Sarah E. (Simmons) Spires
Partner
Sarah E. Spires is a registered patent attorney and focuses her practice on inter partes reviews (IPRs), patent infringement litigation, and advising clients relating to intellectual property transactions and disputes, privacy, and consumer products. She has been named by Super Lawyers as a Texas Rising Star from 2016-2020, and in 2020, was also named one of the Texas Rising Stars Up-and-Coming 50 Women.
Sarah has been lead or back-up counsel on over 70 IPRs spanning a wide range of technologies, and has been named one of the “Top 50 Women in PTAB Trials” by the Patent Trial and Appeal Board (PTAB) Bar Association. She has significant experience and expertise in briefing and arguing cases to final written decision before the PTAB. In addition to representing both patent owners and petitioners in proceedings before the PTAB, she also counsels clients in relation to anticipated and ongoing IPR proceedings. Sarah serves as independent IPR counsel for clients involved in district court litigation with other counsel, and also represents existing litigation clients involved in IPR proceedings in parallel to district court litigation.
Sarah has also successfully tried numerous cases to verdict in jury and bench trials throughout the country, and to final decisions in arbitration proceedings throughout the world. Her district court litigation and trial expertise includes Paragraph IV disputes under the Hatch-Waxman Act (generic and brand), brand-versus-brand pharmaceutical litigation, and traditional patent litigation involving biotechnology, medical devices, computer software, semiconductors, artificial intelligence, hand tools, LCD technology, and wireless and telecommunications devices. Sarah also represents clients in various types of complex commercial litigation matters, including trademark infringement, trade secret disputes, contractual and patent licensing disputes, aviation litigation, and antitrust and false claims act cases.
In addition, Sarah has significant experience practicing before the United States Court of Appeals for the Federal Circuit. She has successfully briefed and argued numerous cases on behalf of clients involved in appeals from IPRs and district court litigations that Sarah has handled, as well as on behalf of new clients changing counsel for appeal. Most recently, Sarah obtained a favorable precedential opinion for her client in Gensetix, Inc. v. Board of Regents of University of Texas System, 966 F.3d 1316 (Fed. Cir. 2020).
Sarah’s technical background includes conducting cell cycle research at MIT’s David H. Koch Institute for Integrative Cancer Research. Prior to joining Skiermont Derby LLP, she was a senior associate at Gibson, Dunn & Crutcher LLP in Dallas, and previously worked as an associate in the San Diego and Tokyo offices of Morrison & Foerster LLP.
Sarah speaks regularly on issues relating to recent developments in inter partes reviews before the Patent Trial and Appeal Board, as well on various topics related to patent litigation, particularly in the pharmaceutical arena.
Sarah graduated from the University of California, Berkeley School of Law in 2007, where she served on the Berkeley Technology Law Journal and was a member of the Jessup International Law Moot Court Competition NW Regional Championship Team. She earned her bachelor’s degree in biology from the Massachusetts Institute of Technology.
Representative Matters
In re: Loestrin 24 Fe Antitrust Litigation (District of Rhode Island)
Currently representing Walgreen Co., Kroger, Safeway and HEB in Hatch-Waxman antitrust litigation against Warner Chilcott related to the company’s branded oral contraceptive, Loestrin® 24 Fe.
Eli Lilly & Co. v. Nang Kuang Pharmaceutical Co., Ltd. and CANDA NK-2, LLC, Sandoz Inc., Heritage Pharma Labs Inc., Heritage Pharmaceuticals, Inc., Mylan, Inc., and Mylan Labs, Ltd. (Southern District of Indiana)
Currently representing Nang Kuang Pharmaceutical and CANDA NK-2 in paragraph IV Hatch-Waxman patent litigation against the branded pharmaceutical developer of Alimta®.
Cephalon, Inc. v. Nang Kuang Pharmaceutical Co., Ltd. and CANDA NK-1, LLC (Eastern District of New York)
Represented Nang Kuang Pharmaceutical and CANDA NK-1 in paragraph IV Hatch-Waxman patent litigation against the branded pharmaceutical developer of Treanda®.
Laboratoire HRA Pharma v. Teva Pharmaceuticals USA, Inc. (District of Delaware)
Represented HRA Pharma, the branded pharmaceutical developer of ella®, in paragraph IV Hatch-Waxman patent litigation against ANDA applicant.
Andrulis Pharmaceuticals Corp. v. Celgene Corp. (District of Delaware)
Representied plaintiff pharmaceutical company in patent litigation pertaining to the use of thalidomide in combination with an alkylating agent to treat certain cancers.
