Wayne M. Barsky

Barsky has won the largest defense verdict in history in a patent infringement case.

Last fall, the U.S Circuit Court of Appeals for the Federal Circuit held unanimously that a New Jersey jury got it right when it rejected a $5.4 billion damages claim by biotechnology firm Biogen MA Inc. that Barsky’s client, EMD Serono Inc., infringed its patent on a treatment for multiple sclerosis.

Getting there took more than a decade. Biogen sued Serono and its distributor Pfizer Inc. in 2010.

Following a five-week trial, the jury brought in its defense verdict in February 2018. That September, the trial judge booted the verdict and instead granted judgment as a matter of law to Biogen.

The Federal Circuit reversed that decision two years later. Biogen MA Inc. v. EMD Serono Inc., 976 F.3d 1326 (Fed. Cir., filed Sept. 28, 2020).

The issues in the case dealt with using recombinant DNA technology to manufacture large amounts of an important therapeutic, interferon beta. The lawsuit claimed that Serono’s version of interferon beta, which it calls Rebif, infringed Biogen’s patent on its version, Avonex.

But Biogen’s patent covered using interferon to combat viruses and immunological disease, not its method of making the protein, Barsky said.

He and his team showed the jury that using the protein for those treatments had already been done years before by researchers who collected small amounts of the naturally occurring protein from human cells.

In other words, he said, Biogen’s patent was not novel, as the law requires.

A former humanities major, Barsky greatly enjoys his work with medical and pharmaceutical companies. “This is really fascinating, magical stuff,” he said.

He also represents some biotechnology firms, as he did when defeating a challenge to Fitbit Inc. products in a trial at the U.S. International Trade Commission.

It was the first ITC case tried virtually last year. Certain Wearable Monitoring Devices, Systems, and Components Thereof, 337-TA-1190 (ITC, filed Dec. 10, 2019).

“I was a bit apprehensive, but you know what? It worked really well,” he said.

— Don DeBenedictis