Tony V Pezzano

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Tony Pezzano

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Tony Pezzano has 25 years of experience litigating patent cases in both Federal District Courts throughout the United States and the International Trade Commission (“ITC”). He has represented clients in a wide range of technology areas, including consumer products, recreational products, pharmaceutical products, chemical and petroleum products and processes, wireless telecommunication devices and equipment, computer software, hardware and systems, and printing engines and systems. He has appeared in numerous trials in the Federal District Courts, including both jury and bench trials, and in the ITC. Although patent litigation has been Tony's focus, he has prosecuted patent and trademark applications and rendered opinions and counseling for U.S. and foreign corporate clients involving intellectual property matters.

Tony has been lead counsel for major clients in patent litigation and trials in Federal District Courts and in the ITC. For example, he has represented Merck & Co., Inc. (“Merck”) and Hoffmann-La Roche Inc. (“Roche”) in patent litigations in U.S. district courts and also Roche in the ITC relating to pharmaceutical products. He also has represented IBM and Ericsson in patent litigations in the ITC involving computer software and hardware technologies and wireless telecommunications equipment, respectively.

Tony is a contact attorney for King & Spalding’s ANDA Hatch-Waxman Litigation, and ITC Section 337 Investigation practice groups.

Below is a summary of Tony's recent representative intellectual property cases in the Federal District Courts and ITC.

Representative Cases in the Federal District Courts

  • Merck Sharp & Dohme Corp. v. Hospira, Inc., Civil Action No. 1:14-cv-00915-RGA (Representing Merck in pending Hatch-Waxman suit concerning Merck’s Invanz® antibiotic product for the treatment of pneumonia and complicated skin and skin structure infections.)

  • Merck Sharp & Dohme Corp. v. Sandoz Inc., Civil Action No. 1:14-cv-00916-RGA (Representing Merck in pending Hatch-Waxman suit concerning Merck’s Invanz® antibiotic product for the treatment of pneumonia and complicated skin and skin structure infections.)

  • Schering Corp. v. Sandoz, Inc., Civil Action No. 11-2589 (FLW) (LHG) (D.N.J. 2012) (Represented Schering (a subsidiary of Merck) in Hatch-Waxman suit concerning Merck's Noxafil® product.)

  • Merck Sharp & Dohme Corp. v. Watson Laboratories, Inc., Civil Action No. 3:12-cv-05228-FLW-LHG (D.N.J. 2012) (Represented Merck Sharp & Dohme Corp. in Hatch-Waxman suit concerning Merck’s Singulair® product.)

  • Merck Frosst Canada et al. v. Mylan Pharmaceuticals Inc., Civil Action No. 3:11-cv-07569-FLW-LHG (D.N.J. 2012) (Represented Merck Frosst Canada & Co., Merck Canada Inc. and Merck Sharp & Dohme Pharmaceuticals in Hatch-Waxman suit concerning Merck's Singulair® product.)

  • Merck Frosst Canada et al. v. Dr. Reddy's Laboratories Ltd. and Dr. Reddy's Laboratories Inc., Civil Action No. 3:12-cv-01324-FLW-LHG (D.N.J. 2012) (Represented Merck Frosst Canada & Co., Merck Canada Inc. and Merck Sharp & Dohme Pharmaceuticals in Hatch-Waxman suit concerning Merck's Singulair® product.)

  • Merck Frosst Canada et al. v. Teva Pharmaceuticals USA, Inc.,, Civil Action No. 3:12-cv-00210-FLW-LHG (D.N.J. 2012) (Represented Merck Frosst Canada & Co., Merck Canada Inc. and Merck Sharp & Dohme Pharmaceuticals in Hatch-Waxman suit concerning Merck's Singulair® product.)

  • CYBERsitter, LLC v. The People's Republic of China, et al., Case No. CV10-0038-JST (SH) (C.D. Cal. 2012) (Represented co-defendant Zhengzhou Jinhui Computer System Engineering Ltd. in global settlement and dismissal of dispute involving allegations of copyright infringement and trade secret misappropriation of internet filtering system.)

