Anthony M. Insogna

Insogna helms Jones Day’s IP practice, heading a group of about 220 professionals in seven countries, to enforce and defend patents, devise patent portfolio strategies and conduct due diligence investigations.

His clients include top-tier pharmaceutical and biotech innovators including ToolGen Inc., Merck & Co. Inc., Celgene, a Bristol Myers Squibb company, and Idenix Pharmaceuticals - a Merck offshoot.

His background helps: as a pre-med student, Insogna earned a master’s degree in organic chemistry before law school.

“I’ve also learned quite a bit of science through my work,” he said. “I enjoy this cutting-edge science. The news about vaccines has made people more attuned to that area now. It’s helpful for people to understand better what we do in the life sciences arena.”

Insogna has more than 30 years of experience in formulating strategies and driving litigation for and against some of the best-selling pharmaceuticals worldwide along with advanced technologies such as immuno-oncology drugs and gene editing techniques.

He obtained an important win in two patent interferences for Korean biotech client ToolGen at the U.S. Patent Trial and Appeal Board. In December 2020, the board designated ToolGen as the senior party in two patent interferences involving CRISPR/Cas9 technology, which allows gene editing by precisely cutting DNA using an enzyme and a guide RNA.

The case featured 14 patents and two patent applications by The Broad Institute Inc., the Massachusetts Institute of Technology and Harvard College plus 14 patent applications by the University of California, the University of Vienna and Nobel Prize winner Emmanuelle Charpentier, a gene editing pioneer who first deciphered the CRISPR/Cas9 mechanism. The Broad Institute Inc. v. ToolGen Inc., 106,126; The Regents of the University of California v. ToolGen Inc. 106,127 (PTAB, op. filed Dec. 14, 2020).

“This is a potentially powerful tool for vaccine development, and ToolGen is in the thick of that,” Insogna said.

The declarations of interference follow Insogna’s successful appeal for ToolGen, reversing an examiner’s rejection of claims in its ’510 patent application regarding CRISPR/Cas9 technology in mammalian cells.

Insogna said the next step is to push forward with the patent application. “It’s a contentious fight with UC and MIT. So far, so good. I’ve done half-a-dozen of these patent interferences.”

Ordinarily, the proceedings are used to determine priority among multiple patent applications under the Leahy-Smith America Invents Act of 2011.

Who filed first now is key under the act, but the ToolGen cases arose under the older system, which sought to determine who had priority on the invention of a patentable process.

“Who in the lab did it first? This is the most important case still hanging around under that system,” he said. “It involves proofs such as looking at lab notebooks, and all the parties will contest the sufficiency of the disclosures.”

— John Roemer