Frank J. West
Partner
Bar Membership Other Than Virginia
Tel (703) 412-7049

Frank J. West

Partner

FRANK J. WEST, a patent litigation lawyer, is a partner in the firm's Litigation, ITC Litigation, Pharmaceutical/Medical Devices, and Patent Interferences practice groups, representing a wide range of U.S. and foreign companies, their affiliates and subsidiaries.  His practice includes district court litigations, including abbreviated new drug application (ANDA) cases, Federal Circuit appeals, 337 actions before the International Trade Commission (ITC), and 35 USC 146 actions to review decisions of the Board of Patent Appeals and Interferences (BPAI).

Mr. West has extensive experience litigating patent disputes in the federal district courts across a broad spectrum of technologies, including pharmaceuticals, medical devices, hard disks, wireless communication devices, paper products, cosmetics and coated glass.  He is especially skilled at handling Hatch-Waxman cases involving pharmaceuticals, explaining complex concepts in court, and handling expert witness preparation and testimony.

In addition to his litigation and interference work, Mr. West maintains an arbitration practice arising from patent matters such as ownership, licensing, royalty payments, infringement and validity. Mr. West also negotiates patent licenses and/or settlement agreements on behalf of clients. He further conducts due diligence reviews and advises his clients in devising best practices to protect their intellectual property, including lifecycle management of pharmaceuticals and intellectual property related to those pharmaceuticals.

Representative Matters

Successfully represented Asahi Glass Company, Ltd., a Japanese glass manufacturer, and its subsidiary AFG Industries, Inc., a U.S. glass manufacturer, claiming patent infringement by Cardinal IG Co. of Asahi and AFG’s jointly owned patent relating to thin film low-emissivity coatings typically used in double-pane windows. After a four-day trial, the Federal District Court Judge granted judgment to Asahi and AFG on the issue of infringement. Thereafter, the jury returned a verdict of more than $25.1 million to which the court awarded prejudgment interest of more than $18.5 million, for a total of more than $43.7 million in damages. AFG and Asahi Glass v. Cardinal IG, No. 2:96-cv-244 (E.D. Tenn. 2005).

Successfully represented Toshiba at trial, obtaining a holding that competitor Loral Fairchild’s early Charge-Coupled Device (CCD) patent was invalid and not infringed. Loral Fairchild, Corp. v. Matsushita Elec. Indus. Co., Ltd., No. 91-5056 (S.D.N.Y. 2001).

Representing client Buffalo Inc. and its subsidiary Buffalo Technology (USA) Inc., successfully appealed grant of summary judgment and permanent injunction in favor of CSIRO in a high-profile patent infringement case involving Wi-Fi technology relating to the transmission of wireless signals. This case was significant in that it was the first time that a court entered a permanent injunction in favor of a non-practicing entity since the Supreme Court’s landmark eBay decision. The Federal Circuit vacated and remanded the case. CSIRO v. Buffalo, No. 2:06-cv-324  (Fed. Cir. 2008).

Other representative litigations, ITC proceedings, and 35 USC 146 actions in which Mr. West has been counsel include:

Astellas Pharma, Inc. v. Sandoz, Inc., 07-cv-1721 (N.D. Ill.).

Glaxowellcome v. Ben Venue Labs, 96-cv-0278 (N.D. Ohio).

Kyorin, Senju and Allergan v. Apotex, 07-cv-779 (D. Del.).

Linex Technology, Inc. v. Buffalo Technology (USA), Inc., 07-cv-222 (E.D. Tex.).

Lupin Ltd. v. Astellas Pharma, Inc., 06-cv-400 (E.D. Va.).

Moore North America, Inc. v. The Standard Register Co., Inc., 98-cv-485 (W.D.N.Y.).

Optimumpath, LLC v. Buffalo, Inc., 09-cv-1398 (N.D. Cal.).

SanDisk Corp. v. MELCO Holdings, Inc., 07-cv-605 (W.D. Wis.).

Sigma Tau Industrie Farmaceutiche Riunite, S.p.A.v. Lonza

Smithkline Beecham v. Sumika Fine Chemicals, 01-cv-2602  (E.D. Pa.).

Wi-Lan, Inc. v. Buffalo Technology (USA), Inc., 07-cv-473 (E.D. Tex.).

Zambon Group S.p.A. v. Pfizer, Inc., Warner-Lambert, L.L.C., and Goedecke

Aktiengesellschaft, 03-cv-5334 (D.N.J.) Zambon Group v. Teva, 04-cv-1157 (D.D.C.).

In re Certain Semiconductor Memory Devices and Products Containing Same, 337-TA-472 (USITC).

In re Certain Organic Photoconductor Drums and Products Containing Same, 337-TA-411 (USITC).

Eastman Kodak Co. v. Duracell, Inc., 98-cv-234 (D.D.C.) (35 USC §146 action).

Ramtron Int’l Corp. v. National Semiconductor Corp., 99-cv-0146 (D.D.C.) (35 U.S.C. §146 action).

Univ. of Mass. v. Roslin Institute, 05-cv-353 (D.D.C.) (35 U.S.C. §146 action).

Generic Pharmaceutical Exclusivity Period Ends With Patent Expiration
Friday, July 22, 2011

On July 6, the New Jersey District Court filed an opinion denying the injunctive relief sought by Nostrum Pharmaceuticals LLC regarding the FDA’s decisions on the statutory exclusivity period for Nostrum’s ANDA on...

Supreme Court Grants Certiorari: Caraco Pharmaceuticals v. Novo Nordisk
Wednesday, June 29, 2011

This entry updates the original entry regarding this case posted on January 12, 2011.  The Supreme Court granted certiorari with respect to the Federal Circuit’s decision in ...

Federal Circuit grants Immediate and Temporary Stay of an Injunction Against Mylan Pharmaceuticals Inc. and Mylan Inc.
Tuesday, June 28, 2011

On May 25th, the Federal Circuit granted an immediate and temporary stay of an injunction against Mylan Pharmaceuticals Inc. and Mylan Inc. (Mylan) in their proceedings with Eurand, Inc...

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