Matthew J.Hertko (Matt)

Partner

Chicago + 1.312.269.1581

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Matt Hertko represents clients in high-stakes patent litigation, with a particular emphasis on representing innovator pharmaceutical companies in actions brought under the Hatch-Waxman Act.

Matt has experience in all aspects of IP litigation, including conducting direct and cross-examinations of fact and expert witnesses at jury and bench trials; arguing and presenting at Markman, evidentiary, and other types of hearings; drafting various types of briefs and motions, including summary judgment and Markman briefs; and taking and defending depositions of fact, corporate, and expert witnesses.

In addition to representing clients in Hatch-Waxman litigation, Matt has represented clients in a broad spectrum of other technologies, serving as trial counsel for clients in the semiconductor, integrated circuit, consumer electronics, communications, automotive, business machine, nutraceutical, and liquid crystal display markets.

Matt's practice includes representing clients in jury trials, International Trade Commission (ITC) proceedings, arbitrations, Markman and other evidentiary proceedings, bankruptcy proceedings, and mediations. He has litigated in jurisdictions throughout the United States, including popular patent venues such as the District of New Jersey, District of Delaware, Eastern District of Texas, Northern District of California, Northern District of Illinois, Western District of Wisconsin, Southern District of New York, and the ITC, and has represented clients in post-grant proceedings before the Patent Trial and Appeal Board (PTAB).

Matt has written and spoken extensively on patent law, the America Invents Act, and biosimilars and the Biologics Price Competition and Innovation Act (BPCIA). He is also actively involved in the community and sits on the Board of Directors for the Make-A-Wish Foundation of Illinois.

