Susan M. Spaeth

Partner
Services: Intellectual Property; Patent Litigation; Biologics and Biosimilars
Industries: Health & Life Sciences; Chemical; Utilities & Power Systems; Semiconductors & Electronics

Susan Spaeth serves as Managing Partner of the firm. Ms. Spaeth focuses her practice on intellectual property and complex/technical litigation, particularly patent litigation, licensing and counseling. She has represented biotechnology, medical device and high technology companies in various federal district courts, the United States International Trade Commission and European patent litigation.

In addition to litigating patent and complex technology disputes, Ms. Spaeth regularly assists clients in their patent portfolio development, product analyses to determine patent infringement, negotiation of agreements related to intellectual property and establishing strategies to exploit the use of intellectual property.

During her career as an attorney, Ms. Spaeth has served as trial counsel in numerous successful efforts, including securing a unanimous jury verdict on behalf of cross-defendant, Baxter Healthcare Corporation, in a complex commercial litigation case; obtaining critical claim construction ruling resulting in a judgment in favor of defendant, Perclose, Inc.; obtaining a judgment in favor of patentee, StarSight Telecast, Inc., on inequitable conduct charges; and successfully representing Hyundai in a patent infringement and licensing lawsuit.

Ms. Spaeth is a member of the firm’s Executive Committee. In March 2003, San Jose Business Journal named Ms. Spaeth as one of the top 50 “Most Influential Women in Business” at their Women in Business Breakfast. Additionally, in April 2003, Ms. Spaeth was profiled in the San Francisco Business Times as one of the “100 Most Influential Women in Business.” In 2014, she was listed in The International Who’s Who of Business Lawyers in the area of Life Sciences. Ms. Spaeth was recognized as a Northern California “Super Lawyer” for Intellectual Property Litigation in 2004, 2011, 2012, 2013 and 2014 by Super Lawyers magazine. She was recognized in The Best Lawyers in America® for Intellectual Property Litigation in 2013, 2014 and 2015. Ms. Spaeth was listed in the 2013 edition of Chambers USA: America’s Leading Lawyers for Business for Life Sciences.

Client Milestones

Secured unanimous jury verdict on behalf of cross-defendant Baxter Healthcare Corporation in a complex commercial litigation case.

Obtained critical claim construction ruling resulting in a judgment in favor of defendant Perclose, Inc.

Obtained a judgment in favor of patentee StarSight Telecast, Inc. on inequitable conduct charges.

Successfully represented Hyundai in a patent infringement and licensing lawsuit.

Professional Organizations

San Francisco Bay Area Intellectual Property Inn of Court

College of Arts and Sciences National Council, Valparaiso University

American Heart Association Research Roundtable Luncheon Committee

Education

University of Pennsylvania Law School, J.D. (1989)

Valparaiso University, B.S., Chemistry (1985)

Bar Admissions

District of Columbia (1991)

California (1989)

Admissions

U.S. Patent and Trademark Office

Federal Circuit

GE Healthcare UK Ltd. v. Beckman Coulter Inc. and Beckman Coulter Genomics Inc.

Represented defendant Beckman Coulter, a leader in the development and manufacture of complex biomedical testing products, in a patent infringement action involving alleged infringement of patents relating to nucleic acid isolation using magnetic beads. Case settled before trial.

GE Healthcare UK, Ltd. v. Beckman Coulter, Inc. and Beckman Coulter Genomics, Inc., No. 09-cv-974 (D. Del. filed December 18, 2009).

Thorn EMI North America Inc. v. Hyundai Electronics Industries Co. Ltd.

Represented Hyundai Electronics Industries, Co., Ltd., now known as SK hynix Inc., one of the world’s largest semiconductor companies, in a patent infringement and breach of contract case involving memory semiconductors. The patent infringement portion of the case settled pursuant to a court-ordered mediation. Hyundai Electronics won the breach of contract case after a three-day bench trial.

Thorn EMI N. v. Hyundai Elecs., No. 94-0332 (D. Del. filed Jun. 17, 1994).

Genetics Institute Inc. v. Baxter Healthcare Corporation

Counsel for Baxter Healthcare Corporation in complex commercial case and declaratory judgment patent lawsuit involving protein purification process. Matter settled.

