John W. Bateman

Practices

Industries

Education and Clerkships

J.D., University of Virginia, 1990

B.A., Biology and History, University of Virginia, 1987, Echols Scholar

Admissions

District of Columbia

Virginia

U.S. Patent and Trademark Office

Court Admissions

United States Supreme Court

U.S. Court of Appeals for the Federal Circuit

U.S. District Court for the District of Columbia

U.S. District Court for the Eastern District of Virginia

U.S. District Court for the Western District of Virginia

Supreme Court of Virginia

Profile

John W. Bateman has more than 20 years of experience litigating patent disputes, including serving as lead counsel at trial and on appeal. John’s practice focuses on matters involving pharmaceuticals, medical devices, biotechnology products and agrochemicals, with a particular emphasis on representing generic companies in actions brought under the Hatch-Waxman Act.

John has represented a wide variety of generic pharmaceutical clients, including companies based in the United States, India, Europe, and Israel. In cases for clients that have gone to trial, John has obtained judgments that patents asserted against them were not infringed, invalid and/or unenforceable, clearing the way for them to bring their products to market. In other cases, John has helped develop strong positions on the merits at an early stage, including by initiating inter partes review proceedings, leading directly to the negotiation of favorable settlements.

John prides himself on working with clients to ascertain the goals they want to achieve from litigation and determine the important business considerations, and then shapes the litigation strategy accordingly. Because of John’s work ethic and dedication to his clients, he was recently named in Washington, D.C. Super Lawyers, Thomson Reuters, 2016.

Although John has focused on matters involving life sciences technology, he has litigated disputes involving a broad range of products, including GPS devices, plastic encapsulated integrated circuits, electrical connectors, egg sorting machines, gasoline pumps, and drapery hooks. John also has significant experience with patent jury trials, and has litigated patent cases in district courts throughout the country, particularly in Delaware and New Jersey.

John also has extensive knowledge regarding Section 337 investigations at the International Trade Commission. He has litigated a number of such cases, has served on the executive committee of the ITC Trial Lawyers Association, and for many years was a co-author of Unfair Competition and the ITC, a handbook on Section 337 practices and procedures.

John’s practice is not limited to litigation. He also renders opinions on infringement and validity issues regarding generic pharmaceutical products. His years of experience with Hatch-Waxman cases help him develop arguments that are more likely to prevail in litigation. He also prepares and prosecutes patent applications in various technologies, especially for individual inventors.

Selected Trial Experience

  • Cellectis S.A. v. Precision Biosciences Inc. (D. Del. 2013) (recombinant DNA technology)
  • Pfizer Inc. et al. v. Watson Pharmaceuticals, Inc. et al. (D. Del. 2012) (ANDA on transplant rejection drug)
  • Allergan, Inc. et al. v. Watson Laboratories, Inc.-Florida et al. (D. Del. 2011) (ANDA on overactive bladder drug)
  • Alza Corp. et al. v. Andrx Pharmaceuticals, LLC et al. (D. Del. 2007) (ANDA on ADHD drug)
  • Pfizer Inc. v. Synthon Holdings B.V. et al. (M.D.N.C. 2006) (ANDA on blood pressure drug)
  • FCI U.S.A. v. Hon Hai Precision Co. (N.D. Cal. 2004) (electrical connectors)
  • Novo Nordisk Pharmaceuticals, Inc. et al. v. Bio-Technology General Corp. and Teva Pharmaceuticals USA, Inc. (D. Del. 2003) (recombinant human growth hormone drug product)
  • Cordis Corp. et al. v. Boston Scientific Corp. et al. (D. Del. 2000) (stents)
  • Moba B.V. et al. v. Diamond Automation, Inc. (E.D. Pa. 2000) (egg sorting machines)
  • Texas Instruments Inc. v. Cypress Semiconductor Corp. et al. (N.D. Tex. 1995) (plastic encapsulated integrated circuits)
  • Certain Plastic Encapsulated Integrated Circuits (ITC 1991) (plastic encapsulated integrated circuits)