Experience

  • Tineco prevails in ITC patent infringement dispute with Bissell over wet-dry surface cleaning devicesJones Day successfully represented Tineco Intelligent Technology Co., Ltd. as respondent in an ITC Section 337 investigation filed by complainants Bissell Inc. and Bissell Homecare Inc. ("Bissell") relating to wet-dry surface cleaning devices.
  • Seiko Epson resolves patent infringement dispute involving wi-fi capable consumer electronicsJones Day represented Seiko Epson Corporation and its subsidiary, Epson Precision Philippines, Inc., in defense of a patent infringement action brought by American Patents LLC.
  • Cohesity disposes of six-patent litigation brought by adverse competitor CommvaultJones Day successfully represented Cohesity Inc. ("Cohesity") and obtained dismissal in a six-patent, competitor suit filed by Commvault Systems in April 21, 2020.
  • Celgene asserts its POMALYST® patents against multiple generic companies under Hatch-Waxman ActJones Day is representing Celgene Corporation as a plaintiff to enforce its patents against multiple pharmaceutical companies including Teva Pharmaceuticals USA, Inc.; Apotex, Inc.; Hetero Labs Limited; Aurobindo Pharma Ltd.; Mylan Pharmaceuticals Inc.; Breckenridge Pharmaceutical, Inc.; and Natco Pharma Limited in several Hatch-Waxman litigation matters involving their proposed generic versions of POMALYST®, which is prescribed for treating multiple myeloma.
  • Celgene successfully blocks PTAB institution of IPR involving REVLIMID®Jones Day represented Celgene Corporation in successfully blocking institution of inter partes review ("IPR") of a patent covering the use of Celgene's REVLIMID® brand drug to treat multiple myeloma.
  • Celgene successfully blocks institution of inter partes review on three patents listed in the Orange Book for its blockbuster REVLIMID® productJones Day represented Celgene Corporation in successfully blocking institution of inter partes review ("IPR") of three patents covering the use of Celgene's REVLIMID® brand drug to treat myelodysplastic syndrome (“MDS”).
  • Celgene asserts its REVLIMID® patents against Apotex Inc. under Hatch-Waxman ActJones Day is representing Celgene Corporation as a plaintiff to enforce its patents against Apotex Inc. in a Hatch-Waxman litigation matter involving Apotex’s proposed generic versions of REVLIMID®, which is prescribed for treating multiple myeloma and other cancers.
  • Celgene asserts its REVLIMID® patents against Sun Pharma under Hatch-Waxman ActJones Day is representing Celgene Corporation as a plaintiff to enforce its patents against Sun Pharma Global FZE, Sun Pharma Global Inc., Sun Pharmaceutical Industries, Inc., and Sun Pharmaceutical Industries Limited in a Hatch-Waxman litigation matter involving Sun’s proposed generic versions of REVLIMID®, which is prescribed for treating multiple myeloma and other cancers.
  • Celgene enforces its REVLIMID® patents against Lotus Pharmaceutical under Hatch-Waxman ActJones Day is representing Celgene Corporation as a plaintiff to enforce its patents against Lotus Pharmaceutical Co., Ltd. in Hatch-Waxman litigations involving proposed generic versions of REVLIMID®, which is prescribed for treating multiple myeloma and other cancers.
  • Celgene asserts its REVLIMID® patents against Cipla under Hatch-Waxman ActJones Day is representing Celgene Corporation as a plaintiff to enforce its patents against Cipla Limited in Hatch-Waxman litigation matters involving Cipla’s proposed generic versions of REVLIMID®, which is prescribed for treating multiple myeloma and other cancers.
  • Celgene successfully blocks Apotex's bid for inter partes review of REVLIMID® patentJones Day represented Celgene Corporation in successfully blocking institution of an inter partes review (IPR) petition filed by Apotex against U.S. Patent No. 8,741,929, which is listed in the Orange Book for Celgene's REVLIMID® brand drug.
  • Celgene defends its leading product Revlimid® against patent revocation actions in UKJones Day acted for Celgene Corporation in multiple cases brought by Accord Healthcare in the UK High Court (patents court) in relation to Celgene's patents concerning its best-selling drug, Revlimid®.
  • Celgene asserts its REVLIMID® patents against Dr. Reddy’s Laboratories under Hatch-Waxman ActJones Day is representing Celgene Corporation as a plaintiff to enforce its patents against Dr. Reddy's Laboratories in several Hatch-Waxman litigation matters involving DRL's proposed generic versions of REVLIMID®, which is prescribed for treating multiple myeloma and other cancers.
  • Canon wins Rule 36 affirmance of summary judgment and attorneys' fees in flash memory card patent caseJones Day once again successfully defended Canon Inc. and Canon U.S.A., Inc. against claims of patent infringement relating to flash memory card readers.
  • Celgene enforces its Revlimid® patents against Zydus Pharmaceuticals under Hatch-Waxman ActJones Day is representing Celgene Corporation in a patent litigation against Zydus Pharmaceuticals and Cadila Healthcare over Revlimid®, Celgene's blockbuster drug for treating multiple myeloma and other cancers.
  • BioMarin asserts patent infringement claims against Dr. Reddy's Laboratories related to powder form of Kuvan®Jones Day successfully represented BioMarin Pharmaceutical, Inc. in a patent infringement action against Dr. Reddy's Laboratories relating to the defendant's submission of an Abbreviated New Drug Application to the FDA seeking approval of a powder form of generic versions of Kuvan® (sapropterin dihydrocholride), the only FDA-approved treatment to reduce blood phenylalanine levels in persons with BH-4 responsive phenylketonuria (PKU).
  • Mando resolves multipatent infringement suit filed by Robert Bosch GmbHJones Day represented Mando Corporation and Mando America (collectively "Mando") in the defense of a multipatent infringement suit filed by Robert Bosch GmbH in September 2016 relating to antilock braking systems.
  • BioMarin resolves patent infringement claims against Par Pharmaceutical related to Kuvan®Jones Day client BioMarin Pharmaceutical, Inc. successfully resolved a patent infringement action against Par Pharmaceutical, Inc. relating to the defendant's submission of an Abbreviated New Drug Application to the FDA seeking approval of a generic version of Kuvan® (sapropterin dihydrocholride), the only FDA-approved treatment to reduce blood phenylalanine levels in persons with BH-4 responsive phenylketonuria (PKU).
  • BioMarin asserts patent infringement claims against Dr. Reddy's Laboratories related to Kuvan®Jones Day represented BioMarin Pharmaceutical, Inc. in a patent infringement action against Dr. Reddy's Laboratories relating to the defendant's submission of an Abbreviated New Drug Application to the FDA seeking approval of a generic versions of Kuvan® (sapropterin dihydrocholride), the only FDA-approved treatment to reduce blood phenylalanine levels in persons with BH-4 responsive phenylketonuria (PKU).
  • BioMarin files antitrust suit against Dr. Reddy'sJones Day represented BioMarin Pharmaceutical Inc. ("BioMarin") in an antitrust suit against Dr. Reddy's Laboratories, Ltd. and Dr. Reddy's Laboratories, Inc. ("Dr. Reddy's") stemming from Dr. Reddy's request that BioMarin provide samples of its FDA-approved Kuvan® product to support Dr. Reddy's efforts to obtain FDA approval for a generic version of Kuvan®.

