Douglas R. Nemec

In the diverse range of matters Mr. Nemec has led in state and federal courts from coast to coast, he has obtained positive results for clients in matters ranging from patent infringement to trade secrets to high-stakes licensing disputes. The technologies involved have been equally wide-ranging. With a background in bioengineering, Mr. Nemec has a particular fondness for life sciences matters, but has equal aptitude helping judges and juries to understand technological matters involving computers, electronics, industrial chemicals and mechanical structures.

Working alongside Skadden’s corporate practice, Mr. Nemec has significant experience beyond litigation, including advising on mergers and acquisitions, licensing, and general IP counseling. As a registered patent attorney, he also represents clients in matters before the U.S. Patent and Trademark Office, which has become an important complement to the firm’s IP litigation practice. Additionally, in life sciences matters, Mr. Nemec has advised on defense of patent infringement claims, enforcement of patent and other IP rights, and inter partes reviews related to the treatment of a variety of ailments and diseases.

Skadden’s IP Litigation Group has been named a Powerhouse in BTI Litigation Outlook, recognized as a leading firm in the trademark field by World Trademark Review, ranked as a nationwide Tier 1 firm for intellectual property litigation by U.S. News — Best Lawyers Best Law Firms and selected to The National Law Journal’s Intellectual Property Hot List for multiple years. Mr. Nemec also individually has been named repeatedly to Chambers USA, The Best Lawyers in America and Lawdragon’s list of the 500 Leading Litigators in America, in addition to previously being selected to Intellectual Asset Management’s IAM Patent 1000 and as a BTI Client Service All-Star by BTI Consulting Group. He also has been recognized as an IP Star and Patent Star by Managing IP and a leader in the field by LMG Life Sciences.

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

• securing a jury verdict for defendant Universal Alloy Corporation in a trade secret misappropriation case concerning aluminum alloy aircraft parts brought by Arconic Corp. (f/k/a Alcoa) in the Northern District of Georgia
• obtaining affirmance at the Federal Circuit of a District of Delaware Rule 12(b)(6) Alice dismissal of patent infringement claims brought by RealTime Data against network security company Fortinet, Inc.
• representing JP Morgan Chase as lead counsel in multiple patent infringement matters, including securing findings of non-infringement and patent invalidity at the trial and appellate court levels in Delaware, California and the Federal Circuit
• pursuing claims for breach of contract and breach of fiduciary duties on behalf of Cellectar Biosciences, Inc. in Wisconsin federal court, relating to the wrongful assignment of cancer drug delivery mechanisms
• defending Dell in a software copyright, Lanham Act and breach of contract action in Massachusetts federal court brought by a former software and services provider
• securing a complete defense verdict in Wisconsin state court on behalf of a subsidiary of food services technology company Middleby in a case alleging unfair competition and violation of state patent notification laws
• defending Caterpillar against patent infringement claims asserted by an after-market parts supplier and pursuing counterclaims, including copyright infringement, false advertising and unfair competition, in the same matter in Chicago federal court
• asserting claims of patent infringement on behalf of network security company Fortinet and defending reciprocal counterclaims of patent infringement and tortious interference in San Francisco federal court
• defending a group of refined coal technology companies in Delaware federal court against claims of patent infringement concerning mercury emission reduction techniques

Presentations (2016-Present)

• Co-Chair, PLI Patent Law Institute 2006-2021, New York and San Francisco
• Speaker, Nevada State Bar Association Annual Meeting, Keynote Speaker on Ethics, 2016-2021, Las Vegas
• Panelist, “The Supreme Court’s Decision in Oil States,” 35th Annual Joint Patent Practice Seminar, May 2, 2019, New York
• Panelist, “Trade Secrets Protection, Enforcement & Litigation,” Sandpiper Partners, February 26, 2019, New York
• Co-Presenter, “When Employee and Collaborative Business Relationships Dissolve,” IP Law and Management Institute, November 5, 2018, Pasadena, California
• Co-Presenter, “Think Tank Session: IP Litigation — Best Practices for IP Counsel,” International Performance Management Institute, IP Law and Management Institute, November 5, 2017, Austin, Texas
• Co-Presenter, “There Are Two Sides to Every Story: Thematic Considerations of Proving and Defending Trade Secrets Claims,” Managing Intellectual Property Trade Secrets Forum 2017, September 26, 2017, Palo Alto, California
• Moderator, PTAB Trials: Tips and Strategies, New York Intellectual Property Law Association, June 8, 2016