  • Move, Inc. v. Real Estate Alliance Ltd., Case No. 2:07-cv-02185-GHK (ASWx) (C.D. Cal. 2011) (Represented Real Estate Alliance pursuing its claims of patent infringement of a zoom-enabled mapping system and method against dozens of accused infringers in remand from the Federal Circuit after obtaining reversal of the District Court’s claim construction and vacating the District Court’s judgment of noninfringement (2011 U.S. App. LEXIS 5899 (March 22, 2011).)

  • Merck & Co., Inc. and Merck Sharp & Dohme Corp. v. Hetero Drugs Ltd., Unit III and Hetero USA Inc., Civil Action No. 2:10-cv-06111-PGS-ES (D.N.J. 2011) and Merck & Co., Inc. and Merck Sharp & Dohme Corp. v. Hetero Drugs Ltd., Unit III and Invagen Pharmaceuticals, Inc., Civil Action No. cv 10-5370 (JS) (WDW) (E.D.N.Y. 2011) (Favorable settlement on behalf of Merck in Hatch Waxman suit concerning Merck's Propecia® product for treating male pattern baldness.)

  • Roche Palo Alto LLC v. Ranbaxy Laboratories Limited and Ranbaxy Inc., Civil Action No. 06-2003 (FLW) (D.N.J. 2010) and Roche Palo Alto v. Ranbaxy Labs., No. 2010-1056, -1101 (2010) (Lead counsel for plaintiff Roche Palo Alto LLC (“Roche”) in Paragraph IV pharmaceutical patent litigation and trial in District Court for the District of New Jersey, appeal and cross appeal to the Court of Appeals for the Federal Circuit (“Federal Circuit”) and Circuit mediation resulting in a favorable settlement for Roche whereby Ranbaxy stipulated to the validity, enforceability and infringement of Roche's patent-in-suit.)

  • Hoffmann-La Roche Inc. v. Apotex Corp. and Apotex Inc., Civil Action No. 09-647-PGS-ES (D.N.J. 2009) (Lead counsel for plaintiff Hoffmann-La Roche Inc. (“Roche”) in filing Motion for an Order to Show Cause for a preliminary injunction in response to Paragraph IV Certifications filed by defendants Apotex Corp. and Apotex Inc. (collectively “Apotex”) to enjoin Apotex from entering the market with its generic drug products prior to the expiration of Roche's patent-in-suit. The case was voluntarily dismissed following the parties' agreement by Stipulation and Order to adjourn the preliminary injunction hearing indefinitely based on Apotex representation that it would not commercially launch prior to the expiration of Roche's patent-in-suit.)

  • Man Roland Inc. v. Goss International Americas, Inc. and Heidelberger Druckmaschinen AG, Civil Action No. C-03-513-SM (D.N.H. 2007) (Represented counterclaim-defendant Heidelberger Druckmaschinen AG in successfully dismissing eleven counterclaims for alleged antitrust and unfair competition allegations. Lead counsel in the drafting of all motions that dismissed all eleven counterclaims.) See 2006 U.S. Dist. LEXIS 27923; 2006 U.S. Dist. LEXIS 25769; 2006 U.S. Dist. LEXIS 36386; and 2007 U.S. Dist. LEXIS 18112.

  • Hakim v. Cannon Avent Group, PLC, 2005 U.S. Dist. LEXIS 16827 and 2005 U.S. Dist. LEXIS 16833 (W.D. La. 2005) (Represented defendant Cannon Avent Group, PLC (“Avent”) in decisive victory granting summary judgment that Avent's accused non-spill cup products do not infringe one of the asserted patents and that the second patent is invalid over the prior art. Drafted the motion for summary judgment of noninfringement and gave counsel on the second motion for invalidity.)

  • ISCO International, Inc. v. Conductus, Inc. and Superconductor Technologies, Inc., 2003 U.S. Dist. LEXIS 14939 and 279 F. Supp. 2d 489 (D. Del. 2003) (Represented plaintiff ISCO International, Inc. (“ISCO”) in jury trial involving alleged infringement of ISCO's patents directed to base station front end receivers for wireless telecommunication providers. Presented ISCO's entire damages case to jury.)

