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Douglas R. Nemec

Partner

Partner

Patent Litigation

New York

T: +1.212.735.2419

F: 1.917.777.2419

douglas.nemec@skadden.com

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Douglas R. Nemec concentrates on intellectual property litigation and related counseling, including providing intellectual property advice in connection with corporate transactions. Mr. Nemec has litigated numerous cases in a wide range of technologies, from pharmaceuticals and other chemicals to IT and electronics. He has particular experience in life sciences matters, including patent litigation under the Hatch-Waxman Act. Mr. Nemec also is registered to practice before the U.S. Patent and Trademark Office, where he represents clients in proceedings before the Patent Trial and Appeal Board and other matters.

He is a member of the Skadden group recognized by BTI Consulting as one of the top legal advisers general counsel turn to for pharmaceutical work; by Law360 among its 2015 Technology Practice Groups of the Year for courtroom victories in the technology sector; and by The National Law Journal as one of the country’s leading IP practices in its IP Hot List for multiple years. Mr. Nemec is frequently involved with life sciences matters that the group handles, including defense of patent infringment claims, enforcement of patent and other IP rights and inter partes reviews related to the treatment of a variety of ailments and diseases.

Selected engagements in which Mr. Nemec has served a lead role include:

  • advising Pfizer Inc. in its proposed $160 billion combination with Allergan plc;
  • JPMorgan Chase in:

    • an appelate victory against Pi-Net after Pi-Net filed a brief that failed to comply with the Rules of Appelate Procedure; and
    • securing summary judgment in a patent infringement case brought by Pi-Net concerning a system and method for performing online transactions;
  • a victory in the U.S. Court of Appeals for the Federal Circuit for a manufacturer of catalyst materials and pharmaceutical ingredients in a lawsuit concerning the active ingredient in Vyvanse;
  • representing a leading flavor and fragrance company in a trade secret misappropriation action concerning chemical and process engineering technology;
  • representing the world’s leading manufacturer of intelligent lighting products in multiple matters asserting and defending against claims of patent infringement involving complex optical devices and digital communication systems; and
  • advising a major pharmaceutical company in formulating licensing strategies for developmental compounds and diagnostic tools.


Presentations (2010-Present)

  • Co-Chair, PLI Patent Law Institute 2006-2016, New York and San Francisco
  • Moderator, PTAB Trials: Tips and Strategies, New York Intellectual Property Law Association, June 8, 2016
  • Speaker, 14th Annual Silicon Valley Patent Law Institute, “Safeguarding Confidential and Privileged Information in Complex Litigation,” Palo Alto, Calif., Dec. 13, 2013
  • Panelist, Association of University Technology Managers Annual Meeting, “WIPO Expedited Arbitration,” San Antonio, Texas, Feb. 28, 2013
  • Speaker, AIPLA Annual Meeting, “Ethical Considerations in Patent Litigation,” Nov. 26, 2012
  • Presenter, “All Roads Lead To Markman: Why Claim Construction Is As Important As Trial,” BNA Webinar, Oct. 15, 2012
  • Presenter, “The Role of the Specification in Claim Construction: Is It a Guidepost or a Fence?” BNA Webinar, June 15, 2011
  • Panelist, “Arbitration and Mediation in Commercial Disputes,” Delaware Valley Corporate Counsel Association In House Counsel Conference, May 6, 2010

Bar Admissions

U.S. District Courts for the Eastern District of Michigan, Eastern District of Wisconsin, and Southern and Eastern Districts of New York
U.S. Courts of Appeals for the Second and Federal Circuits
U.S. Patent and Trademark Office
U.S. Supreme Court
New York

Education

J.D., University of Minnesota Law School, 1996

B.S.E., Bioengineering, University of Pennsylvania, 1993

Associations

American Intellectual Property Law Association

New York Intellectual Property Law Association