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Kathleen B. Carr

Member

[email protected]

+1.617.348.1857

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Kathleen has led trial teams in multibillion- and multimillion-dollar Hatch Waxman pharmaceutical patent litigation, and has successfully served as lead counsel for over 20 years on many cases in both federal and state court. She has argued successfully before the US Court of Appeals for the First Circuit, and prevailed in appeals before the Federal Circuit. She is registered to practice before the US Patent and Trademark Office.

She is listed in Best Lawyers in America for IP litigation, and has been listed as an LMG “Life Sciences Star” for IP litigation since its inaugural publication in 2012. The Legal 500 United States has recognized Kathleen for Health Care: Life Sciences. Kathleen recently was elected to the Fellows of the American Bar Foundation, which is limited to one percent of lawyers licensed to practice in each jurisdiction.

RECENT HAPPENINGS

  • U.S. District Court for the District of Massachusetts: Appointed Chair, Merit Selection Panel for the Reappointment of Magistrate Judge Jennifer C. Boal (2018)
  • Lead counsel on U.S. Supreme Court Amicus brief for US Inventor in Helsinn v. Teva
    • Court granted certiorari on June 25, 2018.
  • Won Hatch-Waxman patent infringement litigation: Lead counsel in Kowa Company, Ltd., et al. v. Amneal Pharmaceuticals LLC, and related cases
    • Two S.D. New York Court Decisions: September 19, 2017 and April 11, 2017

IP LITIGATION

Kathleen’s IP litigation practice focuses on patent, trademark, and copyright cases and disputes for clients ranging from major pharmaceutical companies to start-ups and senior executives. A registered U.S. patent attorney, she has served as lead counsel prevailing in several Patent Office inter partes review matters. She has successfully litigated and mediated patent cases for various technologies including pharmaceuticals, biotechnology, mechanical devices, computers, business methods, printing machines, mechanical seals, fax technology, and photocopiers. Kathleen's intellectual property practice is comprehensive, and encompasses contract and license negotiation, arbitration and mediation, due diligence, infringement and validity opinions, patent term extension, indemnity issues, research "safe harbor" issues, and biologics/biosimilars.

LITIGATION

Her broad litigation experience includes cases involving admiralty and maritime law, contract disputes, insurance coverage disputes, and various other matters such as real estate, architecture and engineering, fire damage, and complex business litigation.

Prior to joining Mintz, Kathleen served as Co-Chair of the Intellectual Property Litigation Group at a large international law firm.

Education

  • Tulane University (JD)
  • Dartmouth College (AB, Physics)
  • Dartmouth College (AB, English)

Experience

Patent:

  • Lead trial counsel in Hatch-Waxman litigation involving a cholesterol-lowering drug; 9-related cases.  Favorably settled 7, and prevailed at trial against remaining 2 defendants.
  • Lead counsel in three IPR proceedings brought by generic pharmaceutical manufacturers against patent owner in related Hatch-Waxman litigation; successfully obtained denial of institution of all petitions.
  • Lead trial counsel in Hatch-Waxman litigation involving a direct thrombin inhibitor. Prevailed on all claims in a 156-page District Court decision, affirmed on appeal to the Federal Circuit.
  • In multibillion-dollar Hatch Waxman pharmaceutical litigation, successfully defended against multiple generic manufacturers’ ANDA attacks on diabetes drug patents.  Prevailed in both District Court and on appeal to the Federal Circuit.
  • Lead counsel in the negotiation of numerous settlements in Hatch-Waxman ANDA litigation.
  • Lead counsel obtaining a $17+ million award for a pharmaceutical patent holder on an attorneys’ fees petition.
  • Lead counsel in patent litigation filed in the Eastern District of Texas involving 29 patents covering photocopier technology. Settled favorably.
  • Trial counsel in a patent infringement action involving mechanical seals.  Settled favorably on the fifth day of jury trial.
  • Multiple successes on behalf of an excavator in a patent license dispute, and ultimately obtained favorable settlement in patent litigation involving a tree stump excavating and crushing device patent.