  • Yamaha et al. v. Bombardier et al., 2001 U.S. Dist. LEXIS 24568 (C.D. Cal. 2001) (Represented defendants Bombardier Inc., Bombardier Corporation and Bombardier Motor Corporation in action brought by plaintiffs Yamaha Motor Co. and Sanshin Industries Co., Inc. involving allegations of infringement of 33 patents directed to personal watercraft. The case was settled as part of settlement of companion ITC proceeding.)

  • Hoffmann-La Roche Inc. v. Genpharm, Inc., 2000 U.S. Dist. LEXIS 8128, 2000 U.S. Dist. LEXIS 8124 (D.N.J. 2000) and 50 F. Supp. 2d 367 (D.N.J. 1999) (Represented plaintiff Hoffmann-La Roche Inc. (“Roche”) in case involving alleged infringement of Roche's patents directed to a process of manufacturing ticlopidine hydrochloride. Drafted motions for summary judgment successfully dismissing defendant Genpharm's counterclaims.) See also Hoffmann-La Roche Inc. v. Invamed Inc., 213 F.3d 1359 (Fed. Cir. 2000) (Represented appellee Roche in appeal affirming order that Roche's claim for infringement was not unreasonable.)

Representative Cases in the ITC

  • In the Matter of Certain Wireless Devices Including Mobile Phones And Tablets II, Inv. No. 337-TA-905 (U.S.I.T.C. 2014) (Represented respondents Nokia Corp. and Nokia, Inc. in favorable settlement of patent infringement proceeding.)

  • In the Matter of CMOS Image Sensors And Products Containing Same, Investigation No. 337-TA-846 (Representing respondents Nokia Corp. and Nokia, Inc. in pending patent infringement proceeding.)

  • In the Matter of Certain Products and Pharmaceutical Compositions Containing Recombinant Human Erythropoietin, Investigation No. 337-TA-568, Fed. Reg. Vol. 71, No. 172 (U.S.I.T.C. September 6, 2006 to October 11, 2011) (Lead Counsel for respondents Roche Holding Ltd., F. Hoffmann-La Roche Ltd., Roche Diagnostics GmbH, and Hoffmann-La Roche Inc. in initially dismissing on summary determination a patent infringement proceeding commenced by complainant Amgen, Inc. The case was remanded to the ITC after rehearing en banc by the Federal Circuit (Amgen Inc. v. ITC, 565 F.3d 846 (Fed. Cir. 2009)) and terminated on October 11, 2011, concluding a global settlement and dismissal of the 568 investigation and a parallel action in the Federal District Court of the District of Massachusetts, Case No. 05-12237-WGY.)

  • In The Matter of Certain Computer Products, Computer Components And Products Containing Same, No. 337-TA-628 (U.S.I.T.C. 2009) and ASUSTek Computer Inc. v. International Business Machines Corp., Case No. C08-1168-MMC (JL) (N.D. Cal. 2009) (Lead Counsel for complainant IBM in patent infringement proceeding involving U.S. Patent No. 5,371,852 against respondents ASUSTek Computer, Inc. and ASUS Computer International and in parallel Federal District Court litigation. The cases were successfully brought to conclusion through settlement resolved to the satisfaction of all parties.)

  • In the Matter of Certain Wireless Communication Devices, Components Thereof, And Products Containing The Same, Investigation No. 337-TA-583 (U.S.I.T.C. 2007) (Lead Counsel for complainants Ericsson Inc. and Telefonaktiebolaget LM Ericsson in patent infringement proceeding involving wireless telecommunication equipment that was successfully brought to conclusion through a stipulated dismissal and settlement resolved to the satisfaction of all parties.)

