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Samuel B. Abrams is a partner in the intellectual property group. Mr. Abrams focuses on strategic patent counseling and prosecution and has extensive experience handling interference proceedings and European oppositions on behalf of companies in the biotechnology, chemical, pharmaceutical, drug delivery, and immunology sectors. With respect to drug delivery, Mr. Abrams has represented The Liposome Company, wherein he was engaged to opine on various patents assigned to the company and several third party patents. He also handles the full range of validity, freedom-to-operate and infringement opinions, as well as the strategic planning of patent portfolios, working with his clients on novel ways to monetize their intellectual property.

Prior to going into private practice, Mr. Abrams was a member of the Merck patent department wherein he was responsible for Merck’s antibiotic patent portfolio.

Significant Representations

  • Kroczek v. Tamatani. Represented Millennium Pharmaceuticals in an interference against Japan Tobacco Inc. relating to the T-cell costimulatory molecule ICOS. The interference was settled favorably for Millennium.
  • Gissman v. Lowy et al. Represented the German Cancer Research Institute (GCRI), assignee of the Gissman patent application, in an interference against the National Institutes of Health relating to a vaccine to prevent cervical cancer. The vaccine is currently being marketed by Merck under the trade name Gardasil®. The interference settled favorably for the GCRI.
  • Kishore v. Burrell. Represented British American Tobacco in an interference against Monsanto relating to genetically-modified potatoes. The interference was settled after the preliminary motions were filed.
  • University of New Mexico v. Fordham University. Represented Fordham in an interference against the University of New Mexico relating to heat shock proteins. Fordham prevailed on priority.
  • Lomedico v. Yamada. Represented Roche in a three-party interference against Immunex Corporation and Dainippon Pharmaceutical Co., Ltd. involving recombinant DNA technologies for producing interleukin-1 alpha (IL-1 alpha) and an additional interference against Dainippon for methods of treating diseases using IL-1 alpha. The interferences were settled after a decision on motions and exchange of priority evidence.
  • Bloembergen et al. v. Rimsa et al. Represented Japan Corn Starch against National Starch in the appeal from the adverse decision in the interference under 35 U.S.C. § 146. The case was favorably settled.
  • Martek Biosciences Corporation v. Nutrinova Inc. et al. Representing plaintiff Martek in a patent litigation suit against Nutrinova and Lonza over omega-3 fatty acids; obtained a jury verdict in favor of Martek on all counts, finding that the defendants had infringed all of Martek’s patents at issue in the trial. On appeal, a Federal Circuit five-judge panel fully sustained the judgment for Martek, rejecting Lonza’s appeal. The remainder of the case is on remand to the trial court for further proceedings.
  • Incyte Pharmaceuticals, Inc. v. Falb and Gimbrone. Represented Millennium Pharmaceuticals in an interference against Incyte relating to a novel gene. Millennium prevailed on priority.
  • Dodds v. Hulshoff. Represented Sepracor, Inc. in an interference against Andeno (and Tanabe) involving the synthesis of a compound that is useful for making Dilitiazem. Sepracor prevailed on priority. Sepracor also prevailed in the subsequent appeal under 35 U.S.C. § 146.
  • Tempesta v. Cariel and Jean. Represented Shaman Pharmaceuticals in an interference against Cariel. Cariel conceded priority after Shaman demonstrated that Cariel engaged in inequitable conduct.
  • Bolognesi v. Shafferman. Represented Trimeris Corp. in an interference against the NIH relating to the peptide T20, which is currently marketed to treat HIV. Trimeris successfully dissolved the interference by demonstrating that there was no interference in fact.
  • Wertz et al. v. Rose. Represented Yale University in an interference against University of Alabama relating to a recombinant VSV virus that can be utilized in a vaccine against HIV. Yale prevailed on priority. 
  • Furman v. Cheng. Represented Yale University in an interference against Glaxo relating to a compound to treat HIV. Yale prevailed on priority.

Education

Rensselaer Polytechnic Institute, B.S., Biomedical Engineering, 1978
Case Western Reserve University School of Law, J.D., 1981

Court Admissions

United States Patent and Trademark Office

Bar Admissions/Qualifications

New York

Memberships

American Intellectual Property Association
New York Patent, Trademark and Copyright Law Association