Sarah E. (Simmons) Spires

Partner

Sarah E. Spires is a registered patent attorney and focuses her practice on patent infringement litigation, inter partes reviews, adversarial licensing disputes, and intellectual property transactions, particularly in the life science and biotechnology areas. She has successfully tried multiple cases to verdict in jury trials, bench trials and arbitration proceedings involving pharmaceuticals, biotechnology, medical devices, computer software, semiconductors, LCD technology and telecommunications devices. Sarah also represents clients in various types of complex commercial litigation matters, including trademark infringement, contractual and patent licensing disputes, aviation litigation, and antitrust and false claims act cases.

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.

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

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

Selected to the list of Texas “Rising Stars” (2016-2019)

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

1601 Elm Street, Suite 4400, Dallas, Texas 75201

(214) 978-6613

sspires@skiermontderby.com

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
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

Dallas
1601 Elm St
Suite 4400
Dallas, TX 75201

(214) 978-6600

 

info@skiermontderby.com

Los Angeles
800 Wilshire Blvd
Suite 1450
Los Angeles, CA 90017

(213) 788-4500

 

info@skiermontderby.com