  • In The Matter Of Certain Personal Watercraft and Components Thereof (U.S.I.T.C. Inv. No. 337-TA-452 (2002)). Represented respondent Bombardier Inc. in proceeding before International Trade Commission brought by complainants Yamaha Motor Co. and Sanshin Industries alleging infringement of 11 patents directed to personal watercraft. Obtained dismissal of six of the patents before trial through successful motions for summary determination of noninfringement, invalidity or lack of jurisdiction (no domestic industry). Examined and cross-examined witnesses at trial. The matter was settled after trial on the remaining five patents. Published decisions: 2001 ITC LEXIS 865 (August 14, 2001) (Initial Determination Granting Respondents' Motion For Summary Determination With Respect To U.S. Patent No. 5,390,621); 2001 ITC LEXIS 867 (August 20, 2001) (Initial Determination Granting In Part Respondents' Motion For Summary Determination Of Noninfringement And Invalidity Of Claim 1 Of U.S. Patent No. 4,813,898); 2002 ITC LEXIS 586 (September 4, 2001) (Initial Determination Granting In Part Respondents' Motion For Summary Determination Of No Domestic Industry Of Claims 1-22 Of The 5,699,749 Patent); 2001 ITC LEXIS 974 (November 15, 2001) (Initial Determination Granting Respondents' Motion For Summary Determination That Asserted Claim 24 Of U.S. Patent No. 4,811,560 Is Invalid For Violation Of 35 U.S.C. § 102(b)); 2001 ITC LEXIS 973 (November 16, 2001) (Initial Determination Granting Respondents' Motion For Summary Determination That Asserted Claim 9 Of U.S. Patent No. 5,550,337 Is Invalid For Violation Of 25 U.S.C. § 102(b)).

Among other clients for which Mr. Pezzano has previously represented in litigation matters are The Procter & Gamble Company, Atlantic Richfield Company, Chevron U.S.A., Inc., Exxon Corporation, Mobil Oil Corporation, Shell Oil Products Company and Texaco Refining and Marketing, Inc.

Tony has been recognized as one of the world’s leading patent practitioners in both the U.S. District Courts and the ITC by IAM Patent 1000: The World’s Leading Patent Practitioners; IP Stars; Managing IP’s guide to the leading IP firms and attorneys; Montclair Who's Who directory of industry leaders from around the world; US Legal 500; SuperLawyer’s Business Edition and New York SuperLawyers.

Tony is a past President (2009) of the ITC Trial Lawyers Association (“ITCTLA”). In his capacity as a former President of the ITCTLA, Tony travelled to China from May 23-27, 2011 with ITC officials, Vice-Chairman Irving Williamson and former Chief Administrative Law Judge Paul Luckern, and other ITCTLA members providing presentations explaining ITC Section 337 litigation practices and procedures in Beijing, Nanjing, Shanghai and Guangzhou. Tony had the privilege of introducing Chief Judge Luckern during each presentation and also was a speaker on the topic “Strategy and Procedures for ITC Claim Construction and Narrowing Issues for the Evidentiary Hearing.”

Tony also supported the ITCTLA in a conference on July 18, 2011, entitled “Electronic Discovery At The ITC: Current Challenges And Possible Improvements”, held at the George Washington University School of Law. The featured speaker was Chief Judge Randall Rader of the Federal Circuit. Tony participated in a panel directed to “Improving E-Discovery at the ITC and Proposed Solutions.” Following this conference, Tony was selected by the ITCTLA to chair a subcommittee directed to drafting proposals, at the request of the ITC, to improve electronic discovery practices and procedures in the ITC.

Tony was a speaker on a panel with Federal Circuit Chief Judge Randall Rader on the topic “Cost Effective Strategies for Successful Fact Finding and Subpoena Practice: How to Obtain the Information You Need from Discovery during Litigation at the ITC” at the ITC Litigation and Enforcement Conference sponsored by American Conference Institute on February 29, 2012 in Washington, DC. 

In 2010, Tony co-chaired an ITC Litigation and Enforcement Conference sponsored by American Conference Institute in New York City on February 24-25, including featured guests and speakers, Paul R. Michel, former Chief Circuit Judge Federal Circuit, Randall R. Rader, current Chief Circuit Judge Federal Circuit, Shara L. Aranoff, past Chairman and current Commissioner ITC, Hon. Paul J. Luckern, Chief Administrative Law Judge ITC, Hon. Theodore R. Essex, Administrative Law Judge ITC, Hon. Robert K. Rogers, Administrative Law Judge ITC, James M. Lyons, General Counsel ITC, Lynn I. Levine, Director of Unfair Import Investigations ITC and Dax Terrill, Attorney-Advisor Office of Regulations & Rulings, U.S. Customs and Border Protection. Tony also spoke at the conference on the topic “Strategy And Procedures For ITC Claim Construction And Narrowing Issues For The Evidentiary Hearing By Summary Determination.”

