Nicholas Groombridge

Partner

Weil, Gotshal & Manges LLP

Current

Current

Yeda v. ImCloneLead counsel for plaintiff in action to correct inventorship of patent covering the use of ImClone's monoclonal antibody Erbitux® (cetuximab). Following a three-week trial the district court issued a 140-page decision finding in Yeda’s favor on all issues and ordering complete substitution of inventors, effectively transferring control of the patent from ImClone to Yeda. The trial and subsequent decision were the subject of extensive media coverage. The case is currently on appeal. LG Electronics v. IridianLead counsel for patent owner Iridian in pending patent infringement and breach of contract action involving technology for biometric identification. Applera v. StratageneLead counsel for plaintiff in pending action for infringement of patent on realtime PCR instruments, a technology that has transformed research and diagnosis based on DNA analysis. The court issued a Markman ruling in favor of Applera on all disputed claim terms. Enzo Biochem v. AppleraLead counsel for defendant in pending action involving patents relating to labeling and detection of oligonucleotide probes. Israel Bio-Engineering v. AmgenLead counsel for intervenor Yeda Research & Development Co. in a patent infringement action involving the blockbuster biologic Enbrel® (etanercept). Mr. Groombridge headed a litigation team that successfully moved for summary judgment dismissing the action on the basis that the plaintiff lacked standing to assert the patent. The case is currently on appeal. SmithKlineBeecham v. PerrigoLead counsel for plaintiff in case to enforce patents on consumer product Citrucel®. Case settled on favorable terms. Genetic Technologies v. Celera GenomicsLead counsel for defendant in action for infringement of controversial patents alleged to cover use of non-coding genomic DNA sequences for diagnosis or gene mapping. The accused products included the Celera Discovery System®, a leading bioinformatics drug discovery tool. After protracted litigation the case settled on favorable terms. Datamize v. FidelityLead counsel for defendant E*TRADE Securities in patent infringement action in Marshall, TX in which plaintiff alleged that the web-based trading platforms used by a number of major participants in the online trading industry infringe its patents. Case settled favorably after Markman hearing. Donnelly v. Reitter & SchefenackerLead counsel for Donnelly in a multinational patent dispute including six lawsuits in US and three in Germany. Donnelly prevailed in all major decisions, including the denial of the adverse party’s motion to dismiss for lack of jurisdiction, 189 F.Supp. 2d 696, a claim construction ruling following an evidentiary Markman hearing in which the court found in Donnelly’s favor on 31 out of 33 disputed claim terms; and two infringement proceedings in Düsseldorf, Germany in which the court granted judgment in favor of Donnelly. Zoltar v. GarminLead counsel for accused infringer Garmin in patent case involving wireless telephony. Following mediation the case settled for a fraction of the cost of defense. Trophy v. SchickLead counsel for accused infringer Schick Technologies in patent infringement action involving medical imaging devices. Case settled favorably after Schick moved for summary judgment on its non-infringement and best mode defenses. Western Atlas v. GarminLead patent counsel for defendant Garmin in case involving patents on GPS receivers. Plaintiff alleged that 70% of the defendant’s products were infringing. Mr. Groombridge was retained to replace prior patent counsel and promptly identified prior art invalidating all of the asserted patents. Case settled within several weeks for approximately the cost of defense. Bausch & Lomb v. KC PharmaceuticalsCounsel for plaintiff Bausch & Lomb in case to enforce patents on the company’s flagship product, ReNu® contact lens solution. Following motion practice in which the court rejected defendant’s attempts to rely on French law to avoid disclosure of key evidence, the case settled and the defendant agreed to withdraw the infringing product worldwide. Donnelly v. Britax Vision SystemsLead counsel for patent owner in multinational dispute on patent portfolio related to automotive parts including two infringement action in US and two patent nullity actions in UK. The dispute was settled worldwide on favorable terms following denial of adverse party’s summary judgment motion in the principal US action. M.D. Anderson Cancer Center v. The Liposome Co.Counsel for defendant The Liposome Company in patent infringement action involving the antifungal drug Ablecet® (amphotericin B lipid complex). Case settled on favorable terms following emergence of evidence that inventors published a disclosure of the invention more than one year before filing the patent application. Gentex v. DonnellyCounsel for accused infringer in series of patent litigations involving patents on electrochemichromic technology for use in the automotive industry. The district court granted summary judgment and the decision was affirmed by the Federal Circuit following oral argument by Mr. Groombridge. 69 F.3d 527. In re DoxorubicinMember of litigation team for respondent Cetus in ITC section 337 investigation involving a patent on the oncology drug Adriamycin® (doxorubicin). Mr. Groombridge participated extensively in international discovery proceedings on numerous issues including patent applicant’s knowledge of material undisclosed prior art. The ITC ultimately held the patent unenforceable based on this evidence. In re Nifedipine Patent LitigationMember of litigation team for plaintiff Pfizer in ANDA litigation involving a patent on the anti-angina drug Procardia® (nifedipine). Exxon Chemical Patents Inc. v. LubrizolMember of litigation team for plaintiff in patent infringement action involving antioxidant technology for use in motor oil. Mr. Groombridge was involved in locating key evidence of willful infringement used extensively at trial (jury found willful infringement and court entered judgment of $128 million, subsequently reversed on appeal). Lubrizol v. ExxonMember of litigation team representing Exxon in complex multinational dispute involving more than 20 patents on a variety of specialty chemical additives for motor oil. Mr. Groombridge was extensively involved in discovery proceedings in the US and as a member of an international litigation coordinating group responsible for managing strategy in parallel proceedings in the UK, Canada, France, Germany, Brazil and Japan.

