Jerry D. Voight

Senior Counsel

Jerry Voight has over 40 years of experience in all aspects of patent law practice, including infringement litigation and patent interferences for domestic and international clients. From the inception of his career, Mr. Voight has been extensively involved in inter partes proceedings, and his practice has dealt with a variety of technologies, including pharmaceutical chemistry and biotechnology.

He has a wide range of experience in patent infringement suits and also has argued several cases before the U.S. Court of Appeals for the Federal Circuit. He currently focuses his practice on patent interferences and has been lead counsel in over 100 interferences.

In addition to his practice, he has frequently lectured on patent litigation, licensing, and interference topics before various bar groups and has published a substantial number of papers on patent law topics. Mr. Voight has been a regular instructor for the Patent Resources Group, where he has taught courses in chemical patent litigation, licensing, and particularly, patent interference practice.

Highlights

• Represented PPG Industries successfully as lead counsel in a patent interference directed to coatings used on automobiles in one of the rare instances in which the Board of Patent Appeals and Interferences conducted a trial where live witnesses were called before the Board (Singer v. Rehfuss, 59 U.S.P.Q. 2d 1190 (BPAI 1998)).
• Succeeded in an interference on behalf of Asahi Kasei by obtaining priority benefit of an earlier Japanese application in which the inventive entity was different from the involved U.S. application by convincing the Board that prior contrary authority was “outdated” (Reitz v. Inoue, 39 U.S.P.Q. 2d 1838 (BPAI 1996)).
• Lead counsel in Vehar v. Toole on behalf of Wyeth against Genentech; the successful result achieved allowed Wyeth to secure patent right to a protein known as B domain deleted Factor VIII, useful to treat hemophelia.
• Lead counsel in Zee-Cheng v. Murdock, where success was achieved in securing patent rights to a commercial anticancer drug known as Novantrone.
• Succeeded as lead counsel in securing patent rights for Agilent in an interference directed to a device used in mass spectrography.
• Successfully represented Cardiac Resuscitator Corp. as lead counsel before the Court of Appeals for the Federal Circuit; achieved a reversal and remand of a finding of infringement by the lower court (ZMI Corp. v. Cardiac Resuscitator Corp., 844 F.2d 1576 (Fed. Cir. 1988)) followed by a subsequent affirmance by the Federal Circuit of the lower Court’s holding on remand of no infringement (ZMI corp. v. Cardiac Resuscitator Corp., 15 U.S.P.Q. 2d 1398 (Fed. Cir. 1990)).
• Represented Goodyear Tire & Rubber Co. as lead counsel in an action under 35 U.S.C. § 146, in which a remand to the Board of Appeals and Interferences was achieved, followed by an opinion by the Board in Goodyear’s favor. Case v. Goodyear Tire & Rubber Co., 223 U.S.P.Q. 120 (D. Mass. 1983).
• Lead counsel for Otsuka Pharmaceuticals against Boehringer Mannheim in an interference directed to antihistamine compounds; Otsuka received an award of priority to all patentable claims. Winter v. Banno, 229 U.S.P.Q. 212 (BPAI).
• In an interference captioned Gorback v. Kelly, Mr. Voight was lead counsel for Novagen Research of Australia against Tufts College, and successfully obtained an award of priority against Tufts with regard to a method of treating or ameliorating the symptoms of menopause or PMS by administering isoflavones.
• Obtained a judgment as lead counsel for Elan Pharmaceuticals against Paradissis in an interference directed to controlled-release pharmaceutical formulations for once-per-day administration.

Professional Recognition

• Selected by his peers for inclusion in The Best Lawyers in America, 2005-2012.
• Elected Chairman of the PTC Section of the Bar Association of District of Columbia, 1980-81.
• Selected by the D.C. Court of Appeals for the Unauthorized Practice Committee, 1986-91.
• Appointed Chairman of the ABA, IPL Section, Committees on: Ethics, 1982-85, 1987-88; Inequitable Conduct and Antitrust Matters, 1985-87; Continuing Legal Education, 1989-90; Judiciary, 1995-96; and Interferences, 1996-02; Counsel, IPL Section, 1990-94.

Professional Activities

• Bar Association of the District of Columbia
• District of Columbia Bar
• American Bar Association
• American Intellectual Property Law Association

Select Publications

• Coauthor. "Interference Practice," PRG Course Book, 2006.
• "Arguing Before the Board of Patent Appeals and Interferences: Strategies for Success," IP Litigator, Sept./Oct. 2003.
• "The U.S. Patent Interference: A Proceeding of Growing Interest to Multinational Companies," Managing Intellectual Property, March/April 1996.
• "Declaratory Judgment Actions in Patent Cases Where There Has Been No Act of Infringement," Journal of the Patent and Trademark Office Society, Dec. 1990.
• Coauthor. "Patent Interferences in the United States," Patent Management, 1987.
• Coauthor. "The Scope of Discovery in Patent Interferences," Journal of the Patent and Trademark Office Society, 1980.