Genetics Inst., Inc. v. Baxter Healthcare Corp., No. 98-10629 (D. Mass. filed Mar. 9, 1998).

Micron Technologies Inc. v. Hyundai Electronics Inc.

Defended Hyundai (now Hynix Semiconductor) against patent infringement charges by competitor Micron, which accused Hyundai of infringing its patents involving anisotropic etching plasma etching technology. We tried the case for four weeks, presenting compelling evidence of both invalidity and non-infringement. The case settled on very favorable terms for Hyundai just prior to the Administrative Law Judge issuing an Initial Determination.

Beckman Coulter v. Sequenom

Counsel for plaintiff Beckman in patent infringement action related to the detection of single nucleotide polymorphism (SNP) genotyping applications.

Aventis Pharma S.A. v. Baxter Healthcare Corporation

Represented Baxter Healthcare Corporation, a leading global medical products and services company, in a patent infringement action involving alleged infringement of a formulation patent relating to a blood clotting factor. The case was resolved through confidential arbitration.

Aventis Pharma S.A. v. Baxter Healthcare Corp., No.06-0636 (D. Del. filed Oct. 16, 2006).

In re Certain Semiconductor Integrated Circuits Using Tungsten Metallization

Represented the complainant at the International Trade Commission against twenty-three respondents. The investigation is still pending. Obtained favorable settlements from 16 of the respondents, and demonstrated infringement of the patent by all other respondents at the hearing. In re Certain Semiconductor Integrated Circuits Using Tungsten Metallization and Products Containing the Same, ITC Investigation No. 337-TA-648.

Toshiba Corporation v. Hynix Semiconductor Inc.

Counsel for declaratory judgment defendant Hynix in patent lawsuit involving various memory chip technologies.

Solus Micro Technologies Inc. v. Calient Networks

Counsel for Calient Networks, an optical switching and transmission equipment manufacturer, in complex commercial arbitration involving optical switching devices.

Pharmacia and Upjohn AB v. Baxter Healthcare Corporation

Counsel for Baxter in complex commercial international arbitration involving purified blood proteins.

Thomas J. Fogarty, M.D. v. Applied Vascular Devices, and related cross-actions

Counsel for cross-defendant Baxter Healthcare Corporation in complex commercial case involving embolectomy and dilatation catheters.

Bavarian Nordic v. Acambis

Counsel for intervenor and opposer Baxter in patent infringement lawsuit involving small pox vaccines and in related European Patent Office opposition proceeding.

Talecris Biotherapeutics Inc. v. Baxter International Inc. and Baxter Healthcare Corp.

Represented Baxter International Inc. and Baxter Healthcare Corp., a leading global medical products and services company, in a patent infringement action involving intravenous immunoglobulins. Case settled on eve of trial. (Judge Sleet).

Talecris Biotherapeutics, Inc. v. Baxter Int’l Inc., No. 1:05-cv-00349-GMS (D. Del. filed June 1, 2005).

Baxter International Inc. v. Pharmacia & Upjohn AB

U.S. counsel for plaintiff Baxter in foreign patent lawsuits involving a protein purification process.

Kevin J. Williams and Talaria Therapeutics, Inc. v. University of British Columbia, Inex Pharmaceuticals Corp., Esperion Therapeutics, Inc., Michael J. Hope, and Wendi V. Rodrigueza

Counsel for defendants Inex, UBC and Dr. Hope in patent, contract and fraud lawsuit involving liposome compositions.

Baxter Healthcare Corporation v. Genetics Institute Inc.

Counsel for Baxter Healthcare Corporation in complex technical contract case involving recombinant blood proteins. Settled after trial.

Baxter Int’l, et al. v. Genetics Inst., No. 98-0702 (Del. Ch. filed Dec. 15, 1998).

Oxford Gene Technology Ltd. v. Telechem International Inc.

Represented Telechem International Inc., a provider of biochemistry-related products and services, in a patent infringement dispute involving oligonucleotide arrays. Case settled.

Oxford Gene Tech LTD v. Telechem Intl Inc., No. 1:04-cv-00013-KAJ (D. Del. filed Jan. 8, 2004).