London University

LL.B.

1981

Publication

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Recent Developments Affecting the Extraterritorial Reach of US Patents (Boston, May 09, 2007) Biotechnology Industry Organization (BIO) International Conventional

The Aftermath of MedImmune and eBay: When Can You Sue and When Can You Get An Injunction? (New York, April 20, 2007) New York Intellectual Property Law Association (NYIPLA), Big Questions in Recent IP Cases

Extraterritoriality and Related Principles: To What Extent Have and Should National Courts apply their Domestic Patent Laws and Policies to Activities in Other Countries? (New York, April 12, 2007) Fordham University School of Law: Fifteenth Annual International Intellectual Property Law & Policy Conference

Patent Reform Under Article III? The Current Term in the Supreme Court: Where We Are and Where We Are Going (Washington, DC, November 16, 2006) BNA’s Patent Litigation Strategies Update

The Hottest Issues in Claim Construction from Europe and the US, and Effective Strategies for Enforcing Biotech Patents in Europe and the US - A Comparative Analysis (London, September 26, 2006) 11th Bi-Annual Forum on Biotech Patenting, panel discussion

IP Mediation - Waste of Time or Efficient Tool? (New York, April 20, 2006) Fordham University School of Law: Fourteenth Annual International Intellectual Property Law & Policy Conference, panel Discussion

Marcus Evans Conference on Drug and Medical Device Litigation (New York, October 24, 2005) Workshop on pharmaceutical patent law

Parallel Importation of Patented Drugs (New York, April 01, 2005) Fordham University School of Law: Thirteenth Annual International Intellectual Property Law & Policy Conference

Case Study (New York, October 21, 2004) Nicholas Groombridge will be speaking at the Association of the Bar of the City of New York. The program is on the continuing fight over generic pharmaceuticals.

History & Background of Hatch-Waxman Litigation: Framing the Dispute (New York, October 21, 2004) Nicholas Groombridge speaks at the Association of the Bar of the City of New York. The program is on the continuing fight over generic pharmaceuticals.

Patent Law Day-Adverse Inferences and Substantial Defenses: Will Knorr-Bremse Change the Law of Willful Infringement and What Practical Consequences Will It Have? (MSU, September 13, 2004) Michigan State University College of Law

The Need for More Rigorous Economic Analysis in Proving Damages: An Interplay between Law and Economics (Stamford, CT, May 14, 2004) Law Seminar International -- An Advanced Worskhop on Calculating & Proving Patent Damages.

Federal Trade Commission Report on Patents: To Promote Innovation: The Proper Balance of Competition and Patent Law and Policy (New York, April 14, 2004)

35 U.S.C. § 271(g) and the Impact of Bayer v. Housey (New York, March 29, 2004) American Conference Institute - Third Advanced Forum on Biotech Patents

Recent Developments in Patent Law (New Jersey, May 02, 2003) Intellectual Property Law Summit, New Jersey Institute for Continuing Legal Education, Keynote Address

The FTC and Intellectual Property: A Look at the Future (New York, April 25, 2003) Panel Discussion, Fordham University School of Law: Eleventh Annual International Intellectual Property Law & Policy Conference

Patent Policy in the Pharmaceutical Industry. "The Orange Book: Pressures and Proposals for Reform." Sponsored by Syracuse University. (Syracuse, NY, April 09, 2003)

PIPLA Meeting and Dinner, "An Improved Orange Book? The Impact of the FDA's Proposed New Rules on Listing Patents for Approved Drugs." (Philadelphia, PA, January 16, 2003)

Fordham University School of Law Tenth Annual Conference on International Intellectual Property Law & Policy. (New York, NY, April 04, 2002)

Festo: A Practitioner’s Prediction in View of the Supreme Court’s Reaction to Oral Arguments (New York, February 22, 2002) New York Intellectual Property Law Association

Analysis of the Potential Impact of the FTC Antitrust and Intellectual Property Hearings. Sponsored by Weil, Gotshal & Manges LLP. (New York, NY, January 29, 2002)

Panel Discussion of Bountyquest.com (New York, October 01, 2001) MIT Enterprise Forum

Moderator, Patent & Related Law, "The 9th Annual International Intellectual Law & Policy Conference." Sponsored by Fordham University School of Law. (New York, NY, April 19, 2001)