About Lance A. Soderstrom

Lance A. Soderstrom is the co-chair of Katten's Patent Litigation practice. Over his career, Lance has litigated hundreds of patents relating to a range of technologies, from pharmaceutical compounds to medical devices to computer software programs. He has significant experience advocating at claim construction hearings, discovery disputes and at trial and has litigated cases in the Southern and Eastern Districts of New York, Northern and Southern Districts of California and district courts of Illinois, New Jersey, Delaware, Florida and Texas.

Litigation and regulatory counsel

Lance has substantial experience in the drug approval process, including the development of patent strategies to assist clients in marketing drug products and evaluating competitive patents. He is also often asked to provide intellectual property advice to multinational corporate clients in better leveraging existing and newly constituted IP portfolios.

Lance brings a decade of experience and a list of successes to future representations. Clients seek him out for his expertise in the pharmaceutical industry and patent litigation generally. Lance has earned successful results in Hatch-Waxman cases involving treatments for acne, pre-colonoscopy cleansing, ulcerative colitis and Type 2 diabetes, among others. Outside of the Hatch-Waxman space, he has obtained victories in patent infringement, copyright infringement and false advertising cases related to call-recording technology, online career services, prenatal folates and other innovations.

Lance has served as a guest lecturer at the University of Michigan's College of Engineering, lecturing on technology innovation, Hatch-Waxman litigations, personalized medicine and regulation. He has also lectured at Columbia Business School on topics including patent, trademark, copyright and trade secret protections.

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“Lance is an excellent patent litigator. His work is always of the highest quality, he is very responsive and is a pleasure to work with.”

IAM Patent 1000 2023
(Patent Litigation) survey response

Practice Focus

  • Resolving patent disputes in federal court
  • Hatch-Waxman and biosimilars litigation
  • Medical device and healthcare litigation and counseling

Representative Experience

  • Lead trial counsel for some of the world's largest generic pharmaceutical companies in several Hatch-Waxman litigations throughout the country.
  • Counsel for a global provider of blood and plasma supplies and services, including patent portfolio development and strategy.
  • Counsel for a world leader in voice software, and specifically voice capture for leading organizations across financial, contact center, government and public safety sectors. We have served as lead trial counsel in litigation and also provide patent development support and strategy.
  • Counsel for one of the world’s largest career service providers linking job seekers to employers and vice versa. We have served as lead trial counsel in multiple litigations and routinely handle cross-border transactional IP and corporate matters.
  • Counsel for not-for-profit multi-type library consortium on all legal matters, including licensing, contracting, and IP protection.
  • Lead trial counsel for Mylan in infringement dispute regarding multiple patents for topical foam acne treatment Evoclin®. Defendant Glenmark Pharmaceuticals filed antitrust counterclaims in response. Successfully dismissed all such counterclaims.
  • Lead trial counsel in the US District Court for the District of Delaware involving multiple patents associated with pre-colonoscopy cleansing using sodium picosulfate, magnesium oxide and anhydrous citric acid. Obtained Judgment of Non-infringement on both asserted Orange Book patents and attorneys’ fees with respect to a third patent.
  • Co-counsel in US District Court for New Jersey involving multiple patents directed to a dipeptidyl peptidase-4 inhibitor and its use for treatment of Type II diabetes. Obtained favorable judgment at the district court level followed by an affirmance of invalidity of two patents as lead counsel on appeal.
  • Lead trial counsel for one of the world's largest fresh produce distributors in a plant patent litigation in the US District Court for the Southern District of Florida. Obtained an apology from plaintiff for bringing the suit in the first place and a dismissal of all claims brought against our client. Also obtained acknowledgment that our client had an unrestricted right to practice the invention claimed in the plant patent all along.
  • Lead trial counsel in the District of Delaware involving a patent associated with the treatment of the pain of osteoarthritis of the knees. Obtained summary judgment that our client had a license to the asserted patent within six months of the complaint being filed.
  • Lead trial counsel in the US District Court for the District of Delaware involving a patent related to chronic lymphocytic leukemia using bendamustine. Obtained non-infringement judgment after trial before the district court.
  • Lead trial counsel in US District Court for the District of Delaware involving patent that purports to be related to treatment of deep vein thrombosis using rivaroxaban.
  • Lead trial counsel in US District Court for the District of Delaware involving multiple patents associated with treatment of early-stage idiopathic Parkinson’s disease and moderate-to-severe restless legs syndrome using rotigotine.
  • Lead trial counsel for one of the world's largest fresh produce distributors in a breach of contract, trade dress infringement and fraud on a US Patent and Trademark Office case in the US District Court for the Central District of California. Obtained a favorable settlement, with defendant assigning the US Registration and EU Registration for the mark MANGO PRO to our client.
  • Lead trial counsel in US District Court for the District of Delaware involving multiple patents associated with treatment of irritable bowel syndrome with constipation, and chronic idiopathic constipation using linaclotide.
  • Lead trial counsel in US District Court for the District of Delaware involving multiple patents associated with the treatment of major depressive disorder using vortioxetine hydrobromide.
  • Lead trial counsel in US District Court for the District of Delaware involving a patent associated with the treatment of HIV-1 infection in adults and pediatric patients weighing at least 40 kg using dolutegravir or abacavir, dolutegravir and lamivudine.
  • Counseled leading online provider of employment-related services in a patent infringement action in the US District Court for the Southern District of California.  *
  • Counsel for leading producer of pharmaceutical and dietary ingredients in false advertising litigations in the US District Court for the Southern District of New York and the US Court of Appeals for the Second Circuit. *
* Experience prior to Katten

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Presentations and Events

Practices
Education
  • University of Michigan Law School, JD
  • University of Michigan, MS, Pharmaceutical Engineering
  • University of Michigan, BSE
Bar Admissions
  • New York
Recognitions
Recognized or listed in the following:
  • ANDA Litigation Intelligence Report
    Best Performing ANDA Attorneys Overall (Representing Plaintiffs or Defendants), 2020–2021, 2023
    Best Performing ANDA Attorneys Representing Defendants, 2020-2021; Top 20, 2023
    Most Active ANDA Attorneys Overall (Representing Plaintiffs and Defendants), Top 100, 2020–2022; Top 10, 2023
    Most Active ANDA Attorneys Representing Defendants, Top 100, 2020–2021; Top 5, 2022; Top 1, 2023
  • IAM Patent 1000
    Bronze – Individual: Litigation, New York, 2022–2023
  • Managing Intellectual Property
    IP Star - Patent, 2022–2023
Award Methodologies