As a partner in the Intellectual Property practice group, Jeff focuses his work on patent litigation and strategic counseling related to pharmaceutical, chemical, biotechnology, electrical engineering, agricultural and food products. A registered patent attorney with nearly four decades of experience, Jeff has successfully represented both patent owners and patent challengers through all stages of federal litigation and appeals.
A significant portion of Jeff’s practice includes advising pharmaceutical clients regarding preinitiation evaluation of product candidates and formulation and implementation of both patent challenge and defense strategies. He has also handled all aspects of pharmaceutical patent infringement cases concerning the Hatch-Waxman Act since shortly after the Act’s passage, litigating disputes in various federal courts throughout the United States and the International Trade Commission. He has served as lead counsel in both bench and jury trials and has extensive experience leading numerous patent appeals, including arguing before the U.S. Court of Appeals for the Federal Circuit.
Jeff also serves as an advisor to clients regarding both patent prosecution and patent opinion matters. Specifically, Jeff has provided patent prosecution advice related to pharmaceutical formulation and polymorph patent applications, and he has drafted both invalidity and non-infringement opinions pertaining to pharmaceutical products and processes, as well as products in other technology areas.
Jeff is well versed in advising clients regarding Orange Book certification and listing strategies. He has represented pharmaceutical companies and API manufacturers regarding 505(b)(2) and ANDA submissions on a wide variety of products. Jeff also has experience in trade secret matters, including those involving pharmaceutical products and processes and has served as lead counsel in cases brought pursuant to the Defend Trade Secrets Act.
Jeff is a trusted advisor, supporting his clients’ business objectives by providing proactive and strategic advice at the intersection of science and law.
Before joining NGE, Jeff was a partner at Green, Griffith & Borg-Breen, and Merchant & Gould.
- InfoRLife SA and WG Critical Care, LLC v. Hikma Pharmaceuticals USA, Inc. – Counsel for Hikma in Hatch-Waxman litigation concerning Hikma’s Abbreviated New Drug Application for midazolam 0.9% sodium chloride (50 mg/50 ml and 100mg/100 ml) solution, for intravenous use.
- Lead counsel for a 503(B) sterile compounding company in trade secret litigation relating to vasopressin for injection in U.S. District Court of the District of New Jersey. The litigation was successfully settled.
- Co-lead counsel for a pharmaceutical company that was sued for patent infringement relating to an oral testosterone product in U.S. District Court for the District of Delaware. Led summary judgment briefing and argument regarding a summary judgment motion of invalidity for lack of written description, which was granted by the court. After the client prevailed on summary judgment, the litigation was successfully settled.
- Lead counsel for a pharmaceutical company in two Hatch-Waxman litigations relating to linagliptin tablets. Prevailed after trial in the action brought in U.S. District Court for the District of New Jersey. Both litigations were later successfully settled.
- Lead counsel for a farm equipment company that was the patentee in a patent infringement action relating to windrow mergers. Prevailed with respect to validity and infringement after a jury trial in U.S. District Court for the Western District of Wisconsin, and obtained a permanent injunction. The case later settled favorably for the patentee.
- Lead counsel for pharmaceutical companies in Hatch-Waxman litigations involving the following products:
- Nicardipine for injection
- Linagliptin tablets
- Caspofungin for injection
- Tigecycline for injection
- Bivalirudin for injection
- Paricalcitol for injection
- Zoledronic acid for injection
- Argatroban for injection
- Acetaminophen IV
- Acetylcysteine IV
- Rosuvastatin calcium tablets
- Repaglinide tablets
- Trospium ER capsules
- Tramadol ER tablets
- Fexofenadine tablets
- Pioglitazone tablets
- Escitalopram tablets
- Olanzapine tablets
- “Life Sciences Star,” LMG Life Sciences, 2020–2021
- Leading Lawyer in Intellectual Property Law, Patent Law, and Trade Secrets/Unfair Competition Law – Leading Lawyers Network, 2018–2021
- Recognized in Intellectual Asset Management’s (IAM) Patent 1000 in Litigation, 2013–2017, 2019–2021
- “IP Star,” Managing IP, 2013–2015, 2018–2022
- U.S. District Court for the Northern District of Illinois
- U.S. District Court for the Northern District of Illinois (Trial Bar)
- U.S. District Court for the Central District of Illinois
- State of Illinois Supreme Court
- U.S. Supreme Court
- U.S. Court of Appeals for the Federal Circuit
- U.S. Court of Appeals for the Third Circuit
- U.S. Court of Appeals for the Seventh Circuit
- U.S. District Court for the District of Colorado
- U.S. District Court for the Eastern District of Michigan
- U.S. District Court for the Western District of Wisconsin