Search Team

Search by Last Name
A
B
C
D
E
F
G
H
I
J
K
L
M
N
O
P
Q
R
S
T
U
V
W
X
Y
Z
  • Overview
  • Experience
  • Insights
  • Recognition

About Dorothy

Dorothy Whelan is a Senior Principal in the Twin Cities office of Fish & Richardson P.C. and co-chair of the firm’s Post-Grant Practice Group. Under her co-leadership, Fish’s post-grant practice grew to become the most active at the Patent Trial and Appeal Board (PTAB) and was the first to appear in at least 1,000 proceedings. She was one of the earliest attorneys to appear before the PTAB at the birth of the practice in 2012 and has been among its most prolific and successful practitioners ever since, having been involved in numerous landmark post-grant matters.

Dorothy’s practice focuses primarily on post-grant proceedings at the PTAB, where she represents clients ranging from startups to Fortune 100 companies on both the petitioner and patent owner sides. She has broad technical expertise in the life sciences and chemicals industries, including the technological fields of pharmaceuticals, medical devices and materials, polymer processing, batteries, and fuel cells. Her practice also encompasses patent counseling, due diligence, and patent portfolio management for both budding entrepreneurs and established companies. When the patents at issue are the subject of co-pending litigation, Dorothy works closely with Fish’s litigation team to design and implement holistic strategies for success.

When clients come to Dorothy, she works with them to ensure that she understands their business objectives on a fundamental level and how their post-grant matter fits into the big picture. She develops strategies designed to help her clients meet their objectives by using post-grant matters to get them where they need to go. Clients trust her business-savvy approach and know that she will advise them on the overall best course of action for them, even if that means foregoing a post-grant matter.

Dorothy writes and speaks extensively on topics related to post-grant proceedings and is a recognized national thought leader in the field. She is a regular speaker at Fish’s Post-Grant for Practitioners webinar series and a prolific contributor to the wider body of post-grant scholarship. By staying plugged in to the latest developments in post-grant jurisprudence, she keeps her clients one step ahead of the frequent changes in post-grant practice.

Publications

Speaking Engagements

  • Ms. Whelan hosts and regularly speaks at the Post-Grant for Practitioners Webinar Series covering issues, statistics, strategy, and practice tips for those looking to learn the basics of these proceedings or gain an advanced understanding of the post-grant landscape.

