LisamarieLoGiudice Ph.D.

Of Counsel

New York + 1.212.326.8387

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Dr. Lisamarie LoGiudice represents pharmaceutical and biotechnology clients in district court, at the Federal Circuit, and before the Patent Trial and Appeal Board (PTAB). Her intellectual property practice encompasses Hatch-Waxman, BPCIA (Biologics Price Competition and Innovation Act), trade secret misappropriation litigation, and post-grant invalidity and interference proceedings before the PTAB. Lisamarie's litigation experience spans pre-lawsuit investigation, discovery, trial, all the way through appeals to the Federal Circuit. She also has experience providing patent prosecution strategy advice, evaluating patent portfolios, analyzing the validity of patents, conducting freedom-to-operate analyses, and advising on contract disputes.

Prior to joining Jones Day, Lisamarie received a doctorate in neuroscience from Stony Brook University where her research focused on the mechanisms and molecular underpinnings of synaptic transmission. During her time at Stony Brook, she coauthored several peer-reviewed publications in the fields of molecular and cellular neurobiology.

Expérience

  • Merck wins bench trial over patent term extension issue in Hatch-Waxman multi-party dispute involving BRIDION®Jones Day is representing Merck Sharp & Dohme, B.V. in Hatch-Waxman patent infringement actions originally against 16 generic drug maker defendant groups, relating to the defendant groups' submissions of Abbreviated New Drug Applications (ANDA) to the FDA seeking approval of generic versions of BRIDION®, a first-in-class agent for the reversal of certain types of neuromuscular blockade induced in adults undergoing surgery.
  • Puma Biotechnology asserts patent infringement claims under Hatch-Waxman Act related to Nerlynx® against SandozJones Day is representing Puma Biotechnology, Inc. in a Hatch-Waxman patent infringement action against Sandoz relating to Sandoz's submission of an Abbreviated New Drug Application to the FDA seeking approval of a purported generic version of Nerlynx® (neratinib) tablets.
  • Merck resolves trade secret dispute involving vaccineJones Day represented Merck Sharp & Dohme Corp. as plaintiff in a trade secret lawsuit filed in the Eastern District of Pennsylvania against Pfizer Inc. and a former Merck employee.
  • Takeda trial win in Hatch-Waxman case involving diabetes products upheld by Federal CircuitJones Day successfully represented Takeda Pharmaceutical Company Ltd. in a Hatch-Waxman Act dispute against companies seeking to market generic versions of three diabetes products prior to the expiration of Takeda's patents.
  • Purdue Pharma asserts patent infringement claims under Hatch-Waxman Act related to OxyContin® against IntellipharmaceuticsJones Day is representing Purdue Pharma L.P. in a Hatch-Waxman patent infringement action against defendants, relating to the defendants' submission of a Section 505(b)(2) New Drug Application to the FDA seeking approval of an extended-release oxycodone formulation.
  • Purdue Pharma successfully moves for additional discovery regarding real-party-in-interest, leading to termination of IPRs before institutionJones Day defended patent owner, Purdue Pharma L.P., in connection with two inter partes review (IPR) petitions brought by the petitioner, Kashiv Pharma, LLC, against U.S. Patent Nos. 9,492,392 and 9,492,393.
  • Purdue Pharma successfully resolves Hatch-Waxman patent infringement claims against Epic Pharma related to OxyContin®Jones Day successfully represented Purdue Pharma L.P. in related Hatch-Waxman patent infringement actions against defendants Epic Pharma, LLC and PuraCap Pharmaceutical LLC, pertaining to the submission of an Abbreviated New Drug Application to the FDA seeking approval of a generic version of OxyContin®.
  • Purdue Pharma successfully resolves Hatch-Waxman patent infringement claims against Amneal and Kashiv related to OxyContin®Jones Day successfully represented Purdue Pharma L.P. in related Hatch-Waxman patent infringement actions against defendants Amneal Pharmaceuticals, LLC and Kashiv Pharma, LLC, pertaining to the submission of an Abbreviated New Drug Application to the FDA seeking approval of generic versions of OxyContin®, a widely prescribed treatment for pain relief.
  • Celgene prevails in Apotex and Cipla IPR challenges of Abraxane® patentsJones Day served as lead counsel and successfully defended Celgene Corporation in connection with six inter partes review (IPR) petitions filed by Apotex or Cipla against U.S. Patent Nos. 8,138,229, 7,820,788, and 7,923,536, which are related to formulations for Celgene's chemotherapeutic drug marketed as Abraxane®.
