Astrid R.Spain

Partner

(T) 1.858.314.1167

Astrid Spain has nearly 20 years of experience in global patent portfolio design and implementation, management, and enforcement in the life sciences, particularly in the areas of diagnostics, sequencing, antibody therapeutics, and liquid biopsy-related technologies. She frequently leads due diligences for transactions and financings involving life sciences companies and venture capital firms. Astrid's experience also includes inter partes review (IPR) proceedings.

Astrid has represented companies in many sectors of the life sciences and biotechnology industries, including start-up ventures and Fortune 500 companies. She frequently assists clients with the development and implementation of streamlined and business-oriented intellectual property strategies. She focuses on shaping of patent portfolios that achieve offensive and defensive goals in view of competitive technologies and life cycle management. Astrid has significant experience in the preparation and prosecution of U.S. patent applications as well as the management of corresponding foreign proceedings. Her practice also includes the preparation of numerous validity, infringement, and freedom-to-operate opinions on life sciences and biotechnology patents. A portion of Astrid's practice is devoted to patent litigation, and her litigation experience includes participation in a lengthy jury trial involving recombinant DNA technology.

Astrid has been honored by the Daily Journal as one of California's Top 100 intellectual property attorneys as well as one of California's Top 25 portfolio managers. She is a frequent presenter at industry conferences on topics related to life sciences, pharmaceuticals, and portfolio management. She also frequently comments and publishes on topics related to intellectual property law and has coauthored scientific publications in several peer-reviewed journals.

Experience

  • Celgene to be acquired by Bristol-Myers Squibb for approx. $74 billionJones Day advised Celgene Corporation (NASDAQ: CELG) in connection with the intellectual property and technology transactions aspects of its cash-and-stock merger with Bristol-Myers Squibb (NYSE: BMY) which has an equity value of approximately $74 billion.
  • Wellbeing Genomics prevails in DNA test trade secret jury trialFollowing a two week trial, a jury in Austin, Texas returned a verdict in favor of Jones Day client Wellbeing Genomics Pty Ltd. in a trade secret case involving technology related to the use of individuals' genetic variations to determine risk in five skin health categories and to make recommendations of skin care product ingredients and treatments based on chemical compositions.
  • Kyowa Hakko Kirin and BioWa successfully enforce patent rights on antibody technologyJones Day, on behalf of Japanese life sciences company Kyowa Hakko Kirin Company, Limited ("KHK") and its wholly-owned U.S. subsidiary, BioWa, successfully settled a patent infringement suit over three of KHK's patents that underlie KHK's award-winning POTELLIGENT® technology capable of producing therapeutic antibodies with dramatically improved potency and efficacy.
  • Celgene acquires Juno Therapeutics for $9 billionOn behalf of Celgene Corporation, Jones Day conducted a large-scale intellectual property due diligence review and evaluation of matters related to its definitive merger agreement and acquisition of Juno Therapeutics for approximately $9 billion, including Juno’s technology related to CAR-T and TCR cellular immunotherapeutics for use in oncology and other indications.
  • Kyowa Hakko Kirin defeats competitors in Patent Trial and Appeal Board challenge of patents on antibody technologyOn October 23, 2017, the Patent Trial and Appeal Board ("PTAB") issued a trio of decisions, unanimously declining to institute inter partes review ("IPR") of three patents owned by a Japanese pharmaceutical company represented by Jones Day, Kyowa Hakko Kirin Co., Ltd.
  • Isis Pharmaceuticals builds patent portfolio for certain clinical development compoundsOn behalf of Isis Pharmaceuticals, Inc., Jones Day assisted with patent prosecution strategy and portfolio development concerning some of its clinical development compounds.
  • Additional Publications

    • September 2009Patenting Biotechnology Inventions will Become More Challenging, BioPharm International, Vol. 22, Issue 9
    • March 7, 2008Innogenetics Court Likens Royalty Award to License, IP Law 360
    • June 2006Perspective Lost: Alleviating the Patent Office’s Backlog at the Expense of Innovation, IP & Technology Law Journal, Vol. 18, No. 6
    • May 2005Rochester Decision Exacerbates the Written Description Threat to Biotechnology Inventions, IP Litigator

    Speaking Engagements

    • January 15, 20142013 Patent Law Year in Review (and a Look Ahead at 2014)
    • January 16, 20132012 Patent Law Year in Review - and a Look Ahead at 2013
    • April 25, 2012Patent Strategies in the Aftermath of the Supreme Court's Decision in Mayo v. Prometheus
    • June 2009Emerging trends in IP Valuation and Risk Analysis
    • March 2009Patent Law Year in Review
    • June 2008Leveraging Intellectual Property to Accelerate Product & Technology Development
    • October 2007Leveraging Intellectual Property to Accelerate Product & Technology Development
    • January 2007Strafford Strategies for Patent Claim Construction, Live Interactive Teleconference
    • March 2003Strategic Research Institute- First International siRNA Conference
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