PDL BioPharma Inc. v. Sun Pharmaceutical Industries Ltd.

Counsel for patent owner PDL in ANDA patent lawsuit involving intravenous calcium channel blocker for treatment of hypertension.

ZymoGenetics Inc. v. Immunex Corp.

Counsel for ZymoGenetics in patent lawsuit involving fusion proteins. Matter settled.

ZymoGenetics Inc. v. Immunex Corp., No. 2:02-cv-00561 (W.D. Wash. filed Mar. 7, 2002).

Prevue Interactive et al., v. Starsight Telecast Inc., and related counterclaims

Counsel for patentee in DJ action involving interactive television technology.

Oxford Gene Tech., Ltd v. Affymetrix Inc.

United States counsel for Affymetrix, Inc., a biotechnology research equipment manufacturer, in patent lawsuits involving polynucleotide sequences and arrays. Matter settled.

Oxford Gene Tech., Ltd v. Affymetrix, Inc., No. 1:99-cv-00348 (D. Del. filed Jun. 4, 1999).

SGS Thomson v. Hyundai Electronics Inc.

Represented Hyundai (now Hynix Semiconductor) as defendant in patent infringement dispute related to semiconductor processing patents. The case settled on favorable terms for Hyundai.

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Susan Spaeth serves as Managing Partner of the firm. Ms. Spaeth focuses her practice on intellectual property and complex/technical litigation, particularly patent litigation, licensing and counseling. She has represented biotechnology, medical device and high technology companies in various federal district courts, the United States International Trade Commission and European patent litigation.

In addition to litigating patent and complex technology disputes, Ms. Spaeth regularly assists clients in their patent portfolio development, product analyses to determine patent infringement, negotiation of agreements related to intellectual property and establishing strategies to exploit the use of intellectual property.

During her career as an attorney, Ms. Spaeth has served as trial counsel in numerous successful efforts, including securing a unanimous jury verdict on behalf of cross-defendant, Baxter Healthcare Corporation, in a complex commercial litigation case; obtaining critical claim construction ruling resulting in a judgment in favor of defendant, Perclose, Inc.; obtaining a judgment in favor of patentee, StarSight Telecast, Inc., on inequitable conduct charges; and successfully representing Hyundai in a patent infringement and licensing lawsuit.

Ms. Spaeth is a member of the firm’s Executive Committee. In March 2003, San Jose Business Journal named Ms. Spaeth as one of the top 50 “Most Influential Women in Business” at their Women in Business Breakfast. Additionally, in April 2003, Ms. Spaeth was profiled in the San Francisco Business Times as one of the “100 Most Influential Women in Business.” In 2014, she was listed in The International Who’s Who of Business Lawyers in the area of Life Sciences. Ms. Spaeth was recognized as a Northern California “Super Lawyer” for Intellectual Property Litigation in 2004, 2011, 2012, 2013 and 2014 by Super Lawyers magazine. She was recognized in The Best Lawyers in America® for Intellectual Property Litigation in 2013, 2014 and 2015. Ms. Spaeth was listed in the 2013 edition of Chambers USA: America’s Leading Lawyers for Business for Life Sciences.

Client Milestones

Secured unanimous jury verdict on behalf of cross-defendant Baxter Healthcare Corporation in a complex commercial litigation case.

Obtained critical claim construction ruling resulting in a judgment in favor of defendant Perclose, Inc.

Obtained a judgment in favor of patentee StarSight Telecast, Inc. on inequitable conduct charges.

Successfully represented Hyundai in a patent infringement and licensing lawsuit.

Professional Organizations

San Francisco Bay Area Intellectual Property Inn of Court

College of Arts and Sciences National Council, Valparaiso University

American Heart Association Research Roundtable Luncheon Committee

Education

University of Pennsylvania Law School, J.D. (1989)

Valparaiso University, B.S., Chemistry (1985)

Bar Admissions

District of Columbia (1991)

California (1989)

Admissions

U.S. Patent and Trademark Office

Federal Circuit

GE Healthcare UK Ltd. v. Beckman Coulter Inc. and Beckman Coulter Genomics Inc.

