David I. Gindler Partner

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LOS ANGELES 2029 Century Park East 33rd Floor Los Angeles, CA US 90067- 3019 T +1 424.386.4313 F +1 213.629.5063

David Gindler is a partner in the Los Angeles oﬃce of Milbank LLP and the head of the ﬁrm’s Intellectual Property Litigation and Licensing Group.

Primary Focus & Experience

Mr. Gindler’s practice focuses on intellectual property litigation and licensing, with an emphasis in complex patent litigation. While nationally recognized by Chambers USA for his expertise in life sciences matters, Mr. Gindler’s work spans a broad array of industries and technologies. He has achieved extraordinary trial outcomes for both plaintiffs and defendants, including a $302 million verdict for breach of a research and license agreement, as well as defeating a $217 million damages claim where liability had already been established in an earlier trial handled by a different law firm.

Mr. Gindler also negotiates complex intellectual property license agreements involving cutting-edge technologies and creative ﬁnancial structures, frequently working on behalf of colleges and universities.

Mr. Gindler has represented both established and emerging commercial and nonproﬁt organizations, including Genentech, ZOLL Medical Corporation, CooperVision, Alnylam Pharmaceuticals, Rosenberger, Aon Corporation, Arizona State University and City of Hope.

Mr. Gindler was one of the principal trial lawyers in City of Hope v. Genentech, obtaining a $302 million compensatory damages award for failure to pay royalties owed on patents relating to fundamental technology that helped create the biotechnology industry. This award was upheld by both the California Court of Appeals and the California Supreme Court.

With a national practice, Mr. Gindler has litigated cases in many US district courts, including the Central, Southern, Northern and Eastern Districts of California, the Eastern District of Texas, the Southern District of New York, the District of Massachusetts, the District of Delaware, the District of Oregon, the Western District of Washington, the Western District of Pennsylvania and the District of Minnesota, among others. He also handles litigation with an international dimension, collaborating with legal partners across the globe in complex cross-border patent disputes.

Select prior experience includes:

Genentech and Biogen v. Celltrion and Teva; Genentech and Biogen v. Sandoz. Represented Genentech and Biogen in patent litigation under the Biologics Price Competition and Innovation Act relating to Genentech’s blockbuster drug, Rituxan. Celltrion and Sandoz filed applications with the FDA to market a biosimilar version of Rituxan. Genentech and Biogen responded with lawsuits against Celltrion and Sandoz alleging infringement of patents related to methods of making and using Rituxan. The Sandoz litigation concluded when Sandoz withdrew its FDA application to market a biosimilar version of Rituxan. The Celltrion litigation concluded shortly before the court was scheduled to begin a four-day trial on Genentech and Biogen’s motion for a preliminary injunction against Celltrion and Teva. Boehringer Ingelheim v. Genentech and Biogen; Celltrion v. Genentech and Biogen; Pfizer v. Genentech and Biogen; and Sandoz v. Genentech and Biogen. Defended Genentech and Biogen in connection with 25 IPR petitions in the PTAB for multiple patents relating to methods of using Rituxan. Secured 16 non-institution decisions, 4 adverse judgments against petitioners (who abandoned the proceeding), and 3 final written decisions rejecting the attack on all claims. Only 2 of the 25 proceedings resulted in loss of patent claims in final written decisions, one of which is pending appeal and another that was settled before appeal. The petitioners are competitors who filed, or planned to file, applications with the FDA to market biosimilar versions of rituximab under the Biologics Price Competition and Innovation Act. Altela v. Skysong Innovations. Secured a complete victory for Skysong Innovations, which manages the intellectual property of Arizona State University (“ASU”). In this arbitration, claimant Altela alleged that Skysong wrongfully terminated Altela’s license agreement covering groundbreaking water reclamation technology from ASU, resulting in the complete loss of Altela’s business and over $40 million in damages. A three-person arbitration panel unanimously rejected all of Altela’s claims, finding that Skysong properly terminated the license agreement for non-payment of royalties and failure to provide quarterly royalty reports. The panel awarded Skysong its unpaid royalties from Altela, along with all of Skysong’s attorneys’ fees. PDL BioPharma v. Merck. Secured a $19.5 million lump-sum payment from Merck to settle PDL BioPharma’s lawsuit filed in the US District Court for the District of New Jersey alleging that Merck’s manufacture of its cancer drug Keytruda infringed a foundational patent relating to the humanization of recombinant antibodies. The case was settled little more than one year after it was filed following the claim construction hearing. Ariosa Diagnostics v. Sequenom. Secured a complete victory for Ariosa Diagnostics in a declaratory judgment action filed in the US District Court for the Northern District of California against Sequenom. Defeated Sequenom’s initial effort to secure a preliminary injunction to enjoin Ariosa from selling its Harmony Prenatal Test (an affordable, highly accurate, non-invasive blood test to assess the risk of fetal chromosomal abnormalities). Prevailed on an early summary judgment motion that invalidated Sequenom’s patent for failing to claim patent-eligible subject matter. The decision was affirmed by the US Court of Appeals for the Federal Circuit in a closely watched appeal. Koninklijke Philips N.V. et al. v. ZOLL Medical Corp. Defeated a $217 million damages claim for ZOLL’s infringement of defibrillator technology patents and secured jury verdict of no willful infringement. Retained for the damages phase of the litigation after ZOLL was found to infringe in an earlier liability trial handled by another law firm. Initially secured multiple appellate victories for ZOLL on the liability verdict, including overturning the jury verdict that several asserted patent claims were not invalid as anticipated. On remand, when Philips sought $217 million on its infringement claims against ZOLL, and ZOLL sought $3.3 million on its infringement counterclaims against Philips, the jury awarded $10.4 million to Philips and $3.3 million to ZOLL, resulting in a net verdict of $7.1 million to Philips. Koninklijke Philips N.V. et al. v. ZOLL Lifecor Corp. Obtained a favorable outcome for ZOLL Lifecor in a patent infringement case pending in the US District Court for the Western District of Pennsylvania involving external defibrillator technology. Won an important Daubert motion excluding critical parts of the opinion of Philips’s damages expert. After the court refused to allow Philips to offer a supplemental opinion on damages, and the related victory discussed above at the damages trial for ZOLL Medical, the case settled on favorable terms. PDL BioPharma v. Genentech and F. Hoffmann-La Roche. Represented PDL BioPharma in a Nevada state court action alleging breach of a 2003 settlement agreement that, among other things, barred Genentech from challenging the validity of PDL patent rights. After extensive discovery and motion practice, the case was stayed pending Genentech and Roche’s interlocutory appeal to the Nevada Supreme Court of a trial court order granting PDL’s motion to compel them to produce critical documents withheld on grounds of privilege. The case settled during the appeal, with Genentech entering into amended license agreements with PDL. Details about the financial terms of the settlement can be found in PDL’s public disclosures. MedImmune v. Genentech and City of Hope; Centocor, Inc. v. Genentech and City of Hope; Bristol Myers Squibb v. Genentech and City of Hope. Represented City of Hope in a series of declaratory judgment actions attacking a family of patents co-owned by Genentech and City of Hope (referred to as the “Cabilly patents”) that cover fundamental processes relating to recombinant antibodies. All cases were resolved on favorable terms, with no findings of invalidity, unenforceability or noninfringement. After nearly 15 years of continuous litigation challenges, the Cabilly patents expired in 2018 without any court or tribunal finding any claim invalid, not patentable, or unenforceable. Alnylam Pharmaceuticals et al. v. Whitehead Institute for BioMedical Research et al. Represented Alnylam and Max Planck Institute in a complex patent dispute in the US District Court for the District of Massachusetts concerning rights to fundamental technology covered in two patent families in the field of RNA interference. Successfully resolved the case on favorable terms through a creative settlement that used co-ownership rights and other cooperative mechanisms to overcome USPTO rejections in both patent application families. University of Utah v. Alnylam Pharmaceuticals, et al. Secured a complete victory on summary judgment for Alnylam, Max Planck Institute, Whitehead Institute and Massachusetts Institute of Technology in a lawsuit in the US District Court for the District of Massachusetts alleging that a University of Utah professor should have been included as an inventor on patents in the field of RNA interference co-owned by defendants. Aon Corporation v. Guy Carpenter & Company. Represented Aon Corporation, one of the world’s largest insurance and financial services companies, in a declaratory judgment action filed in the US District Court for the Southern District of New York relating to a competitor’s patent in connection with graphical representations of insured risks and related weather and catastrophe data. Successfully negotiated a settlement of the litigation significantly in advance of trial. CooperVision v. CIBA Vision. Represented CooperVision in multiple lawsuits in multiple forums (the US District Court for the District of Delaware and the US District Court for the Eastern District of Texas) in actions involving cross- allegations of infringement of patents relating to certain core technologies used in contact lenses. CooperVision successfully resolved the case through an innovative cross-licensing arrangement. DataTreasury Corporation v. NCR Corporation. Represented NCR in a patent infringement suit filed in the US District Court for the Eastern District of Texas relating to electronic processing of financial transactions. Achieved very early settlement on favorable terms, while multiple defendants in related cases involving the same patents reportedly paid eight-figure settlements.