Amphastar Pharmaceuticals Inc. v. Aventis Pharma SA, et al. (Central District of California)
Represented Aventis against allegations brought in a qui tam suit under the False Claims Act, and related to Aventis’s assertion of patents covering Lovenox® in ANDA Paragraph IV Hatch-Waxman patent litigation.
Biogen, Inc. v. Merck-Serono, Pfizer, et al. (District of New Jersey)
Represented Merck-Serono in patent litigation pertaining to recombinant beta-interferon and therapeutic treatment of multiple sclerosis.
Ortho Clinical Diagnostics v. Abbott Japan (Japan Patent Office and Japan IP High Court)
Represented Ortho Clinical Diagnostics and Novartis in IP High Court appeals and separate invalidity trials before the Japan Patent Office regarding assays for the detection of Hepatitis C.
Japan Commercial Arbitration (Japan Commercial Arbitration Association)
Represented an American pharmaceutical company in a dispute with a Japanese development partner regarding technology and patent licensing.
Applied Biosystems Group v. Illumina, Inc. (Northern District of California)
Represented Applied Biosystems in patent litigation pertaining to DNA sequencing technology.
Neptune Generics, LLC v. Eli Lilly & Company
Lead counsel representing Petitioner in petition to cancel a patent related to Alimta.
nXn Partners, LLC v. Nissan Chemical Industries, Ltd.
Lead counsel representing Petitioner in petition to cancel a patent related to Bravecto.
Rosellini Scientific, LLC v. Grünenthal GMBH
Lead counsel representing Petitioner in petition to cancel a patent related to Nucynta.
Coalition for Affordable Drugs II LLC v. Shire Inc.
Lead counsel representing Petitioner in petition to cancel a patent related to Lialda.
Coalition for Affordable Drugs VI LLC v. Celgene Corporation
Lead counsel representing Petitioner in petitions to cancel patents related to STEPS/REMS.
Coalition for Affordable Drugs (ADROCA) LLC v. Acorda Therapeutics, Inc.
Lead counsel representing Petitioner in petitions to cancel patents related to Ampyra.
Broadcom Corp. v. Ericsson, Inc.
Represented Patent Owner in defending petitions to cancel patents related to automatic repeat request protocol systems and fast out-of-band channels.
LoggerHead Tools, LLC v. Sears Holdings Corp. and Apex Tool Group, LLC (Northern District of Illinois)
Currently representing LoggerHead in litigation alleging patent infringement, trademark infringement and several tort claims arising from sales of Craftsman Max Axess Locking Wrenches.
MyPort IP, Inc. v. HTC Corp., et al. (Eastern District of Texas)
Currently representing MyPort in litigation alleging patent infringement relating to geotagging.
Smartphone Litigation
Member of teams that successfully handled high-profile smartphone cases across multiple venues in the U.S. and Japan.
ePlus, Inc. v. Lawson Software, Inc. (Eastern District of Virginia)
Represented Lawson Software in contempt trial related to prior verdict of patent infringement and subsequent design-around.
Graphics Properties Holdings Inc. v. Sharp Electronics Corp., et al.. (District of Delaware)
Represented Sharp against claims of infringement of patents directed toward LED lighting technology.
In re Maxim Integrated Products, Inc. Patent Litigation (Western District of Pennsylvania)
Represented Expedia, Inc. against allegations of infringement of patents directed to secure communications.
Metris U.S.A., Inc., et al. v. Faro Technologies Inc. (District of Massachusetts)
Represented Nikon Metrology in a patent case involving laser line scanner and articulated arm metrology solutions.
NovAtel Inc. v. POINT Inc. et al. (District of Kansas)
Represented Sokkia Topcon Co., Ltd. in a software development and licensing dispute.
Gomez v. Carson Helicopters, Inc., et al. (District of Oregon)
Represented defendant Columbia Helicopters in a products liability suit related to a helicopter crash.
MHL Tek, LLC v. General Motors Corp., et al. (Eastern District of Texas)
Represented patent owner in patent infringement suit related to tire pressure monitoring systems.
Phoenix Licensing, L.L.C., et al. v. Chase Manhattan Mortgage Corporation, et al. (Eastern District of Texas)
Represented USAA in patent litigation pertaining to direct marketing methods.
Maxwell Technologies, Inc. v. Nesscap, Inc., et al. (Southern District of California)
Represented patent owner against a competitor in an infringement suit related to ultracapacitor technology.
Veeco Instruments, Inc. v. Asylum Research Corp. (Central District of California)
Represented Veeco in a patent infringement action involving atomic force microscope technology.
