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Jeffrey_Freeman
Jeffrey A. Freeman
Partner
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  • 271 17th Street, NW
  • Suite 1400
  • Atlanta, GA 30363-6209
+1 404 653 6430
jeff.freeman@finnegan.com jeff.freeman@finnegan.com

Jeffrey A. Freeman

Partner

  • +1 404 653 6430 +1 404 653 6430
  • jeff.freeman@finnegan.com jeff.freeman@finnegan.com
  • 271 17th Street, NW
  • Suite 1400
  • Atlanta, GA 30363-6209
  • vCard
Jeffrey_Freeman

Jeffrey Freeman enjoys a diverse practice focused on patent litigation, prosecution, and client counseling work, with particular experience in Hatch-Waxman litigation. He has successfully represented clients in a broad range of technologies, including pharmaceuticals, chemicals, pulp and paper, plastics, oil and gas, cosmetics, inorganic materials, and food and beverage compositions.

Jeff's litigation practice includes U.S. district court litigation and appeals to the Federal Circuit, with extensive experience representing pharmaceutical patent holders in litigations arising under the Hatch-Waxman Act. He has argued multiple summary judgment motions, has served as trial counsel, has extensive brief writing and deposition experience, and has been involved in all aspects of litigation from fact and expert discovery, to claim construction, to settlement resolution.

Jeff's prosecution practice focuses on portfolio development and value maximization. He has extensive experience drafting applications and managing patent family and world-wide prosecution portfolio strategies. Jeff has also successfully argued multiple appeals at the USPTO's Patent Trial and Appeal Board (PTAB).

Jeff has a versatile counseling practice, aimed at providing clients with advice and analysis needed to make critical business decisions. His counseling experience includes due diligence, landscape, freedom-to-operate, and patentability opinions, as well as advice concerning potential enforceability and remedies.

Jeff's pro bono work includes successful representation of veterans in disability benefits cases at the U.S. Court of Appeals, Veterans Claims.

Experience

Pronova Biopharma Norge AS v. Teva Pharmaceuticals USA, Inc.

Represented Pronova in Hatch-Waxman patent litigation concerning multiple ANDAs for generic versions of drug Lovaza®, resulting in judgment of patent infringement, validity, and enforceability in Pronova's favor.

1:09-cv-00286, 1:10-cv-00800, D. Del., Judges Farnan, Robinson, Thynge
12-1498, -1499, Fed. Cir., Judges Dyk, O'Malley, Wallach

Otsuka Pharmaceutical Co., Ltd. v. Sandoz, Inc.

Represented Otsuka Pharmaceuticals, Inc. in Hatch-Waxman litigations against seven companies seeking FDA approval to market generic copies of Abilify®, which had 2011 sales of over $5.2 billion. The district court found the asserted patent claims valid, enforceable and infringed in November 2010, and enjoined marketing of any generic until April 2015. The Federal Circuit affirmed that holding in May 2012, with Supreme Court Cert subsequently denied. 

3:07-cv-01000, D.N.J., Judges Cooper, Goodman, Hughes
11-1126, -1127, Fed. Cir., Judges Lourie, Moore, Reyna

Nissei ASB Co., et al. v. R&D Tool & Engineering Co.

Successfully represented Nissei ASB in a patent infringement, breach of contract, tortious interference with business relations, and trade secret misappropriation litigation related to blow mold machines used to manufacture containers for consumer product packaging.

4:19-cv-00042, W.D. Mo., Judge Kays

Eli Lilly and Company v. Actavis Labs. UT Inc.

Represented Eli Lilly in Hatch-Waxman action against several defendants relating to Cialis®.

1:16-cv-01119, E.D. Va., Judges Nachmanoff, Trenga

Otsuka Pharmaceutical Co., Ltd. v. Apotex Corp.

Counsel for Otsuka in Hatch-Waxman cases involving 24 companies seeking to market generic copies of Abilify® following expiration of compound patent covering active ingredient in Abilify®.  Only one case still pending following confidential resolutions of all other matters.

1:14-cv-01078, -04671, -02982, -07405, -05878, -06398 -08074 -03306, -06890, -05876, -08077, -03168, -07252, -07105 -05537, -03996, -06158, -04508, -04307, -06397, -07106, -01979, -03445; 1:15-cv-0161, -07584, -01585, -07803, -08830, -05109, -07802, -08955, -01716, -01967, -06353, -08305; 1:16-cv-05288, -05400, -05949, -07705 -02475, -02476, -08284, -05743, -00086, -08085, -00555, -00557, -07346, -06067, -00405, -00424, -05688, -09603; 1:17-cv-02754, -00392, D.N.J., Judges Simandle, Williams

Delavau, LLC, v. J.M. Huber Corporation

Represented Huber in district court litigation concerning patents covering calcium carbonate supplement technology.

2:12-cv-05378, D.N.J., Judges Dickson, Hammer, Mannion, Salas, Waldor

More

Insights

Prosecution First Blog

Teaching Away May Preclude Motivation to Modify a Reference Teaching Away May Preclude Motivation to Modify a Reference

September 3, 2021

At the PTAB Blog

CAFC Clarifies Proving “Nexus” for Objective Indicia in a Design Patent Case CAFC Clarifies Proving “Nexus” for Objective Indicia in a Design Patent Case

August 26, 2021

Prosecution First Blog

Blocking Patents: A Patent Cannot Block Itself Blocking Patents: A Patent Cannot Block Itself

August 20, 2021

Prosecution First Blog

Objective Indicia: Nexus Analysis May Require Evaluation of Claims as a “Unique Combination” Objective Indicia: Nexus Analysis May Require Evaluation of Claims as a “Unique Combination”

August 13, 2021

Conference

Corporate IP Institute 2019 Corporate IP Institute 2019

October 29-30, 2019

Atlanta

Conference

Southeastern Regional Meeting of the American Chemical Society

Southeastern Regional Meeting of the American Chemical Society Southeastern Regional Meeting of the American Chemical Society

October 31-November 3, 2018

Augusta

More

News

Press Release

Finnegan Announces Seven New Partners Finnegan Announces Seven New Partners

January 28, 2016

Press Release

Pronova Prevails in U.S. Lovaza® Patent Litigation Pronova Prevails in U.S. Lovaza® Patent Litigation

May 29, 2012

Professional Activities

  • American Bar Association
  • State Bar of Georgia
    (Sections on Intellectual Property and Technology-present)
Admissions and Education

Admissions

  • Georgia
  • U.S. District Court, N.D. Georgia
  • U.S. Court of Appeals, Federal Circuit
  • U.S. Court of Appeals, Veterans Claims
  • U.S. Patent and Trademark Office

Education

University of Georgia School of Law
J.D., cum laude, 2005
Georgia Institute of Technology
B.S., Chemical Engineering, with honors, 2002

Jeffrey's Practices

Patent Litigation
Appeals
Branded Hatch-Waxman (ANDA)
Patent Trial
Patent Office Examinations
Appeals to the PTAB
Prosecution
Patent Portfolio Management, Monetization, and Transactions
Due Diligence
Opinions and Counseling
Portfolio Management

Jeffrey's Industries

Chemicals, Industrials, and Materials
Chemical
Textiles
Consumer Goods and Services
Consumer Products
Energy
Clean Energy and Renewables
Oil and Gas
Life Sciences
Pharmaceutical

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