Overview

Dexter Whitley, Ph.D., a member of Fish & Richardson’s litigation team, works on complex patent cases involving a range of technical areas, with a particular focus on life sciences, pharmaceuticals, biotechnology, and Hatch-Waxman litigation. 

Dexter is experienced in multiple stages of litigation, from pre-case assessment and due diligence investigations through witness preparation and examination. He is a critical team member in district court litigation and in post-grant matters before the Patent Trial and Appeal Board. A former professor of molecular biology, immunology, and physiology at Tougaloo College, Dexter readily understands the complex technologies underlying his clients’ inventions, communicates well with scientists and inventors, and explains scientific concepts in clear and simple terms for corporate leaders, lay judges, and juries. 

When presented with a case, Dexter considers the technology at play, the patents involved, and the client’s goals and risk profile. He then helps determine the best approach to tackle the various aspects of the case. Poised and persuasive, Dexter is regarded as a natural litigator.  

Dexter has long been involved in ensuring that students from diverse backgrounds have the opportunity to succeed in the legal field. He is a co-creator of School of Fish, a free educational program for law students in underrepresented communities who may be interested in a career in intellectual property law, and serves as an instructor in the program each year.  

Before attending law school, Dexter earned his Ph.D. in microbiology from the University of Mississippi Medical Center. As a graduate student, he conducted research focused on identifying viral genes required for virion assembly. As a post-doctoral scholar at Washington University in St. Louis, Dexter conducted gene therapy studies with the aim of treating endometrial cancer and xerostomia using viral vectors. He likes that practicing law enables him to take innovations to the next level by helping clients preserve the value of their intellectual property and protect it from infringers. 

In his free time, Dexter enjoys reading sci-fi novels and going on hikes with his two young children. 

Experience

Fish secured a jury verdict of noninfringement of two patents and invalidity of a third patent for client Exela Pharma Sciences, avoiding an $89 million damages demand. The dispute centered around Exela’s Akovaz®, an ephedrine sulfate injection in a prefilled syringe, which is used during surgery to treat hypotension (low blood pressure) caused by anesthesia. Nexus Pharmaceuticals, Inc. v. Exela Pharma Sciences, LLC (D. Del.)

Fish filed a high-profile Hatch-Waxman lawsuit for client Exela Pharma Sciences against Eton Pharmaceuticals over its intent to produce a generic version of Exela’s patented Elcys® drug. Elcys® is the only FDA-approved cysteine hydrochloride injection on the market for use as an additive to amino acid solutions to meet the nutritional requirements of newborn infants requiring total parenteral nutrition (TPN). The Fish team successfully stopped the institution of three PGRs at the Patent Trial and Appeals Board. Then, following a March 2022 bench trial, the court found all of Exela’s asserted patent claims infringed and valid, and ordered FDA to withhold final approval of Eton’s ANDA until expiration of Exela’s patents. Exela Pharma Sciences, LLC v. Eton Pharmaceuticals, Inc., No 1:20-cv-365 (D. Del.) 

Fish obtained decisions denying institution of post-grant review on behalf of one of world’s leading hybrid corn seed providers. The decisions came in response to four PGR petitions filed by a competitor that sought to invalidate patents related to four of our client’s inbred corn varieties. 

Professional associations

  • Executive Board Member, Atlanta IP Inn of Court

Pro bono activities

Among his achievements, Dexter is most proud of his pro bono representation of an immigration detainee on appeal before the Eleventh Circuit in a sexual assault case against prison guards and the prison facility. Dexter now works on juvenile immigration matters in partnership with Kids in Need of Defense. He also serves as the pro bono coordinating attorney for the firm’s Atlanta office.