American Consumer Electronic Device Manufacturer (adversarial patent license negotiations)
Represented American consumer electronic device manufacturer in adversarial patent license negotiations regarding user interface technology.
Japanese DRAM Manufacturer (adversarial patent license negotiations)
Represented Japanese DRAM manufacturer in adversarial patent license negotiations regarding semiconductor packaging patents.
Japanese Probe Card Manufacturer (adversarial patent license negotiations)
Represented Japanese probe card manufacturer in adversarial licensing negotiations relating to a portfolio of patents in the field.
Japanese Consumer Electronics Manufacturer (adversarial patent license negotiations)
Represented Japanese consumer electronics manufacturer in adversarial licensing negotiations relating to standard essential patents for wireless communication.
Acquisition, Investment, and Patent Assertion Due Diligence
Represented biotechnology, medical device, pharmaceutical, and semiconductor, and advertising companies in intellectual property due diligence in connection with acquisitions, investments, and patent assertion.
Litigation Risk Assessment
Advised clients in technology, finance, and aviation industries of litigation risks involved in M&A and other corporate transactions.
Regulatory Compliance Assessment
Advised Japanese drink manufacturer regarding compliance with US FTC and FDA regulations.
Speaking Engagements, Presentations and Publications
IPWatchdog 2020 Conference: Hatch-Waxman and IPR Strategy, September 2020 (Presentation)
May/June 2020 IAM Roundtable: A new day at the PTAB?: https://www.iam-media.com/law-policy/new-day-the-ptab
The Petitioner’s Case in Chief: Anatomy of a Successful Petition, October 2018 (Presentation)
IPR Filings: A Practical Guide, March 2018 (Presentation)
Two Roads Diverged: The Ethics of Counseling Clients While Navigating IPRs Through the Lens of Litigation, February 2018 (Presentation)
Isn’t it Too Obvious? Challenging Obviousness in PTAB Trials for Chemical, Pharmaceutical and Biotech Patents, January 2017 (Presentation)
Pitfalls and Opportunities in ANDA Litigation, BioPharma/Tech Law Symposium at Indiana University McKinney School of Law(Presentation), March 2015 (Presentation)
Supreme Court Sets the Bar High: Requires Knowledge or Willful Blindness to Establish Inducing Infringement of a Patent, May 2011
Supreme Court to Decide Intent Standard for Inducing Patent Infringement, Feb. 2011
Wordtech and Employee Liability for Corporate Patent Infringement, Aug. 2010
Federal Circuit’s recent decision in TS Tech looms large for patent, San Diego Daily Transcript, Jan. 2009
Scanner Tech. Corp. v. ICOS Vision Sys. Corp, July 2008 (Presentation)
Overcoming the ‘Presumption of Validity’ – Strategies for Invalidating a Patent, April 2008 (Presentation)
Awards & Accolades
Named Texas Rising Stars Up-and-Coming 50 Women (2020)
Named to PTAB Bar Association’s Inaugural List of Top 50 Women in PTAB Trials (2019)
Named by Super Lawyers as a Texas “Rising Star” (2016-2020)
Wiley W. Manuel Award for Pro Bono Legal Services (2009-2011)
Hon. J. Clifford Wallance American Inn of Court (2007-2009)
Contributor, Berkeley Technology Law Journal
Member, Phi Delta Phi Internation Legal Honor Society
Member, Jessup International Law Moot Court Competition NW Regional Championship Team
Judicial extern for Hon. Socrates Peter Manoukian, Superior Court of California
Moot Court Board
Contact Information
Education
University of California, Berkeley – Boalt Hall School of Law
Berkeley Technology Law Journal
Phi Delta Phi International Legal Society
Massachusetts Institute of Technology
S.B., Biology
National Society of Collegiate Scholars
Bar Admissions
State Bar of Texas
State Bar of California
U.S. Patent & Trademark Office
U.S. Courts of Appeals
Federal Circuit
Ninth Circuit
U.S. District Courts
Northern District of Texas
Eastern District of Texas
Northern District of California
Southern District of California
Central District of California
Eastern District of California
Professional & Community Involvement
Hon. Barbara M.G. Lynn American Inn of Court (Barrister, 2017-2020; Co-Pupilage Group Leader, 2019-2021)
Dallas Bar Association WE LEAD Class (2019-2020)
Federal Circuit Bar Association Global Fellow (2018-2019)
Professional Activities
State Bar of Texas
State Bar of California
Member, Dallas Bar Association
Member, Junior League of Dallas
Member, National Association of Women Lawyers
Member, MIT Educational Council
PTAB Bar Association
Federal Circuit Bar Association