Sapna Palla
Biography
Overview
Sapna Palla has spent over two decades representing clients in high-stakes patent, trademark, copyright, and complex commercial matters, including successfully litigating disputes in federal and state courts in a range of jurisdictions. She also has extensive experience with alternative dispute resolution, including arbitration and mediation.
In addition, Ms. Palla counsels and represents a variety of US and international clients regarding US intellectual property rights by providing them with infringement, validity, enforceability, and clearance opinions and by advising them in licensing and antitrust matters. She conducts intellectual property due diligence investigations in connection with acquisitions and licensing deals. Notably, Sapna also counsels clients about patent law in Asia, including China and India.
Sapna’s patent litigation experience covers a broad array of technologies, including pharmaceuticals, biotechnology, drug delivery systems and medical devices, mechanical devices, batteries, software, and agrochemicals. Outside the patent area, she has represented clients in trademark, trade dress, and copyright litigation as well as counseling clients on trademark and copyright registration, strategy, and licensing. Sapna has also led a number of complex commercial disputes involving complex contractual matters in the oil, renewable energy, construction, and food services industries.
Sapna frequently writes and speaks on a range of topics, including developments in litigation, e-discovery, patent law, patent reform, intellectual property law in Asia, pharmaceuticals, biosimilars, biotechnology, and medical devices. Her programs have been presented by the Practicing Law Institute and WestLegal Ed, and she has been published and quoted in leading publications, including Practicing Law Institute, Forbes, ABA Litigation Journal, IP Law360, New York Law Journal, Corporate Counsel Connect, Pharmaceutical Patent Analyst, and Bloomberg/BNA.
Sapna is an inaugural member of Judge Janet Bond Arterton's Intellectual Property American Inns of Court. She was a summer clerk for the Honorable Judge Denis R. Hurley of the U.S. District Court for the Eastern District of New York.
Sapna served as adjunct professor at Pace University School of Law, addressing antitrust and patent topics. She has lived and studied in both India and Tanzania. She is fluent in Hindi and Marathi and conversant in French.
Experience
Litigation Highlights: Life Sciences Patent Litigation
Served as lead trial counsel representing Genovis A.B. and Hansa A.B. (Swedish global biotechnology companies) in a patent dispute with Promega Corporation relating to proprietary technology for the induction of antigen-specific immune tolerance in Western District of Wisconsin. Obtained favourable settlement on eve of trial.
Led trial team strategy on method patent representing Pfizer, Inc., Genentech Inc. and OSI Pharmaceuticals, Inc. in a Paragraph IV patent infringement suit covering, non-small cell lung cancer drug, Tarceva® (erlotinib). After a two-week trial, the District Court upheld the validity of the compound and method of treatment patents.
Secured favourable jury verdict for a Sanofi Aventis in Paragraph IV patent infringement suit covering antihypertensive combination drug, Tarka® (trandolapril and verapamil hydrochloride). After a two-week trial, the jury found the patent valid and awarded substantial damages. The District Court upheld the jury verdict.
Represented Pfizer Inc. in connection with challenge in India to its patent covering Sutent® (sutinib maleate) used for the treatment of gastrointestinal stromal tumour and advanced renal cell carcinoma.
Represented Pfizer Inc. and its subsidiary in a Paragraph IV patent infringement suit covering the antihypertensive drugs Accupril® (quinapril) and Accuretic® (quinapril and hydrochlorothiazide (HCT)).
Represented Sanofi Aventis in a Paragraph IV patent infringement suit covering the antihypertensive drug Altace® (ramipril). After a two-week trial, the Court found the patent valid and enforceable. This victory was selected as a Noteworthy Case by the National Law Journal for its 2006 Defence Hot List.
Represented Wyeth and Elan Pharma International Ltd. in successfully challenging the U.S. Patent and Trademark Office’s interpretation of the statute designed to compensate patent holders for loss of patent term due to delays in processing patent applications leading to the creation of new law.
Represented Hoffman-La Roche in a patent infringement action relating to its synthetic drug for treating anaemia. The Federal Circuit affirmed in part and reversed and remanded in part.
Represented Novartis in Paragraph IV patent infringement suits covering leading blood pressure medication Norvasc® (amlodipine besylate). After a seven-day bench trial, the Court found the patents valid and enforceable.
Represented Nektar Therapeutics in infringement suit covering inhalable insulin. Obtained favorable settlement for client.
