Jeffrey E. Ostrow

Over a 20-year career, Ostrow has litigated intellectual property cases for technology companies large and small, including Intel Corp., Cisco Systems Inc., HP Inc., Merck Sharp & Dohme Corp., Qualcomm Inc., Ancestry.com and Spotify AB.

For Merck, he led the big pharmaceutical company in its multi-front attack seeking to invalidate Genetech’s valuable Cabilly patents — named for lead inventor Shmuel Cabilly — related to the technology underlying the artificial synthesis of antibody molecules. The patents, essential in recombinant DNA manufacture, have been licensed to or enforced against virtually all commercial antibody makers and have a 35-year history of patent office review and litigation due to the billions of dollars of licensing royalties Genetech and its co-assignee City of Hope National Medical Center have accrued industry-wide.

Merck’s suit sought a declaratory judgment that the Cabilly III patent is invalid and that Merck’s Keytruda cancer drug products do not infringe it. In April, the case settled. Merck, Sharp & Dohme Corp. v. Genentech Inc. and City of Hope, IPR2016-00719 (PTAB, filed July 7, 2016).

“Our client is happy to go forward with their business objectives,” Ostrow said. “Merck is free to do what they want with Keytruda.”

In March Ostrow won affirmance by the U.S. Court of Appeals for the Federal Circuit for client CSR Ltd. of a Patent Trial and Appeal Board ruling in his client’s favor. The dispute was over headphones for mobile devices that allow the audio from a telephone call to interrupt the music that a user is hearing. It was the second win at the Federal Circuit related to CSR’s dispute with challenger Skullcandy Inc.

Ostrow argued them both.

The piece of invalidating art Ostrow used to win his case, he said, was obscure. “It was a [patent] application from the U.K. from many years ago that was never granted,” he said. “But it did the job.”

The outcome of oral arguments before the Federal Circuit is famously hard to predict. “Sometimes you get skeptical looks from the judges while you are arguing,” he said. “The first time I walked away supremely confident I had won. The second time I walked away considerably less confident. Yet in both cases the court gave me what I wanted, so I was pleased with both outcomes.” Skullcandy Inc. v. CSR Ltd., 16-1384 (Fed. Cir., filed Dec. 30, 2015).

As for Skullcandy’s headphones, Ostrow said, “I like my Bose.”

— John Roemer