Douglas H. Carsten

Nearly 30 years ago, Douglas H. Carsten described himself as a frustrated chemistry student until he saw "My Cousin Vinny."

"I watched that and thought, 'That's what I'd like to do!'" He said.

Since then, he has become a first-chair trial litigator at McDermott Will & Emery and his workload consists of billion-dollar patent cases involving pharmaceuticals, biologics, medical devices, diagnostic products, retail products and computer software.

Carsten is also co-chair of the firm's life sciences practice.

Among his recent notable work was a case he inherited involving K-fee, a German company with patents related to coffee systems and pods, against Nespresso.

Initially, a district court judge had ruled against K-fee on summary judgment, finding that Nespresso did not infringe K-fee's patents. K-fee was facing an attorneys' fees motion based on that adverse ruling, Carsten said.

"The client brought us on, and in short order we were able to overcome the fees motion," he said. "We took on the appeal, and got that ruling reversed at the Federal Circuit, and then won the first of several IPRs Nespresso filed against K-fee's patents on a final written decision."

The summary judgment ruling was early in the case, so the factual record was far less developed than he would have liked, but there was no pending request to postpone the summary judgment motion based on further discovery, Carsten explained "

We had to roll up our sleeves and armed only with the record prior counsel had developed navigate a fees motion, then develop a winning appellate strategy on a record we had no hand in preparing," he added. "It was a challenging task, and I am so proud of my team for putting in all the hard work that went into the briefing and in preparing me for the argument. Similarly, we also obtained a ruling from the patent office on final written decision in the first of three instituted IPRs finding all claims patentable over Nespresso's challenge."

Analyzing trends, Carsten said he is seeing more IPRs used in pharmaceutical cases, including on Orange Book listed patents.

"In the pharma space, I'm also seeing branded products that are not being challenged by generic ANDA filings upon the earliest day upon which generics can file ANDAs," he said. "That's a very new trend since historically it was not unusual to see [five to ten] ANDA filings on the so-called "NCE-1" date--the first date generic companies can file ANDA challenging patents on new branded products."