Andrew N. Thomases

Thomases said that a passion for knowledge has made his career as an intellectual property litigator particularly rewarding. “Every case, you’re constantly learning the newest technology from engineers or inventors or scientists,” he said. “Every case is kind of like learning a new college course.”

For Thomases, much of that learning has taken place in the context of arguing cases for clients in front of a Patent Trial and Appeal Board. One case in particular illustrated what Thomases called an intriguing interface between district court litigation and PTAB work.

Thomases defended pharmaceutical giant Allergan plc against a patent infringement claim in a PTAB proceeding when the drug manufacturer was accused of stepping on the toes of a patent relating to its Botox product that involved a parallel inter partes review proceeding. Ontario Ltd v. Allergan Inc., 1:15cv3372 (N.D. Ill., filed April 16, 2015), IPR2016-00102 (PTAB March 28, 2017).

The suit was brought by the company of a Canadian doctor which alleged that it had the patent that invented the use of Botox — the brand name for the muscle-paralyzing serum whose active ingredient is Botulinum toxin — in muscles to treat disorders associated with spinal compression.

Thomases said when he uncovered prior art that included a weighty medical textbook and some of the doctor’s own publications, he advised his client to file for a PTAB proceeding.

The textbook proved to be enough, with Thomases successfully arguing that it recommended the toxin as a treatment and in another chapter even described how to inject serums into spinal muscles.

The panel ruled in favor of Allergan and the case was stayed at the district court level where Thomases was also representing his client, saving them significant time and money in an across-the-board victory that the plaintiffs did not appeal.

“It’s probably one of the first cases I’ve taken to both final resolution in district court and at the PTAB,” Thomases said.

— Chase DiFeliciantonio