Overview
Mark Russell Sperling is an associate in the Paul Hastings IP litigation practice in New York. He has extensive experience litigating high-value patents in the life sciences with a focus on defending the products and patent rights of innovator pharmaceutical companies. He has helped clients protect their highly valuable inventions, including important drug products such as Uptravi®, Opsumit®, Veletri®, and Latuda®.
Mr. Sperling provides clients with creative, high-impact positions and strategies. He has a lead role in preparing case contentions, establishing evidentiary support for these contentions through fact and expert discovery, and countering the positions of the opponents through examination of their key experts. He is also experienced in managing the daily operation of a litigation, brief writing, motion practice, and leading cross-border discovery. Mr. Sperling also advises clients on post-grant proceedings and patent prosecution strategy from a litigation perspective.
Bar Admissions:
- New York State
- United States District Court for the Southern District of New York
- United States Court of Appeals for the Federal Circuit
Education:
- Harvard Law School, J.D. (2015)
- New York University, B.A. (2012)
Recognitions
- Named as one of Law360’s "Legal Lions" for a victory in the Federal Circuit that protected Sumitomo Dainippon and Sunovion’s blockbuster invention for the treatment of schizophrenia and bipolar, Latuda® (2018)
- Named as one of Paul Hastings’ "Pro Bono Innovators of the Year" for his contributions in a litigation over the Habeas Corpus rights of his client (2019)
Representations
- Actelion Pharmaceuticals Ltd, et al. v. Zydus Worldwide DMCC, et al., Civil Action No. 20-03859 (D.N.J. 2020): Represented Actelion, a Johnson & Johnson company, and Nippon Shinyaku in a patent infringement lawsuit related to their drug product Uptravi®, a breakthrough drug used in the treatment of pulmonary arterial hypertension to delay disease progression and hospitalization. Following the exchange of contentions and fact depositions, Zydus agreed to a consent judgment that affirmed that the patent-in-suit was valid and enforceable.
- Actelion Pharmaceuticals Ltd, v. Zydus Pharmaceuticals (USA) Inc. et al., Civil Action No. 18-1397 (D.N.J.); Actelion Pharmaceuticals Ltd, et al. v. Aurobindo Pharma USA Inc. et al., Civil Action No. 19-15437 (D.N.J.); Actelion Pharmaceuticals Ltd, et al. v. Laurus Labs Limited et al., Civil Action No. 20-13967 (D.N.J. 2018): Represented Actelion, a Johnson & Johnson company, in patent infringement lawsuits against several challengers to Actelion’s drug product Opsumit®, a breakthrough drug used in the treatment of pulmonary arterial hypertension to delay disease progression and hospitalization. After a complex, multi-year litigation, the challengers agreed to consent judgments that affirmed the validity and enforceability of the patent-in-suit. The consent judgments followed the examination of the challengers’ experts as well as the defense of the inventors during their depositions.
- Sumitomo Dainippon Pharma Co. Ltd., et al. v. Emcure Pharmaceuticals Limited, et al., Civil Action No. 15-280 (D.N.J. 2015); Sumitomo Dainippon Pharma Co. Ltd., et al. v. Emcure Pharmaceuticals Limited, et al. (Fed. Cir. 2017): Represented Sumitomo Dainippon and Sunovion in a patent infringement litigation in the district court and the Federal Circuit related to Latuda®, a blockbuster drug for the treatment of schizophrenia and bipolar depression. The challengers admitted that the patent-in-suit was valid and infringed in consent judgments following a claim construction decision in favor of Sumitomo Dainippon and Sunovion. On appeal, the Federal Circuit affirmed the district court’s claim construction decision and the consent judgments.
insights
- Takeaways from Recent Implementation of China’s Patent Linkage System - September 7th, 2021
- Considerations for Innovator Drug Companies Regarding China’s Drug Patent Linkage System - 中国将施行药品专利链接制度——创新药企应如何应变 - December 1st, 2020
- Takeaways from China’s Proposed Regulation to Implement a Drug Patent Linkage System - October 5th, 2020
- China’s Proposals to Provide a Patent Linkage System and Patent Term Extensions – Considerations for Drug Companies - July 27th, 2020
- Federal Circuit Provides Additional Guidance for Induced Infringement in Hatch-Waxman Cases - November 13th, 2017
Engagement & Publications
- IP Strategies for the Red-Hot Digital Health Industry – November 2019