Media Mentions

  • Coherus BioSciences v. AbbVie Biotechnology, IPR 2016-00172: Dorothy led post-grant strategy for the Fish team that won three much-heralded IPRs for Coherus BioSciences invalidating three patents in the blockbuster drug Humira® patent family. These were the first-ever IPR decisions that invalidated patents for AbbVie’s biologic, which was the highest-selling drug in 2016 with $16 billion in global sales. At the time, Humira accounted for over 60% of AbbVie’s sales. The Coherus case was the most closely watched life sciences IPR of the year, not only because there was so much at stake for the parties, but because of the broader implications for the entire biosimilar industry. Fish’s work is now a model for how other biosimilar patents can be successfully attacked and challenged.
  • I-MAK, v. Gilead Sciences, IPR 2018-00120, -00119, -0000103, -00122, -00121, -00125, -00126, 00123, -00211, -00390: Gilead hired Fish to thwart an attack by Initiative for Medicines, Access & Knowledge Inc. (I-MAK), the billionaire-backed nonprofit that sought to invalidate at the PTAB Gilead’s patents covering its hepatitis C drugs Sovaldi, Harvoni and related sofosbuvir-based drugs. I-MAK filed 10 inter partes review (IPR) petitions at the PTAB against seven Gilead Orange Book patents, and Dorothy and the Fish team (along with co-counsel at WilmerHale) successfully obtained denial of all 10 petitions. The IPRs were coordinated with other proceedings as part of a larger dispute that involved multiple U.S. federal court cases, hearings at the Opposition Division of the European Patent Office, and trials in Norway, the UK, Canada, Germany, and Australia.
  • Eton Pharmaceuticals v. Exela Pharma Sciences, PGR-00064, -00068, -00086: Fish filed a Hatch-Waxman lawsuit for client Exela Pharma Sciences in March 2020 in the District of Delaware against Eton Pharmaceuticals over its intent to produce a generic version of Exela’s patented ELCYS® (cysteine hydrochloride injection) drug. Eton responded by filing three post-grant reviews (PGRs) petitions on Exela’s ELCYS® patents in May, June, and September 2020 in an attempt to invalidate Exela’s patents in the district court litigation. Dorothy led the Fish team that successfully stopped the institution of the PGRs – a huge win for Exela – with the PTAB refusing to institute the post-grant reviews in November 2020, December 2020, and April 2021.
  • Named to The Best Lawyers in America (2022)
  • Finalist for “General Patent Litigator of the Year – Midwest,” LMG Life Sciences (2021)
  • Recognized as a notable practitioner in Intellectual Property, Chambers USA: Minnesota (2020-2021)
  • Named a “Life Science Star” by LMG Life Sciences (2017-2021)
  • Named a “Leading Patent Professional” and recommended for post-grant proceedings by IAM Patent 1000 (2012-2013, 2016-2021)
  • Named  to the “Top 50 Women in PTAB Trials” by the PTAB Bar Association (2019)
  • Named “Post Grant Proceedings Attorney of the Year” by LMG Life Sciences (2018)
  • Named “Attorney of the Year” by Minnesota Lawyer (2017-2018)
  • Named “Life Sciences MVP of the year” by Law360 (2017)
  • Named to the “Top 250 Women in IP” by Managing Intellectual Property (2016-2020)
  • Named to The Best Lawyers in America Minneapolis Patent Law Lawyer of the Year (2014, 2020)
  • Named a “IP Star” by Managing Intellectual Property (2013-2020)
  • Named to the “Top 250 Women in IP” by Euromoney (2013)
  • Named to The Best Lawyers in America Patent Law (2011, 2015-2016, 2019-2021)
  • Named a “Top Patent Prosecutor” by Patent Research Review/Patent Buddy (2011)
  • Received “Women in Business/Industry Leader Award” Minneapolis/St. Paul Business Journal (2010)
  • Named to The Best Lawyers in America– Intellectual Property (2007-2008, 2011, 2013-2014)
  • Named a Super Lawyer (2003, 2006-2013)
Focus Areas
Education

J.D. magna cum laude, Boston College Law School (1987) Member, Boston College Law Review


S.M., Polymers, Massachusetts Institute of Technology (1984)


B.S., Chemistry, Yale University (1981)

Admissions
  • U.S. Patent and Trademark Office 1989
  • Massachusetts 1987
  • Minnesota 1995

What's trending with Dorothy

Filter by
News
October 5, 2021
LMG Life Sciences Awards Top Rankings to Fish & Richardson; 13 Principals Named 2021 “Life Sciences Stars”
Press Release
News
News
September 23, 2021
Fish Named “Intellectual Property Boutique Firm of the Year” by LMG Life Sciences
Press Release
News
News
September 3, 2021
Life Sciences Entrepreneur Sourcebook | Intellectual Property: What It Is and Why You Should Care
Articles
News
August 19, 2021
Fish Attorneys Recognized in 2022 edition of The Best Lawyers in America
Recognition
News
News
July 7, 2021
Fish & Richardson Receives Top Rankings in 2021 Edition of IAM Patent 1000: The World’s Leading Patent Professionals
Recognition
News
Event
June 23rd, 2021 | 1:00 pm EDT
Post-Grant for Practitioners Webinar | After Arthrex: What the Supreme Court's Decision Means
Webinar
News
May 26, 2021
Fish & Richardson Ranks in Top “Band 1” Nationwide Rankings for Intellectual Property and ITC Practices in Chambers USA 2021
Press Release
Recognition
News
News
March 11, 2021
Legal Alert: Supreme Court Hears Oral Arguments in Arthrex
Legal Alerts
News
News
February 2, 2021
Fish & Richardson Releases 2020 Post-Grant Report
News
News
January 25, 2021
Fish & Richardson Named #1 PTAB Law Firm of 2020 by Managing Intellectual Property
Press Release
Recognition
News
Event
January 28th, 2021 | 2:00 pm EST
2021 PTAB Bar Association Thought Leader Summit
Speaking Engagement
Sponsorship
Event
January 14th, 2021 | 1:30 pm EST
Post-Grant for Practitioners Webinar | Post-Grant: 2020 Year in Review
Webinar
load more topics
TOP