Vicki G. Norton, Ph.D., practices in the area of intellectual property law with a focus on biotechnology and chemical patent counseling and litigation. She also advises clients on worldwide patent strategy, including identifying patent coverage issues, auditing technology portfolios to assist clients in transactions and venture opportunities and formulating strategic objectives for prosecution. She has handled patent matters in a variety of industries, including biotechnology, biopharmaceuticals and small molecule pharmaceuticals, relating to engineering transgenic plants and cells, biochemistry, methods to screen and make gas-absorbing materials, stem cell technologies, molecular biology, nanotechnology, immunology, combinatorial chemistry, probe amplification assays, diagnostics, nutraceuticals, microbiology, and therapeutic drugs and devices for physical therapy. Dr. Norton has also advised clients on all facets of litigation involving technologies including biopharmaceuticals, transgenic organisms, small molecules and nanotechnology.

Prior to attending law school, Dr. Norton served as a research and teaching assistant at the University of California, Davis, where she conducted research on histone acetylation and chromatin structure for her doctoral thesis.

Dr. Norton is a 1994 graduate of the University of California, Los Angeles School of Law, where she was managing editor of the UCLA Law Review and elected to the Order of the Coif, and a graduate of the University of California, Davis (Ph.D., Biochemistry and Biophysics; B.S., summa cum laude, Biochemistry).

Representative Matters

• Teva v. Watson, Case No. 10-CV-5078 (D.N.J. — C.Cecchi). Represented Watson Pharmaceuticals, Inc. in Hatch-Waxman Litigation against Teva Pharmaceutical Industries Ltd. concerning the Parkinson's disease drug AZILECT®, the active ingredient of which is rasagiline. The matter was settled during trial.
• Advised Quest Diagnostics on intellectual property matters in connection with Quest's definitive merger agreement with Celera Corporation.
• Counsel to a leading biopharmaceutical company in its defense against a demand for multi-million dollar damages in a patent infringement suit concerning a biologic drug useful in the treatment of rheumatoid arthritis; dismissal of the case on a motion following the close of discovery was affirmed on appeal.
• Counsel to a leading biopharmaceutical company and affiliates in actions brought for declaratory judgment that no royalties were owed for production of biopharmaceuticals, where a multi-billion dollar claim for royalties was at stake; cases brought by several biopharmaceutical companies against same patentee were consolidated in a multi-district proceeding; following discovery of invalidity and prior art witnesses the patentee filed a covenant not to sue and the case settled in a manner the client found favorable.
• Represented a trustee for a biotechnology liquidating trust in defense to claim of breach of license agreement; obtained dismissal of claims brought against the trust.
• Represented a manufacturer of fluorescent calcium indicator probes in defending against patent infringement claims, obtaining a settlement the client found favorable.
• Represented a manufacturer of nanoparticle technology in an action seeking a declaratory judgment of ownership; obtained settlement.
• Represented a producer of transgenic plant seeds in patent infringement actions, including cases consolidated for discovery with other cases brought by patentee in the same jurisdiction.
• Represented a leading manufacturer of life sciences products in a patent infringement suit involving energy transfer fluorescent indicators used in DNA sequencing; obtained summary judgment of infringement; after completion of discovery, the case settled in a manner the client found favorable.
• Represented a patentee in actions seeking damages for infringement of an injection molding patent.

Areas of Practice

• Intellectual Property Law and Litigation

Admissions

• California
• U.S. Patent and Trademark Office
• U.S. District Court for the Central District of California
• U.S. District Court for the Northern District of California
• U.S. District Court for the Southern District of California
• U.S. Court of Appeals for the Federal Circuit
• U.S. Court of Appeals for the Ninth Circuit
• Supreme Court of the United States

Education

• University of California, Los Angeles School of Law, J.D., 1994
  - Managing Editor, UCLA Law Review
  - Order of the Coif
• University of California, Davis, Ph.D., 1990
• University of California, Davis, B.S., summa cum laude, 1981

Other Experience

• Duane Morris LLP
  - Partner, 2008-present
• Wilson Sonsini Goodrich & Rosati PC
  - Partner, 2004-2008
• Pillsbury Winthrop LLP
  - Partner, 2003-2004
• Brobeck, Phleger & Harrison LLP
  - Partner, 2002-2003
  - Associate, 2000-2001
• Lyon & Lyon
  - Associate, 1994-2000

Professional Activities

• American Intellectual Property Law Association
  - Co-Chair, Biologic Products and Competition Sub-Committee
• San Diego Intellectual Property Law Association
  - Member of Amicus Committee of the SDIPLA
  - Board Member, 2000-2006
  - President, 2004-2005
• Intellectual Property Owners BIO
  - Member
• BIO IP Counsel Committee, Member
• California State Bar
  - Committee for the Administration of Justice, 2006-present (Chair 2010-2011)

