Erin M. Dunston
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Erin M. Dunston

Shareholder

IP Litigation Group Co-Chair

Alexandria, VA
 
 
 

Erin M. Dunston is the co-chair of the firm's Intellectual Property Litigation practice group and a member of the firm's Associates' Committee. She focuses on inter partes reviews, interferences, district court litigation, opinions, and prosecution — primarily in the fields of biotechnology, pharmaceuticals, and medical devices. Her litigation practice includes classic infringement and declaratory judgment cases, as well as Paragraph IV cases.

From 2014 to 2018, Erin was recognized in IAM’s Patent 1000 list – the best-in-class listing of patent prosecution, licensing, and litigation practitioners and from 2014 to 2018 as an IP Star by Managing Intellectual Property. From 2014 to 2016, Erin has been named a Leading Intellectual Property Lawyer by Chambers USA. Erin also received Lawyer Monthly’s Women in Law 2016 Award for her contributions to the practice of biotechnology law. She was also selected for inclusion in The Best Lawyers in America 2018 list.

Erin has assisted in more than 40 interferences before the Patent Trial and Appeal Board. As a result, she is knowledgeable on all phases of interference work, ranging from pre-request analyses to preparation for and participation at final hearings and subsequent appeals to the Federal Circuit.

Erin’s significant interference experience before the PTAB serves as a useful backdrop to the America Invents Act post-grant proceedings, including inter partes reviews, post-grant reviews, covered business method patent reviews, and derivation matters. Erin has handled IPRs for both patent owners and petitioners.

In addition to the IPR matters that Erin is working on, she was also a panelist on the inaugural PTAB AIA Roundtable, held on April 15, 2014 at the United States Patent and Trademark Office. The panel discussed AIA trial statistics, lessons learned and techniques for successful motions practice. The fact pattern used at that roundtable, and all subsequent PTAB roundtables throughout the country, was initially drafted by Erin for a Pauline Newman Inn of Court meeting titled “Concurrent Post-Grant Proceedings: Dos, Don’ts, and Tips for Creating a Strong Record for Appeal or Civil Action,” where Erin moderated a panel of judges and practitioners. Erin served as a panelist in April of 2016 for a PTO 'Boardside Chat' on the recent rule amendments.

To help to ensure familiarity with current patent practice and to complement her litigation, post-grant, and interference work, Erin maintains a significant patent prosecution docket. Erin has experience in all phases of patent prosecution, from pre-filing investigations and application drafting to appeals to the Patent Trial and Appeal Board and Federal Circuit.

Erin speaks French, conversationally.

Erin's representative inter partes reviews before the PTAB include:

  • Maverick Sports Medicine, Inc. v. Implus Footcare, LLC, IPR2016-01227
  • 3Shape Medical A/S v. Sirona Dental Systems GmbH, IPR2016-00481
  • Stage Technologies, Inc. v. Olaf Sööt Design, LLC, IPR2015-00116
  • Stage Technologies, Inc. v. Olaf Sööt Design, LLC, IPR2015-00117
  • Laird Technologies, Inc. v. GrafTech International Holdings, Inc., IPR2014-00023
  • Laird Technologies, Inc. v. GrafTech International Holdings, Inc., IPR2014-00024
  • Laird Technologies, Inc. v. GrafTech International Holdings, Inc., IPR2014-00025
  • E.I. du Pont de Nemours and Company v. Monsanto Technology, IPR2014-00331
  • E.I. du Pont de Nemours and Company v. Monsanto Technology, IPR2014-00332
  • E.I. du Pont de Nemours and Company v. Monsanto Technology, IPR2014-00333
  • E.I. du Pont de Nemours and Company v. Monsanto Technology, IPR2014-00334
  • E.I. du Pont de Nemours and Company v. Monsanto Technology, IPR2014-00335

Erin's representative litigation matters include:

