Elizabeth A. Howard

Elizabeth Howard,

an intellectual property partner in the Silicon Valley office, co-chairs Orrick’s life sciences practice. Dr. Howard focuses on patent infringement litigation, with an emphasis on the life sciences. Her practice also includes trade secrets disputes and handling anti-counterfeiting matters in the pharmaceutical industry. In addition to litigating in numerous federal district courts and California state courts, Dr. Howard has appeared before the U.S. Patent and Trademark Office in interference proceedings, arbitrated before the International Chamber of Commerce, and litigated before the U.S. International Trade Commission (ITC). Dr. Howard has also served as a deputy district attorney in the county of Santa Clara.

Listed as a “leading lawyer” in PLC Which Lawyer? for her litigation successes in life sciences, and named to the Daily Journal’s list of “Top 75 IP Litigators in California” in 2013, Dr. Howard led the IP litigation team in securing, as the Daily Journal phrased it, “a huge win” for Tekmira in its multi-country patent and trade secrets dispute against Alnylam Pharmaceuticals, Inc.

Tekmira Pharmaceuticals Corp. v. Alnylam Pharmaceuticals, Inc.; Alnylam Pharmaceuticals, Inc. v. Tekmira Pharmaceuticals, Corp. Dr. Howard was lead counsel for Tekmira in this bet-the-company trade secret misappropriation case against Tekmira’s former collaborator Alnylam in Massachusetts state court. Tekmira alleged that Alnylam had taken advantage of the collaboration to misappropriate Tekmira’s secret RNAi delivery and manufacturing technology, including by applying for patents on technology developed by Tekmira and by passing off Tekmira’s technology as its own. Two days before jury selection, the case settled with Alnylam agreeing to pay Tekmira $75 million in cash and near-term milestone payments, and agreeing to transfer patents and patent applications to Tekmira. Alnylam also agreed to dismiss counter-suits for patent infringement that it had filed in Massachusetts and Canada. The San Francisco Daily Journal described the settlement as a “huge win” for Tekmira. See R. Swan, Orrick Nabs Win for Pharmaceutical Client, S.F. Daily Journal, Nov. 14, 2012.
Dow AgroSciences. Dr. Howard represents the company and its affiliates in multiple patent actions involving molecular biology, biochemistry and plant molecular genetics.
Cellectricon AB et al v. Fluxion Biosciences, Inc. Dr. Howard represented Fluxion Biosciences, Inc. in a patent infringement suit involving Fluxion’s microfluidics products for cellular assays. The case settled before trial.
Protiva Biotherapeutics, Inc. Dr. Howard was lead counsel for Protiva Biotherapeutics, Inc. in Protiva Biotherapeutics, Inc. v. Sirna Therapeutics, Inc., a trade secrets case filed in the State Court of California involving allegations of misappropriation of Orrick client Protiva Biotherapeutics, Inc.’s technology for the systemic delivery of small interfering RNA (siRNA), and as defendant in a breach of contract federal court action against Sirna Therapeutics, Inc. and Sirna’s parent company Merck & Co., Inc. Dr. Howard successfully stayed the federal court action, then argued for and obtained a preliminary injunction for her client followed by a confidential settlement of all litigation between the parties, allowing Protiva to continue operating and to expand its cutting-edge work and industry collaborations.
SiRF Technologies, Inc. Dr. Howard was part of a team that defended respondents SiRF Technology, Inc., E-TEN Corp., Pharos Science & Applications, Inc., MiTAC International Corp., and Mio Technology Ltd., USA in In the Matter of Certain GPS Devices and Products Containing Same (ITC Investigation No. 337-TA-602, 2007). The investigation concerned Global Locate, Inc. and Broadcom’s allegations that the respondents’ global positioning satellite (GPS) devices infringe claims of six Global Locate patents.
Hon-Hai Precision Industry Co., Ltd. Dr. Howard was part of the team that represented Foxconn Corporation in a patent infringement suit in the Northern District of California involving seven patents. Foxconn, a subsidiary of Hon-Hai Precision Industry Co., is Taiwan’s largest manufacturer of connectors for use in PCs and a leading global manufacturer of connectors and cable assemblies.
Wilbur-Ellis Company. Dr. Howard advises Wilbur-Ellis in various matters, including as lead counsel for Wilbur-Ellis in a patent infringement litigation, Yamashita et al. v. Wilbur-Ellis Co., in the Northern District of California. In defending against allegations that a Wilbur-Ellis fertilizer composition infringed asserted patents, Dr. Howard successfully argued and defeated a motion for a preliminary injunction. This case is now settled.
Affymetrix. Dr. Howard represented Affymetrix in a variety of matters both defending their GeneChip® product from patent infringement allegations of others and enforcing Affymetrix’s GeneChip® patents against infringers. These proceedings occurred in a variety of locations and forums, including the district courts of San Francisco and San Jose, the district court of Wilmington, Delaware, the U.S. Patent and Trademark Office and the United Kingdom.
Matrix Pharmaceuticals, Inc. Dr. Howard was a member of the team representing Matrix Pharmaceuticals in a trade secrets action brought by Collagen Corp. The matter settled before trial.
Cygnus Therapeutics Systems. Sanofi S.A. v. Cygnus Therapeutics, Inc. (International Chamber of Commerce, Paris, France). Dr. Howard was a member of the term representing Cygnus Therapeutics in a contract dispute relating to its transdermal patch technology.
Shell Oil Company. Shell Oil Co. v. Pacific Indemnity, et al. (San Mateo Superior Court) Dr. Howard was a member of the team representing Shell in a 12-week pollution coverage case on behalf of the policy-holder, the Shell Oil Company, arising from decades-old pollution at the Rocky Mountain Arsenal in Colorado. This was a retrial of a case originally tried 10 years earlier with disastrous results for our client. The original adverse judgment was reversed on appeal. Two weeks before going to the jury, the defendants agreed to an extremely satisfactory settlement.