Selected Client Representations

  • Merck Sharpe & Dohme Corp. v. Savior Lifetec Corp. (E.D.N.C.) (pending case involving ANDA on ertapenem sodium drug product).
  • Sanofi-Aventis U.S. LLC et al. v. Breckenridge Pharmaceutical, Inc. (D.N.J.) (case involving ANDA on cabazitaxel drug product, which settled in 2017).
  • Astrazeneca AB et al. v. Breckenridge Pharmaceutical, Inc. (D.N.J.) (case involving ANDA on roflumilast drug product, which settled in 2017).
  • Otsuka Pharmaceutical Co., Ltd. v. Stason Pharmaceuticals Inc. and Breckenridge Pharmaceutical, Inc. (D.N.J.) (case involving ANDA on aripiprazole drug product, which settled in 2017).
  • Otsuka Pharmaceutical Co., Ltd. v. Prinston Pharmaceutical Inc. et al. (D.N.J.) (case involving ANDA on aripiprazole drug product, which settled in 2017).
  • Forest Laboratories Inc. et al. v. Ranbaxy Inc. et al. (D. Del.) and Ranbaxy Inc. et al. v. Adamas Pharmaceuticals, Inc. (PTAB) (case and IPR proceeding involving ANDA on extended release memantine hydrochloride drug product, which settled in 2015).
  • Forest Laboratories Inc. et al. v. Ranbaxy Inc. et al. (D. Del.) (case involving ANDA on milnacipran hydrochloride drug product, which settled in 2014).
  • Purdue Pharma L.P. v. Watson Laboratories, Inc.-Florida et al. (S.D.N.Y.) (case involving ANDAs on extended release, tamper-resistant oxycodone drug products, which settled in 2013).
  • Allergan, Inc. et al. v. Watson Laboratories, Inc.-Florida et al. (D. Del. and Fed. Cir.) (case involving ANDA on extended release trospium chloride drug product, with favorable 2012 district court and appellate decisions holding patents in suit invalid).
  • Janssen Pharmaceuticals, Inc. et al. v. Watson Laboratories, Inc. et al. (D.N.J.) (case involving ANDA on oral contraceptive, which settled in 2012).
  • Photocure ASA v. Kappos (E.D. Va. and Fed. Cir.) (case involving request for patent term extension for patent on Metvixia drug product, with favorable 2009 district court and 2010 appellate decisions holding patent entitled to term extension).
  • Duramed Pharmaceuticals Inc. v. Watson Pharmaceuticals Inc. et al. (D.N.J.) (case involving oral contraceptive, which settled in 2010).
  • Alza Corp. et al. v. Andrx Pharmaceuticals, LLC et al. (D. Del. and Fed. Cir.) (case involving ANDA on extended release methylphenidate hydrochloride drug product, with favorable 2009 district court and 2010 appellate decisions holding patents in suit not infringed and invalid).
  • Calmedica, LLC v. Best Vascular, Inc. (N.D. Ga.) (case involving brachytherapy medical device, with favorable 2008 claim construction ruling leading to plaintiff dropping case).
  • Novo Nordisk Pharmaceuticals, Inc. et al. v. Bio-Technology General Corp. and Teva Pharmaceuticals USA, Inc. (D. Del. and Fed. Cir.) (case involving human growth hormone drug product, with favorable 2004 district court and 2005 appellate decisions holding patent in suit invalid and unenforceable).
  • Cephalon Inc. v. Teva Pharmaceuticals USA, Inc. (D.N.J.) (case involving ANDA on modafinil drug product, which settled in 2005).
  • FCI U.S.A. v. Hon Hai Precision Co. (N.D. Cal.) (case involving electrical connectors, with favorable 2004 jury verdict awarding $8 million in damages).

Selected Appellate Work

  • Photocure ASA v. Kappos, 603 F.3d 1372 (Fed. Cir. 2010) (argued)
  • Novo Nordisk Pharmaceuticals, Inc. v. Bio-Technology General Corp.424 F.3d 1347 (Fed. Cir. 2005) (argued)
  • Moba B.V. v. Diamond Automation, Inc., 325 F.3d 1306 (Fed. Cir. 2003)
  • Novo Nordisk A/S v. Bio-Technology General Corp., 52 Fed. Appx. 142 (Fed. Cir. 2002)
  • Texas Instruments Inc. v. U.S. Int’l Trade Comm’n, 988 F.2d 1165 (Fed. Cir. 1993)

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