  • ENI-JR286, Inc. v. Implus Footcare, LLC, Civil Action No. 2:17-cv-05181 MWF (C.D. Cal.) (patent infringement and declaratory judgment action involving massage roller technology)
  • Zoetis, LLC v. Roadrunner Pharmacy, Inc., Civil Action No. 15-3193 NLH/AMD (D.N.J.) (patent and trademark infringement action involving FDA-approved canine anti-itch remedy, Apoquel®)
  • Zoetis, LLC v. AX Pharm. Corp., Civil Action No. 16-02642-PHX-GMS (D. Ariz.) (patent infringement action involving FDA-approved canine anti-itch remedy, Apoquel®)
  • Zoetis, LLC v. Attix Pharms. Inc., Civil Action No. 16-02640-PHX-DJH (D. Ariz) (patent infringement action involving FDA-approved canine anti-itch remedy, Apoquel®)
  • Ethox Chemicals, LLC v. The Coca-Cola Co., 683 F. App’x 958 (Fed. Cir. 2017) (omitted inventor action under 35 U.S.C. § 256 concerning gas barrier technology)
  • In re Commonwealth Scientific & Indus. Research Org., Case No. 2014-1710 (interpretation of 35 U.S.C. § 135(b)(1)), United States Court of Appeals for the Federal Circuit (2015 WL 7423624)
  • Loughlin v. Ling, Case No. 2011-1432 (interpretation of 35 U.S.C. § 135(b)(2)), United States Court of Appeals for the Federal Circuit (reported at 684 F.3d 1289)
  • In re Brimonidine Patent Litigation, 643 F.3d 1366 (Fed. Cir. 2011), 666 F. Supp.2d 429 (D. Del. 2009) — Representing Exela PharmSci., Inc. in a patent infringement action under the Hatch-Waxman Act brought by Allergan regarding brimonidine tartrate used to lower intra-ocular pressure and alleviate glaucoma; Federal Circuit finding of no infringement.
  • Brassica Protection Products LLC and The Johns Hopkins University v. Caudill Seed & Warehouse Co., 2008 U.S. Dist. LEXIS 54135 (Southern District of New York) — Represented Brassica in a patent infringement case regarding chemoprotective cruciferous extracts.
  • University of Pittsburgh of the Commonwealth System of Higher Education v. Marc H. Hedrick et al., Civil Action No. 2:04-cv-9014 (Central District of California June 9, 2008) — Represented co-inventors of adipose-derived stem cells from the Regents of the University of California in action to correct inventorship.
  • Enzo Therapeutics, Inc. v. Yeda Research & Dev. Co., 467 F. Supp.2d 579, 477 F. Supp.2d 699 (Eastern District of Virginia 2006, 2007) — Represented Yeda Research and Development Co. in a 146 Action involving interferon-β2.
  • Rhodia Chimie and Rhodia Inc. v. PPG Industries, Inc., 402 F.3d 1371 (U.S. Court of Appeals for the Federal Circuit 2005) — Represented Rhodia Chimie and Rhodia Inc. in a patent infringement action concerning precipitated silica.
  • Eli Lilly & Co. v. Zenith Goldline Pharmaceuticals, Inc., 2001 U.S. Dist. LEXIS 18361 (Southern District Court of Indiana) — Represented Lilly in patent infringement action under the Hatch-Waxman Act, finding defendants to have willfully infringed Lilly's patent covering Nizatidine and the product AXID®.
  • Novo Nordisk A/S v. Eli Lilly & Co., 1999 U.S. Dist. LEXIS 18690 (District of Delaware) — Represented Eli Lilly in a declaratory judgment action by a competitor for non-infringement and invalidity of Lilly's patent on the rapid-acting human insulin analog formulation, insulin lispro [rDNA origin] and the product Humalog®.