Recent Presentations

A frequent lecturer, Tony has also presented throughout the U.S., China and Europe on various Federal Disctrict Court and ITC patent litigation issues. Some of his more recent presentations include:

  • “Annual Review of the Decisions of the Federal Circuit and a More Active Supreme Court Impacting Pharmaceutical Patent Litigation” (November 11, 2014, Philadelphia; King & Spalding’s 7th Annual Pharma University);

  •  “Enforcement of Patents Subject to FRAND Obligations:  Litigation Strategies Including Choice of Forum and Remedies” (October 30, 2014, Seattle; sponsored by Law Seminars International).

  • “Second Annual Choosing a Hatch-Waxman Forum – District of New Jersey, District of Delaware or Southern District of New York?” (October 8, 2014, e-Learn Webcast; sponsored by King & Spalding);

  • “New and Anticipated Rulemaking:  Status Report on the 100-Day Pilot Program and Other Key Initiatives, and Issues Affecting Method Claims” (February 26-27, 2014, Washington, D.C.; ITC Litigation Conference sponsored by American Conference Institute);

  • “Inter Partes Review, Post Grant-Review, Supplemental Examination, and Their Effect on Hatch-Waxman Litigation” (November 19, 2013, Philadelphia; King & Spalding’s 6th Annual Pharma University);

  • “Choosing a Hatch-Waxman Forum – District of New Jersey, District of Delaware or Southern District of New York?” (October 30, 2013, e-Learn Webcast; sponsored by King & Spalding);

  • “Recent Developments in ITC Section 337 Investigations” (September 25, 2013, e-Learn Webcast; sponsored by King & Spalding);

  • “Strategic Procedural Considerations for Effectively Managing Parallel Proceedings:  ITC, Federal District Court, Reexamination, International Venues” co-presented with Jerry Huang, Vice President Legal Affairs, Vizio (June 27-28, 2013, Washington, D.C.; ITC Litigation Conference sponsored by Momentum);

  • “Updated Developments in ITC Section 337 Investigations” moderated panel including Vaishali Udupa, IP Litigation Counsel of Hewlett-Packard, and Vanessa Bailey, IP Counsel of Nokia Siemens Networks (March 19, 2013, Washington, D.C.; U.S. Patent Forum sponsored by Managing Intellectual Property);

  • “Focus on Hatch-Waxman Litigation:  Best Practices for Pre-Suit Investigations and Preparing Inventors/Prosecuting Attorneys for Deposition” (November 27, 2012, Philadelphia; King & Spalding’s 5th Annual Pharma University);

  • “Cost Effective Strategies for Successful Fact Finding and Subpoena Practice:  How to Obtain the Information You Need from Discovery during Litigation at the ITC” (October 29-30, 2012, San Francisco; Managing Complex ITC Litigation sponsored by American Conference Institute);

  • “The ITC:  An Ideal Forum for Patent Cases Involving Imports” (June 2012, Interview for The Metropolitan Corporate Counsel, Vol. 20, No. 6);

  • “Patent Litigation at the ITC:  View from the ITC In-House Attorneys and Outside Counsel” (April 26, 2012, Seton Hall University School of Law, Moderator for In-House Panel Comprising Edward Murray (Merck), Jamie Seigel (Sony), Elaine Drager (Alcatel-Lucent), Vaishali Udupa (Hewlett-Packard), Gabriel Kralik (PPC); sponsored by New Jersey Intellectual Property Law Association);

  •  “Litigation of Electronics, Telecom and Software Patents Before the ITC” (November 9, 2011, New Brunswick, New Jersey; sponsored by the New Jersey Intellectual Property Law Association), co-panelist with ITC Judge Robert Rogers;

  • “Going to Trial at the ITC & Maximizing Available Remedies” (February 23-24, 2011, New York City; ITC Litigation and Enforcement Conference sponsored by American Conference Institute);