Recognition & Accomplishments

Mr. Gindler is an active supporter of the nonproﬁt performing arts community. He currently serves as chairman of the board of directors of Antaeus Theatre Company. He is also a member of the boards of directors of the Los Angeles Philharmonic, Los Angeles Master Chorale and Beth Morrison Projects. Mr. Gindler has previously served on the boards of directors of Center Theatre Group and The Music Center.

He is a Member of the Litigation and Intellectual Property Law Sections of the American Bar Association, the State Bar of California and the Los Angeles County Bar Association. Mr. Gindler is also a member of the Federal Circuit Bar Association, the American Intellectual Property Law Association, and the Los Angeles Intellectual Property Law Association.

Mr. Gindler is a frequent speaker on hot topics in intellectual property law. His recent speaking engagements include: “Is Innovation Enough? New Challenges to Patent Protection for Pharmaceuticals and Biologics,” Life Sciences Patent Network Annual Fall Conference (October 16, 2019); “Section 101: Are We on the Other Side of the Looking Glass?,” Life-Sciences Patent Network North America Annual Spring Conference (April 25, 2019); “2012 Year in Review: Hear What the Experts Report on Their Specialized Areas of Law,” Association of Business Trial Lawyers (January 29, 2013); and “The Impact of Myriad on the Patentability of DNA Sequences in the US,” 21st Forum on Biotech Patenting (October 6, 2011).

Mr. Gindler has been widely recognized for his work in the area of intellectual property, and his recent accolades include:

Recognized in Chambers USA for Life Sciences: IP/Patent Litigation in California, and as a "Leading Individual" in the areas of intellectual property, patent and life sciences law. According to Chambers, his clients praise him for being "an incredible lawyer; really smart and driven, and incredibly focused on achieving his clients' goals." (2008-2020) Recognized by Benchmark Litigation as a National Practice Area Star and Local Litigation Star in the area of Intellectual Property (2020) Named one of California's “Top IP Litigators” by the Daily Journal (2008, 2014- 2020) Named as one of Los Angeles' “Leaders of Inﬂuence: Litigators & Trial Lawyers” by the Los Angeles Business Journal (2020) Honored by LMG Life Sciences Awards as "California General Patent Litigator of the Year" (2017) and with the "Patent Impact Case of the Year Award" (2016) for his work on Ariosa Diagnostics v. Sequenom Recognized by The American Lawyer as “Litigator of the Week” (December 3, 2015) after the Court of Appeal for the Federal Circuit, sitting en banc, declined to reconsider an earlier panel decision in favor of Mr. Gindler’s client, Ariosa Diagnostics, ﬁnding that Sequenom’s patent to a method of isolating fetal DNA was not eligible for patent protection under Section 101 of the Patent Act Recognized by LMG Life Sciences as an "Intellectual Property Star" (2019) and as a "Life Sciences Star" (2016-2020) Recognized by Law360 as a "Life Sciences MVP" (2014, 2015) Recognized in “Who's Who in L.A. Law: Angelenos to Know in Intellectual Property Law” by the Los Angeles Business Journal (2012) Named among Managing Intellectual Property's IP Stars (2015, 2018-2021) Recognized in The International Who's Who of Life Sciences Lawyers (2017) Named to the Southern California Super Lawyers list (2004-2021) Recognized by the Best Lawyers in America for intellectual property law (2011-2020)

ADDITIONAL DETAILS

EDUCATION University of California, Los Angeles School of Law, J.D. Pomona College, B.A., Philosophy and Economics

ADMISSIONS California US District Court for the Central District of California US District Court for the Southern District of California US District Court for the Eastern District of California US District Court for the Northern District of California US Court of Appeals for the Ninth Circuit US Court of Appeals for the Federal Circuit US Supreme Court

EXPERIENCE

Intellectual Property Litigation & Arbitration Pharmaceuticals

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