  • Purdue Pharma asserts patent infringement claims under Hatch-Waxman Act related to OxyContin® against AbhaiJones Day successfully represented Purdue Pharma L.P. in a Hatch-Waxman patent infringement action against the defendant, Abhai LLC's, submission of an Abbreviated New Drug Application to the FDA seeking approval of generic versions of OxyContin®, a widely prescribed drug for pain relief.
  • Purdue Pharma asserts patent infringement claims under Hatch-Waxman Act related to OxyContin® against MylanJones Day successfully represented Purdue Pharma L.P. in a Hatch-Waxman patent infringement action against defendants, relating to the defendants' submission of an Abbreviated New Drug Application to the FDA seeking approval of generic versions of OxyContin®, a widely prescribed treatment for pain relief.
  • Purdue Pharma asserts patent infringement claims under Hatch-Waxman Act related to OxyContin® against KVK-Tech and AbhaiJones Day is representing Purdue Pharma L.P. in a Hatch-Waxman patent infringement action against defendants, relating to the defendants' submission of an Abbreviated New Drug Application to the FDA seeking approval of generic versions of OxyContin®, a widely prescribed treatment for pain relief.
  • Celgene successfully defends REVLIMID® compound patent against Kyle Bass' IPR petitionJones Day represented Celgene Corporation in successfully defending an IPR petition filed by Coalition for Affordable Drugs VI LLC (CFAD) - a company formed by hedge fund manager Kyle Bass - against U.S. Patent No. 5,635,517, which is listed in the Orange Book for Celgene's REVLIMID® brand drug.
  • AbbVie subsidiary asserts patent infringement claims under Hatch-Waxman Act related to AndroGel® against Perrigo and WatsonJones Day represented Unimed Pharmaceuticals, LLC, a subsidiary of AbbVie, Inc., in a consolidated Hatch-Waxman patent infringement action against Perrigo Company and Watson Laboratories, Inc., relating to the defendants' submission of Abbreviated New Drug Applications to the FDA seeking approval of generic versions of AndroGel® 1.62%, a widely-prescribed treatment for males with low testosterone levels.
  • Celgene defends REMS patents against Kyle Bass' IPR petitionsJones Day is representing Celgene Corporation in defending four IPR petitions filed by Coalition for Affordable Drugs VI LLC - a company formed by hedge fund manager Kyle Bass - against U.S. Patent Nos. 6,045,501 and 6,315,720, which are listed in the Orange Book for Celgene's REVLIMID®, POMALYST®, and THALOMID® brand drugs, and which pertain to Celgene's Risk Evaluation and Mitigation Strategy (REMS)™ for those drugs.
  • Purdue Pharma pursues patent infringement suit involving OxyContin(R) against generic drug maker TevaJones Day represents Purdue Pharma L.P., The P.F. Laboratories, Inc., and Purdue Pharmaceuticals L.P. in a Hatch-Waxman Act patent infringement litigation matter relating to Teva Pharmaceuticals USA, Inc.'s attempt to market a generic version of Purdue's controlled-release OxyContin(R) pain relief medication.
  • Linedata acquires HCL Technologies' CapitalStream businessJones Day advised Linedata Services, S.A. in its acquisition of HCL Technologies' CapitalStream business and entry into a strategic partnership with HCL Technologies Ltd.
  • Purdue Pharma defends against claims of patent infringementJones Day represents Purdue Pharma L.P., The P.F. Laboratories, Inc., and Purdue Pharmaceuticals L.P. in a patent infringement litigation brought by plaintiff Depomed, Inc., based on Purdue's manufacture and sale of its own patented controlled-release OxyContin(R) pain relief medication.
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    October 2024 Alert

    Supreme Court Denies Cellect Petition on Interplay Between PTA and ODP

    September 2024 Blog

    Lack of Injury In Fact Scuttles Appeal, PTAB Litigation Blog

    August 2024 Blog

    No Requirement to Raise All Arguments in Rehearing Request, PTAB Litigation Blog

    December 14, 2023 Firm Hosted

    Women in IP Speaker Series: Implications for the Life Sciences Industry of President Biden's Executive Order on Promoting Competition and the Inflation Reduction Act

    December 2016 Blog

    Despite Granting a Request for Rehearing, the PTAB Maintained Its Finding that Teva’s Copaxone Claims Were Unpatentable as Obvious, PTAB Litigation Blog

    November 2016 Blog

    Invalidity Defenses Raised but not Instituted During IPR Are not Barred by Statutory or Judicial Estoppel, PTAB Litigation Blog

    September 2015 Commentary

    Amending Patent Claims in Inter Partes Review Proceedings

    October 2014 Commentary

    Exclusion of Evidence Before the Patent Trial and Appeal Board

    December 14, 2023 Firm Hosted

    Women in IP Speaker Series: Implications for the Life Sciences Industry of President Biden's Executive Order on Promoting Competition and the Inflation Reduction Act

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