Partner
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 for Veterans Claims. He is listed on the Capital Pro Bono Honor Roll.
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
Bial - Portela & CA S.A. v. Alkem Laboratories Ltd et al.
Representing Bial in district court Hatch-Waxman litigation involving the anti-epileptic drug Aptiom®.
1:18-cv-00304, D. Del., Judges Connolly, Burke
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.
1:16-cv-01119, E.D. Va., Judges Nachmanoff, Trenga
Otsuka Pharmaceutical Co., Ltd. v. Apotex Corp.
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
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
Southeastern Regional Meeting of the American Chemical Society Southeastern Regional Meeting of the American Chemical Society
October 31-November 3, 2018
Augusta
Press Release
46 Finnegan Attorneys Named to 2021 Capital Pro Bono Honor Roll 46 Finnegan Attorneys Named to 2021 Capital Pro Bono Honor Roll
June 3, 2022
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
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