University of Notre Dame, B.A., 1993
University of Notre Dame Law School, J.D., 1996
- Executive Editor, Notre Dame Journal of Law, Ethics & Public Policy
- White Scholar, Thomas J. White Center on Law and Government
- Supreme Court of the United States of America
- United States Court of Appeals for the Federal Circuit
- United States Court of Appeals for the Ninth Circuit
- United States District Court for the Central District of California
- United States District Court for the Northern District of California
- United States District Court for the Southern District of California
Drew Woodmansee is the chair of the firm's intellectual property practice. He has 23 years of experience representing clients in high-stakes patent litigation throughout the United States. He is a veteran patent trial lawyer, having tried cases to verdict in jury trials and bench trials in federal district courts, as well as in Section 337 investigations before the U.S. International Trade Commission (ITC).
Drew primarily represents clients in the life sciences and health care fields, leading patent cases in the medical device, diagnostics, surgical equipment, and pharmaceutical industries. Most recently, he represented a manufacturer of continuous glucose monitors against allegations it infringed a competitor’s patents. Drew led his client to a victory that invalidated all claims of one of the asserted patents at the Patent Trial and Appeal Board (PTAB). He also recently represented a manufacturer of 3D breast imaging systems and equipment in a suit against a competitor before the ITC.
Drew is a seasoned trial attorney who has litigated and tried numerous cases for pharmaceutical clients under the Hatch-Waxman Act. In addition to his experience with litigation involving medical devices, surgical equipment and medical imaging, Drew also has broad experience representing clients in the diagnostics industry. For example, Drew represented a San Diego-based diagnostics company in a patent dispute that involved one bench trial and two jury trials. The jury delivered a defense verdict for Drew's client, which the U.S. Court of Appeals for the Federal Circuit later affirmed.
Drew also draws upon his trial experience to assist clients outside of the life sciences field as needed. In 2013, Drew served as lead counsel for Kyocera Corporation in a two-week ITC evidentiary hearing. The Administrative Law Judge concluded that none of the 14 accused Kyocera smartphones infringed the asserted patents. Drew also maintains an active pro bono practice. Over the past two decades, Drew has served as lead counsel in some of the highest-profile civil rights and First Amendment cases in the country.
WaveForm Technologies, Inc. v. DexCom, Inc. Represented Dexcom in defending against allegations that the client’s continuous glucose monitors infringed three patents owned by WaveForm. Drew led Dexcom, Inc. to a victory that invalidated the asserted claims of U.S. Patent No. 7,529,574 at the Patent Trial and Appeal Board (PTAB). The district court (D. OR) later granted DexCom’s motion for summary judgment that all asserted claims of U.S. Patent Nos. 7,146,202 and 8,187,433 were invalid under 35 U.S.C. §112 ¶ 2 (indefiniteness).
Represented a manufacturer of 3D breast imaging systems and equipment in a suit against a competitor before the ITC.
Represented Gen-Probe Incorporated in a series of patent arbitrations before the International Centre for Dispute Resolution related to its global patent portfolio covering automated molecular diagnostic systems.
Abbott Diabetes Care v. DexCom, Inc. Represented Dexcom in a patent infringement case in the District of Delaware. Seven months before Dexcom's continuous glucose monitoring device received FDA approval, Abbott filed a complaint asserting four patents. The court granted Dexcom's motion to dismiss for lack of subject matter jurisdiction, finding that Abbott's complaint was premature. With respect to any remaining claims, the court granted Dexcom's motion to stay the case pending reexamination of the asserted patents by the Patent and Trademark Office. Following nearly nine years of litigation and PTO proceedings, Abbott dismissed all its claims against Dexcom in 2014, and the parties entered into a cross-license agreement with no payment from Dexcom to Abbott.
Dexcom, Inc. v. My Health, Inc. Served as lead counsel for Dexcom. After Dexcom received a demand letter from My Health (which had filed more than 30 patent cases against various medical device companies in the Eastern District of Texas), Drew filed a complaint for declaratory judgment in San Diego federal court. As Dexcom prepared to file a motion seeking to invalidate the patent under 35 U.S.C. § 101, the case settled favorably for Dexcom.
