Summary

Steve Feldman is the head of Hahn Loeser’s Intellectual Property Practice Area and the Partner-In-Charge of the Chicago office. He focuses his practice on complex intellectual property litigation, prosecution and counseling involving patents, trade secrets, trademarks and unfair competition, copyrights and associated licensing and due diligence, both domestically and internationally. A seasoned trial lawyer and patent attorney, Steve has taken a lead role in trials, Markman hearings and appeals. Steve also regularly supports clients on corporate transactions and due diligence and helps clients to build and manage strategic patent and trademark portfolios worldwide.

With a background in materials science and engineering, Steve’s practice encompasses a wide variety of phamaceutical, medical, chemical and materials related technologies, including steel, aluminum alloys with nano-particulate additives, NiCoCrALY based coatings and superalloys, heat treatments, rare earth magnets, polymer materials and additives, printing and color pigments, high brightness LEDs and other lighting technologies, semiconductor lasers, automotive and aerospace parts and systems, receivers and transmission devices, alternative energy technologies including clean coal, biofuels, ethanol processing and solar cells, color management software and hardware and medical diagnostic and analytical devices.

Steve has extensive experience litigating chemical and pharmaceutical cases at the trial and appellate levels, including cases involving Hatch-Waxman patent infringement litigation pertaining to prescription pharmaceuticals. He has taken a lead role in cases involving a number of major drugs, including invalidating patents relating to Norvasc®, Boniva® and Actonel®. Other cases of note involve the drugs Floxin Otic® (in a case that resulted in a $5 million award to a generic client), Antara®, Aripiprazole OLSO®, Uroxatral®, Eloxatin®, Ultracet®, Omnaris®, Benicar®, Lotrel®, Zometa®, Reclast®, Treanda®, and Plavix®. Steve also provides strategic counseling regarding Food and Drug Administration (FDA) marketing exclusivities arising out of Abbreviated New Drug Application (ANDA) patent infringement litigation and has litigated such matters in the U.S. District Court, District of Columbia, and the U.S. Court of Appeals, District of Columbia Circuit. Additionally, he has negotiated and overseen large-scale patent licensing programs in the pharmaceutical and biotechnology areas and has experience with related FTC and antitrust issues arising out of pharmaceutical settlements.

Steve also regularly advises medical and analytic instrument manufacturers, research medical centers, certification boards and doctors concerning a variety of intellectual property issues, and has served on the faculty of the American Congress of Neurological Surgeons (2009-2010). Steve’s experience encompasses a wide range of medical and diagnostic device technologies, including cancer and other diagnostic assays, surgical tools, dialysis machines, radio frequency (RF) steering mechanisms and locating systems, surgical robots, MRI, CAT scan and PET imaging devices, ultrasonic imaging systems, healthcare management tools, and dental implants and devices.

Steve’s practice also includes representing clients in matters involving the protection and enforcement of trade secrets, and has assisted clients in implementing trade secrets audit and protection programs, negotiating joint venture agreements and preparing effective confidentiality/nondisclosure arrangements.

A nationally recognized leader in intellectual property matters, Steve is a frequent lecturer and also is a member of the George Washington University Intellectual Property Advisory Board and the Northwestern University Institute for Sustainable Energy Executive Counsel.

  • Lead counsel for Apotex in a significant jurisdictional case where the Court of Appeals for the Federal Circuit held that Apotex has standing as a subsequent ANDA filer to challenge one of Daiichi’s Orange Book listed patents for the drug Omnaris® (olmesartan medoxomil), despite the patent having been disclaimed by Daiichi. Apotex, Inc. v. Daiichi Sanykyo, Inc..,781 F.3d 1356 (Fed. 2015). Thereafter we successfully defeated Daiichi’s and Mylan’s efforts to obtain review of the case by the U.S. Supreme Court.  Daiichi Sankyo, Inc. v. Apotex, Inc. --- S.Ct. ----, 2015 WL 5176392, 84 USLW 3123 (2015); Mylan v. Apotex,  Inc. cert. denied , --- S.Ct. ----, 2015 WL 5310047, 84 USLW 3123 (2015).
  • Lead counsel for Apotex in defeating Hoffman Roche’s motion for preliminary injunction to prevent the launch by Apotex of a generic version of the osteoporosis drug, Boniva® (ibandronate), which enabled client to launch as a first filer. Hoffmann–La Roche Inc. v. Apotex Inc., 496 Fed.Appx. 46 (Fed.Cir.2012). Subsequently, the district court granted motion for summary judgment finding that Hoffman La Roche’s patents were invalid for obviousness. Hoffmann-La Roche Inc. v. Apotex Inc., et al. (D.N.J. 2012). The decision was affirmed on appeal by the Court of Appeals for the Federal Circuit. Hoffman LaRoche v. Apotex, Inc., 748 F.3d 1326 (Fed. Cir. 2014).
  • Lead counsel for Illinois Tool Works in patent infringement case involving enforcement of company patent on its innovative polyester/polyolefin packaging technology. Case ultimately settled. Illinois Tool Works Inc. v. Samuel Son & Co. Ltd. and Samuel Strapping Systems Inc. (N.D. Illinois 2012).
  • Counsel for Rockwell International Corp. in numerous patent infringement lawsuits and in worldwide licensing programs involving metalorganic chemical vapour deposition (MOCVD) semiconductor processing technology pertaining to high brightness LEDs, semiconductor lasers, solar cells and other semiconductor devices.

Credentials

Education

George Washington University Law School J.D., with honors 1995

 

Northwestern University. B.S., Materials Science and Engineering, 1992

Memberships & Affiliations

American Bar Association, Member

 

American Intellectual Property Bar Association, Member

 

George Washington University Law School Intellectual Property, Member, Advisory Board

 

Intellectual Property Law Association of Chicago, Member

 

Licensing Executives Society, Member

 

Northwestern University Institute for Sustainability and Energy, Member, Executive Counsel

 

 

Bar Admissions

U.S. Supreme Court

 

U.S. Court of Appeals for the Federal Circuit

 

U.S. Court of Appeals for the District of Columbia Circuit

 

U.S. Court of Appeals for the Seventh Circuit

 

U.S. District Court for the Northern District of Illinois, Trial Bar

 

U.S. District Court for the Eastern District of Wisconsin

 

Illinois Supreme Court

 

U.S. Patent and Trademark Office