Susan M. 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; winning summary judgment in favor of Seattle Genetics, Inc. in a patent and breach of contract case; proving infringement by several semiconductor technology companies on behalf of LSI Corporation, Inc.; 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 and again in 2018 and the seven years immediately preceding by Super Lawyersmagazine. She was recognized in The Best Lawyers in America® for Intellectual Property Litigation in 2019 and the six years immediately preceding.
Ms. Spaeth was selected by Legal Media Group as a leader in Patent Law and recognized in the prestigious 2017 Expert Guide to the World’s Leading Women in Business Law. She was listed in the 2013 edition of Chambers USA. Ms. Spaeth is a recipient of Valparaiso University’s 2017 Alumni Achievement Award.
Secured unanimous jury verdict on behalf of cross-defendant Baxter Healthcare Corporation in a complex commercial litigation case.
Won summary judgment for Seattle Genetics, Inc. in a technology licensing, breach of contract and patent dispute.
Proved infringement by several semiconductor technology companies on behalf of LSI Corporation, Inc.
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 Electronics (now SKhynix) in a patent infringement and licensing lawsuit.
- Secured unanimous jury verdict on behalf of cross-defendant Baxter Healthcare Corporation in a complex commercial litigation case involving embolectomy and dilatation catheters.
- Won summary judgment for Seattle Genetics in a technology licensing and breach of contract and patent dispute involving a life-saving cancer therapy. After years of litigation and arbitration in district courts, state courts and the American Arbitration Association in Arizona and Washington, Kilpatrick Townsend obtained a definitive victory on summary judgment for Seattle Genetics against Arizona State University in the District of Arizona. The Court held on August 4, 2015, that ASU’s patent infringement claims were barred by the written terms of a contract amendment it had executed with SeaGen over ten years ago. Arizona State University v. Seattle Genetics, (D. Ariz.).
- Counsel for plaintiff Beckman in patent infringement action related to the detection of single nucleotide polymorphism (SNP) genotyping applications.
- 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).
- 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).
- United States counsel for plaintiff Baxter Healthcare in foreign patent lawsuits involving a protein purification process.
- Counsel for Baxter in complex commercial international arbitration involving purified blood proteins.
- Counsel for Baxter Healthcare in complex technical contract case involving recombinant blood proteins. Settled after trial. Baxter Int’l, et al. v. Genetics Inst. (Del. Ch. filed October 2000).
- Represented Baxter International Inc. and Baxter Healthcare Corporation, 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).
- 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).
- Counsel for intervenor and opposer Baxter in patent infringement lawsuit involving small pox vaccines and in related European Patent Office opposition proceeding.
- 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).
- Counsel for defendants Inex, UBC and Dr. Hope in patent, contract and fraud lawsuit involving liposome compositions.
- 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).
- 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).
- Counsel for patent owner PDL in ANDA patent lawsuit involving intravenous calcium channel blocker for treatment of hypertension.
- Represented the complainant at the International Trade Commission against twenty-three respondents. 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.
- Represented Hyundai Electronics Industries, Co., Ltd., now known as SKhynix, 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).
- Defended Hyundai (now SKhynix) 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.
- Represented Hyundai (now SKhynix) as defendant in patent infringement dispute related to semiconductor processing patents. The case settled on favorable terms for Hyundai.
- Counsel for declaratory judgment defendant Hynix (now SKhynix) in patent lawsuit involving various memory chip technologies.
- Counsel for patentee in DJ action involving interactive television technology.
- Counsel for Calient Networks, an optical switching and transmission equipment manufacturer, in complex commercial arbitration involving optical switching devices.
- Counsel for Hitachi in patent infringement litigation involving the design and fabrication of power MOSFET devices. Hitachi Semiconductor (America), Inc. et al v. International Rectifier Corporation, No. 4:02-cv-01730 (N.D. Cal. Filed Apr. 10, 2002).
- University of Pennsylvania Law School, J.D. (1989)
- Valparaiso University, B.S., Chemistry (1985)
- District of Columbia (1991)
- California (1989)
- U.S. Patent and Trademark Office
- U.S. Court of Appeals for the Federal Circuit
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