Deepro R. Mukerjee

Representative Experience

• Counsel for the implantable medical device business line of a global materials science company.
• Lead trial counsel for some of the world's largest generic pharmaceutical companies in over a dozen currently pending Hatch-Waxman litigations throughout the country.
• Counsel for a multi-billion dollar global provider of blood and plasma supplies and services, including patent portfolio development and strategy.
• Counsel for an international world leader in voice software, and specifically voice capture for leading organizations across financial, contact center, government and public safety sectors. Served as lead trial counsel in defending against a multi-patent litigation in the Southern District of New York. Successfully invalidated asserted claims at the claim construction stage.
• Counsel for one of the world’s largest career service providers linking job seekers to employers and vice versa. Served as lead trial counsel in multiple litigations and routinely handled cross-border transactional IP and corporate matters.
• Counsel for not-for-profit multi-type library consortium on all legal matters, including licensing, contracting, and IP protection.
• Lead trial counsel for premier processor and distributor of amniotic surgical tissue grafts in breach of contract and tortious interference case in the US District Court for the District of Maryland.
• Lead trial counsel for sponsorship-driven, social-media marketer in patent litigation in the US District Court for the Eastern District of Texas. Obtained a stay by petitioning the USPTO to accept a covered business method petition on several of the asserted patents. *

• Notable Achievements

• Lead trial counsel in the Northern District of West Virginia involving two patents related to the treatment of severe pulmonary arterial hypertension. Obtained a reversal of an unfavorable claim construction decision before the Federal Circuit and then obtained a trial decision of non-infringement on remand.
• Lead trial counsel in the US District Court for the District of Delaware involving a patent related to chronic lymphocytic leukemia using bendamustine. Obtained non-infringement judgment from the bench before even presenting our invalidity defense. Obtained a Rule 36 affirmance of that judgment on appeal days after oral argument was heard.
• Lead trial counsel in the District of Delaware involving a patent associated with the treatment of the pain of osteoarthritis of the knees. Obtained summary judgment that our client had a license to the asserted patent within six months of the complaint being filed.
• Lead trial counsel defending our client against a suit involving multiple patents associated with pre-colonoscopy cleansing using sodium picosulfate, magnesium oxide and anhydrous citric acid. Obtained judgment of non-infringement on both asserted Orange Book patents and attorneys’ fees with respect to a third patent.
• Lead trial counsel for Mylan in an infringement dispute regarding multiple patents for topical foam acne treatment Evoclin®. Defendant Glenmark Pharmaceuticals filed antitrust counterclaims in response. Successfully dismissed all such counterclaims.
• Co-counsel in US District Court for New Jersey involving multiple patents directed to a dipeptidyl peptidase-4 inhibitor and its use for treatment of Type II diabetes. Obtained favorable judgment at the district court level followed by an affirmance of invalidity of two patents as lead counsel on appeal.
• Lead trial counsel for one of the world's largest fresh produce distributors in a plant patent litigation in the US District Court for the Southern District of Florida. Obtained an apology from plaintiff for bringing the suit in the first place and a dismissal of all claims brought against our client. Also obtained acknowledgment that our client had an unrestricted right to practice the invention claimed in the plant patent all along.
• Lead trial counsel in US District Court for the District of Delaware involving patent that purports to be related to treatment of deep vein thrombosis using rivaroxaban.
• Lead trial counsel in multiple cases involving patents associated with the treatment of early-stage idiopathic Parkinson’s disease and moderate-to-severe restless legs syndrome using rotigotine. Obtained a Federal Circuit affirmance of invalidity of one patent, a grant of partial summary judgment in a follow-on litigation and ultimately settled on favorable terms prior to trial.
• Lead trial counsel for one of the world's largest fresh produce distributors in a breach of contract, trade dress infringement and fraud on a US Patent and Trademark Office case in the US District Court for the Central District of California. Obtained a favorable settlement, with defendant assigning the US Registration and EU Registration for the mark MANGO PRO to our client.
• Lead trial counsel in US District Court for the District of Delaware involving multiple patents associated with treatment of irritable bowel syndrome with constipation, and chronic idiopathic constipation using linaclotide.
• Lead trial counsel in US District Court for the District of Delaware involving multiple patents associated with the treatment of major depressive disorder using vortioxetine hydrobromide.
• Lead trial counsel in US District Court for the District of Delaware involving a patent associated with the treatment of HIV-1 infection in adults and pediatric patients weighing at least 40 kg using dolutegravir or abacavir, dolutegravir and lamivudine.
• Lead trial counsel for leading online provider of employment-related services in patent infringement action in the US District Court for the Southern District of California. Successfully argued a case-dispositive Markman hearing which led to favorable settlement.