JEFFREY P. KUSHAN is a partner with Sidley in Washington, D.C. He serves as a global coordinator of the firm’s national IP Litigation practice, and focuses his practice on patent litigation, patent appeals, and contested proceedings before the Patent Trial and Appeal Board (PTAB).
Jeff leverages his deep scientific and patent law experience to develop winning strategies in complex, high-stakes patent litigation. He has represented companies in a wide variety of patent litigation, including competitor litigation relating to groundbreaking cancer biologics, litigation under the BPCIA and Hatch-Waxman Act, and cases involving consumer electronics, software, industrial biotechnology and other technologies. He has an active practice before the Patent Trial and Appeal Board, where he has served as lead counsel in more than 200 PTAB proceedings, presented arguments in more than 20 oral hearings, and represented clients in numerous interference and reexamination proceedings. Jeff also represents clients in patent appeals before the Federal Circuit and the Supreme Court, and has authored more than a dozen amicus briefs for companies and trade associations.
In addition to his work on patent litigation, Jeff advises clients, including trade associations, on domestic and international patent policy matters, including patent law reform, the BPCIA and Hatch-Waxman systems, and legislation concerning follow-on biological products. Prior to entering private practice, Jeff served in the Patent and Trademark Office and the Office of the United States Trade Representative in Geneva, Switzerland, where he led efforts to develop biotechnology and software examination standards, worked on implementation of the TRIPS Agreement and other legislation, supported negotiations on patent law, environmental and trade agreements, was the chief U.S. negotiator for the 1996 WIPO “Internet” treaties, and represented the U.S. in WTO disputes involving the TRIPS Agreement. Jeff has testified numerous times before Congress on patent law reform and is a frequent lecturer on domestic and international patent issues.
Jeff has earned many accolades for his patent litigation work. In 2017, he was recognized by the National Law Journal as an “IP Trailblazer.” Chambers reports clients’ descriptions of him as “terrific and extremely knowledgeable in the patent office on IPR procedures,” “a go-to adviser because of his exceptional case development skills and strategy,” and “an expert Hatch-Waxman litigator with extensive experience in district court and appellate proceedings.” In 2003, Jeff was named by the American Lawyer as one of the top 45 lawyers in the U.S. under 45 across all disciplines.
- Sidley received the “Chambers Award for Excellence” from Chambers USA in the Intellectual Property category. Sidley’s Intellectual Property group was named “Team of the Year” in 2014 and 2011.
- Jeff was named an “Intellectual Property Trailblazer” by the National Law Journal in 2017.
- Chambers USA has recognized Jeff annually since 2011.
- Jeff was shortlisted by Managing IP as one of the leading PTAB practitioners of 2015.
- International Who’s Who Legal has recognized Jeff as a leading practitioner in intellectual property or life sciences since 2008.
- PLC has recognized Jeff since 2003 as a leading lawyer in life sciences, intellectual property or IP business transactions.
- IAM has recognized Jeff as one of the world’s leading patent professionals in its IAM 1000 publication annually since 2013.
- Jeff was named one of top 45 lawyers in the country under the age of 45 by American Lawyer magazine in 2003.
- Jeff has been recognized by Best Lawyers of America annually since 2008 for life sciences or intellectual property.
Representative Litigation, PTAB/PTO and Appellate Matters
MERCK & CO
- Bristol-Myers Squibb et al. v. Merck & Co., Inc. (D. Del. 2015), represented Merck in patent infringement action accusing Merck’s Keytruda® PD-1 antibody cancer drug (settled 2017).
- Merck v. Ono Pharmaceuticals (2016), lead counsel in inter partes review (IPR) proceeding before PTAB challenging patents on PD-1 antibodies.
- Sandoz Inc. v. Amgen Inc. & Hoffmann-La Roche Inc. (N.D. Cal. 2013), represented Amgen in declaratory judgment action brought by Sandoz concerning patents on Enbrel®; secured dismissal of action for lack of subject matter jurisdiction in 2013; affirmed by Federal Circuit in 2015.
- Immunex Corp., Amgen Manufacturing Ltd, and Hoffmann-La Roche Inc. v. Sandoz Inc., Sandoz International GMBH, and Sandoz GMBH (D.N.J. 2015), represent Amgen patent infringement action against Sandoz in response to filing of biosimilar application referencing Enbrel®.
- Coherus Biosciences v. Hoffmann-La Roche Inc. and Immunex Corp. (2017), lead counsel, successfully prevented institution of IPR on patents relating to Enbrel®.
- Coalition for Affordable Drugs et al., v. Hoffmann-La Roche Inc., Immunex Corp., and Amgen Inc. (2015), lead counsel, successfully prevented institution of IPR on patent relating to Enbrel®.
