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Keep it simple. That is patent attorney Leora Ben-Ami’s most useful legal strategy, and it most recently won her one of the largest intellectual property verdicts of the year. “You take depositions and do analyses from people at a high scientific level, but then you have to remember you will be explaining it to people without Ph.D.s,” said Ben-Ami, a partner in the New York office of Kaye Scholer. Her $65.2 million verdict, in addition to future ongoing damages for her client, ARIAD Pharmaceuticals Inc., was the result of convincing a jury that defendants Eli Lilly and Co. infringed on the plaintiffs’ U.S. patent, which involved understanding scientific and legal jargon, not the easiest of tasks for a jury. The case, ARIAD Pharmaceuticals Inc. v. Eli Lilly and Co., No. 02-11280 (D. Mass. 2006), involved a dispute over whether Evista and Xigris, two of Eli Lilly’s drugs, infringed upon ARIAD’s patent-protected methods of treating human diseases by regulating NF-kB, a protein in the body influencing cell-signaling activity. After a three-week trial and 20 hours of deliberations, the jury found for ARIAD and co-plaintiffs Massachusetts Institute of Technology, the Whitehead Institute for Biomedical Research, and the president and fellows of Harvard College, saying that the patent was valid and was infringed by Eli Lilly’s Evista and Xigris. ‘Binding’ issue To prove her case, Ben-Ami broke down scientific terms into shorthand names by referring to long carbohydrate names as simply “good sugars” and “bad sugars.” She brought in parts of the gel electropheresis apparatus to show the jury what it means when the molecules bind. And if they do bind, it means the defendants infringed on her client’s patent. “Basically, if there is no binding, the blob would be in one place,” she said. “If there is binding, the blob would move to a different place.” The science can be as simple as that, she said, and juries are willing to learn if you can teach it right. A final judgment on the ARIADcase has still not been entered, and a ruling on a post-trial hearing from August 2006 to determine whether ARIAD’s patent is enforceable still has to be decided before the verdict can become official. Paul H. Berghoff, of Chicago’s McDonnell Boehnen Hulbert & Berghoff, the attorney for Eli Lilly, declined to comment. Ben-Ami, who focuses on patent litigation and intellectual property, advises companies on biotechnology, medical devices, pharmaceuticals and chemistry, mechanical devices and electronics. With a bachelor’s degree in biochemistry, she thought she would pursue a career in hard sciences, but soon became a Ph.D. dropout and decided to head to law school.
TRIAL TIPS • Always keep your credibility in your arguments by not going to far out on a limb. • Always remember your audience. • You are only as good as your team, so listen to the people you work with.

“I was getting the mental part of it, but I didn’t like doing the experiments,” she said. “So I went to law school, it was a better fit.” After graduating from State University of New York at Buffalo Law School, Ben-Ami clerked for Judge Philip Nichols Jr. of the U.S. Court of Appeals for the Federal Circuit. Before joining Kaye Scholer, she was a partner at Clifford Chance. The ARIADcase is just one of many that Ben-Ami has led to a successful outcome for her client. She has litigated 10 cases for Pfizer Inc. in the medical device area, including Schneider (Eur.) A.G. v. SciMed Life Sys., 852 F. Supp. 813, 823 (D. Minn. 1994), in which Ben-Ami obtained a judgment of nearly $68 million and a permanent injunction on behalf of Pfizer. Ben-Ami also represents Pfizer and other pharmaceutical companies in patent cases in which generics enter the market by copying patented medicines. Most recently, she defended Pfizer’s Celebrex patent against Teva Pharmaceuticals USA., which infringed on the patent when creating a generic version of the drug, according to a New Jersey federal judge. Pfizer Inc. v. Teva Pharmaceuticals USA, 482 F.Supp.2d 390. She received another notable win in her defense of Genentech in Glaxo Wellcome Inc. v. Genentech Inc., 136 F. Supp.2d 316 (D. Del. 2001), which The National Law Journalcited as a leading defense verdict in intellectual property in 2001. Ben-Ami defended Genentech in the patent infringement action in which Glaxo alleged that Genentech was making its anti-cancer drugs Rituxin and Herceptin by using the method and cell line invented by Glaxo. Countering claims Ben-Ami’s defense strategy involved countering Glaxo’s claim that it had invented the use of the Chinese hamster ovary cell line to combat human disease. Ben-Ami had to establish that other scientists and companies had developed the cell line technology before Glaxo applied for the patent, and she called several scientists to testify about development of the technology at Genentech. She also cited Genentech laboratory notebooks and public scientific literature to show that Glaxo’s patents were invalid because they were based on prior knowledge. The jury found no infringement and ruled Glaxo’s patent claims to be invalid.

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