Overview
Douglas (Doug) H. Carsten is the co-head of the Firm’s global Life Sciences practice. He focuses his practice on complex patent litigation disputes. Doug counsels clients in various technology areas, including pharmaceuticals, biologics, medical devices, diagnostic products, retail products and computer software. He has substantial first-chair trial experience that includes litigating high-profile and billion-dollar patent cases.
IAM Patent 1000 recognized Doug as a leading litigator, noting that “Patent holders look to talented trial lawyer Douglas Carsten to handle their most important cases and lead them to a successful verdict. He can tackle the most complex patent disputes that involve dozens of patents and distill the technology down in a comprehensive way. Douglas is always ethical, professional and phenomenal in the courtroom in front of both judges and juries. He is one of the best trial lawyers in the country.”
Doug is an active speaker on topics relating to patent law, trial practice, Hatch-Waxman issues and oral presentation skills.
Results
- Secured Federal Circuit victories for Viatris (formerly Mylan) on four appeals affirming several PTAB decisions invalidating five different Sanofi patents related to Sanofi’s Lantus SoloSTAR insulin glargine product. Doug argued all four appeals on the same day, which was the culmination of four years of work paving the way for Viatris to commercialize Semglee, a lower-cost version of Lantus SoloSTAR, which made history as the first approved interchangeable biologic. (Sanofi-Aventis Deutschland GmbH v. Mylan Pharmaceuticals Inc)
- Secured a Federal Circuit reversal of a patent term adjustment decision that cost his clients more than a year and a half of patent term relating to the oral pulmonary hypertension drug Orenitram, invalidating a US Patent and Trademark Office (USPTO) regulation that the Federal Circuit had previously affirmed as reasonable (Supernus et al. v. Iancu)*
- Secured a trial win on a patent relating to United Therapeutics’ flagship product, Remodulin. United Therapeutics’ market capitalization increased approximately $1.2 billion during the trading day in which the US District Court for the District of New Jersey’s decision finding United Therapeutics patent valid and infringed under the doctrine of equivalents was released. (United Therapeutics v. Sandoz)*
- Obtained trial verdict finding an injector pen for delivering insulin products did not infringe Sanofi’s patent, and further finding the Sanofi patent invalid (Sanofi-Aventis v. Mylan (D. N.J.))*
- Invalidated two formulation patents relating to Sanofi’s blockbuster insulin glargine Lantus product (Mylan v. Sanofi-Aventis (PTO))*
- Obtained trial victory invalidating Allergan patents covering the dry-eye treatment, Restasis (Allergan v. Mylan (E.D. TX))*
- Obtained jury trial verdict in Boston invalidating a patent relating to drug product testing where the plaintiffs sought nearly $1B in damages (Momenta Pharmaceuticals, Inc. et a. v. Amphastar Pharmaceuticals, Inc. (D. Mass))*
- Obtained summary judgment of invalidity in generic-side Hatch-Waxman litigation relating to Pfizer’s blockbuster Celebrex product (D. Searle et al. v. Lupin et al. (E.D. Va.))*
- Obtained summary affirmance of district court order enforcing oral settlement agreement resolving Frova litigation (Endo v. Mylan (D. Del.))*
- Obtained favorable dismissal of medical device patent litigation (Becton Dickinson v. Medefil (D. NJ))*
- Obtained favorable summary judgment ruling of invalidity and unenforceability of two AstraZeneca patents. The invalidity summary judgment was affirmed on appeal (In re Metoprolol Succinate Patent Litigation (E.D. Mo.))*
- Obtained favorable summary judgement ruling of non-infringement on one Aventis patent, and a summary judgment dismissing claim of willful infringement on a second Aventis patent. The case was resolved during Cobalt’s presentation of its case-in-chief (Aventis Pharma Deutschland GmbH et al. v. Cobalt Pharmaceuticals (D. Mass.))*
*Matter handled prior to joining McDermott.
Recognitions
- Daily Journal, Top Intellectual Property Lawyer, 2018 to 2023
- LMG Life Sciences 2022, Shortlisted for General Patent Litigator of the Year – California
- LMG Life Sciences 2021-2022 – Leading Life Sciences Lawyer
- IAM Patent 1000 – The World’s Leading Patent Practitioners, 2022 – 2023
- Legal 500 USA, Recommended Lawyer, 2022 to 2023
- San Diego Super Lawyers, Intellectual Property, 2016 to present
- Daily Journal, “Top 75 Intellectual Property Litigators”, 2015
Credentials
Education
Georgetown University Law Center, JD, cum laude, 1998
Harvard University, MA, Organic Chemistry, 1995
State University of New York at Stony Brook, BS, Chemistry and English Literature, BS with departmental honors, summa cum laude, Phi Beta Kappa, 1993
Courts / Agencies
US Supreme Court
US Court of Appeals for the Federal Circuit
US District Court for the Central District of California
US District Court for the Northern District of California
US District Court for the Southern District of California
US Patent and Trademark Office
Admissions
California
