M. PATRICIA THAYER, a partner in Sidley’s San Francisco office, is head of Sidley’s Intellectual Property (IP) Litigation practice on the West Coast.
Ms. Thayer concentrates on complex patent litigation for life sciences companies, including biopharmaceuticals, diagnostics, drug delivery systems and medical devices. She has also represented a wide range of life science and retail companies in litigation and arbitration involving trademark and trade secret disputes. A number of her clients also retain her for intellectual property counseling and opinions, particularly focusing on patent inventorship, infringement and validity issues. In addition, she has been retained as an expert witness on patent and trademark matters.
Recent Recognitions
- The Daily Journal named Ms. Thayer a "2013 Top IP Litigator in California."
- LMG Life Sciences 2012 featured Ms. Thayer as a “Life Sciences Star” in its inaugural edition for her outstanding Intellectual Property work;
- Top 250 Women in Litigation, published by Benchmark Litigation, the first magazine devoted to honoring the achievements and issues facing female trial lawyers in the United States, named Ms. Thayer in its inaugural edition;
- Chambers USA 2012: America’s Leading Lawyers for Business recognized Ms. Thayer as a leader in the field of Intellectual Property Law;
- Best Lawyers in America 2012 and 2013 recognized Ms. Thayer as a peer-selected leader in the practice area of Intellectual Property Law;
- The Daily Journal named Ms. Thayer a “2012 Top Intellectual Property Litigators in California.” Ms. Thayer has frequently appeared on The Daily Journal’s top IP lawyer lists, including “Top 75 IP Litigators in California”(2010); “Top 50 IP Litigators in California” (2009) and “Top 75 Women Litigators in California” (2008);
- Euromoney Legal Media Group 2012 named Ms. Thayer “Best in Life Sciences” in its inaugural Americas Women in Business Law Awards;
- Managing Intellectual Property 2012 named Ms. Thayer a top 10 life sciences litigator;
- IAM Patent 1000 – The World’s Leading Patent Practitioners (2012) named Ms. Thayer a leading patent litigator;
- PLC Life Sciences Cross-Border Survey 2010/2011 recognized Ms. Thayer as a leading lawyer in the area of Life Sciences: Patent Litigation; and
- Benchmark Litigation 2010, 2012, and 2013: The Definitive Guide to America’s Leading Firms and Attorneys named Ms. Thayer a litigation leader in the category of Intellectual Property.
Representative Engagements
- Synopsys Inc. v. Mentor Graphics (N.D. Cal.) Co-counsel for Synopsys, asserting patents, and defending against claims of patent infringement, related to electronic design automation.
- ISPC v. Apple, Inc. (N.D. Cal.) Defended Apple against claims of patent infringement related to circuitry for iPhone headsets.
- Conceptus v. Hologic (N.D. Cal.) Prevailed on all claims asserted by Conceptus regarding alleged infringement of patents related to medical devices for hysteroscopic sterilization. After a two-week trial in October 2011, the jury returned a verdict that the Court characterized as “a clean sweep for Plaintiff” and awarded Conceptus the full relief requested of $18.8 million.
- Genentech v. University of Pennsylvania (N.D. Cal.) A Sidley team, led by M. Patricia Thayer, handled this biotechnology patent infringement case involving potentially more than $1 billion in royalties from the filing of the declaratory judgment complaint by Genentech to settlement on the eve of trial. The favorable settlement obviated both a three –week jury trial and a one-day bench trial on inequitable conduct.
- General Electric v. SonoSite, Inc. (W.D. WI.) Successful defense and counterclaims regarding patents on features of ultrasound instruments. The first case was appealed to the Federal Circuit and the second was tried to the district court in June 2009. Both Cases settled with a $21 million payment, plus running royalties, to SonoSite.
- Integra Life Sciences v. Merck KGaA, The Scripps Research Institute (S.D. Cal.) Successful defense of patent infringement litigation related to small peptides and angiogenesis research, including appeal to U.S. Supreme Court.
- Genentech, Inc., et al. v. Insmed Incorporated, et al. (N.D. Cal.) Prevailed on all patent infringement claims after jury trial concerning recombinant DNA technology and the treatment of children with a severe growth disorder.
- Genentech, Inc. v. Amgen (N.D. Cal.) Successful settlement of patent infringement litigation related to recombinant cloning vehicles and methods of microbial expression of polypeptides.
- Fogarty Engineering v. Revivant Corporation (N.D. Cal.) Successful defense of dispute regarding patent royalties and patent inventorship with respect to automated CPR device.
- U.S. Gypsum Corp. v. Pacific Award Metals (N.D. Cal.) Successful Markman and summary judgment rulings followed by settlement of patent infringement litigation related to building construction materials. Counterclaims for theft of trade secrets settled favorably before trial.
- BioGenex v. Lab Vision, Dako Corporation, et al. (Santa Clara County.) Successful defense through a ten-week arbitration, followed by a successful action and appeal to confirm the award, of trade secret litigation involving immunohistochemistry methods, compounds and robotic instruments.
- Codon Devices v. Blue Heron (D. Del.) Defense of patent infringement litigation regarding gene synthesis methods.
Speeches & Programs
- “Modern Patent Trials,” Rutter Group - Palo Alto, California (November 2012)
- New Patent Office Proceedings to Contest Patent Validity, American Conference Institute’s Paragraph IV Litigation conference – San Francisco, California (December 2012)
- “Best Practices in a Patent Trial from the Judge’s and Bar’s Perspective,” Daily Journal/West Legalworks (December 2007)
- “Integra’s Aftermath: The Impact of Research Tool Patents and Reach Through Claims on FTO Determinations,” American Conference Institute on Freedom to Operate (October 2005)
- “The Non-Obviousness and Inherency Doctrines,” Stanford Program in Law, Science & Technology (March 2005)
- Chairperson, Sedona Conference on Patent Litigation – Sedona, Arizona (November 2004)
- Chairperson, Sedona Conference on Patent Litigation – Sedona, Arizona (November 2003)
- “Claim Construction and Willful Infringement,” Sedona Conference on Patent Litigation – Sedona, Arizona (November 2002)
- “Requirements for Patent Disclosures,” Advanced Patent Law Institute – San Jose, California (December 2001)
- “Tendering Advice of Counsel in Patent Litigation,” Sedona Conference on Patent Litigation – Sedona, Arizona (November 2001)
- “How to Prepare Documents and Negotiations that Have Maximum Effectiveness,” AIPLA Mid-Winter Meeting – Boca Raton, Florida (January 2001)
- “Patent Reexamination, Rocket Dockets and Videotaped Depositions,” PLI Patent Litigation 2000 – San Francisco, California (October 2000)
- “Business Methods Patents,” CEB: Advanced Intellectual Property Litigation – San Francisco, California (October 1999)
- “Patent Year in Review,” Annual Meeting of San Diego and Orange County Intellectual Property Law Associations – San Diego, California (May 1999)