Represented defendant Beckman Coulter, a leader in the development and manufacture of complex biomedical testing products, in a patent infringement action involving alleged infringement of patents relating to nucleic acid isolation using magnetic beads. Case settled before trial.

GE Healthcare UK, Ltd. v. Beckman Coulter, Inc. and Beckman Coulter Genomics, Inc., No. 09-cv-974 (D. Del. filed December 18, 2009).

Thorn EMI North America Inc. v. Hyundai Electronics Industries Co. Ltd.

Represented Hyundai Electronics Industries, Co., Ltd., now known as SK hynix Inc., one of the world’s largest semiconductor companies, in a patent infringement and breach of contract case involving memory semiconductors. The patent infringement portion of the case settled pursuant to a court-ordered mediation. Hyundai Electronics won the breach of contract case after a three-day bench trial.

Thorn EMI N. v. Hyundai Elecs., No. 94-0332 (D. Del. filed Jun. 17, 1994).

Genetics Institute Inc. v. Baxter Healthcare Corporation

Counsel for Baxter Healthcare Corporation in complex commercial case and declaratory judgment patent lawsuit involving protein purification process. Matter settled.

Genetics Inst., Inc. v. Baxter Healthcare Corp., No. 98-10629 (D. Mass. filed Mar. 9, 1998).

Micron Technologies Inc. v. Hyundai Electronics Inc.

Defended Hyundai (now Hynix Semiconductor) against patent infringement charges by competitor Micron, which accused Hyundai of infringing its patents involving anisotropic etching plasma etching technology. We tried the case for four weeks, presenting compelling evidence of both invalidity and non-infringement. The case settled on very favorable terms for Hyundai just prior to the Administrative Law Judge issuing an Initial Determination.

Beckman Coulter v. Sequenom

Counsel for plaintiff Beckman in patent infringement action related to the detection of single nucleotide polymorphism (SNP) genotyping applications.

Aventis Pharma S.A. v. Baxter Healthcare Corporation

Represented Baxter Healthcare Corporation, a leading global medical products and services company, in a patent infringement action involving alleged infringement of a formulation patent relating to a blood clotting factor. The case was resolved through confidential arbitration.

Aventis Pharma S.A. v. Baxter Healthcare Corp., No.06-0636 (D. Del. filed Oct. 16, 2006).

In re Certain Semiconductor Integrated Circuits Using Tungsten Metallization

Represented the complainant at the International Trade Commission against twenty-three respondents. The investigation is still pending. Obtained favorable settlements from 16 of the respondents, and demonstrated infringement of the patent by all other respondents at the hearing. In re Certain Semiconductor Integrated Circuits Using Tungsten Metallization and Products Containing the Same, ITC Investigation No. 337-TA-648.

Toshiba Corporation v. Hynix Semiconductor Inc.

Counsel for declaratory judgment defendant Hynix in patent lawsuit involving various memory chip technologies.

Solus Micro Technologies Inc. v. Calient Networks

Counsel for Calient Networks, an optical switching and transmission equipment manufacturer, in complex commercial arbitration involving optical switching devices.

Pharmacia and Upjohn AB v. Baxter Healthcare Corporation

Counsel for Baxter in complex commercial international arbitration involving purified blood proteins.

Thomas J. Fogarty, M.D. v. Applied Vascular Devices, and related cross-actions

Counsel for cross-defendant Baxter Healthcare Corporation in complex commercial case involving embolectomy and dilatation catheters.

Bavarian Nordic v. Acambis

Counsel for intervenor and opposer Baxter in patent infringement lawsuit involving small pox vaccines and in related European Patent Office opposition proceeding.

Talecris Biotherapeutics Inc. v. Baxter International Inc. and Baxter Healthcare Corp.

Represented Baxter International Inc. and Baxter Healthcare Corp., a leading global medical products and services company, in a patent infringement action involving intravenous immunoglobulins. Case settled on eve of trial. (Judge Sleet).

Talecris Biotherapeutics, Inc. v. Baxter Int’l Inc., No. 1:05-cv-00349-GMS (D. Del. filed June 1, 2005).

Baxter International Inc. v. Pharmacia & Upjohn AB

U.S. counsel for plaintiff Baxter in foreign patent lawsuits involving a protein purification process.

