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Bindu Donovan

Bindu Donovan

Partner, New York
PHONE: 212-351-3428 FAX: 212-351-3401
Bindu Donovan is a partner in Desmarais LLP’s Life Sciences Practice, with more than 25 years of experience litigating high stakes intellectual property disputes in the life sciences. 

Focusing on patent litigation in the federal courts, Ms. Donovan has represented clients across a wide range of life sciences subject matter, including biologics, small-molecule drugs, medical devices, photodynamic therapy, recombinant proteins, and vaccines.  She also has significant experience representing innovator companies in cases filed under the Hatch Waxman Act, including cases involving blockbuster treatments for ADHD, diabetes, influenza, hypertension, and metastatic prostate cancer.

Ms. Donovan is skilled at managing large litigation teams in complex patent infringement disputes.  Her matters frequently involve parallel proceedings worldwide and she has works closely with outside counsel in Australia, Canada, Europe, and Japan to develop and oversee global strategy for her clients.  She also has experience with breach of contract and trade secret disputes in federal court, and mediation and arbitration proceedings.  She also assists clients with offensive and defensive pre-suit investigations, patent assertion strategy, due diligence, and FTO analyses.

Most recently, Ms. Donovan advised a major pharmaceutical company regarding offensive and defensive patent assertion strategy relating to vaccines.  She also served as litigation counsel for VMI Holland BV in a breach of contract action and Avanos Medical in patent litigation involving a medical device.  Ms. Donovan also served as trial and litigation counsel for J&J in patent infringement suits filed under the Hatch-Waxman Act and inter partes review proceedings involving blockbuster prostate cancer drug, Zytiga®. 

Ms. Donovan serves on the Board of Managers of the New Jersey Intellectual Property Law Association (NJIPLA) and is active in other legal organizations.

Frequently recognized as one of the top practitioners in her field, Ms. Donovan was named as one of the Top 250 Women in Litigation (2013-2023) and Local Litigation Star (2017-2023) by Benchmark Litigation, a publication honoring the achievements of lawyers in litigation practices in the United States.  Ms. Donovan was named as an “IP Star” and one of the Top 250 Women in IP (2019-2023) by Managing Intellectual Property.  In addition, Ms. Donovan was recognized for her life sciences-related patent work by LMG Life Sciences and ranked as a Leading IP Litigation Lawyer by IAM Patent 1000 (2021-2023).
 

Prior Experience

  • Partner, Sidley Austin LLP, New York 2008-2018
  • Associate, Sidley Austin LLP, New York 2005-2008
  • Associate, Fish & Neave, New York 1998-2005
  • Judicial Intern to Hon. John G. Koeltl, United States District Court for the Southern District of New York, New York (Summer 1996)


Courts

  • United States Court of Appeals for the Federal Circuit 2005
  • United States Court of Appeals for the First Circuit 2003
  • United States District Court for the Southern District of New York 1999
  • United States District Court for the Eastern District of New York 1999


Memberships & Affiliations

  • New York Intellectual Property Law Association
  • New Jersey Intellectual Property Law Association
  • American Bar Association


Other Distinctions

  • IP Star, Managing Intellectual Property (2019-2023)
  • Top 250 Women in IP, Managing Intellectual Property (2019-2023)
  • Top 250 Women in Litigation, Benchmark Litigation (2013-2023)
  • Local Litigation Star, Benchmark Litigation (2017-2023)
  • Ranked in Intellectual Property – Hatch Waxman Patent Litigation (Branded), LMG Life Sciences (2016-2023)
  • Ranked in Intellectual Property – General Patent Litigation, LMG Life Sciences (2016-2023)
  • Ranked as a Leading IP Litigation Lawyer – IAM Patent 1000 (2021-2023)

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Representative Matters

  • Represented major pharmaceutical company in confidential matter involving offensive and defensive patent assertion strategy concerning vaccines.
  • Represented biosimilar drug company in confidential pre-suit investigation relating to fusion protein.
  • Represented VMI Holland BV in breach of contract action.
  • Represented patent holder Johnson & Johnson subsidiary, Actelion Pharmaceuticals Ltd., in patent infringement suits filed under the Hatch-Waxman Act involving pulmonary arterial hypertension drug Tracleer®.
  • Represented patent holder Avanos in patent infringement suit involving cooled radiofrequency ablation products.
  • Represented patent holder Johnson & Johnson subsidiary, Janssen, in patent infringement suits filed under the Hatch-Waxman Act and inter partes review proceedings involving prostate cancer drug, Zytiga®.
  • Represented patent holders Gilead and Roche/Genentech in patent infringement suit filed under the Hatch-Waxman Act involving influenza drug, Tamiflu®.
  • Represented patent holders Cordis Corporation and Wyeth in patent infringement suits involving drug eluting stents.
  • Represented defendant Johnson & Johnson in patent infringement suit involving sunscreen compositions.
  • Represented patent holder Noven Pharmaceuticals in patent infringement suit filed under the Hatch-Waxman Act involving transdermal patch for ADHD.
  • Represented patent holder Eli Lilly and Company in patent infringement suit filed under the Hatch-Waxman Act involving ADHD drug, Strattera®.
  • Represented patent holder SmithKline Beecham in patent infringement suit filed under the Hatch-Waxman Act involving Type 2 diabetes drug, Avandia®.
  • Represented patent holder Massachusetts Eye and Ear Infirmary in a patent infringement suit and trade secret action involving ophthalmic drug, Visudyne®.

Publications

  • “Effective Selection and Retention of Testifying Experts for Patent Infringement Litigation,” IP Litigator, Volume 19 NO. 4, (July/August 2013).

EDUCATION

Fordham University School of Law, J.D., 1998

Western University, M.S., Biology, 1993

York University, B.S., Biology, 1990

ADMISSIONS

1999, New York

OFFICES