    • The following represents experience acquired prior to joining Jones Day.

    Represented Apex Tool Group in a patent litigation in the Northern District of Illinois involving hand tools.

    Represented Hitachi and its subsidiaries in an alleged price-fixing antitrust proceeding in the Northern District of California related to CRTs (cathode ray tubes) and CRT-containing products.

    Represented Aker BioMarine in an ITC proceeding relating to the composition of krill oil extracts as a source of omega-3 phospholipids.

    Represented Seiko Epson Corp. in an ITC proceeding (and related litigation in the Eastern District of Texas) relating to memory card interfaces as used in printer products.

    Represented TransData in an MDL patent litigation in the Western District of Oklahoma involving electric meters.

    Represented NEC Corp. in patent litigation in the Eastern District of Texas relating to content-addressable storage systems.

    Represented Konica Minolta in patent litigation in the Eastern District of Texas relating to Ethernet functionality as implemented in printer products.

    Represented Subaru in patent litigation in the Eastern District of Michigan involving automobile piston coatings.

    Represented Elpida Memory in an intellectual property licensing dispute in the U.S. Bankruptcy Court for the Eastern District of Virginia.

    Represented Seiko Epson Corp. and its subsidiary in patent litigation in the Northern District of California involving wireless functionality and the 802.11 standard.

    Represented Hitachi and its subsidiaries in patent litigation in the Northern District of California involving computer architecture and internal communication.

    Represented Rohm in patent litigation in the Eastern District of Texas involving inverter controller circuits as used in LCD panels.

    Represented Xerox in patent litigation in the Eastern District of Texas involving various electrical, mechanical, and chemical aspects of photocopy machines and components.

    View All

    July 2024 Commentary

    U.S. Senate Unanimously Passes Bill Limiting Number of Patents Asserted Against Biosimilar Applicants

    July 2024 Commentary

    Federal Circuit Revives Induced Infringement Claims Despite "Skinny Label" Carve-Out

    October 2022 Commentary

    USPTO Seeks Public Input on Improving Patent "Robustness and Reliability"

    January 2022 Commentary

    Inducement Suit Proceeds Against Insurance Company for Encouraging Use of Generic Drug

    September 2021 Commentary

    Patent Linkage and Article 76 Proceedings in China: A Litigator's Perspective

    September 2021 Commentary

    Federal Circuit Vacates Judgment, Reinstates Jury's Verdict of Induced Infringement

    April 2019 Alert

    Polymorph Patent Not Invalid as Obvious

    July 2018 Alert

    High Court to Hear Helsinn v. Teva, Resolve AIA Secret Sales Question

    June 2017 Commentary

    Supreme Court: Biosimilar Applicants May Provide Commercial Marketing Notice Before FDA Approval

    July 2016 Alert

    180-Day Notice of Commercial Marketing Mandatory Even When Biosimilar Applicants Do the "Patent Dance"
    View All

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