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. He represents the world's largest generic pharmaceutical companies in Hatch-Waxman cases throughout the country. His work on these critical cases is part of a larger practice advising numerous multi-national companies (pharmaceutical and otherwise) on their respective IP needs – particularly when it comes to "bet the company" litigations. Deepro is a first chair litigator, and has tried bench and jury trials across the country.
Hatch-Waxman litigation and more
Deepro has been lead trial counsel in dozens of Hatch-Waxman cases, often taking them to trial and subsequent appeals. He is also experienced at handling inter partes review proceedings before the Patent Trial and Appeal Board. While his focus is in the pharmaceutical and life sciences arena, Deepro's litigation experience is more expansive and covers matters related to biotechnology, botanicals, electrical circuit interrupting devices 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 practioners list for seven years in a row and was designated an "IP Star" by Managing Intellectual Property for the second consecutive year in 2021.
- Hatch-Waxman and bio-similars litigation
- Intellectual property litigation
- Patent litigation
- Corporate IP Counseling
- Lead trial counsel for some of the world's largest generic pharmaceutical companies in several Hatch-Waxman litigations throughout the country.
- Lead trial counsel for Mylan in 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. Co-counsel for same client in patent infringement action in the US District Court for the District of Alabama.
- 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 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.
- Lead trial counsel in the US District Court for the District of Delaware involving patents associated with the treatment of patients with metastatic colorectal cancer using regorafenib.
- 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 in US District Court for the Middle District of Florida involving patent directed to controlled release of mesalamine. Obtained Rule 36 affirmance from US Court of Appeals for the Federal Circuit affirming original trial court victory. Affirmance was entered less than 24 hours after oral argument.
- 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 a patent associated with the treatment of inflammatory and pruritic manifestations of corticosteroid-responsive dermatoses in patients aged 12 years or older using Olux-E®.
- 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 high-end jewelry designer in copyright infringement matter involving novel questions of law relating to the availability of copyright protection for jewelry designs. Case settled. *
- 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. *
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April 26, 2021
December 10, 2020
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July 12, 2021
November 24, 2020
August 5, 2020
May 19, 2020
January 25, 2019
Presentations and Events
April 26–27, 2021Panelist | 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, 2020Panelist | In-House Perspectives on The Future of IP Teams and Working with Outside Counsel