Kevin J. Williams and Talaria Therapeutics, Inc. v. University of British Columbia, Inex Pharmaceuticals Corp., Esperion Therapeutics, Inc., Michael J. Hope, and Wendi V. Rodrigueza

Counsel for defendants Inex, UBC and Dr. Hope in patent, contract and fraud lawsuit involving liposome compositions.

Baxter Healthcare Corporation v. Genetics Institute Inc.

Counsel for Baxter Healthcare Corporation in complex technical contract case involving recombinant blood proteins. Settled after trial.

Baxter Int’l, et al. v. Genetics Inst., No. 98-0702 (Del. Ch. filed Dec. 15, 1998).

Oxford Gene Technology Ltd. v. Telechem International Inc.

Represented Telechem International Inc., a provider of biochemistry-related products and services, in a patent infringement dispute involving oligonucleotide arrays. Case settled.

Oxford Gene Tech LTD v. Telechem Intl Inc., No. 1:04-cv-00013-KAJ (D. Del. filed Jan. 8, 2004).

PDL BioPharma Inc. v. Sun Pharmaceutical Industries Ltd.

Counsel for patent owner PDL in ANDA patent lawsuit involving intravenous calcium channel blocker for treatment of hypertension.

ZymoGenetics Inc. v. Immunex Corp.

Counsel for ZymoGenetics in patent lawsuit involving fusion proteins. Matter settled.

ZymoGenetics Inc. v. Immunex Corp., No. 2:02-cv-00561 (W.D. Wash. filed Mar. 7, 2002).

Prevue Interactive et al., v. Starsight Telecast Inc., and related counterclaims

Counsel for patentee in DJ action involving interactive television technology.

Oxford Gene Tech., Ltd v. Affymetrix Inc.

United States counsel for Affymetrix, Inc., a biotechnology research equipment manufacturer, in patent lawsuits involving polynucleotide sequences and arrays. Matter settled.

Oxford Gene Tech., Ltd v. Affymetrix, Inc., No. 1:99-cv-00348 (D. Del. filed Jun. 4, 1999).

SGS Thomson v. Hyundai Electronics Inc.

Represented Hyundai (now Hynix Semiconductor) as defendant in patent infringement dispute related to semiconductor processing patents. The case settled on favorable terms for Hyundai.

CONTACT ME

1080 Marsh Road
Menlo Park, California, 94025
650 324 6335

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While we are pleased to have you contact us by telephone, surface mail, electronic mail, or by facsimile transmission, contacting Kilpatrick Townsend & Stockton LLP or any of its attorneys does not create an attorney-client relationship. The formation of an attorney-client relationship requires consideration of multiple factors, including possible conflicts of interest. An attorney-client relationship is formed only when both you and the Firm have agreed to proceed with a defined engagement.

DO NOT CONVEY TO US ANY INFORMATION YOU REGARD AS CONFIDENTIAL UNTIL A FORMAL CLIENT-ATTORNEY RELATIONSHIP HAS BEEN ESTABLISHED.

If you do convey information, you recognize that we may review and disclose the information, and you agree that even if you regard the information as highly confidential and even if it is transmitted in a good faith effort to retain us, such a review does not preclude us from representing another client directly adverse to you, even in a matter where that information could be used against you.

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CONTACT US

DISCLAIMER

While we are pleased to have you contact us by telephone, surface mail, electronic mail, or by facsimile transmission, contacting Kilpatrick Townsend & Stockton LLP or any of its attorneys does not create an attorney-client relationship. The formation of an attorney-client relationship requires consideration of multiple factors, including possible conflicts of interest. An attorney-client relationship is formed only when both you and the Firm have agreed to proceed with a defined engagement.

DO NOT CONVEY TO US ANY INFORMATION YOU REGARD AS CONFIDENTIAL UNTIL A FORMAL CLIENT-ATTORNEY RELATIONSHIP HAS BEEN ESTABLISHED.

If you do convey information, you recognize that we may review and disclose the information, and you agree that even if you regard the information as highly confidential and even if it is transmitted in a good faith effort to retain us, such a review does not preclude us from representing another client directly adverse to you, even in a matter where that information could be used against you.

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