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William R. Boudreaux

Practice Summary

Mr. Boudreaux is a shareholder in the firm and serves as co-chair of the Biotechnology and Pharmaceutical practice group.  He has practiced as a patent attorney specializing in pharmaceuticals and chemicals since 1992.  Bill’s practice includes client counseling for strategic patent portfolio development, global patent prosecution, IP diligence, and opinions for patentability, validity and freedom to operate.

Bill’s experience includes over 15 years as in-house counsel in the pharmaceutical industry, including roles as patent counsel at Pfizer, Inc. and Eli Lilly and Co.  Bill was primary patent counsel for several late-stage and post-launch drug products including four blockbuster drugs.  In addition to his counseling roles, Bill has extensive experience in global patent portfolio creation, legal opinions, product life-cycle planning and IP diligence.  His experience also includes Hatch-Waxman litigation strategy and support, prosecution of patent reexamination and reissue applications, transactional work, appellate brief writing and international patent procurement and enforcement.  Bill represents a broad range of biotech and pharma clients ranging from large companies to start-ups.

Representative Matters
Patents
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  • U.S. Patent No. 7,713,979 – Cycloalkyl lactam derivatives as inhibitors of 11-beta hydroxysteroid dehydrogenase 1
  • U.S. Patent No. 7,705,177 – Ketone compounds and compositions for cholesterol management and related uses
  • U.S. Patent No. 7,659,296 – Vitamin D receptor modulators
  • U.S. Patent No. 7,375,229 – Dihydro-dibenzo[B,E]oxepine based selective estrogen receptor modulators, compositions and methods
  • U.S. Patent No. 7,335,799 – Hydroxyl compounds and compositions for cholesterol management and related uses
  • U.S. Patent No. 7,192,940 – Ether compounds
  • U.S. Patent No. 7,122,203 – Stabilized formulations of 6-hydroxy-3-(-4-[2-(piperidin-1-yl) ethoxy]phenoxy)-2-(4-methoxyphenyl) benzo[b]thiophene and salts thereof
  • U.S. Patent No. 7,119,206 – Derivative of dihydro-dibenzo[a]anthracenes and their use as selective estrogen receptor modulators
  • U.S. Patent No. 7,067,510 - Dihydro-dibenzo[B,E]oxepine based selective estrogen receptor modulators, compositions and methods
  • U.S. Patent No. 7,015,232 – Stabilization of quinapril using magnesium oxide
  • U.S. Patent No. 6,962,928 - Tetrahydroquinoline derivatives for the inhibition of osteoporosis, estrogen dependent breast cancer, endometriosis and uterine fibrosis
  • U.S. Patent No. 6,723,739 – Glucopyranoside benzothiophenes
  • U.S. Patent No. 6,274,601 – Methods of inhibiting ulcerative mucositis
  • U.S. Patent No. 6,258,826 – Pharmaceutical formulations and applications thereof for the treatment of estrogen deprivation syndrome
  • U.S. Patent No. 6,069,232 – Polyfluoroalkyl tryptophan tripeptide thrombin inhibitors
  • U.S. Patent No. 5,969,142 – Benzothiophene compounds, intermediates, compositions and methods
  • U.S. Patent No. 5,856,340 – Method of treating estrogen dependent cancers
  • U.S. Patent No. 5,795,876 – Method of inhibiting vascular cell adhesion molecule-1 and treating chronic inflammatory diseases with 2, 6-di-alkyl-4-silyl-phenols
  • U.S. Patent No. 5,734,062 – Method of preparation of physostigmine carbamate derivatives from eseretholes
  • U.S. Patent No. 5,698,523 – Acylated enol derivatives as prodrugs of elastase inhibitors
  • U.S. Patent No. 5,691,368 – Substituted oxazolidine calpain and/or cathepsin B inhibitors
  • U.S. Patent No. 5,681,925 – Trifunctional antithrombin and antiplatelet peptides
  • U.S. Patent No. 5,677,457 – Method of preparation of physostigmine carbamate derivatives from eseretholes
  • U.S. Patent No. 5,608,095 – Alkyl-4-silyl-phenols and esters thereof as antiatherosclerotic agents
  • U.S. Patent No. 5,602,147 – Piperidinyl thiacyclic derivatives
  • U.S. Patent No. 5,595,979 – Method of treating a neoplastic disease state by conjunctive therapy with 2'-fluoromethylidene derivatives and radiation or chemotherapy
  • U.S. Patent No. 5,510,333 – Inhibitors of cathepsin G and elastase for preventing connective tissue degradation
  • U.S. Patent No. 5,478,811 – Orally-active elastase inhibitors
  • U.S. Pat. Publ. No. US 20080269293 A1 – Pyrazole derivatives as anti-platelet and anti-thrombotic agents
  • PCT Pat. Publ. No. WO2008117148 – Substituted oxadiazole analogs as calcium channel antagonists
Appeals
  • Integra Lifesciences I, Ltd. v. Merck KGaA, 496 F.3d 1334 (Fed. Cir. 2007). Counsel of record for Eli Lilly and Company as amicus curiae.
  • Merck KGaA v. Integra Lifesciences I, Ltd., 545 U.S. 193 (2005). Supporting reversal of Federal Circuit’s holding that pre-clinical pharmaceutical research and development activity does not fall under the infringement exemption of 35 U.S.C. §271(e)(1). Counsel of record for Eli Lilly and Company as amicus curiae at the petition for certiorari stage. 
Patent Reviews
  • Due diligence reviews prior to entering licensing, joint venture or financing agreements
  • Freedom to operate opinions and pre-marketing patent audits
  • Patent infringement and validity studies
Intellectual Property Agreements
  • Negotiating and drafting new agreements related to joint research and licensing
  • Interpretation and counseling regarding existing agreements
Memberships & Affiliations
  • Intellectual Property Owners Association
    Patent Law (U.S.) Committee, 2010-present
    Pharmaceutical Issues Committee, 2008-2009
    Hatch Waxman Committee, 2006-2007
    Patent Office Practice (U.S.) Committee, 2007
  • American Intellectual Property Law Association
Civic Activities
  • Boy Scouts of America, Cub Scout Den Leader, 2006-2010
Legal Experience
  • Brinks Hofer Gilson & Lione, Ann Arbor, Michigan
    Shareholder, January 2009-Present
    Counsel, June 2007-December 2008
  • Pfizer Inc., Ann Arbor, Michigan
    Senior Corporate Counsel, January 2005-June 2007
  • Eli Lilly and Co., Indianapolis, Indiana
    Patent Counsel, July 1999-January 2005
    Patent Attorney, July 1997-July 1999
  • Hoechst Marion Roussel Inc., Cincinnati, Ohio
    Senior Patent Attorney, June 1994-July 1997
    Patent Attorney, September 1992-July 1997
  • Ethyl Corp., Baton Rouge, Louisiana
    Patent Engineer, May 1990-September 1992