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.
Mr. Nemec is part of the Skadden IP Litigation Group that was named a Powerhouse in BTI Litigation Outlook 2018; a leading firm in the trademark field by World Trademark Review in 2018; ranked as a nationwide Tier 1 firm for intellectual property litigation by U.S. News — Best Lawyers Best Law Firms; and named to The National Law Journal’s Intellectual Property Hot List for multiple years. Mr. Nemec also was named to Intellectual Asset Management’s 2019 IAM Patent 1000, Chambers USA 2019 and as a 2017 BTI Client Service All-Star by BTI Consulting Group. He also has been recognized as a leader in IP by Managing IP and LMG Life Sciences.
Selected engagements in which Mr. Nemec has served a lead role include:
- 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;
- 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;
- representing security software company Inside Secure in successful resolution of breach of contract and patent claims asserted by a former customer in state and federal court in California;
- 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.
- Panelist, "The Supreme Court’s Decision in Oil States," 35th Annual Joint Patent Practice Seminar, May 2, 2019, New York, New York
- Panelist, "Trade Secrets Protection, Enforcement & Litigation," Sandpiper Partners, February 26, 2019, New York, New York
- Co-Presenter, "When Employee and Collaborative Business Relationships Dissolve," IP Law and Management Institute, November 5, 2018, Pasadena, California
- Speaker, Nevada State Bar Association Annual Meeting, "All It Takes Is One Bad Apple: An Ethics Update For IP Lawyers," October 5, 2018, Las Vegas, Nevada
- 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
- Co-Chair, PLI Patent Law Institute 2006-2019, New York and San Francisco
- Moderator, PTAB Trials: Tips and Strategies, New York Intellectual Property Law Association, June 8, 2016