Senior Principal, Co-Chair / Twin Cities / 612-337-2509
whelan@fr.com

Dorothy Whelan

Dorothy Whelan is a Senior Principal in the Twin Cities office of Fish & Richardson P.C. and co-chair of the firm’s Post-Grant Practice Group. Under her co-leadership, Fish’s post-grant practice grew to become the most active at the Patent Trial and Appeal Board (PTAB) and was the first to appear in at least 1,000 proceedings. She was one of the earliest attorneys to appear before the PTAB at the birth of the practice in 2012 and has been among its most prolific and successful practitioners ever since, having been involved in numerous landmark post-grant matters.

Dorothy’s practice focuses primarily on post-grant proceedings at the PTAB, where she represents clients ranging from startups to Fortune 100 companies on both the petitioner and patent owner sides. She has broad technical expertise in the life sciences and chemicals industries, including the technological fields of pharmaceuticals, medical devices and materials, polymer processing, batteries, and fuel cells. Her practice also encompasses patent counseling, due diligence, and patent portfolio management for both budding entrepreneurs and established companies. When the patents at issue are the subject of co-pending litigation, Dorothy works closely with Fish’s litigation team to design and implement holistic strategies for success.

When clients come to Dorothy, she works with them to ensure that she understands their business objectives on a fundamental level and how their post-grant matter fits into the big picture. She develops strategies designed to help her clients meet their objectives by using post-grant matters to get them where they need to go. Clients trust her business-savvy approach and know that she will advise them on the overall best course of action for them, even if that means foregoing a post-grant matter.

 

Dorothy writes and speaks extensively on topics related to post-grant proceedings and is a recognized national thought leader in the field. She is a regular speaker at Fish’s Post-Grant for Practitioners webinar series and a prolific contributor to the wider body of post-grant scholarship. By staying plugged in to the latest developments in post-grant jurisprudence, she keeps her clients one step ahead of the frequent changes in post-grant practice.

Education

J.D., magna cum laude, Boston College Law School (1987)
Member, Boston College Law Review 


S.M., Polymers, Massachusetts Institute of Technology (1984)


B.S., Chemistry, Yale University (1981)

Admissions

  • U.S. Patent and Trademark Office 1989
  • Massachusetts 1987
  • Minnesota 1995

Recognitions

  • Named a “Leading Patent Professional” and recommended for post-grant proceedings by IAM Patent 1000 (2012-2013, 2016-2021)
  • Recognized as a notable practitioner in Intellectual Property, Chambers USA: Minnesota (2020-2021)
  • Named a “Life Science Star” by LMG Life Sciences (2017-2020)
  • Named  to the “Top 50 Women in PTAB Trials” by the PTAB Bar Association (2019)
  • Named a “IP Star” by Managing Intellectual Property (2013-2020)
  • Named “Post Grant Proceedings Attorney of the Year” by LMG Life Sciences (2018)
  • Named “Attorney of the Year” by Minnesota Lawyer (2017-2018)
  • Named to the “Top 250 Women in IP” by Managing Intellectual Property (2016-2020)
  • Named “Life Sciences MVP of the year” by Law360 (2017)
  • Named to The Best Lawyers in America– Intellectual Property (2014, 2013, 2011, 2008, 2007) and Patent Law (2021, 2020, 2019, 2016, 2015, 2011), and Minneapolis Patent Law Lawyer of the Year (2014 and 2020)
  • Named to the “Top 250 Women in IP” by Euromoney (2013)
  • Named a “Top Patent Prosecutor” by Patent Research Review/Patent Buddy (2011)
  • Received “Women in Business/Industry Leader Award” Minneapolis/St. Paul Business Journal (2010)
  • Named a Super Lawyer (2003, 2006-2013)

Experience

  • Coherus BioSciences v. AbbVie Biotechnology, IPR 2016-00172: Dorothy led post-grant strategy for the Fish team that won three much-heralded IPRs for Coherus BioSciences invalidating three patents in the blockbuster drug Humira® patent family. These were the first-ever IPR decisions that invalidated patents for AbbVie’s biologic, which was the highest-selling drug in 2016 with $16 billion in global sales. At the time, Humira accounted for over 60% of AbbVie’s sales. The Coherus case was the most closely watched life sciences IPR of the year, not only because there was so much at stake for the parties, but because of the broader implications for the entire biosimilar industry. Fish’s work is now a model for how other biosimilar patents can be successfully attacked and challenged.
  • I-MAK, v. Gilead Sciences, IPR 2018-00120, -00119, -0000103, -00122, -00121, -00125, -00126, 00123, -00211, -00390: Gilead hired Fish to thwart an attack by Initiative for Medicines, Access & Knowledge Inc. (I-MAK), the billionaire-backed nonprofit that sought to invalidate at the PTAB Gilead’s patents covering its hepatitis C drugs Sovaldi, Harvoni and related sofosbuvir-based drugs. I-MAK filed 10 inter partes review (IPR) petitions at the PTAB against seven Gilead Orange Book patents, and Dorothy and the Fish team (along with co-counsel at WilmerHale) successfully obtained denial of all 10 petitions. The IPRs were coordinated with other proceedings as part of a larger dispute that involved multiple U.S. federal court cases, hearings at the Opposition Division of the European Patent Office, and trials in Norway, the UK, Canada, Germany, and Australia.
  • Eton Pharmaceuticals v. Exela Pharma Sciences, PGR-00064, -00068, -00086: Fish filed a Hatch-Waxman lawsuit for client Exela Pharma Sciences in March 2020 in the District of Delaware against Eton Pharmaceuticals over its intent to produce a generic version of Exela’s patented ELCYS® (cysteine hydrochloride injection) drug. Eton responded by filing three post-grant reviews (PGRs) petitions on Exela’s ELCYS® patents in May, June, and September 2020 in an attempt to invalidate Exela’s patents in the district court litigation. Dorothy led the Fish team that successfully stopped the institution of the PGRs – a huge win for Exela – with the PTAB refusing to institute the post-grant reviews in November 2020, December 2020, and April 2021.

Publications

Media Mentions

Speaking Engagements

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