Nimalka R. Wickramasekera

Winston & Strawn LLP

Los Angeles, Menlo Park

Patent litigation, Patent Trial and Appeal Board matters

Wickramasekera worked as a research biologist at Abbott Laboratories and Eli Lilly & Co. before developing a medical device and technology practice at Winston & Strawn LLP. Her clients include Alphatec Holdings Inc., Medtronic Inc., Teva Pharmaceuticals, Microsoft Corp. and Cisco Systems Inc.

She represents Carlsbad-based Alphatec, a spinal surgery device maker, defending claims by competitor NuVasive Inc. of San Diego.

NuVasive alleged it created the so-called XLIF method for fusing vertebral disks to reduce nerve damage during surgery and that Alphatec's device, the Battalion lateral system, infringed NuVasive's patents. NuVasive Inc. v. Alphatec Holdings Inc., 18-CV00347 (S.D. Cal., filed Feb. 13, 2018).

"Definitely, my background in anatomy and biology is helpful in cases like these," Wickramasekera said, "and so is my experience in litigating in the medical device space."

Even so, the case has expanded to include inter partes review at the U.S. Patent and Trademark Office with a trial there set for April 3, and the district court trial scheduled for April 27.

"Two trials in the same month is definitely a challenge," Wickramasekera said. "They draw on different skill sets. You present evidence at an IPR proceeding like you do at an appellate court. You argue; there are no witnesses. In the district court, it is a highly contentious competitor case."

NuVasive is seeking damages in the low millions of dollars. "It's clear from the plaintiff's aggression in this case that it is less about dollars than about a victory," Wickramasekera said.

The opposing companies are both based in the San Diego region. "The two competitors, 30 miles apart, are well-known in the community. I represent the defendant, where people from the plaintiff moved to our company. It makes for a lot of competition from day one as they put our business at risk."

For generic drugmaker Teva, Wickramasekera defended against claims by Swedish pharmacological company Orexo that two of a Teva subsidiary's generics used to treat opioid addiction were based on essentially the same formula patented by Orexo. Orexo AB v. Actavis Elizabeth LLC, 17-CV00205 (D. Del., filed Feb. 28, 2017).

Orexo sought $41 million in damages, but Wickramasekera persuaded a Delaware federal jury that the claims were invalid. The outcome was Teva's first win in a patent jury trial.

"Typically, that doesn't happen for generic drug defendants," she said. "After we'd launched our product, the plaintiff's patents issued. That made it no longer a Waxman Act suit; we were in actual infringement territory."

Wickramasekera said that in court she tried to inform the jury about the nature of generics.

"We stressed that two or three of their key patents were not in our product. The jury was back within a day."

-- John Roemer