Deepro Mukerjee, partner and chair of Katten’s global Intellectual Property practice, has been named in The American Lawyer’s second annual edition of Northeast Trailblazers. Launched in 2021, the Trailblazer series was developed as a special supplement to spotlight individuals who are agents of change in their respective practice areas.
In the 2022 list of Northeast Trailblazers, which recognizes professionals in the region "who have moved the needle in the legal industry," Deepro's profile provided a snapshot of the genesis and resolution of a significant plant patent case in which Katten's client prevailed. Fresh Directions International, one of the world’s largest fresh produce distributors, retained Deepro and his team of patent attorneys to act as defense counsel in one of the country's very few plant patent suits. In the suit brought in the US District Court for the Southern District of Florida, Fresh Directions was accused of selling and importing avocado fruits that allegedly infringed a plant patent to a specific avocado varietal, named Carla.
Aggressively pursuing counterclaims against the plaintiff and challenging the validity of the asserted patent, Katten's attorneys ultimately secured a Stipulation and Order under which Fresh Directions' unrestricted rights to the patent were publicly acknowledged and the case was dismissed with prejudice without any settlement agreement. Furthermore, the plaintiff issued a public apology for even bringing the suit. Deepro told The American Lawyer that the litigation’s final outcome "hopefully will deter others from bringing such lawsuits."
However, the Fresh Directions case has an even broader reach into the law governing plant patent lawsuits, demonstrating that "Section 102 [invalidity] arguments are fully applicable in the plant patent space."
Deepro told The American Lawyer that the Katten team's success in the case, as well as in other intellectual property areas, clearly "exemplifies how Katten provides a complete range of services for IP clients worldwide in all major industries whether regarding patents, names, logos, designs, trademarks, trade secrets or copyrights." Likewise, he noted that the efforts in the Fresh Directions litigation represent the type of zealous advocacy that "motivates some of the world's largest pharmaceutical companies to choose us as their go-to attorneys in high-stakes litigation."
Deepro has an industry-leading reputation for handling some of the most high-profile patent litigation covering a wide spectrum of matters, including cases related to complex pharmaceuticals and medical devices, biotechnology and voice recognition software. Recognized as leaders in litigation brought under the Hatch-Waxman Act, Katten's patent team is known for representing the world's largest generic pharmaceutical companies in Hatch-Waxman suits throughout the country.
"Northeast Trailblazers," The American Lawyer, June/July 2022