Trademark:

  • Represented a global modeling agency in trademark and dilution litigation.  Successfully negotiated a favorable settlement protecting the agency’s trade name. 
  • Represented a pharmaceutical company in trademark litigation.  Negotiated a favorable settlement protecting the company’s trade name and marks.
  • Multiple successes on behalf of clients through litigation and pre-litigation/cease and desist letters, including early and practical resolution disputes.

Commercial Litigation:

  • Represented intermodal carrier in hotly contested contract and insurance dispute.  Settled on favorable terms, which preserved the client’s business.
  • Represented and counseled clients on admiralty and maritime law issues and litigation, vessel arrests and attachments, on-board investigations and vessel-related incidents, and marine insurance coverage matters.
  • Defended securities fraud class and derivative actions.
  • Wide variety of experience in contract, insurance, and business litigation.

Recognition & Awards

  • Best Lawyers in America: Intellectual Property Litigation (2016 - 2019)
  • LMG Life Sciences Star (2012 - 2018)
  • Recommended by The Legal 500 United States for Health Care: Life Sciences (2016)
  • Elected to Fellows of the American Bar Foundation (2016)

Involvement

  • Chair, Merit Selection Panel for the Reappointment of U.S. Magistrate Judge Jennifer C. Boal, U.S. District Court, District of Massachusetts
  • Former Counselor; current Board Member, Boston IP American Inn of Court
  • Former elected member, Charter Commission, Town of Braintree, Massachusetts
  • Former member, Government Study Committee, Town of Braintree, Massachusetts
  • Fellow, American Bar Foundation
  • Member, American Bar Association
  • Member, Federal Circuit Bar Association
  • Member, Boston Patent Law Association
  • Member, Federal Bar Association
  • Member, Maritime Law Association
  • Member, Massachusetts Bar Association
  • Member, Rhode Island Bar Association
  • Member, Boston Bar Association
  • Member, AIPLA
  • Former VISTA (Volunteers in Service to America) volunteer
  • Former US Coast Guard 100-ton licensed boat Captain

Recent Insights

News & Press

Events

News & Press

Mintz Members Kathleen Carr and Brad Scheller and Associate Inna Dahlin collaborated on an article for Bloomberg Law Patent, Trademark & Copyright Journal about the inter partes review “estoppel” rule, what circumstances may give rise to it, and how the courts can clarify and validate its use.
Mintz has secured a string of substantial victories in Hatch-Waxman litigation for innovative drug manufacturers Kowa Pharmaceutical Co., Ltd., Kowa Pharmaceuticals America, Inc., and Nissan Chemical Industries Ltd.
Kathleen Carr and David Conlin, both Members in the Boston Mintz office and patent litigators, were featured in a Law360 article covering the ruling in the matter of a patent infringement trial against Amneal and Apotex.
Best Lawyers named 85 Mintz attorneys to its 2018 list of The Best Lawyers in America. In addition, Mintz attorneys Matthew J. Gardella and Samuel M. Tony Starr were named “Lawyer of the Year” in their respective practice areas.
Best Lawyers named 73 Mintz attorneys to its 2017 list of The Best Lawyers in America. Mintz attorneys selected for inclusion in this year’s list span 44 practice areas. 

Events

Moderator
Oct
2
2018

Paragraph IV Disputes Master Symposium

American Conference Institute

Chicago, IL

Moderator
Apr
22
2018

12th Annual Paragraph IV Disputes Conference

American Conference Institute

Conrad New York 102 North End Avenue New York, NY

Speaker
Oct
2
2017

Paragraph IV Disputes Master Symposium

American Conference Institute

Chicago, Illinois

Speaker
Speaker
Apr
24
2017

ACI’s Paragraph IV Disputes Conference

American Conference Institute

Conrad, New York

Speaker
Sep
19
2016

4th Annual Paragraph IV Disputes Master Symposium

American Conference Institute

Intercontinental Chicago, Magnificent Mile, Chicago, IL

Speaker
Apr
25
2016

10th Annual Paragraph IV Disputes Seminar

American Conference Institute

Conrad Hotel New York City

Panelist
Oct
1
2015

ACI’s Paragraph IV Disputes Master Symposium

American Conference Institute

InterContinental Chicago, Magnificent Mile, Chicago, IL