Overview
Scott F. Peachman is Of Counsel in the Litigation practice of Paul Hastings and is based in the firm’s New York office. His practice focuses on complex, high-stakes litigation with an emphasis on patent litigation in the fields of chemistry, pharmaceuticals, and biotechnology before U.S. district courts, the Federal Circuit, and the Patent Trial and Appeal Board. He has over a decade of experience in the life sciences space, including extensive experience representing innovator pharmaceutical companies in Hatch-Waxman litigations, and companies in biologics litigation.
He has helped leading innovator pharmaceutical clients enforce patent portfolios for breakthrough drug products such as Uloric®, Emend® IV, Gocovri®, Nuplazid®, and Venclexta®. Mr. Peachman also routinely counsels clients in pre-suit investigations, patent portfolio management, patenting strategy, and patent matters related to product-based asset acquisitions and licensing.
Mr. Peachman has experience in all phases of large-scale litigations, from presuit investigation to trial and appeal. He is sought out for technical subject matter expertise in the context of invalidity and validity contentions, expert reports, depositions, and trial preparation. Mr. Peachman has represented clients in a wide variety of matters involving, for example, medical devices, biosensors, diagnostics, genomic sequencing, polymorphs, polymer chemistry, medicinal chemistry, lubricating oil compositions, pharmaceutical formulations, neurodegenerative diseases, and oncology.
Mr. Peachman also has an active pro bono practice focused on the representation of prospective patentees, artists, and creators, which he has helped to direct and refine over several years.
Education
- Case Western Reserve University School of Law, J.D., cum laude, with honors in the Law, Technology, and the Arts Concentration, 2012
- The Ohio State University, M.S., Chemistry, 2009
- Yale University, B.S., Molecular Biophysics and Biochemistry, 2006
Representations
- ModernaTX Inc. et al. v. Pfizer Inc., BioNTech SE, and BioNTech Manufacturing GmbH:
Currently represents BioNTech in defending against claims of patent infringement by Moderna in the District of Massachusetts involving Comirnaty®, the first FDA-approved COVID-19 mRNA vaccine.
- BioNTech SE, BioNTech Manufacturing GmbH, and Pfizer Inc. v. CureVac AG:
Currently represents BioNTech in a declaratory judgment action in the U.S. District Court for the Eastern District of Virginia relating to threats of patent infringement by CureVac involving Comirnaty®, the first FDA-approved COVID-19 mRNA vaccine.
- Promosome LLC v. Pfizer Inc., BioNTech SE, and BioNTech Manufacturing GmbH:
Represented BioNTech in patent litigation in the Southern District of California involving Comirnaty®, the first FDA-approved COVID-19 mRNA vaccine. Secured a “walk-away” dismissal with prejudice from Plaintiff following a powerful inequitable conduct defense and counterclaims showing that material prior art had been knowingly withheld during prosecution of the asserted patent.
- ACADIA Pharmaceuticals Inc. v. Aurobindo Pharmaceuticals:
Currently represents ACADIA Pharmaceuticals in Hatch-Waxman litigation in the District of Delaware involving patent challenges to Nuplazid® (pimavanserin), the first drug approved by the FDA for the treatment of hallucinations and delusions associated with Parkinson’s disease psychosis.
- AbbVie Inc. and Genentech, Inc. v. Dr. Reddy’s Laboratories, Ltd.:
Currently represents AbbVie and Genentech in Hatch-Waxman litigation in the District of Delaware involving patent challenges to Venclexta® (venetoclax), the first FDA-approved BCL-2 inhibitor.
- Infineum USA L.P. v. Chevron Oronite Company:
Represented Chevron Oronite Company in patent litigation in the District of Delaware and inter partes review proceedings concerning lubricating oil technology. Obtained a complete victory before the PTAB which was affirmed on appeal by the Federal Circuit.
- Adamas Pharma, LLC v. Sandoz Inc.:
Represented Adamas Pharmaceuticals, Inc. in Hatch-Waxman patent litigation concerning Gocovri® (amantadine), the first drug approved by the FDA for the treatment of dyskinesia in patients with Parkinson’s disease receiving levodopa-based therapy. Secured favorable settlements with first filers in patent infringement actions.
- Merck Sharp & Dohme Co. Inc. v. MSN Laboratories Pvt. Ltd.:
Represented Merck in Hatch-Waxman patent litigation in the District of New Jersey involving patent challenges to Emend® IV (fosaprepitant), an important drug for the prevention of chemotherapy-induced nausea and vomiting. Obtained a favorable early settlement of the dispute.
- Teijin Limited, et al. v. Mylan Pharmaceuticals Inc.:
Represented Teijin against thirteen generic drugmakers involving patents directed to Teijin’s Uloric® (febuxostat) drug product for gout patients. The case settled on favorable terms after a successful defense of the inventors of the patents-in-suit.
- Pre-Suit Diligences
Currently represents branded pharmaceutical companies in pre-suit diligences and anticipation of patent challenges to their key products, which includes patent portfolio counseling and strategy.
Engagement & Publications
- Sole author, “‘Full-Scope Possession’? Untangling Enablement after Amgen v. Sanofi,” Landslide® Magazine, Volume 15, Issue 2 (December/January 2023).
- Quoted, “Young counsel ‘love’ for pro-bono helps firms train and retain,” ManagingIP.com (May 19, 2020).
- Sole author, “Tethering the Nexus: Framing the Claims for Unclaimed Features and Novelty,” Landslide® Magazine, Volume 12, Issue 3 (January/February 2020).
- Co-author, “After Nautilus: The Tension Between the Inherent Lack of Clarity of Language and Notice Function of Patent Law,” Landslide® Magazine, Volume 9, Issue 4 (March/April 2017).
- Quoted, “Recent legal challenges affect biotechnology patents,” Smart Business® (April 2014).
- Sole Author, “The Patent Eligibility of Diagnostic Methods After Prometheus: A Redefined Test for Transformation,” 22 HEALTH MATRIX 589 (2013).
- Sole Author, “A Computational Study of Organophosphorus Nerve Agent Binding to Recombinant Human Paraoxonase 1 G3C9 Mutants with Engineered Stereospecificity,” OhioLINK ETD (2009).
Involvement
- Member of the New York Intellectual Property Law Association (NYIPLA), the Yale Science and Engineering Association (YSEA), and the PTAB Bar Association.
- Member of the State Bar of New York and the Bar of the Commonwealth of Massachusetts.
- Admitted to practice before the U.S. Patent and Trademark Office, the U.S. District Court for the District of Massachusetts, and the U.S. Court of Appeals for the Federal Circuit.