Dr. Howard also counsels clients in negotiation and drafting of agreements in licensing or other technology transactions.

Dr. Howard also speaks and publishes regularly on intellectual property matters affecting the life sciences industry. Selected publications and presentations include:

“Defending Your Brand From Attack By Drug Counterfeiters and Illegal Diverters: New Strategies in China and Elsewhere,” An FDA News Webinar, Live Webcast, November 22, 2013
“Fracking Disclosures: A Tug of War without Winners,” E. Howard and D. Knerr, Trade Secrets Watch Blog, October 24, 2013 http://blogs.orrick.com/trade-secrets-watch/2013/10/24/fracking-trade-secret-rules-a-tug-of-war-without-winners/#.Umla9URJ1lQ.twitter
“Best Practices to Avoid Becoming the Target of a Trade Secret Misappropriation Claim,” Orrick’s Silicon Valley IP Breakfast Series, October 10, 2013
“Protecting Trade Secrets in a Collaboration: A Case Study,” The Knowledge Congress Group, LLC, Live Webcast, April 25, 2013
“It’s Not Just Boilerplate! - Best practices for drafting collaboration agreements to protect your IP,” Intel Corporation LPX Working Forum Series webinar, March 20, 2013.
“It’s Not Just Boilerplate! - Best practices for drafting collaboration agreements to protect your IP,” American Intellectual Property Law Association (AIPLA), Trade Secret Committee Educational Program webinar, March 13, 2013.
“Google’s $500 Million Pharmaceutical Advertising Settlement and Implications for the Rogue Pharmaceutical Ecosystem,” Orrick Client Alert, September 8, 2011.
Moderator, “Molecular Pathology v. US PTO on Gene Patents,” Law Seminars International, June 24, 2010.
“Biosimilar Legislation and its Impact on IP Protection,” Trends in Bio/Pharmaceutical Industry, 5: 4 (2009).
“Patent on Isolated Human Genes Found Unpatentable by U.S. District Court Judge,” Orrick Client Alert, April 16, 2010.
“Federal Circuit Reinforces Fact-Specific Nature of Obviousness Analysis Post-KSR,” Orrick Client Alert, January 9, 2009.
Speaker, “Written Description in the Life Sciences,” CLE Presentation, January 17, 2009.
“Bilski Machine-Transformation Test Applied to Pending Patent Application,” Orrick Client Alert, December 19, 2008.
“Federal Circuit Issues Opinion in Takeda v. Mylan Labs” Orrick Client Alert, December 15, 2008.
“Federal Circuit Refines Written Description Requirement for Claims Including Antibodies” Orrick Client Alert, November 11, 2008.
Speaker, “Patent Infringement Remedies: Injunctive Relief and Future Damages,” CLE Presentation, November 10, 2008.
Speaker, “Navigating Patent Law and Licensing: Willful Infringement and Patent Exhaustion,” San Jose Biocenter Presentation, October 1, 2008.
“Factoring Patent Reform, PTO Rulemaking and New Case Law into Your Due Diligence Analysis,” American Conference Institute, New York, New York (January 30, 2008).
“Obviousness After KSR: the American Approach,” 81st Annual Meeting of the Intellectual Property Institute of Canada, Vancouver, Canada (October 12, 2007).
“Integra’s Impact on the Scope of the Safe Harbor,” Maximizing Pharmaceutical Patent Life Cycles, American Conference Institute, San Francisco, CA (June 14, 2006).
“Interpreting 35 USC § 112 and Written Description Requirements,” 6th Advance Forum on Biotech Patents, American Conference Institute, San Francisco, CA (February 17, 2006).
“Claim Construction: Methodology and Tensions,” PLI conference on How to Prepare and Conduct Markman Hearings in 2005, San Francisco, CA (July 13, 2005).
“Stem Cell Ethics, Patents and Politics, a Biotech Roundtable,” Pharmaceutical Executive (June 2002).
“New PTO Guidelines Only Say ESTs Are Protectable,” E. Howard, W. Anthony, The National Law Journal (July 23, 2001).

Dr. Howard’s scientific publications include the following:

“The Vir D2 protein of A. tumefaciens contains a C-terminal bipartite nuclear localization signal: implications for nuclear uptake of DNA in plant cells,” E. Howard et al., Cell 68:109 (1992).
“Activation of the T-DNA transfer process in Agrobacterium results in the generation of a T-strand-protein complex,” E. Howard et al., PNAS 86:4017 (1989).
“Reproducible and variable genomic rearrangements in the developing somatic nucleus of the ciliate Tetrahymena thermophila,” E. Howard and E. Blackburn, Mol. Cell. Biol. 5:2039 (1985).
“DNA termini in ciliated macronuclei,” Blackburn et al., CSHSQB 47:1195 (1983).
U.S. Patent 5,001,060, Plant Anaerobic Regulatory Element (1991).

Good to know

Areas of Practice 1) Life Sciences, 2) Patent Litigation, 3) Trade Secrets Litigation, 4) IP Counseling & Due Diligence, 5) International Arbitration & Dispute Resolution and 6) Intellectual Property
Law School J.D., University of California, Hastings College of the Law
Education B.A., with honors, University of California, Santa Barbara
Bar Member / Association State bar of California
Most recent firm Orrick, Herrington & Sutcliffe LLP
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