Michael J. Abernathy concentrates on patent, trade secret, and antitrust litigation. As co-leader of the firm’s intellectual property (IP) disputes practice and life sciences industry team, Mike has first-chair trial experience and is highly sought after by clients that face significant bet-the-company litigation. He has successfully tried biopharma and technology cases to juries across the United States and has trial experience in Hatch-Waxman cases, Section 337 investigations in the US International Trade Commission (ITC), and importation disputes in the Court of International Trade.
IAM Patent 1000 has described Mike as follows: “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 IP assets, post-grant review, licensing programs, and patent due diligence issues. He also has litigated emergency injunction proceedings involving pharmaceuticals and medical devices.
A frequent speaker, Mike has presented lectures on trial advocacy to the National Institute for Trial Advocacy, Northwestern University School of Law, the Practising Law Institute, the Bureau of National Affairs, PwC’s National Expert Forum, and the National Business Institute. His topics have included effective storytelling at trial, presentation of electronic demonstratives, use of electronically stored information under the Federal Rules of Evidence, and retention of technical and damages experts.
Lead trial counsel for Praxair, Inc. (now Linde) in a 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, and The American Lawyer recognized Mike and others on the Morgan Lewis team as “Litigator of the Week.”
Lead trial counsel for patent owner Baxalta (now Takeda) in an ITC investigation regarding methods of manufacturing ADVATE—a billion-dollar recombinant factor VIII product. Successfully obtained summary determination of infringement before trial. Following trial, the case settled favorably after the ITC ruled in client’s favor on domestic industry and infringement.
Lead trial counsel to Takeda/Baxalta in an infringement case involving Genentech’s market-leading drug Hemlibra®, a bispecific antibody treating hemophilia A, which generated $1.4 billion in sales in 2019. Baxalta’s asserted patent relates to antibody preparations to treat hemophilia patients who have developed inhibitors preventing blot clotting.
Lead counsel for Merck Sharp & Dohme Corp. in an arbitration against Ligand Pharmaceutical, Inc. involving Verbecestat, a drug to help Alzheimer patients.
Secured a defense verdict as lead trial counsel for Nestlé Purina Petcare Company where plaintiff sought $73 million in damages for infringement of a patent directed to sodium bentonite formulations.
Lead counsel for Merck KGaA and related entities in an arbitration against NantKwest and Brink Biologics involving 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 Corp.) 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.
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.
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 rollout of a probing system for coordinate measuring machines.
Lead trial 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 plaintiff's case.
DePaul University College of Law, 1982, J.D., With Honors
Benedictine University, 1979, B.A., Magna Cum Laude
Supreme Court of the United States
US Court of Appeals for the First Circuit
US Court of Appeals for the Third Circuit
US Court of Appeals for the Fourth Circuit
US Court of Appeals for the Fifth Circuit
US Court of Appeals for the Seventh Circuit
US Court of Appeals for the Ninth Circuit
US Court of Appeals for the Eleventh Circuit
US Court of Appeals for the Federal Circuit
US District Court for the Eastern District of Michigan
US District Court for the Eastern District of Wisconsin
US District Court for the Northern District of Illinois
Awards and Affiliations
Recognized, General Patent Litigator of the Year – Midwest, LMG Life Sciences (2021)
Ranked, Intellectual Property, Illinois, Chambers USA (2020, 2021)
Member, Life Sciences Editorial Advisory Board, Law360 (2020)
Recognized, Litigation – Intellectual Property, Chicago; Trademark Law, Chicago, The Best Lawyers in America (2014–2022)
Recognized, IP Patent Star – Illinois, Managing Intellectual Property (2018–2021)
Recommended, Intellectual property: Patents: litigation (full coverage), The Legal 500 US (2019–2021)
Recommended, Industry focus – Healthcare – life sciences, The Legal 500 US (2017–2021)
Recognized, IAM Patent 1000: The World’s Leading Patent Professionals (2016–2021)
Life Sciences Star, Intellectual Property, LMG Life Sciences (2016–2021)
Member, Practice Group of the Year, Intellectual Property, Law360 (2019)
Member, Litigation Department of the Year–Intellectual Property, The American Lawyer (2019)
Recognized, Illinois Leading Lawyer, Intellectual Property Litigation, Illinois Super Lawyers (2010–2018)
Recognized, Intellectual Property Litigation, Illinois Super Lawyers (2010–2018)
Recognized, Top Ten IP Lawyers, United States Lawyers Rankings
Faculty, National Institute for Trial Advocacy
Adjunct professor of clinical trial advocacy, Northwestern University School of Law