Eric J. Marandett - Choate Hall & Stewart LLP

Eric J. Marandett

Listed in Best Lawyers since 2012
Phone: 617-248-5287

Eric Marandett represents biotech, pharmaceutical and technology companies in high stakes patent litigation and other intellectual property and commercial disputes.  Mr. Marandett’s approach to litigation combines a keen business savvy with the courtroom skills of a seasoned trial lawyer.  Mr. Marandett was named by the National Law Journal as one of the nation’s top lawyers under age 40 and has been listed in the Massachusetts Super Lawyers Top 100.  He is also listed in Chambers USA, The Legal 500 and Best Lawyers in America.  He has been named a World’s Leading Patent Litigator by IAM 250, a World’s Leading Patent Practitioner by IAM Patent 1000 and an “IP Star” by Managing Intellectual Property.

Mr. Marandett co-chairs the firm’s Litigation Department and Intellectual Property Litigation Practice Group. 

Practice Focus

Intellectual Property Litigation: 
patent infringement (including Hatch-Waxman litigation), licensing disputes and other intellectual property litigation on behalf of major pharmaceutical and biotech companies and clients in the high tech industry.

Complex Commercial Litigation:  securities and antitrust litigation, unfair competition, theft of trade secrets, state and federal investigations of Medicare and Medicaid Fraud, anti-kickback and drug record keeping violations.

Intellectual Property Counseling & Due Diligence:  assessment of freedom to operate and patentability, valuation of intellectual property, Orange Book and other regulatory and strategic questions in connection with collaborations, acquisitions and joint ventures, particularly in the life sciences industries.

Representative Engagements

Patent Litigation

· Lead Counsel to Momenta in patent infringement action relating to innovative methods of processing therapeutic polysaccharides.  Obtained preliminary injunction precluding sales of generic enoxaparin by Amphastar Pharmaceuticals.
Momenta v. Amphastar et al.
· Lead counsel for Wyeth (now Pfizer) in patent infringement litigation involving industry leading genetically engineered porcine circovirus vaccines.
Wyeth v. Intervet, Inc and Boehringer Ingelheim Vetmedica, Inc, D Del  
· Lead counsel for Millennium in patent infringement action relating to combinatorial phage display libraries.
Pieczenik v. Abbott Laboratories, et al., D NJ
· Lead counsel for Wyeth in Hatch-Waxman patent action brought against Teva relating to prescription sleep aid marketed by King.
King Pharmaceuticals and Wyeth v. Teva, D NJ 
· Counsel to Momenta in patent infringement action relating to innovative methods of processing therapeutic polysaccharides.
Momenta Pharmaceuticals, Inc and Sandoz, Inc v. Teva Pharmaceuticals, Ltd, et al, D Mass
· Lead counsel for Iovate in patent infringement action relating to novel nutritional supplements. 
Iovate Health Sciences v. Allmax Nutrition, D Mass
· Lead counsel for Cypress and Hawthorn in patent infringement relating to cough and cold medicine.
Tiber Laboratories, LLC v. Hawthorn Pharmaceuticals, Inc
, D Northern District of Georgia
Tiber Laboratories, LLC v. Cypress Pharmaceuticals, Inc, Southern District of Mississippi Jackson Division
· Counsel to Eisai, Inc and Eisai Research Institute of Boston, Inc (collectively “Eisai”), one of 11 major pharmaceutical companies sued for infringement of four patents to certain cell-based screening assays. 
Housey Pharmaceuticals, Inc v. Abbott Pharmaceutical Corp
., D Del Counsel for Eisai Co, Ltd
· Obtained judgment on appeal reversing $34 million verdict against Powerscreen. 
The Read Corporation, et al v. Powerscreen International, PLC, et al, D Mass 
· Lead counsel for Sapidyne in patent infringement action involving antibody affinity assays.
Sapidyne Instruments, Inc v. Gyros US, Inc, D Mass
· Counsel for Genetics Institute in patent infringement and breach of contract litigation relating to development of recombinant Factor VIII. 
Genetics Institute v. Baxter International, Inc, D Mass
· Along with co-counsel, represented defendants TKT and HMR in patent infringement litigation brought by Amgen to prevent TKT from commercializing its patented gene-activated erythropoeitin product. 
Amgen, Inc v. Hoechst Marion Roussel, Inc and Transkaryotic Therapies, Inc
, D Mass 
· Along with co-counsel, represented Berlex Laboratories in patent infringement litigation involving recombinant beta interferon for treatment of multiple sclerosis. 
Biogen v. Berlex Laboratories, D Mass