Nichols Institute Diagnostics, Inc. v. Scantibodies Clinical Laboratory, Inc. Represented Scantibodies in a patent lawsuit brought by Nichols in the Southern District of California, involving immunoassays to detect levels of parathyroid hormone (PTH) in human blood. Nichols, the largest producer of PTH test kits in the U.S., sued Scantibodies based on its licensed rights to the '790 patent. Following a two-week bench trial and three-week jury trial, the patent was invalidated on three grounds (best mode, enablement, and written description), and one of the Scantibodies products was found not to infringe. On appeal following the district court's ruling on post-trial motions, the Federal Circuit held that the asserted patent is anticipated by prior art and therefore invalid.
Insite Vision Incorporated, et al. v. Sandoz, Inc., et al. Represented Sandoz in a two-week patent litigation trial in the District of New Jersey related to an ophthalmic topical formulation of azithromycin.
Wyeth Holdings Corp, et al. v. Sandoz, Inc. Represented Sandoz in patent litigation in the District of Delaware related to tigecycline, a glycylcycline antibiotic used for the treatment of, among other things, complicated skin infections. The case settled favorably at the pretrial conference after the court permitted Sandoz to amend its answer to allege an inequitable conduct defense.
Sanofi Aventis v. Sandoz, Inc. Represented Sandoz in patent litigation in the District of Delaware related to docetaxel, a chemotherapeutic agent used for the treatment of a variety of cancers. After a successful conclusion to the litigation, Sandoz launched its docetaxel product in the United States.
Inverness Medical Switzerland and Unipath Diagnostics v. Acon Laboratories. Represented Acon in two patent lawsuits in the District of Massachusetts brought by Inverness alleging that Acon's test kits infringed a total of nine patents. Following Acon's successful efforts to avoid an injunction, the case settled favorably, with Inverness agreeing to purchase Acon.
Caliper Technologies Corp. v. Aclara Biosciences, Inc. Counseled Aclara, a manufacturer of microfluidic devices, in patent litigation filed in the Northern District of California. The matter was settled prior to trial following a favorable claim construction ruling for Aclara.
Representative Non-Life Science Patent Litigation Experience (prior to joining Hooper, Lundy & Bookman):
Certain Wireless Consumer Electronics Devices and Components. Served as lead counsel for Kyocera in a two-week evidentiary hearing before the ITC in a patent infringement dispute filed by Technology Properties Limited, Phoenix Digital Solutions, and Patriot Scientific Corporation where the Administrative Law Judge issued an Initial Determination concluding that none of the 14 accused Kyocera smartphones infringed TPL's patent. The case settled favorably, and the ITC terminated the investigation as to Kyocera two weeks later.
Fractus, SA v. Kyocera Communications, Inc. (Eastern District of Texas). Represented Kyocera against an assertion that Kyocera's wireless devices infringed nine of Fractus's patents claiming a multi-band internal antenna technology. The case settled favorably to Kyocera after jury selection but before opening statements. The settlement was influenced by pretrial motion strategy, which resulted in the court granting Daubert motion to exclude major portions of Fractus's damages case and motion to clarify claim construction, causing Fractus to drop four of its patents from the case on the eve of trial.
St. Clair Intellectual Property Consultants v. Palm, Inc. and Kyocera Wireless Corporation. Represented Palm, Kyocera Wireless, and Kyocera Communications in patent infringement case in the District of Delaware. Successfully convinced the district court to stay the case shortly before trial while the Federal Circuit decided an appeal from prior litigation involving the same patents. Following a favorable ruling on claim construction from the Federal Circuit, moved for summary judgment of noninfringement. The court granted clients' motions in March 2012, resolving all claims in the case in clients' favor.
Dicam, Inc. v. Palm, Inc. (Western District of Virginia). Argued and won a motion for summary judgment of noninfringement on behalf of smartphone manufacturer Palm, as well as an order striking Palm from the case. Dicam claimed to have invented the "camera phone" in 1986. The judge, however, agreed with Palm that Dicam's patent is directed to a camera including a "personal security device" feature that can be used to capture an image and transmit the image, along with information identifying the device's owner, to a remote location, with the push of a single button. Having agreed with Palm about the scope of the patent, the court then held that Palm devices do not infringe.
