Sam Lockner concentrates his practice on intellectual property (IP) litigation and licensing. He has served as lead counsel on numerous patent litigations, including cases involving patents relating to chemical compounds, polymorph, pharmaceutical formulations, topical drug products, and methods of treatment. Sam also has served as lead counsel for disputes relating to trade secrets, Lanham Act claims, and trademarks.
Many of Sam’s cases are patent disputes filed under the Hatch-Waxman Act. He led a Carlson Caspers’ team to a judgment of non-infringement after a favorable Markman decision in a dispute involving Prevacid Solutab®. He also served as trial counsel for Teva Pharmaceuticals USA, Inc., in a patent dispute involving the blockbuster drug, tamper-resistant OxyContin® resulting in the invalidation of two asserted patents and a judgment of non-infringement on another.
Other past Hatch-Waxman litigations Sam has been involved with include tadalafil (Cialis®), cinacalcet (Sensipar®), regorafenib (Stivarga®), (Exjade®), bortezomib (Velcade®), erlotinib (Tarceva®), memantine extended-release (Namenda XR®), oxycodone (OxyContin®), pantoprazole (Protonix®); lansoprazole ODT (Prevacid Solutab®), megestrol acetate (Megase® ES), sumatriptan and naproxen sodium (Treximet®), dexmethylphenidate extended-release (Focalin XR®), dexmethylphenidate immediate release (Focalin®), methylphenidate extended-release (Ritalin® LA), and methylphenidate immediate release (Ritalin®).
Sam is currently serving as lead counsel in the following matters:
- Boehringer Ingelheim Pharmaceuticals, Inc. and Boehringer Ingelheim Int’l Inc. v. Sun Pharmaceutical Industries Ltd. and Sun Pharmaceutical Industries, Inc., afatinib, (Gilotrif®)
- Pfizer et al. Sun Pharmaceutical Industries Ltd. and Sun Pharmaceutical Industries, Inc., palbociclib, (Ibrance®)
- Pharmacyclics LLC and Janssen Biotech, Inc. v. Shilpa Medicare Limited, et al., ibrutinib, (Imbruvica®)
- Delcor Asset Corp. and Mylan Pharmaceuticals Inc. v. Taro Pharmaceutical Industries, Ltd., et al., clindamycin, (Evoclin®)
- Anacor Pharmaceuticals, Inc. v. Ascent Pharmaceuticals, Inc. et al., tavaborole, (Kerydin®)
- Leo Pharma A/S et Al., v. Taro Pharmaceuticals U.S.A. and Taro Pharmaceutical Industries, Ltd., azelaic acid, (Finacea Foam®)
- Merz Pharmaceuticals, LLC and Merz North America, Inc. v. Suven Life Sciences, Ltd., et al., glycopyrrolate oral solution, (Cuvposa®)
Sam also represents companies in the biotechnology, biomedical device, bio-agricultural, and other related industrial sectors, both as plaintiffs and defendants, and in Inter Partes Review (“IPR”) proceedings. He has represented numerous clients in trademark matters before the Trademark Trial and Appeal Board (“TTAB”).
In addition to contested matters, Sam counsels clients how to protect and monetize their IP portfolio, including trade secret protection, out-licensing efforts, and creation of joint development or research arrangements. Sam recently co-led a Carlson Caspers’ team in a multi-phased, global monetization strategy relating to the breakthrough CRISPR technology. He also closed a licensing deal valued at more than $40 million for a biotechnology company.
Sam is active in the legal community and performs pro bono work, including for the Children’s Law Center and the Minnesota Innocence Project. He is on the Board for the Fund for Legal Aid and the planning committee for the Midwest IP Institute. Minnesota Super Lawyers each year has listed Sam as a “Super Lawyer or “Rising Star” from 2008 to the present.
Sam frequently publishes and speaks at domestic and international conferences on IP issues. Recent publications and presentations include:
- “Protecting IP in Manufacturing and Distribution Relationships: Helsinn and More,” at Midwest Intellectual Property Institute 2018 (Minneapolis, MN)
- “Navigating the Interface between IPRs and Patent Litigation,” at World Intellectual Property Forum 2018 (Dubai, UAE)
- “Perspective from the U.S. with Gene Therapy: Trends Before the Patent Office, District Court Litigation, and Licensing Strategies,” at BIO Korea 2017 (Seoul, South Korea)
- “Strategy Considerations for Patent Enforcement Worldwide: A Panel of International Experts,” at Midwest Intellectual Property Institute 2017 (Minneapolis, MN)
- “Ask Questions First, Then File: The Importance of Pre-Suit Investigation,” at Midwest Intellectual Property Institute 2016 (Minneapolis, MN)
- “Patent Disputes in the Medical Device Field–2016-17,” Book Chapter in Midwest Intellectual Property Institute (2017)
Boston University School of Law
J.D., cum laude
Health Law Concentration with honors
Dean’s Award for Trademark and Unfair Competition
University of Minnesota
B.S., Genetics Cell Biology and Development
Minnesota Supreme Court
U.S. District Court for the District of Minnesota
U.S. Court of Appeals for the Federal Circuit
U.S. Court of Appeals for the Eighth Circuit