Nicholas Groombridge

Lecturer in Law

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Nicholas Groombridge is co-chair of the Patent Litigation and Counseling practice in the firm's New York office.  Over the past 17 years, Mr. Groombridge has been extensively involved in all aspects of patent litigation, including trials (both bench and jury).  He has been lead counsel in numerous patent infringement actions in federal district courts, and has successfully argued cases in the Court of Appeals for the Federal Circuit.

 

Mr. Groombridge has litigated patents in a wide variety of technical areas with particular focus on pharmaceuticals and biotechnology.  In particular, he has handled numerous litigation and other matters involving assays, biologics, bioinformatics, diagnostics, drugs (both prescription and over-the-counter), drug delivery systems, and research tools for such clients as Applied BioSystems, Bausch & Lomb, Celera, GlaxoSmithKline, Monsanto, Novartis, Pfizer, Schering, Takeda and Yeda Research & Development.  His patent litigation experience also extends to a wide range of other technologies, including consumer products, specialty chemicals, automotive parts, financial services, GPS receivers and medical devices.  He specializes in cases that are both factually and procedurally complex - he has frequently been responsible for coordinating parallel litigations in multiple jurisdictions both within the US and abroad, and is adept at dealing with the complex and dynamic interplay of issues that arise when a client is both asserting its own patent rights and defending against charges of infringement.

 

Mr. Groombridge is a frequent speaker on current developments in patent law, particularly issues relating to the life sciences field as well as on the interplay between patent and competition law. He currently co-teaches a course on pharmaceutical patent law at Rutgers Law School.  He has been quoted on intellectual property law issues in leading professional and business publications, including the Wall Street Journal, Fortune and the Financial Times, as well as trade publications such as Scrip, the Pink Sheet, and Pharmaceutical Executive.

 

Mr. Groombridge has received many professional accolades.  Most recently, he was named one of the Lawdragon 500 Leading Litigators in the US, as well as a "New York Super Lawyer" in the intellectual property field.  He is also active in several professional societies including the Association of the Bar of the City of New York, in which he serves as a member of the Patents Committee.

 

Mr. Groombridge received his law degree from the London School of Economics and Political Science in 1981.  He has practiced in New York since 1989.

 

Representative Cases

 

•          Yeda v. ImClone - Lead 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. Iridian - Lead counsel for patent owner Iridian in pending patent infringement and breach of contract action involving technology for biometric identification.

•          Applera v. Stratagene - Lead 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. Applera - Lead counsel for defendant in pending action involving patents relating to labeling and detection of oligonucleotide probes.

•          Israel Bio-Engineering v. Amgen - Lead 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. Perrigo - Lead counsel for plaintiff in case to enforce patents on consumer product Citrucel®.  Case settled on favorable terms.

•          Genetic Technologies v. Celera Genomics - Lead 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. Fidelity - Lead 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 & Schefenacker - Lead 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. Garmin - Lead 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. Schick - Lead 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. Garmin - Lead 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 Pharmaceuticals - Counsel 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 Systems - Lead 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. Donnelly - Counsel 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 Doxorubicin - Member 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 Litigation - Member of litigation team for plaintiff Pfizer in ANDA litigation involving a patent on the anti-angina drug Procardia® (nifedipine).

•          Exxon Chemical Patents Inc. v. Lubrizol - Member 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. Exxon - Member 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.

 

Selected Speaking Engagements

 

•          11th Bi-Annual Forum on Biotech Patenting, London, September 26, 2006, Panel Discussion, 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

•          Fordham University School of Law: Fourteenth Annual International Intellectual Property Law & Policy Conference, April 20, 2006; Panel Discussion, IP Mediation - Waste of Time or Efficient Tool?

•          Marcus Evans Conference on Drug and Medical Device Litigation, New York, October 24, 2005, workshop on pharmaceutical patent law

•          Fordham University School of Law: Thirteenth Annual International Intellectual Property Law & Policy Conference, April 1, 2005 Parallel Importation of Patented Drugs

•          ABCNY Citybar Center for CLE, Litigating the Hatch-Waxman Case in 2004, History & Background of Hatch-Waxman Litigation: Framing the Dispute, October 21, 2004

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

•          Law Seminars International, Calculating & Proving Patent Damages, Program Co-Chair: The Need for More Rigorous Economic Analysis in Proving Damages: An Interplay between Law and Economics, May 14, 2004

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

•          Intellectual Property Law Summit, New Jersey Institute for Continuing Legal Education, May 2, 2003, Keynote Address, Recent Developments in Patent Law

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

•          Syracuse University College of Law, Conference on Patent Policy in the Pharmaceutical Industry; The Orange Book: Pressures and Proposals for Reform, April 9, 2003

•          Philadelphia Intellectual Property Law Association (PIPLA), January 16, 2003, An Improved Orange Book? The Impact of the FDA's Proposed New Rules on Listing Patents for Approved Drugs

•          Benjamin N. Cardozo School of Law/Yeshiva University: Patent Law, Social Policy, and Public Interest: The Search for a Balanced Global System; AIDS Drugs, Cipro, and National Emergencies, November 7, 2002

Selected Publications

 

•          "Integra Lifesciences v. Merck - Good for Research or Just Good for Research Tool Patent Owners?", Biotechnology Law Report Volume 22, Number 5, October 2003, co-authored with S. Calabro

•          "In Written Description Requirement, Choose Structure Over Functional Terms", New York Law Journal Biotechnology Section, June 16, 2003, co-authored with D. Greenbaum

•          "A New Test for Conception of Biotech Inventions?", New York Law Journal Intellectual Property law Special Section, January 22, 2002, co-authored with C. Sandhu

•          "Developments in European Patent Law", New York Law Journal Intellectual Property Law Special Section, May 7, 2001, co-authored with C. Loh

•           "Outsourcing Pharmaceutical R&D to Universities", Corporate Intelligence December 2000 co-authored with R. Atherton