Photo of Nicholas C. Prairie

Nicholas (“Nick”) Prairie is an associate in the Litigation Department, and a member of the Life Sciences Patent practice. He works with life science and pharmaceutical clients of all sizes and counsels through the life cycle of U.S. and foreign patent assets.

Nick is experienced at conducting freedom-to-operate and patentability analyses to identify opportunities in crowded therapeutic fields, as well as developing and implementing prosecution strategies to support commercial efforts. He has prepared non-infringement and invalidity opinions, evaluated litigation risk, and developed potential litigation strategies. He has conducted infringement analyses and has prepared complaints for federal district courts and the International Trade Commission. Nick is also heavily involved in supporting opposition practice in Europe, on the sides of both Opponents and Patentees.

Nick’s technical expertise is diverse. While trained as a synthetic organic chemist, he works with an array of therapeutics in the chemistry space, including small molecules, macrolides, and multifunctional molecules, as well as therapeutics in the biotechnology space including antibodies, enzyme replacement therapies, engineered cells, nucleic acid-based therapies, and gene editing technologies. Prior to joining Proskauer, Nick was an associate at another Boston firm where he assisted in patent prosecution and district court litigation.

Before law school, he worked for about eight years as a chemist where he designed and synthesized a variety of pharmaceutically interesting compounds including; small molecules, peptides, peptide-drug conjugates, proteins, and protein-polymer conjugates, and is an inventor on several patents/patent applications. As a graduate student his research focused on natural product synthesis. In addition to staying up to date on the ever-shifting patent case law, Nick enjoys spending time with his dog and staying active.

Less than two months after CVC made the surprising move to revoke two of its seminal European CRISPR patents, Sigma-Aldrich has done it too. While the facts that led to Sigma’s “self” revocation may be different than CVC’s, this en vogue trend of avoiding final decisions is troubling because it

There is no shortage of surprises and twists in the decade-long fight over the control of dominant IP in the CRISPR space.  The newest one is the self-revocation of two seminal CRISPR patents in Europe by the team led by two Nobel Laureates Emmanuelle Charpentier and Jennifer Doudna (aka “CVC”).  

The Federal Circuit’s decision in Edwards Lifesciences Corp. v. Meril Life Sciences Pvt. Ltd., has garnered significant attention, especially concerning the application of the “safe harbor” provision under 35 U.S.C. § 271(e)(1). The Federal Circuit’s ruling, and the subsequent denial of Edwards’s petition for rehearing en banc, underscores

The U.S. Supreme Court on May 18, 2023 delivered its decision on the scope of the patent enablement requirement, set forth in 35 U.S.C. § 112, in the antibody dispute Amgen, Inc. v. Sanofi. While the parties obtained finality, many in the pharmaceutical and biotechnology industries received the opinion under a cloud of uncertainty and concern for exclusivity rights broad enough to both protect clinical candidates and deter competitors. While the patent bar may remain apprehensive, the Supreme Court kept the door open to genus claims.  The impact of the decision may not be as far-reaching as feared.

Over the last seven years there has been commotion in Obviousness-type Double Patenting (“ODP”) practice. One of the latest cases to spur a considerable amount of interest is Mitsubishi Tanabe Corp. v. Sandoz, Inc., which is currently on appeal to the Federal Circuit (“CAFC”). While a detailed review of this case is not the intent of this post, as a fair number of practitioners have provided insightful coverage, an historical overview is helpful for framing the decision and issues that need clarification from the CAFC.

Allele v. Pfizer – The Basics. On April 23, 2021, Pfizer, Inc., BioNTechSE, and BioNTech US, Inc. (“Pfizer and BioNTech”) filed a joint reply supporting of their previously filed motion to dismiss a patent infringement complaint filed by Allele Biotechnology and Pharmaceuticals, Inc. (“Allele”) in the Southern District of California. The patent at the center of the case is U.S. Pat. No. 10,221,221 (“the ’221 Patent”) which covers Allele’s mNeonGreen, a monomeric yellow-green fluorescent protein notable for its intense brightness. On May 4, 2021, the court denied the motion to dismiss, leaning heavily of the Federal Circuit’s 2008 decision Proveris Science Corp. v. Innovasystems, Inc. As this case continues to develop it could help shed light on an unsettled issue – are “research tools” categorically excluded from the 35 U.S.C. § 271(e)(1) Safe Harbor?