Erin's representative interference matters include:

  • The Broad Institute, Inc. v. Regents of the University of California, Interference 106,048 (Crispr Cas9), United States Patent and Trademark Office, Patent Trial and Appeal Board
  • Zieler v. Ananiev, Interference No. 105,989 (artificial plant minichromosomes), United States Patent and Trademark Office, Patent Trial and Appeal Board
  • Rozbicki v. Chiang, Interference No. 105,898 (methods for depositing diffusion barriers), United States Patent and Trademark Office, Patent Trial and Appeal Board
  • Dung v. Buehler, Interference No. 105,893 (analgesics), United States Patent and Trademark Office, Patent Trial and Appeal Board
  • Tobinick v. Olmarker, Interference No. 105,866 (methods for treating nerve disorders mediated by nucleus pulposus using TNF-α inhibitors), United States Patent and Trademark Office, Patent Trial and Appeal Board
  • Zinn v. Powers, Interference No. 105,860 (venous access port assemblies), United States Patent and Trademark Office, Patent Trial and Appeal Board
  • Olmarker v. Le, Interference No. 105,842 (methods for treating nerve disorders mediated by nucleus pulposus using TNF-α inhibitors), United States Patent and Trademark Office, Patent Trial and Appeal Board
  • Merten v. Franchina, Interference No. 105,804 (fluorochemicals), United States Patent and Trademark Office, Board of Patent Appeals and Interferences
  • CSIRO and Bayer BioScience N.V. v. Carnegie Institute of Washington and the University of Massachusetts, Interference No. 105,754 (inhibiting gene expression using RNAi), United States Patent and Trademark Office, Patent Trial and Appeal Board
  • Kawahara v. Abraham, Interference No. 105,696 (non-nutrative sweeteners), United States Patent and Trademark Office, Board of Patent Appeals and Interferences
  • Short v. Patten, Interference No. 105,532 (methods and compositions for polypeptide engineering), United States Patent and Trademark Office, Board of Patent Appeals and Interferences
  • Browning v. Yu, Interference No. 105,485 (methods for inhibiting B lymphocytes), United States Patent and Trademark Office, Board of Patent Appeals and Interferences
  • Howell v. Lentz, Interference No. 105,413 (methods of enhancing immune responses by removing sTNFR1), United States Patent and Trademark Office, Board of Patent Appeals and Interferences
  • DeLucas v. Santarsiero, Interference No. 105,403 (methods for performing microarrays of protein crystallizations), United States Patent and Trademark Office, Board of Patent Appeals and Interferences
  • Sehgal v. Revel, Interference No. 105,304 (interferon β-2, IL-6), United States Patent and Trademark Office, Board of Patent Appeals and Interferences
  • Sehgal v. Revel, Interference No. 105,303 (interferon β-2, IL-6), United States Patent and Trademark Office, Board of Patent Appeals and Interferences
  • Sehgal v. Revel, Interference No. 105,302 (interferon β-2, IL-6), United States Patent and Trademark Office, Board of Patent Appeals and Interferences
  • Sehgal v. Revel, Interference No. 105,293 (interferon β-2, IL-6), United States Patent and Trademark Office, Board of Patent Appeals and Interferences
  • Short v. Punnonen, Interference No. 105,188 (non-stochastic generation of genetic vaccines), United States Patent and Trademark Office, Board of Patent Appeals and Interferences
  • Genencor v. Novozymes, Interference No. 105,155 (detergent compositions comprising fungal cellulases), United States Patent and Trademark Office, Board of Patent Appeals and Interferences
  • Wang v. Murakawa, Interference No. 105,055 (quantitative PCR), United States Patent and Trademark Office, Board of Patent Appeals and Interferences
  • Deen v. Ni, Interference No. 104,784 (TNF-1), United States Patent and Trademark Office, Board of Patent Appeals and Interferences
  • University of Washington v. Eli Lilly & Co., Interference No. 104,733 (vitamin K-dependent serine proteases), United States Patent and Trademark Office, Board of Patent Appeals and Interferences
  • Noelle v. Lederman, Interference No. 104,415 (CD40CR monoclonal antibodies), United States Patent and Trademark Office, Board of Patent Appeals and Interferences
  • Slaikeu v. Onishi, Interference No. 103,993 (catheter technology to prevent watermelon seeding), United States Patent and Trademark Office, Board of Patent Appeals and Interferences
  • Talieh v. Demaray, Interference No. 103,629 (collimated plasma sputtering), United States Patent and Trademark Office, Board of Patent Appeals and Interferences