Jay R. Deshmukh

Mr. Deshmukh has 10 plus years of industry experience in the pharmaceutical area having worked as head lawyer for a top 10 generics company. He is therefore highly experienced in the area of pharmaceutical litigation, as well as the Abbreviated New Drug Application process and the complexities of litigation involving pharmaceuticals under the HatchWaxman Act.

He also has experience in obtaining and licensing pharmaceuticalrelated intellectual property. In his role as head lawyer, Mr.Deshmukh managed and settled complex global patent litigation on behalf of the company obtaining settlements favorable to the consumer and the company. He worked closely with the Office of Chief Counsel of the FDA and all the FTC commissioners.

Having passed (in 1998), the European Qualifying Examination for European Patent Attorneys for practice before the European Patent Office, and with his decade long experience in defending against patent infringement claims in at least 10 EU jurisdictions, Mr. Deshmukh is uniquely qualified to advise clients seeking IP advice in the EU.

Before joining the generics company, Mr. Deshmukh worked as an Intellectual Property Lawyer with 2 large general practice firms in Cincinnati, Ohio. There he obtained significant litigation experience in the Federal Courts including the Federal Circuit. He also worked extensively in the PTO filing and obtaining patents and successfully prosecuting appeals.

Additional Information

Representative Patents

United States Patent No. 5,413,689 to de Nora and Sekhar

Language Proficiency

Marathi, Hindi

Specializing In

Opinions and Counseling

IP Transactions and Agreements

Litigation

Appellate Practice and the Federal Circuit

Hatch-Waxman Litigation

Trade Secret Litigation

Trademark and Unfair Competition Litigation

Cases, Articles, Speeches & Seminars

Speeches and Seminars

Panelist, Evaluating the Benefit of Trade Secret Protection Versus Patent Protection: Alternative Ways to Protect Biologic and Biosimilar Technology, Biosimilars Conference, New York, NY (June 2013).
Webinar on Hatch Waxman Litigation, IP Law 360 (2009).
WIPO IP conference in Geneva (2008 and 2007).

Representative Matters

RANBAXY LABORATORIES LIMITED, et al., Appellees v. Michael O. LEAVITT, Secretary of Health and Human Services, et al., Appellants. No. 065154 (2006). Developed winning strategy and assembled legal team for seminal case regarding patent delisting, requiring FDA to order relisting of patents at issue in the Orange Book thereby ensuring exclusivity for client (won at district court level and in DC court of Appeals)

Pfizer Inc. et al. v. Ranbaxy Labs. Ltd. et al., 1:08cv00164 (2008). Represented defendants in patent infringement action in the District of Delaware on two patents relating to methods of making atorvastatin (the active ingredient in Pfizer’s Lipitor® product). Led the negotiations and achieved favorable casedispositive settlement for client.

Pfizer Inc. et al. v. Ranbaxy Labs. Ltd. et al., 1:08cv00162 (2008). Represented defendants in patent infringement action in the District of Delaware on two patents relating to methods of making atorvastatin (one of the active ingredients in Pfizer’s Caduet® product). Led the negotiations and achieved favorable casedispositive settlement for client.

Pfizer Inc. et al. v. Ranbaxy Labs. Ltd. et al., 1:07cv00138 (2007). Represented defendants in patent infringement action on method patent relating to the use of atorvastatin calcium/amlodipine besylate (the active ingredients in Pfizer’s Caduet® product). Led the negotiations and achieved favorable casedispositive settlement for client.

Astellas Pharma Inc. et al. v. Ranbaxy Labs. Ltd. et al., 3:05cv02563 (2005). Represented defendants in patent infringement action in the District of New Jersey on patent relating to tamsulosin (the active ingredient in Astellas’ Flomax® product). On appeal, the case settled prior to a decision by the Court of Appeals for the Federal Circuit. Led the negotiations and achieved favorable casedispositive settlement for client.

AstraZeneca AB et al. v. Ranbaxy Labs. Ltd. et al., 3:05cv05553 (2005). Represented defendants in patent infringement action in the District of New Jersey concerning six patents related to esomeprazole magnesium (the active ingredient in AstraZeneca’s Nexium® product). Led the negotiations and achieved favorable casedispositive settlement for client.