David Lesht

Secured a patent noninfringement and invalidity judgment against an industry leader, which defeated the industry leader’s patent campaign against its major competitors. As co-chair of the affirmed, successful trial defense of a patent infringement action asserting patents purporting to claim one of the key stabilizers for polyvinyl chloride, proved the asserted patents were not infringed based on the chemical terminology used in the claims. The client had its own patents using similar terminology, which added to the challenge at trial of showing the claims were not infringed and the claimed terminology was not enabled and was indefinite. The plaintiff, Morton Thiokol, had advanced a patent campaign on these same patents against several different industry competitors. Our case was the first to go to trial and by providing a roadmap to defeating the patents, we undermined the plaintiff’s entire campaign.

Secured a win at a patent interference proceeding and later litigation that resulted in securing multimillion-dollars licensing revenues. Webb et al. v. Osborne (BPAI now known as the PTAB), and Total Containment, Inc. v. Intelpro Corp. v. Environ Products, Inc. (Fed. Cir.). David first chaired the successful patent interference proceeding proving the client was the first to invent a system for environmentally secure underground piping by showing that a doodle on a restaurant napkin fully supported the claimed invention. Thereafter, he represented the same client’s company as lead counsel in the briefing and oral argument before the Federal Circuit in successfully vacating a district court summary judgment (handled by others) holding the patent resulting from the interference proceeding was invalid based on prior art. Securing a vacatur of the invalidity holding enabled the client to license rights to the surviving patent for several millions of dollars.

Defeated an alleged patent infringement and trade secret theft by successfully showing that the subject matter was earlier known by others. Conforti v. The Ocean Group, Inc., et al. (D. Mass & Fed. Cir.). David secured a summary judgment for the client on patent infringement and trade secret theft charges. Thereafter, he successfully briefed and argued the appeal affirming the summary judgment grant. Despite trade secret defense complications due to the death of the client’s alleged principal actor, David nonetheless succeeded in showing that the alleged trade secrets were part of the client’s preexisting written records and was also disclosed in prior art patents.

Augmented and licensed a patent portfolio to the consumer electronic industry with resultant royalty revenues of many, many millions of dollars. Nissim Corp. v. DVD industry. As a team member, David represented the inventor of DVD technology including technology for controlling the playback of video segments. As a result of our efforts in successfully augmenting the inventor’s patent portfolio and our extensive licensing efforts, nearly every major manufacturer that produces, markets, or sells DVD players in the United States is licensed under the patent portfolio. The licensing campaign ultimately generated many, many millions of dollars in royalty payments.

As a member of a multi-firm team, David has litigated antitrust claims on behalf of a proposed class in a several antitrust cases in the pharmaceutical industry where the brand’s patent portfolio could not justify the brand delaying generic entry into the marketplace to the detriment of consumers. For example, as a member of plaintiffs’ patent team, David litigated claims on behalf of direct purchasers of brand and generic Glumetza. The litigation alleged that a generic company agreed to delay its launch of a generic form of the brand company’s extended-release Metformin product on terms favorable to the brand and generic companies but not favorable to consumers and not justified by the brand’s patent portfolio. The litigation resulted in settlements totaling over $400 million for the direct-purchaser class, which the 2022 Antitrust Annual Report listed as the largest U.S. antitrust settlement of 2022. In re Glumetza Antitrust Litigation (N.D. Cal.). Currently, David is a member of the teams representing antitrust plaintiffs in In re Lantus Direct Purchaser Antitrust Litigation (alleging brand engaged in multifaceted scheme to unlawfully delay generic competition of brand’s Lantus insulin glargine product), In re Actos Direct Purchaser Antitrust Litigation (alleging improper submissions by the brand to the FDA resulted in Orange Book listings for brand’s diabetes treatment Actos pioglitazone product which delayed generic entry to the detriment of consumers), In re Revlimid & Thalomid Purchaser Antitrust Litigation (alleging brand engaged in extensive anticompetitive conduct to delay generic competition with the brand’s Revlimid cancer drug), and Iron Workers District Counsel of New England Health and Welfare Fund et al. v. Teva Pharmaceutical Industries Ltd. et al. (alleging brand engaged in multifaceted scheme to delay generic competition of brand’s QVAR beclomethasone dipropionate asthma inhaler product).