In-house Counsel File: John L. Dauer, Jr., Sun Pharmaceutical Industries, Inc. | Practical Law

In-house Counsel File: John L. Dauer, Jr., Sun Pharmaceutical Industries, Inc. | Practical Law

A profile of John L. Dauer, Jr., Chief Patent Counsel at Sun Pharmaceutical Industries, Inc.

In-house Counsel File: John L. Dauer, Jr., Sun Pharmaceutical Industries, Inc.

by Practical Law Litigation
Published on 15 Nov 2014USA (National/Federal)
A profile of John L. Dauer, Jr., Chief Patent Counsel at Sun Pharmaceutical Industries, Inc.
Education: 1994: J.D., St. John's University School of Law; 1988: B.S. (Mechanical Engineering), Bucknell University.
Career in Brief: 2009–present: Chief Patent Counsel, Sun Pharmaceutical Industries, Inc.; 2006–2008: Counsel, Day Pitney LLP; 2003–2006: Counsel, Brown Raysman Millstein Felder & Steiner LLP; 1999–2003: Senior Associate, Skadden, Arps, Slate, Meagher & Flom LLP; 1996–1999: Associate, Weil, Gotshal & Manges LLP; 1988–1996: Kane, Dalsimer, Sullivan, Kurucz, Levy, Eisele & Richard, LLP (1994–1996: Associate; 1988–1994: Legal Assistant/Law Clerk).
Location of Company HQ: Sun Pharmaceutical Industries, Inc. is a US entity of Sun Pharmaceutical Industries, Ltd., which is headquartered in Mumbai, India.
Primary Industry Sector: Pharmaceuticals.
Revenues in the Last Financial Year: For the year ending March 2014, overall revenues were $2.7 billion.
Number of Employees Worldwide: Over 10,000.
What is the total number of attorneys in the company worldwide, and how many focus on patent litigation? There are over 15 attorneys worldwide and more than ten non-attorney Intellectual Property (IP) Professionals. Two of the attorneys and all of the IP Professionals focus on patent litigation management and strategies.
Where does patent litigation fall within the organizational structure? The patent litigation attorneys and IP Professionals are located in a department that is separate from the legal department, which reports to the Business Development group in Mumbai.
How typical or unique is the scope of responsibilities for the company's patent litigation attorneys? The patent litigation team manages and handles Hatch-Waxman or Paragraph IV patent infringement litigations and evaluates different pathways for the development of generic pharmaceutical products. In some cases, the company may challenge patents and, in others, it may take a regulatory route that avoids a patent challenge.
What is keeping your department's attorneys the busiest at the moment? The business model of generic pharmaceuticals can involve patent challenges that often result in litigations that need to be managed. The litigations are not unexpected and are part of the everyday business of many generic pharmaceutical manufacturers. As a result, the patent litigation team spends all of its time developing and implementing litigation strategies. The legal department is responsible for all other legal matters, including the negotiation of settlement and license agreements.
Have any recent legal developments changed the way your department operates? The law concerning Hatch-Waxman patent litigation is always evolving. For example, many recent US Supreme Court decisions have involved pharmaceutical patents and related FDA issues, including Caraco Pharmaceutical Laboratories, Ltd. v. Novo Nordisk A/S, FTC v. Actavis, Inc. and Pliva, Inc. v. Mensing.
What types of issues will cause you to turn to outside counsel? Certain matters (for example, litigations) are always referred to outside counsel, while others (for example, agreements and counseling) are handled by our legal department. However, if a matter involves complex legal questions requiring specialized knowledge, or the size of a transaction is large, then the legal department will consider hiring outside counsel.
What types of issues will cause you to push for alternative fee arrangements with outside counsel? Alternative fee arrangements are great for a litigation where everyone recognizes a big potential upside but cannot clearly define the chances of success. That is not always true of Hatch-Waxman patent infringement litigation because a business operating one way at the start of the case may change significantly by the end, which usually causes the company to alter its litigation strategy.
What three things does a law firm need to do to impress you? First, communicate with us regularly and effectively, and always be prepared. Second, get to know our business and partner with us on each matter. This includes looking to us before spending money on services or information that we can provide. Finally, I expect to discuss and collaborate with outside counsel on selecting and implementing legal strategies, so they must have expertise in the relevant legal areas, such as Hatch-Waxman. Otherwise, these conversations will be difficult, if not impossible, to have.
Can you describe the career path that led you to become an in-house litigation counsel? After working at several law firms ranging in size, I became attracted to working in-house at a company because it would allow me to work more closely with clients on a daily basis to grow the business. In-house counsel focus on helping the company business teams achieve goals and are part of the daily conversation regarding the progress towards those goals, rather than concentrating on only a single area of legal expertise.
If not an attorney, what would you wish to be? A farmer, a forester or any other job that would allow me to work outdoors in the fresh air.
What one piece of advice would you give to prospective in-house litigation counsel? To be an effective in-house litigation counsel, you must be able to quickly assimilate lots of information and then explain the key points in a clear, concise and non-technical manner to enable management to make informed litigation decisions.