Represented Pfizer Inc. in a Paragraph IV patent infringement suit covering a triazole antifungal drug used in the treatment and prevention of superficial and systemic fungal infections. Won summary judgment that the patent-in-suit was not invalid on the grounds of anticipation. The case settled before trial.
Litigation Highlights: Trademark
Served as lead trial counsel for Bahlsen Inc. and obtained favorable settlement in a trade dress infringement and preliminary injunction action against General Mills involving its LÄRABAR packaging design in District of Minnesota. Obtained favorable settlement for client.
Served as lead trial counsel representing Taunton Inc. in a trademark infringement and preliminary injunction action in District court in Massachusetts. Obtained favorable settlement for client.
Served as trial lead counsel representing internationally recognized maritime museum Mystic Seaport Museum in copyright litigation matter involving well-known ship designs in the District of Rhode Island.
Litigation Highlights: Copyrights
Serving as lead trial counsel for Qatar Airways in The Wave Studio, LLC v. General Hotel Management Ltd. et. al., a copyright infringement matter in the Southern District of New York
Served as lead trial counsel representing Walmart Inc. and Wal-Mart.com USA in a copyright infringement matter in the Central District of California against Roxy Russell Design.
PLI Developments in Pharmaceutical and Biotech Patent Law 2023: What GSK v. Teva Means for Skinny Labeling: Best Practices to Consider (Speaker)
ACI Women Leaders in Life Sciences 2023: Shining a Light on the Top 10 Court Cases Impacting the Life Sciences Industry in 2023 (Speaker)
Author: Biden Administration Releases New Proposed Framework for the Exercise of "March-In" Rights Under Bayh-Dolem December 12, 2023)
ACI Women Leaders in Life Sciences 2023: looking Back and Moving Forward: Analyzing Key Legal, Administrative and Policy Developments Impacting the Life Sciences Industry (Speaker)
PLI Developments in Pharmaceutical and Biotech Patent Law 2021: Navigating the Conundrum of Patentable Subject Matter in Life Sciences (Speaker)
Author, "The Patent Eligibility Battle for Life Sciences Companies in a Changing Landscape," The National Law Review, July 11, 2018
Co-author, "Legal Issues for High-Growth Technology Companies," The National Law Review, May 2, 2018
Co-author, "How to Shift Your Litigation Strategies for the New IP Landscape," The National Law Journal, July 17, 2017
Co-author, "Global IP Trends: A Guide to Recent International Considerations for Patent Rights," September 1, 2016
Co-author, "The New Biosimilars Frontier," January 26, 2016
Co-author, "Devising a Patent Strategy to Protect The Intellectual Property of Biologics in Light of Ambiguities, Loopholes, and Pitfalls in The Regulatory Scheme," Pharm Pat. Analyst, March 2013
Co-author, "Best Mode, Chapter for Pharmaceutical and Biotech Patent Law," Practicing Law Institute, November 1, 2012
Author, "Patent Invalidity Rates in China," White Paper, Intellectual Property Organization, September 1, 2012
Author, "Patent Invalidity Rates in Japan," White Paper, Intellectual Property Organization, September 1, 2012
Author, "Should the Federal Circuit's Model E-Discovery Order Change the Way [You] Conduct E-Discovery for Patent Litigation?" Bloomberg Law, January 23, 2012
Managing IP's IP Star 2024: Individual Ranking as Patent Star 2024 and Transactions Star 2024
Managing IP's IP Star 2024: Recognized in Team Ranking for Patent Disputes
IAM Patent 1000 Ranking 2024: Individual ranking for Litigation (Bronze) "Another life sciences guru is Sapna Palla, who is trusted by universities, pharmaceutical and biotechnology companies to protect and enforce their IP assets."
IAM Patent 1000 Ranking 2023: Highly Rated for Litigation
LMG Life Sciences 2023: Recognized as Life Sciences Star in General Patent Litigation and Patent Counseling
IAM Patent 1000 ranking 2022: Litigation
LMG Life Sciences 2022: Recognized as Leading Life Sciences Lawyer
Selected as the 2021 Diversity and Inclusion Champion award recipient by the New York City Bar Association
Honored by the City and State of New York (NY) as "one of the most influential Asian Americans in New York politics and policy" in 2020
Honored by the Pennsylvania Capital Representative Project for extraordinary efforts on behalf of Pennsylvania's death row inmates in 2008
Recipient of the 2001 Legal Aid Society award for Outstanding Pro Bono Representation
