Michael J. Abernathy

IAM Patent 1000 described Mike as follows in its most-recent rankings: “At trial, Abernathy is a compelling storyteller, but never strays from the substance of his case. He is not afraid to give clients hard advice, which has earned him longstanding relationships of trust.”

With 35 years of litigation experience, Mike frequently advises corporations on the Biologics Price Competition and Innovation Act (BPCIA), the Hatch-Waxman Act, strategic use of intellectual property assets, post grant review, licensing programs, and patent due diligence issues. He also has litigated emergency injunction proceedings involving pharmaceuticals and medical devices, computer software, and industrial espionage.

A frequent speaker, Mike has presented lectures on trial advocacy to the National Institute for Trial Advocacy, the Practising Law Institute, the International Trademark Association, the Northwestern University School of Law, the Bureau of National Affairs, PricewaterhouseCoopers National Expert Forum, and the National Business Institute. His topics include effective presentation of electronic demonstratives, use of electronically stored information under the Federal Rules of Evidence, and retention of technical and damages experts.

• Served as lead trial counsel for Praxair, Inc. (now Linde) in two-week ANDA trial against Mallinckrodt Pharmaceuticals involving 11 patents related to pharmaceutical product (INOMAX) and associated delivery system. The district court ruled that half of the asserted patents were invalid and the other patents were not infringed, resulting in a complete victory for Praxair. The Federal Circuit affirmed in 2019, and The American Lawyer recognized Mike and others on the Morgan Lewis team as “Litigator of the Week.”
• Served as lead trial counsel representing a patent owner Baxalta (now Takeda) in the ITC in a dispute regarding method of manufacturing recombinant factor VIII (ADVATE), a billion dollar pharmaceutical product. Successfully obtained summary determination of infringement before the final hearing. Following trial, the case settled favorably after the ITC ruled in client’s favor on domestic industry on appeal and infringement.
• Lead trial counsel for Baxalta (now Takeda) in a patent infringement action in the District of Delaware filed against Genentech, Inc. This action alleges that Genentech’s sale of HEMLIBRA infringes a Baxalta patent related to antibodies that bind FIX/FIXa and increase the procoagulant activity of FIXa.
• Lead counsel for Merck Sharp & Dohme Corp. in an arbitration against Ligand Pharmaceutical, Inc. involving Verbecestat, a drug to help Alzheimer patients.
• Served as lead counsel for Merck KGaA and related entities in an arbitration against NantKwest and Brink Biologics involving variant and natural NK-92 cell lines.  Successfully moved to dismiss related district court action seeking to enjoin the arbitration.
• Secured a defense victory as co-lead trial counsel for Sigma International (now Baxter Healthcare) in a patent infringement jury trial against CareFusion Corp. in the Southern District of California over occlusion sensors for infusion pumps. CareFusion had sought $171 million in damages and a permanent injunction.
• Secured victory as lead trial counsel for Amazon.com in Certain Wireless Consumer Electronic Devices and Components Thereof, No. 337-ITC-853, where complainants sought an exclusion order against the Kindle Fire.
• Served as lead counsel for Baxter Healthcare Corp. in patent litigation in the Western District of Texas involving methods for remote supervision and verification of pharmacy work. The court granted summary judgment after concluding that the asserted claims of the patent were invalid because the claims involved unpatentable subject matter.
• Obtained a $17 million damages award in the Northern District of California for infringement of three patents related to hemodialysis machines as lead trial counsel for Baxter International Inc. in a patent infringement jury trial.
• Served as co-lead counsel for Hexagon Metrology Inc. and TESA Technology in a successful settlement in a patent holder's attempt to obtain a preliminary injunction to enjoin the national roll-out of a probing system for coordinate measuring machines.
• Served as lead counsel for International Game Technology (IGT) in a patent ownership jury trial in the District of Nevada. The case was successfully settled after the court indicated that it would likely grant IGT's motion for judgment of law upon close of the plaintiff's case.