Alan J. Heinrich

Alan Heinrich’s practice focuses on intellectual property litigation. He has extensive experience litigating patents in the fields of biotechnology, medical devices and high tech. He has been a member of trial teams that have obtained multi-hundred million-dollar judgments on behalf of patent owners and have also successfully defended against multi-hundred million-dollar damages claims on behalf of accused infringers.

Alan previously served on Irell & Manella LLP’s Executive Committee and as chair of the firm's Hiring Committee. He is an adjunct faculty member at the University of California, Los Angeles, where he teaches Patent Intensive, an advanced patent law seminar, and has also taught Patent Law and Federal Courts at Loyola Law School.

Experience

• Koninklijke Philips N.V. et al. v. ZOLL Medical Corp. (D. Mass.). Represented ZOLL Medical Corp. in a patent infringement lawsuit brought by its competitor Philips relating to external defibrillator technology. Irell took over the case from other counsel in 2014 after a loss at the liability phase. Philips initially sought over $900 million in damages. After Irell succeeded in knocking out some claims on appeal of the liability judgment, Philips reduced its damages claim to $217 million. In August 2017, after a seven-day jury trial, the jury returned a verdict in which it rejected Philips’s claim for lost profits damages, found that ZOLL did not willfully infringe and awarded Philips a net of $7.1 million in damages, less than four percent of Philips’s claimed damages.
• Kite Pharma v. Sloan Kettering Institute for Cancer Research (PTAB). Represented Sloan Kettering Institute for Cancer Research, an affiliate of Memorial Sloan Kettering Cancer Center, and its exclusive licensee, Juno Therapeutics, a clinical-stage biotechnology company developing cellular immunotherapies for the treatment of cancer, in an inter partes review (IPR) proceeding before the Patent Trial and Appeal Board (PTAB). Juno’s competitor Kite sought to invalidate all claims of U.S. Patent No. 7,446,190, which covers, among other things, a construct for a chimeric T cell receptor that includes a specific CD28 co-stimulatory domain and targets the antigen CD-19 for the treatment of B cell cancers, such as leukemia and lymphomas. The PTAB upheld the validity of all claims of the patent in a final written decision, which the Federal Circuit summarily affirmed in June 2018.
• Alnylam Pharmaceuticals, et al. v. Whitehead Institute for Biomedical Research, et al (D. Mass.). Represented Alnylam and the Max Planck Institute in a complex patent dispute concerning rights to fundamental technology covered in two families of patent applications in the field of RNA interference (gene silencing). The case was successfully resolved on favorable terms through a creative settlement that used co-ownership rights and other cooperative mechanisms to overcome U.S. Patent and Trademark Office (USPTO) rejections in both patent application families, leading to a robust estate of issued patents.
• University of Utah v. Alnylam Pharmaceuticals, et al. (D. Mass.). Represented Alnylam, Max Planck Institute, Whitehead and Massachusetts Institute of Technology in a dispute over inventorship rights to fundamental patents in the RNA interference (gene silencing) field co-owned by the defendants. In this case, Irell represented all of the parties involved in the lawsuit listed above, including parties who were adverse to Alnylam and Max Planck Institute in that lawsuit. The district court granted summary judgment against the University of Utah and in favor of the defendants on all claims. University of Utah did not appeal the district court's ruling.
• University of Pennsylvania, et al. vs. St. Jude Children’s Research Hospital, et al. (E.D. Pa.). Represented Juno Therapeutics in a lawsuit against the University of Pennsylvania and Novartis Corporation. The lawsuit involved patent and contract claims concerning a novel cancer immunotherapy treatment developed by St. Jude Children’s Research Hospital and exclusively licensed to Juno. The treatment uses a “chimeric antigen receptor” that re-programs a patient’s own immune cells to identify and destroy cancerous B cells to treat diseases such as leukemia and lymphoma. The case settled favorably after several years of litigation, with Juno receiving upfront and milestone payments from Novartis as well as ongoing royalties.

News

Honors & Awards

• Selected to the Southern California Super Lawyers list in the area of intellectual property litigation (2013-2020)
• Selected to the Southern California Rising Stars list in the area of intellectual property litigation (2006-2011)

Publications

• “The Myriad Reasons to Hit ‘Reset’ on Patent-Eligibility Jurisprudence,” 47 Loyola of Los Angeles Law Review 117 (2013)