VOL. 125 | NO. 28 | Thursday, February 11, 2010
Memphis Law Talk
Baker Donelson’s Garrison Appointed Co-Chair Of ABA IP Subcommittee
By Rebekah Hearn
Grady M. Garrison, of counsel at Baker, Donelson, Bearman, Caldwell & Berkowitz PC, recently was appointed to serve as co-chair of the Intellectual Property Litigation Subcommittee for the American Bar Association Litigation Section.
Garrison concentrates his practice in intellectual property and franchise law. He has experience in trademark, copyright, franchising, antitrust and trade regulation issues, as well as related licensing, litigation and transactional matters.
Garrison has represented large companies in breach of contract cases and infringement actions, and has authored and co-authored works on intellectual property law.
Recently, Garrison moderated an ABA IP Roundtable discussion focusing on the patentability of genes as the American Civil Liberties Union recently launched a legal challenge to several breast gene patents.
In late February, Garrison also will lead a session of The Brand Council, one of which he also held in November.
Garrison is a member of the Memphis, Tennessee, American and International bar associations, the Tennessee Intellectual Property Law Association and the Memphis Area Franchise Association.
He has been listed in The Best Lawyers in America, Mid-South Super Lawyers and Business Tennessee magazine’s 150 Best Lawyers, and worked as adjunct professor in franchise law.
Q: Your practice is a mix of transactional and litigation matters. Do you tend to do more transactional or litigation work? What is one of the most difficult aspects of litigating intellectual property law?
A: On a day-to-day basis, my practice is more concerned with transactional matters. When a major piece of litigation work comes along, such as the defense of a patent infringement suit, it requires virtually all of my time, and others have to take on the transactional work. This type of litigation often is highly contentious and expensive.
Q: What did you discuss at the ABA IP Roundtable discussion on gene patentability? What has led the American Civil Liberties Union to challenge breast gene patients in court?
A: The ACLU and the Public Patent Foundation, a not-for-profit organization, challenged the validity of patents on two human genes associated with breast and ovarian cancer as unconstitutional and invalid, claiming that the genes are products of nature and should not be patentable. They also claim that the patents impede the progress of scientific research in violation of Article 1, Section 8, Clause 8 of the U.S. Constitution, which authorizes Congress to “promote the progress of science.” The defendant argues that the patents do promote science by adding “to the general store of knowledge,” and the patent claims do not even cover human genes in the body, but cover isolated DNA molecules. Isolated DNA, the defendants have argued, are different in kind from human genes found in the body. The trial court observed that the suit raises difficult questions concerning constitutional protection for the information that serves as our genetic identities versus the need to adopt policies that promote scientific innovation in biomedical research.
Q: A lot of your work deals with the U.S. Food and Drug Administration. Are there any specific difficulties unique to dealing with litigation matters involving large federal agencies such as the FDA?
A: The litigation issues arise not with the FDA as such, but generally involve issues between competing companies or companies and inventors. For example, in a contest between Merck & Co. Inc. and Integra Life Sciences, the U.S. Supreme Court held that the safe harbor provisions of Section 271(e)(1) of the Federal Food, Drug and Cosmetic Act apply not just to research on compounds that actually make it to the FDA, but more broadly to compounds that the accused infringer (in this case, Merck) has a reasonable basis for pleading may work, and that, if successful, could be included in an FDA submission.
These provisions allow a company such as Merck to make limited use of another party’s patent without being liable for infringement.
Q: You represented an international logistics company in federal district court against a supplier of bar code scanning technology in a case that alleged breach of contract, among other charges. Can you discuss this case, and how you achieved the outcome you did?
A: The outcome of the case vindicated the company’s claim that its proprietary technology related to the scanning and dimensioning of packages on a massive scale had been misappropriated. In addition to having the necessary legal resources at our disposal, we recognized it was essential that we understand the technology inside and out to be able to communicate effectively with our client and challenge the experts on the other side.
Q: If you were not an attorney, what would be your second career choice?
A: I would probably be somewhere in the world of physics. I am interested in quantum theory, which shows how different the atomic and subatomic worlds can be from the world that we can see and experience on a daily basis. At the same time, I am fascinated by the ever-expanding field of astrophysics and in particular the images and data being received by the Hubble telescope.