Polsinelli

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Phone: 646.289.6513

Tedd W. Van Buskirk

Shareholder

Tedd Van Buskirk is a shareholder in the firm's New York office and is a member of the Intellectual Property and Technology Litigation group. 

Mr. Van Buskirk's practice focuses primarily on intellectual property litigation (at both the trial and appellate levels), including patent, trademark, trade secret, unfair competition and related antitrust issues, with an emphasis on pharmaceuticals and medical devices. Over the course of his career, Mr. Van Buskirk's practice has encompassed a variety of technologies, including medical devices, pharmaceuticals, foods, chemicals, biotechnology, consumer products, toys, telecommunications, computer hardware and software, and electronics.  He has appeared in courts across the country in all phases of litigation from filing through trial.

Mr. Van Buskirk has litigated and arbitrated dozens of patent cases involving both branded and generic drugs, active pharmaceutical ingredients, food ingredients and supplements, enzymes, gastric bands, breast implants, tissue expanders, livestock technology, and consumer products, among others. He has significant experience counseling clients in and litigating ANDA cases arising out of the complex intersection of the patent and FDA laws relating to the Hatch-Waxman amendments to the Federal Food, Drug & Cosmetic Act.

In addition to his litigation practice, Mr. Van Buskirk is a registered patent attorney who prepares and prosecutes patent and trademark applications and handles patents interferences, post grant proceedings and trademark oppositions. He also delivers opinions on the scope, validity and enforceability of patents, and counsels established and emerging companies, venture capital and private equity firms, and underwriters in intellectual property licensing and transactional matters.

Memberships and Affiliations

  • American Intellectual Property Law Association
  • International Trademark Association
  • New York Intellectual Property Law Association
  • Intellectual Property Owners Association
  • Juvenile Diabetes Research Foundation, IP Task Force

Distinctions

  • AV® Preeminent™ Rated, Martindale Hubbell, highest possible rating for legal competence and ethical standards

Experience

  • Lead counsel for Noven Pharmaceuticals, Inc. in pending Hatch-Waxman litigation over LIDODERM® (lidocaine patch 5%) brought by Endo Pharmaceuticals. 
  • Lead counsel for Taro Pharmaceutical Industries Ltd. and Taro Pharmaceuticals U.S.A., Inc. in Hatch-Waxman litigation over VANOS® (fluocinonide) cream 0.1% brought by Medicis Pharmaceutical Corp. Achieved favorable settlement of dismissal with prejudice and early generic entry for Taro.
  • Lead counsel for Taro in Hatch-Waxman litigation involving the anticonvulsant drug CARBATROL® (carbamazepine). Obtained a covenant not to sue and license from Shire LLC.
  • Secured trial verdict and permanent injunction in favor of Takeda Pharmaceutical Company Ltd. in Hatch-Waxman litigation to protect PREVACID® (lansoprazole) from a challenge by Teva, the world's largest generic pharmaceutical company. PREVACID, a proton pump inhibitor, was one of the top-10 selling drugs in the world with annual sales in excess of $4 billion.
  • Represented Takeda in Hatch-Waxman litigation to protect PREVACID® SoluTab (lansoprazole orally disintegrating tables) from generic entry by Teva and Barr.
  • Lead counsel for defendant Inamed Corporation in patent infringement action brought by Dr. Daniel Brauman over textured silicone breast implants.
    Obtained dismissal of a patent infringement action against API manufacturer Medichem, S.A. and then successfully pursued concurrent judicial and USPTO interference actions against Rolabo, S.L. involving loratadine, the active pharmaceutical ingredient in CLARITIN®.
  • Obtained summary judgment of non-infringement and invalidity on behalf of Alphapharm Pty Ltd., Par Pharmaceutical, Inc., Pharmaceutical Resources Inc. and Genpharm Inc. against Organon and Akzo Nobel N.V. involving the antidepressant drug REMERON® (mirtazapine). Successfully pursued antitrust claims on behalf of clients along with State Attorneys General and various class plaintiffs in follow-on litigation.
  • Obtained a covenant not to sue from GlaxoSmithKline after seeking a declaratory judgment of non-infringement by Mutual Pharmaceutical Company, Inc. involving the anti-emetic drug ZOFRAN® (ondansetron).
  • Represented Danisco A/S in patent ownership dispute against Novo Nordisk A/S and Novozymes A/S involving food enzymes and lipase technology.
  • Represented Mutual and United Research Labs in Hatch-Waxman litigation with CollaGenex Pharmaceuticals, Inc. involving PERIOSTAT® (doxycycline hyclate) and as an intervenor defendant in a related Administrative Procedure Act case against FDA.
  • Represented Glaxo, Inc. and Glaxo Group Limited in multiple Hatch-Waxman patent infringement litigations against Genpharm, Novopharm (now Teva), Hoechst Marion Roussel, Chelsea (now Watson), Torpharm and Apotex involving ZANTAC® (ranitidine HCl), the single most valuable patent franchise of the 1990s.
  • Obtained trial judgment in favor of Pfizer, Inc. against overseas manufacturers and suppliers of food additives in one of the first reported cases brought under the Process Patent Amendments Act of 1988.
  • Established, developed and managed worldwide patent portfolio directed to more than 50 active pharmaceutical ingredients for two Spanish-based pharmaceutical companies.

Publications & Presentations

Presentations
  • The Throwing of the Gauntlet:  the Paragraph IV Notice Letter, Paragraph IV Disputes, American Conference Institute, 2012
  • Litigating with Multiple ANDA Filers: Brand Name and Generic Perspectives, Paragraph IV Disputes, American Conference Institute, 2010
  • Patent and IP Overview for Drugs and Biologics: Hatch-Waxman, Trade Dress, and More, FDA Boot Camp, American Conference Institute, 2010
  • Patent and IP Overview for Drugs and Biologics: Hatch-Waxman, Trade Dress, and More, 10th Anniversary Maximizing Pharmaceutical Patent Life Cycles," American Conference Institute, 2009
  • Controlling Spiraling Costs as Pipelines Get Filled and Portfolios Go Global, Pharma/Biotech Industry Forum on Patent Portfolio Management," American Conference Institute, 2007
  • Let the Games Begin: The Start of the Paragraph IV Lawsuit - New Considerations, Challenges and Allegations, Paragraph IV Disputes, American Conference Institute, 2007
  • Updated Guidelines for Paragraph IV Certifications and Notice Letters, Maximizing Pharmaceutical Patent Life Cycles, American Conference Institute, 2006
  • Preparation and Submission of Paragraph IV Certifications and Notice Letters, Maximizing Pharmaceutical Patent Life Cycles, American Conference Institute, 2005
2011
Top 20 Food and Drug Cases, 2010 & Cases to Watch, 2011, FDLI, Reiss, ed.2010
November 11, 2010
December 12, 2007
1998-2001
December 1998