Marcus E. Sernel, P.C.

Bayer HealthCare LLC v. Pfizer, Inc. (N.D. Ill.): Lead counsel for Pfizer defending against Bayer’s assertion of patent against Pfizer’s single-dose ADVOCIN product for treating bovine respiratory disease. Defeated motion for temporary restraining order that sought to block launch of the product.

NUTech Ventures v. Syngenta Seeds, Inc. et al. (D. Neb.): Lead counsel for Defendants in patent litigation matter relating to genetically-engineered corn seed product used in the production of ethanol.

BRK Brands, Inc. v. Nest Labs, Inc., (N.D. Ill.): Lead counsel for Nest in defending against BRK’s assertion of six patents against Nest’s smart CO/smoke alarm product. Successfully argued and defeated motion for preliminary injunction.

Intertrust Tech. Corp. v. A leading computer, mobile device and media player company (N.D. Cal.): Trial counsel for a leading computer, mobile device and media player company in defending 23-patent case brought by Intertrust relating to digital rights management and secure computing technologies.

A leading computer, mobile device and media player company v. HTC Corp. (US ITC; D. Del.): Trial and appellate counsel for a leading computer, mobile device and media player company in litigation asserting patent infringement by HTC products based on the Android operating system. Obtained an exclusion order blocking importation of infringing HTC products.

Amgen et al. v. ARIAD Pharmaceuticals, Inc. et al. (D. Del.): Trial and appellate counsel for Amgen in a declaratory judgment action relating to a patent claiming methods for manipulating an intracellular transcription factor. Orally argued the successful motion for summary judgment of non-infringement, defeating all of ARIAD’s infringement claims that sought more than $900 million in damages. Judgment affirmed on appeal by Federal Circuit.

Affymetrix, Inc. v. Illumina, Inc. (D. Del.): Trial counsel for Illumina in a six-patent and unfair competition case involving control over the DNA microarray technology market. Handled many of the key depositions in the case, including both parties’ CEOs. In addition to being in charge of the case on a day-to-day level, also principally handled the pre-trial hearings with the Court, including presenting argument at the Markman hearing, and handled key arguments and conducting both direct and cross examinations of witnesses at the first phase of the jury trial. The case ultimately settled on very favorable terms for Illumina.

Centocor, Inc. v. Genentech, Inc. and City of Hope (C.D. Cal.): Counsel for Genentech in a declaratory judgment and patent infringement case involving pioneering antibody production and purification technology. Case settled on favorable terms.

Conoco, Inc. and Conoco Specialty Products, Inc. v. EEI, et al. (S.D. Tex.): Trial and appellate counsel for Conoco (now ConocoPhillips) in a patent infringement trial relating to flow improvers used in oil pipelines, leading a team of Kirkland lawyers to a bench trial victory in which the Court found that the defendant infringed every asserted claim of Conoco’s valid patents, awarded Conoco every penny of the $9 million dollars in price erosion and lost profit damages that was sought, and issued an immediate injunction against the manufacture and sale of the infringing product. Led trial team and argued case on appeal at the Federal Circuit, obtaining affirmance of the verdict. See Conoco, Inc. v. Energy & Envtl. Int’l, L.C., 460 F.3d 1349, 1364 (Fed. Cir. 2006).

Dripping Wet Water, Inc. et al. v. IDEX Corp. et al. (W.D. Tex.; N.D. Ill.): Trial counsel for IDEX and related entities in litigation involving a dispute over ownership of certain chlorine dioxide process manufacturing technology. Obtained dismissal of our opponent’s claims and an award of all injunctive relief sought by our affirmative claims.

In re Columbia University Patent Litigation (MDL D. Mass.): Trial counsel for Abbott Bioresearch Center in this multi-district litigation involving multiple pharmaceutical and biotech companies seeking to invalidate a Columbia University patent relating to recombinant co-transformation technology. Ultimately obtained a covenant not to sue from Columbia that achieved result sought in litigation.

Oxford Gene Technology Ltd. v. Affymetrix, Inc. (D. Del.): Trial counsel for OGT in a case involving DNA array technology. Noteworthy experiences included taking and defending many of the key fact and expert depositions in case, including those of two Nobel Prize-winning scientists. Also participated in the successful jury trial that resulted in a finding of infringement in our client’s favor.

Fluid Management, Inc. et al. v. CPS Color Equipment, Inc., (N.D. Ill.): Trial counsel for IDEX subsidiary Fluid Management in a patent infringement case involving paint-dispensing technology. Handled the majority of the key depositions and court hearings before the case settled favorably for our client on the eve of the summary judgment hearing.

Thomas Indus Inc. v. Gast Mfg., Inc. (W.D. Wis.): Trial counsel for Gast Manufacturing, a subsidiary of IDEX Corporation, in a patent infringement matter relating to compressors for oxygen concentrators. Handled the key depositions and briefing that led to a finding of summary judgment of non-infringement in our client’s favor, a decision that was affirmed by the Federal Circuit on appeal.

Medline Industries, Inc. v. Maersk Medical Ltd., Giltech Ltd., and Tyco Healthcare Group LP (N.D. Ill.): Trial counsel for Tyco Healthcare in contract and tort action relating to ownership of silver-bearing woundcare technology. Handled day-to-day responsibilities of all aspects of case, ultimately obtaining summary judgment in our client’s favor on all asserted claims.

Marc has also been involved in numerous other cases and matters, primarily although not exclusively involving the chemical and biotechnology areas, for clients such as Syngenta, BP, Elevance Renewable Sciences and Accenture.