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The Art of Protecting Drug Patents

William Scarff Jr. concentrates on protecting the driving force in the drug industry: patents on major medications.

“What we do is an art, not a science,” said Scarff, who is vice president, associate general counsel, and chief litigation counsel for Irvine-based drugmaker Allergan Inc.

He was one of five lawyers honored Sept. 23 at the Business Journal’s fifth annual General Counsel Awards ceremony at Hotel Irvine (see related stories on pages 1, 4, 5 and 6).

Scarff received the Outstanding Contribution to a Public Company award for his work on several well-watched cases involving some of Allergan’s core products, including its flagship Botox neurotoxin.

Merz

He “patiently and skillfully” led an effort that ended with a federal court enjoining a unit of Germany-based Merz Pharma GMBH from launching Xeomin, a competitor to Botox, for nine months in 2012.

The injunction came about two years after Allergan sued Merz, its U.S. units, and a number of former Allergan sales representatives.

Allergan alleged that Merz hired some of its representatives, who brought along confidential materials, including sales figures and customer lists. The hires came as Merz prepared to sell Xeomin for certain types of muscle spasms, according to Allergan.

Scarff also led teams that litigated patent cases covering Allergan drugs that account for more than $1 billion in revenue per year. The cases covered a quartet of its core glaucoma medications: Combigan, Alphagan-P, Lumigan, and Lumigan X.

“This is a great recognition—it’s something that made me feel good,” Scarff said about receiving the honor.

He said the award validates the “team approach” Allergan takes when it comes to litigating patent cases, an approach that includes working with fellow attorneys, “business leaders” within the drugmaker, and its scientists.

Scarff was quick to credit fellow team members for their work on Allergan’s intellectual property cases, including “our paralegals, our eDiscovery manager, and our other litigation attorney, Don Bunnin.”

Outside lawyers had praise for Scarff’s performance.

“In my nearly 33 years of practice, I have met few in-house lawyers who have a level of legal knowledge, skills and abilities that rival Bill’s,” Stephen Berry, a partner in the Costa Mesa office of Paul Hastings LLP, said in a recommendation letter for the award.

“When an outside lawyer handles a litigation matter for Allergan, Bill becomes a true partner on the case,” Berry wrote.

Scarff emphasized that Allergan’s philosophy of general counsel matters was nurtured by President Douglas Ingram, who previously served as the company’s general counsel, and Arnold Pinkston, the company’s current executive vice president, general counsel.

“In terms of sheer dollar value, it is Bill’s efforts in defending Allergan’s patents that stand out from almost anything I have seen in my career,” Pinkston said in a recommendation letter for Scarff’s nomination.

“Along with Deb Condino, Allergan’s chief patent counsel, Bill has had an almost perfect record in defending exclusivity for Allergan,” Pinkston wrote.

Scarff during the awards ceremony also gave credit to his wife, Maureen, and his four teenage children, saying they were helping him with “a challenge that I’m facing now.”

Berry alluded to the challenge in his nomination letter, calling Scarff a “cancer survivor and fighter” and noting that Scarff is a “strong supporter of and participant in the Susan B. Komen Race for the Cure.”

Legacy

Scarff also discussed what he hoped his legacy would be at Allergan.

“I hope it [shows] how much I care for the company, its products, and what we do with patients. We improve the lives of patients—that’s the whole end game.”

Scarff is active in the local legal community besides his duties at Allergan. He served on the board of directors of the Constitutional Rights Foundation of Orange County from 2001 to 2010 and was its president in 2006 and 2007. He also served as co-chair of a number of committees in the American Bar Association’s litigation section.

He supports the Collaborative Courts Foundation, which provides specialized legal services for at-risk populations and works with the Allergan Foundation, serving on its grant review committee.

Scarff, an Ohio native, holds degrees from Ohio State University and the University of Southern California.

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