Managing Intellectual Property, 2013-2016.
- Selected by his peers for inclusion in The Best Lawyers in America® since 1995; and for intellectual property litigation and patent litigation, 2005-2017.
- Inducted into LMG Life Sciences' Hall of Fame, Sept. 2014; recognized as "Hatch-Waxman (Branded) Litigator of the Year," LMG Life Sciences Awards, 2013; and as an IP: Life Sciences Star 2012-2016.
- Ranked among top U.S. patent lawyers in Legal Media Group's Guide to the World's Leading Patent Law Practitioners since 2011.
- Listed in Washingtonian Magazine as a "top IP lawyer," 2013-2014.
- Recognized as a Virginia "Super Lawyer" in Intellectual Property Litigation, Super Lawyers published by Thomson Reuters, 2006-2011.
- The District of Columbia Bar
- Virginia State Bar
- American Bar Association
- American Intellectual Property Law Association
- 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. "Useful in the United States, But Not in Canada: Divergent Applications of the Statutory Utility Requirements," Bloomberg Law Reports, Oct. 3, 2011.
- Coauthor. "Which Way to Go?" IP Law & Business, July 2008.
- Coauthor. "Patent Law Perspectives," Matthew Bender, 1982-1988.