Honors / Awards

• Named one of Daily Journal's "Top 25 Portfolio Managers/Patent Prosecutors," 2013
• Voted by peers as one of San Diego's Top IP Attorneys, 2005

Publications

• Co-author, "Virginia Enacts the First State Law Regulating Interchangeable Biosimilar Products," Duane Morris Alert, March 28, 2013
• "FDA's Draft Guidance on "Biosimilar" Pathway Leaves Key Questions on Specific Clinical Data Requirements and Interchangeability Unanswered," GenericsWeb InnSight, February 2012
• Co-author, "FDA Issues Draft Guidance Documents to Implement the Biologics Price Competition and Innovation Act of 2009," Duane Morris Alert, February 13, 2012
• "U.S. FDA Proposes User Fees for Biosimilar Products Comparable to Fees for Branded Biologic Drugs," GenericsWeb INNsight, June 2011
• Co-author, "Supreme Court Rules That Federally Funded Inventions Are Not Automatically Owned by Universities," Duane Morris Alert, June 8, 2011
• "FDA Proposes Pre-marketing User Fees for Biosimilar Product Manufacturers Comparable to Fees for Branded Manufacturers," Duane Morris Alert, May 11, 2011
• Co-author, "Will the Future of Gene Patents Be 'Markedly Different' After Myriad?" World Intellectual Property Review, November-December 2010
• Co-author, "District Court Invalidates Claims to Isolated DNA Molecules and Methods of Their Use; Finds Subject Matter Ineligible for Patent Protection," Duane Morris Alert, March 31, 2010
• Co-author, "Smart Pill: So, Post-MMA, Who Gets First Slice?" IP Law & Business, August/September 2009
• Quoted in "Teaching Baby Biotechs to Play in the Big Leagues," Los Angeles Daily Journal, July 20, 2009
• "Managing Multi-Party Patent Cases: Avoiding Too Many Cooks in the Courtroom, 19(1) IPL Newsletter (Fall 2007)
• Co-author, "Effect of the Proposed PTO Rule Changes on Biotechnology Patents", cited in IP360 article, "New Study Supports Biotech Fears Over USPTO Changes," IP360 (July 13, 2006)
• "IP Issues for Microarrays," Biochips As Pathways to Drug Discovery, Andrew Carmen and Gary Hardiman, eds., 2006
• "What Nanotechnology Means for IP," Managing Intellectual Property, June 1, 2003
• Co-author, "Protecting Intellectual Property Overseas," San Diego Daily Transcript, August 1, 2002
• "Unnatural Selection: Preimplantation Genetic Screening and Proposed Regulation," 41 UCLA L. Rev. 1581-1650 (1994), reprinted in Reproductive Technologies, Carol Wekesser, Ed., 1996
• Co-author, "Histone Acetylation Reduces Nucleosome Core Particle Linking Number," 57 Cell 449-459 (1989)
• Co-author, "Nucleosome Linking Number Change Controlled By Acetylation of Histone H3 and H4," 265 J. Biol. Chem. 19848-19852 (1990)

Speaking Engagements

• Speaker, "Cabilly III and Other Notable Antibody Patents," IBC 23rd Antibody Engineering and 10th Antibody Therapeutics Conferences, San Diego, December 2, 2012
• Speaker, "Paragraph IV Disputes and Litigation: Federal Court, PTO Proceedings & ITC Actions," ACI Hatch-Waxman Boot Camp, San Diego, June 26, 2012
• Speaker, "How the Dynamics of Biosimilars Are Changing the Hatch-Waxman Landscape" American Conference Institute's Hatch-Waxman Boot Camp, San Diego, June 25, 2012
• Speaker, "An In-Depth Look at 180-Day Exclusivity," ACI Hatch-Waxman Boot Camp, San Diego, July 19, 2011
• Speaker, "180-Day Exclusivity," ACI Hatch-Waxman Boot Camp, San Diego, May 25, 2010
• Panelist, "Intellectual Property Management & Technology Licensing," NanoEquity Asia 2008, Singapore, May 28-29, 2008
• Panelist, "Nanotech IP and Licensing," NanoBioNexus, April 2007
• Chaired Panel Discussion, "From Bench to Bench" Chemistry and the Law Session, ACS Meeting, San Francisco, September 2006
• Chaired Panel Discussion, "The Convergence of IT and Biotechnology," FWE Meeting, September 2002
• Chaired Panel Discussion, "The Status of Nanotechnology," Nanotech Venture Fair, September 2002
• Panelist, "Patented Medicines: Bringing Life-Saving Drugs to the Developing World," April 19, 2002