- Genentech, Inc. v. Trustees of the University of Pennsylvania, (N.D. Cal., 2010), represented Genentech in patent litigation involving Herceptin (settled 2012).
- Cabilly v. Boss, successfully represented Genentech in interference, reexamination, and appeal proceedings concerning patents on antibody production methods.
- Adair v. Carter, successfully represented Genentech in interference proceedings and Federal Circuit appeal involving patents on humanization techniques for monoclonal antibodies.
- Chiron Corp. v. Genentech, Inc., (E.D. Cal 2002), aff’d, 363 F.3d 1247 (Fed. Cir. 2004), cert. denied, 543 U.S. 1050 (2005), represented Genentech in litigation concerning Herceptin.
- Boehringer Ingelheim et al. v. Genentech and Biogen, represented patent owners in successful defense of patents in IPRs relating to Rituxan® (settled or not instituted).
- Takeda Pharmaceuticals America, Inc. v. UCB Biopharma SPRL et al., (E.D. Va. 2017), successfully represented Takeda in declaratory judgment action relating to antibody humanization patent (settled 2018).
- ABS Global v Cytonome/XY LLC, successfully challenged family of patents on techniques for sorting semen used in cattle breeding in a series of IPR proceedings.
- Omni MedSci v. Apple (E.D. Tex. 2018), represent Apple in patent infringement action involving Apple Watch.
- ContentGuard Holdings, Inc. v. Apple, Inc., et al. (E.D. Tex. 2015), successfully represented Apple in patent infringement action involving digital rights management that sought $822 million in damages; jury found for Apple returning a verdict of non-infringement of five asserted patents in November 2015 and decision affirmed on appeal in 2017.
- Apple Inc. v. VirnetX, lead counsel in IPR and inter partes reexamination proceedings that have invalidated numerous patents on secure communication technologies.
- EON Holdings, LLC. v. Apple Inc. (N.D. Cal. 2014), represented Apple in litigation involving patents on wireless technologies (settled).
- Eolas Technologies Incorporation v. Adobe Systems, et al. (E.D. Tex. 2011), represented Apple in patent infringement suit involving Internet browsers and websites (settled).
- Apple Inc. v. Achates Publishing (2013), lead counsel in IPR proceedings that invalidated patents on secure data communication technique; decision affirmed by Federal Circuit in 2015.
- Apple Inc. v. Ziilabs Inc., Ltd., lead counsel in IPR proceedings challenging series of patents on semiconductor technologies (settled).
- Microsoft Corp. v. B.E. Technologies, lead counsel in IPR proceedings holding networking patents unpatentable; successfully argued appeal to Federal Circuit.
- Microsoft Corp. v. SurfCast Inc., IPR2013-00292, 293, 294 and 295, lead counsel in IPR proceedings successfully cancelling patent claims being asserted.
- Baxter Healthcare Corp. v. Millenium Biologix, LLC. (2014), lead counsel in IPR proceedings that invalidated patents on bone growth materials.
- Owens Corning v. CertainTeed Corp. (2015), lead counsel in IPR proceedings that invalidated family of patents on roofing shingles.
- Smithkline Beecham PLC, et al. v. Teva Pharmaceuticals USA, and Smithkline Beecham PLC, et al. v. Dr. Reddy’s Laboratories, Ltd., et al., (D.N.J. 2003), represented patent owner in litigation involving Avandia® (settled)
JOHNSON & JOHNSON
- Alza Corporation and McNeil-PPC v. Impax Laboratories, Andrx Pharmaceuticals, et al., (D. Del. 2005), represented patent owner in litigation involving Concerta®.
- Ortho McNeil Pharmaceutical v. Kali Laboratories, (D.N.J. 2002), Ortho McNeil Pharmaceutical v. Teva Pharmaceutical Industries, et al., (D.N.J. 2004), Ortho McNeil Pharmaceutical v. Caraco Pharmaceutical Laboratories, (E.D. Mich. 2005), Ortho McNeil Pharmaceutical v. Apotex, Inc. (N.D. Ill. 2007), represented patent owner in litigation involving Ultracet®.
THE MEDICINES COMPANY
- The Medicines Company v. David Kappos et al., (E.D. Va. 2012), successfully represented Medicines Company in litigation against PTO concerning entitlement to patent term extension for Angiomax® under 35 U.S.C. § 156.
- Alzheimer’s Institute of America v. Pfizer Inc. (E.D. Miss. 2009), represented Pfizer in litigation involving patent on “Swedish” mutation of the amyloid beta protein (settled).
- Wyeth Holdings Corporation and Wyeth v. U.S. Dept. of Health and Human Services et al., (D.D.C.), represented Wyeth in litigation over patent term restoration determination under 35 U.S.C. §156).