Broadcast Innovation v. Charter Communications, Inc. and EchoStar Communications, Inc. Represented Charter Communications and EchoStar (DISH Network) in patent infringement case in the District of Colorado. The Patent & Trademark Office ordered reexamination of the plaintiff's "datacasting" patent, and the district court granted Charter's motion to stay the case less than three months prior to the start of trial. The Board of Patent Appeals and Interferences affirmed the examiner's final rejection of all claims in light of the prior art, and the court dismissed the cases in February 2012. Previously, the court granted summary judgment of invalidity as to another patent (related to "conditional access") asserted by the plaintiff.
Flashpoint Technology, Inc. v. Kyocera Wireless Corporation. Represented Kyocera Wireless Corporation and Kyocera Communications in patent infringement case in the District of Delaware. FlashPoint asserted 10 patents relating to digital camera user interfaces against more than 30 defendants in the digital camera and cellular telephone industries. After Kyocera requested reexamination of all 10 patents, Kyocera successfully moved the court for a stay pending conclusion of all reexams.
Intellect Wireless v. Kyocera Communications, Inc. (Northern District of Illinois). Intellect Wireless brought a lawsuit against several major cellular telephone manufacturers and carriers, claiming infringement of a patent relating to a wireless communication device. Drew presented Kyocera's arguments during a two-day Markman hearing and the case settled favorably to clients shortly after the hearing.
Certain Set-Top Boxes and Components Thereof (International Trade Commission, No. 337-TA-454). In what was called the biggest ever patent case in the ITC, successfully defended EchoStar. Gemstar-TV Guide International claimed that EchoStar, Scientific-Atlanta, and Pioneer imported set-top boxes that infringed four U.S. patents. Following a three-week trial, the administrative law judge found all patents noninfringing, and one patent invalid and unenforceable. The full Commission adopted the ALJ's findings.
Representative Pro-Bono Litigation:
Fehrenbach v. Department of the Air Force, et al. (D. Idaho). Served as lead counsel challenging the Air Force's efforts to discharge highly decorated Air Force Lt. Col. Victor J. Fehrenbach, under the law known as "Don't Ask, Don’t Tell." Filed motions for a temporary restraining order (TRO) and a preliminary injunction in August 2010 after learning that Lt. Col. Fehrenbach's discharge was imminent. The government agreed to entry of a stipulated TRO the next day. In October 2011, Lt. Col. Fehrenbach retired from the Air Force with 20 years of active duty service, an honorable discharge, and full benefits.
Barnes-Wallace, et al. v. Boy Scouts of America. Represented the plaintiffs (an agnostic couple and a lesbian couple as well as their Scouting-age boys). The litigation was filed shortly after the 2000 U.S. Supreme Court decision in Boy Scouts of America v. Dale. Drew challenged the City of San Diego's free leases of 18 acres in Balboa Park and one acre in Mission Bay Park to the Boy Scouts as a violation of the Establishment Clause of the U.S. Constitution, as well as the No Aid and No Preference Clauses of the California Constitution. The nearly 12-year litigation battle included multiple appeals to the Ninth Circuit, three attempts by the Ninth Circuit to certify questions of California law to the California Supreme Court, and a petition for certiorari to the U.S. Supreme Court. The case played a significant role in the May 2013 decision by the Boy Scouts to drop its longtime ban on openly gay Scouts.
Honors & Awards
- Featured in The National Law Journal's annual "Pro Bono Hot List" (2012)
- Named by Super Lawyers as one of the top attorneys in intellectual property litigation in Southern California (2014) and in San Diego (2013-2019)
Presentations & Speaking Engagements
- Intellectual Property Litigation Year In Review – Developments From the Supreme Court and Federal Circuit (Hologic, Inc. Legal Department, April 2018)
- Update on Biosimilar Litigation: Beginning to Unwrap the "Riddle Wrapped in a Mystery Inside an Enigma", IP Round Table (Jones Day, San Diego, CA, October 2016)
- Biosimilar Hot Topics: IPRs, Patent Exchange Process and Recent Litigation, Seminar (Tokyo, Japan, April 2016)
- Status of Safe Harbor Under 35 U.S.C. 271(e)(1), Seminar (Osaka, Japan, April 2016)
Health Law Perspectives
- August 27, 2019