About Deepro R. Mukerjee

Deepro R. Mukerjee is chair of Katten's global Intellectual Property practice and is a member of the firm's Board of Directors. Multi-billion dollar corporations, a major academic institution and some of the largest generic pharmaceutical companies in the world call on Deepro for their respective IP needs – particularly when it comes to complex or high-stakes litigations. Deepro is a first chair litigator, having tried numerous patent trials over his 20-year career. His cases are often featured by media outlets throughout the country.

Intellectual Property Litigation and IP Corporate Transactions

Deepro has been lead trial counsel in dozens of cases, often taking them to trial and subsequent appeals. He is also experienced at managing inter partes review proceedings before the Patent Trial and Appeal Board. While he is often noted for his successes in Hatch-Waxman litigations, Deepro's litigation experience is far more expansive and covers matters related to product manufacturing, biotechnology, botanicals, business methods, web-related services and voice recognition software.

In addition to his substantial litigation experience, Deepro often provides patent-centric due diligence and other intellectual property counsel to multinational clients in connection with transactions such as public offerings and venture capital financings. He also advises companies on how to best leverage their IP portfolios in connection with spin outs and exit strategies. A recognized industry leader, Deepro had been named to the IAM 1000 leading world-wide patent practitioners list for eight years in a row and was designated an "IP Star" by Managing Intellectual Property for the second consecutive year in 2021. 

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"Deepro is really solution-oriented; he comes up with multiple solutions for you and whichever you select, he helps you execute." "He is a natural leader, a strategic thinker, and an all-around extremely talented litigator." "Deepro is a fantastic attorney, brilliant strategist and a formidable adversary."

Chambers USA 2022
(New York, Intellectual Property: Patent) survey response

Practice Focus

  • Hatch-Waxman and bio-similars litigation
  • Intellectual property litigation
  • Patent litigation
  • Corporate IP Counseling
  • Medical device and healthcare litigation and counseling

Representative Experience

  • 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. We have served as lead trial counsel in litigation and also provide patent development support and strategy.
  • Counsel for one of the world’s largest career service providers linking job seekers to employers and vice versa. We have served as lead trial counsel in multiple litigations and routinely handle 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 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 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 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 the client. Also obtained acknowledgment that a client had an unrestricted right to practice the invention claimed in the plant patent all along.
  • Lead trial counsel in the US District Court for the District of New Jersey involving patents associated with the treatment of adults with multiple myeloma using lenalidomide.
  • Lead trial counsel in the US District Court for the District of Delaware 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 in the US District Court for the District of Delaware involving patents associated with a high-dose conditioning treatment prior to hematopoietic progenitor (stem) cell transplantation in patients with multiple myeloma using melphalan for injection.
  • 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 US District Court for the District of Delaware involving multiple patents associated with treatment of early-stage idiopathic Parkinson’s disease and moderate-to-severe restless legs syndrome using rotigotine.
  • 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.
  • 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.  *
* Experience prior to Katten

News

Publications

Presentations and Events

  • April 26–27, 2022
    17th Annual Paragraph IV Disputes Conference
    Speaker | The Business of PIV Disputes — Cross-Border Business Considerations in a Hatch-Waxman Scenario: Masterfully Managing Global Litigation
  • April 26–27, 2021
    15th Annual Paragraph IV Disputes
    Panelist | The Economics and Economy of Drug Patents with ACI’s Hatch-Waxman Series Advisory Board Members: Optimizing Product Selection, Identifying Targets for Litigation and Monetizing IP Portfolios
  • October 6–7, 2020
    14th Annual Paragraph IV Disputes
    Panelist | In-House Perspectives on The Future of IP Teams and Working with Outside Counsel
Practices
Industries
Education
  • Fordham University School of Law, JD
  • Fordham University, BS, summa cum laude
  • University of Oxford, BA
Bar Admissions
  • New York
Court Admissions
  • US Court of Appeals, Federal Circuit
  • US District Court, Southern District of New York
  • US District Court, Eastern District of New York
  • US Patent & Trademark Office
Community Involvements
  • American Intellectual Property Law Association
  • New York Intellectual Property Law Association
Recognitions
Recognized or listed in the following:
  • ANDA Litigation Intelligence Report
    Best Performing ANDA Attorneys overall (representing Plaintiffs or Defendants), 2020–2021
    Best Performing ANDA Attorneys representing Defendants, 2020-2022
    Top 100 Most Active ANDA Attorneys overall (representing Plaintiffs and Defendants), 2020–2022
    Top 100 Most Active ANDA Attorneys representing Defendants, 2020–2022
  • BTI Client Service All-Stars
    2020 and 2021
    2022, Elite MVP All-Stars
  • Chambers USA
    Intellectual Property: Patent, 2022
  • IAM Patent 1000
    Recognized Individual, 2014–2021
    Silver – Individual: Litigation, New York, 2022
  • Managing Intellectual Property
    IP Star – Patent, 2019–2022
    IP Stars Handbook, 2019-2021
    Litigator of the Year, New York – Finalist, 2022
  • The American Lawyer
    Northeast Trailblazer, 2022
  • The Legal 500 United States
    Recommended Attorney, 2022
Award Methodologies