Alicia A. Russo

Partner
Russo Alicia
Alicia Russo is co-chair of Venable’s Intellectual Property Transactions Group. Alicia has significant experience in IP due diligence and licensing associated with high-profile acquisitions. She has represented clients in complex patent litigation and contested proceedings before the United States Patent and Trademark Office (USPTO), and has secured patents for clients in numerous technical fields. She focuses on biologics and small-molecule pharmaceuticals, informed by her prior work in medical research. Alicia also advises clients on matters related to energy, fiber technology, building materials, biotechnology, and bioinformatics.

In addition, Alicia leverages her understanding of global IP considerations to assist international clients with issues such as foreign patent litigation, oppositions, invalidation proceedings, and patent prosecution. 

Having spent more than a decade conducting academic medical research, Alicia has a passion for the field and brings a deep understanding to her clients’ technical matters. She has authored numerous articles in noteworthy scientific journals, including Science, Nature, Cell, and Proceedings of the National Academy of Sciences, some of which have been featured on the covers of Nature and Cell. She is also extensively published in the legal field.

 

Experience

Representative Matters

  • Represented Gilead in a licensing deal with Scholar Rock, Inc., relating to inhibitors of TGF-β for treating fibrotic diseases, a deal valued at 1.5 billion
  • Represented Gilead in a licensing and collaboration deal with HiFi Bio, relating to the development of T cell receptors
  • Represented Gilead in a development and commercialization deal with Tango Therapeutics, relating to the use of CRISPR-based technology to identify immuno-oncology drug candidates, a deal valued at 1.7 billion
  • Represented Gilead against the University of Minnesota in multiple inter partes reexamination proceedings before the USPTO relating to patents directed to nucleoside inhibitors 
  • Represented Amgen against Complex Innovations in an inter partes reexamination proceeding before the USPTO on patents covering pharmaceutical formulations comprising cinacalcet, the active ingredient in Sensipar® for treating hyperparathyroid and carcinoma conditions  
  • Represented Gilead in its acquisition of Nimbus Apollo Inc. and its acetyl-CoA carboxylase (ACC) inhibitor program, a deal valued at $1.2 billion 
  • Represented Gilead against Idenix in two interferences involving nucleoside analogs useful for treating HCV infection 
  • Represented Gilead in its $11 billion acquisition of Pharmasset’s anti-HCV nucleotide, sofosbuvir, which is included in Gilead’s Sovaldi®, Harvoni®, and Epclusa® products
  • Represented Amgen and Brigham & Women's Hospital against Teva and Barr in litigation on patents covering the calcimimetic Sensipar® for treating hyperparathyroid and carcinoma conditions

Representative Clients

  • Gilead
  • Kite Pharma
  • Amgen
  • Karyopharm Therapeutics
  • Otsuka Pharmaceutical
  • Sanofi-Aventis
  • Lenzing

Insights

Credentials
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Education

  • J.D. Fordham University 2000
  • M.S. Biomedical Sciences Hood College 1989
  • B.S. Biology and Chemistry Mount Saint Mary's College 1986

Bar Admissions

  • New York
  • U.S. Patent and Trademark Office

Court Admissions

  • U.S. District Court for the Southern District of New York
  • U.S. Court of Appeals for the Federal Circuit

Professional Memberships and Activities

  • Member, Board of the New York Intellectual Property Law Association (NYIPLA)
  • Board Liaison, NYIPLA Media Committee
  • Member, NYIPLA Amicus Committee – drafting amicus briefs for patent cases on appeal to the Federal Circuit and Supreme Court
  • Member, American Intellectual Property Law Association (AIPLA)
  • Member, AIPLA Women in IP Committee

Recognition
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  • Selected as a Top New York City Intellectual Property Litigator, Super Lawyers: New York Metro Edition, 2013 - 2019
  • Named to The World's Leading Patent Practitioners, IAM 1000, 2018 - 2019
  • Recognized as an IP Star, Managing Intellectual Property, 2018 - 2019
  • Listed in Legal 500, Patent – Prosecution, 2017 
  • Named a leading attorney, LMG Life Sciences, 2016 - 2018 

Community
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Volunteerism

  • Member, National Institute of Trial Advocacy faculty for New York Law School programs