Other Intellectual Property and Commercial Litigation

· Counsel to AlCana in trade secret litigation brought against AlCana and its research collaboration partner Alnylam Pharmaceuticals by Tekmira Pharmaceuticals Corp.  Technology at issue involves novel lipid nanoparticals used as drug delivery vehicle for Alnylam’s short interfering RNA therapeutics. 
Tekmira v. Alnylam & AlCana
· Represent Adimab in patent interference dispute with Dyax Corp. relating to antibody display.
Adimab, LLC v. Dyax Corp.
· Lead counsel for Wyeth in breach of contract dispute relating to Celera’s genomics database products. 
Applera Corp., d/b/a Celera Genomics Group v. Wyeth, Montgomery County Maryland Circuit Court
· Counsel to Astellas Pharma in breach of contract and unfair competition litigation relating to drug formulation collaboration.
Alamo Pharmaceuticals v. Astellas Pharma Inc, Central D of CA
· One of three partners representing Genetics Institute in contract dispute relating to the manufacture of recombinant Factor VIII for treatment of hemophilia A. 
Baxter HealthCare, Inc v. Genetics Institute, Inc, Delaware Chancery Court 
· Counsel to KiOR in breach of contract and misappropriation of trade secrets litigation involving biomass catalytic conversion technology.
KiOR, Inc v. George Huber, et al., D Mass

Publications and Presentations

· “Adopt IP Protections to Ensure Regulatory Exclusivity for Orphan Drugs,” co-author, ACC Docket, August 2013.
· “Q&A with Choate’s Eric Marandett,” featured, IP Law360, June 2013.
· “Managing Outside Counsel Efficiently and Effectively,” panelist, The Consero Group’s Pharmaceuticals & Biotechnology IP Forum, Palm Beach Garden, FL, December 2012.
· “The Trade Secret Minefield,” moderator, BIO IP Counsels Fall Conference and Meeting, Charleston, SC, November 2012.
· “Avoiding Trade Secret Litigation in the Life Sciences,” co-author, IP Law360, August 2012. · “Finance & BD: Strategies for Building & Realizing Value in the Evolving Biotech Landscape,” panelist, MassBio, April 2012.
· "Preempting Patent Litigation With 3rd-Party Submissions,” co-author, IP Law360, February 2012.
· “Navigate Written Description Post-Ariad,” co-author, Managing Intellectual Property, December 2011.
· “IP Lawyers Say Concerns Run High Among Clients,” quoted, Boston Business Journal, September 2011.
· “A Brave New World: Patent Litigation Tactics and Strategies for Biosimilars,” panel moderator, BIO 2011, June 2011.
· “Taming the Wild West of IP Protection,” co-author, IP Law360, February 2011. 

Professional and Community Involvement

Mr. Marandett is a member of the firm’s Executive Committee.  He is also a member of the American Bar Association Intellectual Property and Litigation sections, the American Intellectual Property Law Association, the Boston Bar Association and the Massachusetts Bar Association. In addition, he is a board member of the Boston IP Inn of Courts.  Mr. Marandett is also active in the Dana Farber Leadership Council.

Tufts UniversityBA 1988University of PennsylvaniaJ.D. 1992

Office Location

Two International Place
Boston, MA 02110
United States

Lawyer of the Year Awards

2017 Lawyer of the Year in Litigation - Intellectual Property of the Boston Metro Area2015 Lawyer of the Year in Litigation - Patent of the Boston Metro Area
Eric J. Marandett has earned a Lawyer of the Year award for 2017!Eric J. Marandett has earned a Lawyer of the Year award for 2015!

Practice Areas

Biotechnology Law
Litigation - Intellectual Property
Litigation - Patent

Other Information

Gender: Male