Douglas H. Carsten

Wilson Sonsini Goodrich & Rosati PC

San Diego

Patent litigation

Carsten was in the process of obtaining his master's degree in organic chemistry at Harvard University, babysitting flasks, drowning in papers and spending hours on research tucked away in a lab when he stumbled upon the holy grail of all attorney-inspiring movies: My Cousin Vinny.

That's when Carsten decided he wanted to do something outside of academia with his scientific expertise. The idea of getting his doctorate and being confined to a classroom really lost its luster. He wanted to be a trial lawyer.

"I can't think of a trial lawyer that hasn't seen that movie," he said. "I'm not kidding. That's how I fell into patent law, thanks to my chemistry background. So far, it's been great."

Today, Carsten's practice spans biotech, global generics, life sciences, pharmaceuticals and medical devices. In November, he won a major case for Mylan Pharmaceuticals Inc. at the U.S. Court of Appeals for the Federal Circuit. Sanofi-Aventis Deutschland GMBH v. Mylan Pharmaceuticals Inc., 19-1368 (Fed. Cir., filed Nov. 19, 2019).

Plaintiff Sanofi-Aventis Deutschland GMBH appealed a decision from the U.S. Patent and Trademark Office's Patent Trial and Appeal Board over two patents that claimed a particular formulation of a long-acting insulin product used to treat diabetic patients.

In December 2018, Carsten successfully persuaded the PTAB that the patents relating to Sanofi's genetically engineered form of insulin could not be patented because they are obvious. Sanofi appealed to the Federal Circuit, which issued a 2-1 decision upholding the PTAB decision in Mylan's favor.

"Now we're just sitting here, seeing if Sanofi will file writ to the Supreme Court," Carsten said.

The win for Mylan was especially rewarding for Carsten and his team because of the number of people affected by diabetes.

"While preparing for trial, I saw statistics that were mind-blowing as to how prevalent diabetes and pre-diabetes really are," he said. "I had no idea, and sometimes in the course of doing your work, you come across this data and it's just eye-opening as to the crisis Americans are facing."

Although Carsten's science career was derailed, he said is grateful every day for that training.

"I wouldn't trade that training for the world. It helps when you're presenting in front of the Patent Office, and during reviews. You can just never cheat science," he said.

-- Gina Kim