  • “Discovery Strategies and Other Pre-Trial Tactics for Brand Names and Generics” (May 3-4, 2011, New York City; Paragraph IV Disputes Conference sponsored by American Conference Institute);

  • “Evaluating Where To Litigate International IP Disputes: Key Differences Between The International Trade Commission And District Court Actions” (October 15, 2010, CLE Luncheon at The Harvard Club, New York City; sponsored by The New York Intellectual Property Law Association);

  • “Forum On Foreign Intellectual Property Issues” focusing on ITC and Federal District Court Rocket Docket patent litigation (June 30, 2010 Shangri La Suzhou Hotel, 168 Ta Yuan Road Suzhou National New & High Tech Industrial Dev't Zone, Suzhou 215011, China);  and

  • “Forum On Foreign Intellectual Property Issues” focusing on Building and Maintaining a Strong U.S. Patent Portfolio and Licensing Program (July 1, 2010 Legendale Hotel Beijing, #90-92 Jimbao Street Dongcheng District, Beijing, P.R. China 100005).

Recent Publications

A frequent author and editor, Tony has written accompanying articles on the foregoing lecture topics, has been a co-author of King & Spalding’s bi-monthly feature ITC Section 337 Update and  has been a co-author of a monthly feature article in China IP magazine. Tony has been an Editor of the ITCTLA 337 Reporter Summer Associate Edition. Each year he is also a sponsor for a King & Spalding summer associate to author an article published in the ITCTLA 337 Reporter Summer Associate Edition. Tony's “President's Message” is included in 337 Reporter Vol. XXV (Autumn 2009) issued by the ITCTLA. Some of Tony’s more recent publications include:

  • Pezzano, Tony V. and Telep, Jeffrey M., “Latest Developments on Injunctive Relief for Infringement of FRAND-Encumbered SEPs”, Intellectual Property & Technology Law Journal (Parts I, II and III) Vol. 26, Nos. 2-4 (February, March, April 2014);

  • Pezzano, Tony V., Hughes, Christopher A., Stevens, Kent R., “Strategies And Procedures For Claim Construction And Summary Determination In Section 337 Investigations Before The United States International Trade Commission” (U.S. Section 337 Investigation Case Analysis compiled by The Bureau of Fair Trade for Imports and Exports, the Ministry of Commerce of the People's Republic of China (2012));

  • Pezzano, Tony V., Stevens, Kent R., Lee, Vinny, Gu, Ping, “Early Development Of Redesign Products To Avoid Potential Adverse Consequences Of An ITC Exclusion Order” (China IP Magazine, February 2011);

  • Pezzano, Tony V., Hughes, Christopher A., Stevens, Kent R., “In 337 Cases, Chinese Companies Are Becoming More And More Confident” (China Intellectual Property News, November 3, 2010);

  • Pezzano, Tony V., Stevens, Kent R., Liao, Jeffrey, Gu, Ping, “Mediation Of ITC Section 337 Patent Litigations - Opportunities For Resolving And Terminating An ITC Section 337 Patent Case” (China IP Magazine, November 2010);

  • Pezzano, Tony V., Stevens, Kent R., Lee, Vinny, Gu, Ping, “Strategies And Procedures For Claim Construction In Section 337 Investigations Before The United States International Trade Commission” (China IP Magazine, June 2010); and

  • Pezzano, Tony V., Stevens, Kent R., Liao, Jeffrey, Gu, Ping, “Responding To A Complaint And Notice Of Investigation In Section 337 Investigations Before the United States International Trade Commission” (China IP Magazine, February 2010).

Tony is an annual member of the American Intellectual Property Law Association, New York Intellectual Property Law Association and ITCTLA.
Tony received a B.S. in Engineering Mechanics from Columbia University and his J.D. from the Hofstra University School of Law.

Tony was admitted to the Bar, 1990, New York; 1992, U.S. Court of Appeals for the Federal Circuit and U.S. District Court, Southern and Eastern Districts of New York; 2003, U.S. District Court for the District of Colorado; and registered to practice, 1994, before the U.S. Patent and Trademark Office.
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New York
U.S. District Court for the District of Colorado
U.S. Patent and Trademark Office