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Matthew L. Fedowitz

Partner

“I look at legal issues from my client's business perspective in order to achieve the most effective outcome.”
Contact Me
sidebar_phonePhone: 703.684.2526

1701 Duke Street
Suite 310
Alexandria, VA  22314

tel: 703.684.2500

fax: 703.684.2501

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Contact My Assistant

sidebar_phonePhone: 703.684.2507

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Overview

Matthew has a broad intellectual property practice that includes federal district court litigation particularly in the Hatch-Waxman arena, inter partes proceedings at the Patent Trial and Appeal Board as well as Section 337 investigations at the International Trade Commission. 

Matthew also has significant experience in the identification of pharmaceutical products for generic manufacturers; clearance analyses of pharmaceuticals and medical devices; the preparation of patent validity, freedom-to-operate and non-infringement opinions; developing strategies with regard to REMS (Risk Evaluation and Mitigation Strategies) designated pharmaceuticals; counseling on patent prosecution strategy and portfolio management in the U.S and abroad; reexaminations; reissues; and due diligence analysis for patent licensing and corporate transactions.

Matthew is a former patent examiner at the United States Patent and Trademark Office where he was responsible for patent applications relating to heterocyclic organic chemistry in the pharmaceutical and carbohydrate fields.

 

Education

University of Miami School of Law
J.D., 2004
 
University of Maryland
Pharm.D., 2001
 
Virginia Commonwealth University
B.S., 1996

Bar and Court Admissions

District of Columbia
Virginia
U.S. Court of Appeals, Federal Circuit
U.S. Patent and Trademark Office
Virginia Supreme Court

Professional Affiliations

American Bar Association
American Intellectual Property Law Association
Intellectual Property Owners Association (IPO)
Bar Association of the Disctrict of Columbia
   Treasurer

Representative Cases

G.D. Searle LLC and Pfizer Asia Pacific Pte. Ltd. v. Watson Laboratories, Inc., et al. Case No. 2:13-cv-121 (Eastern District of Virginia) - Represented Watson against G.D. Searle and Pfizer Asia Pacific against allegations of patent infringement in a Hatch-Waxman action regarding Celebrex®. The district court found the patent invalid
 
Horizon Pharma AG and Jagotec AG v. Watson Laboratories, Inc., Florida. Case No. 1:13-cv-05124 (District of New Jersey) - Challenging formulation patents on prednisone delayed release
 
Gilead Sciences, Inc. et al. v. Cipla Limited. Case No. 1:12-CV-06350 (Southern District of New York) - Challenging compound patents on emtricitabine.
 
Gilead Sciences, Inc. et al. v. Cipla Limited. Case No. 1:12-CV-06351 (Southern District of New York) - Challenging compound patents on tenofovir
 
Pfizer et al. v. Breckenridge Pharmaceutical, Inc., Alembic Ltd., et al. Case No. 1:12-CV-00810 (District of Delaware) - Challenging compound patents on O-desmethylvenlafaxine succinate
 
Ferring B.V. v. Watson Laboratories, Inc., Florida. Case No. 3:11-CV-00481 (District of Nevada) - Challenging formulation claims on tranexamic acid tablets
 
Warner Chilcott Company and Warner Chilcott (US), LLC v. Watson Laboratories, Inc., Florida. Case No. 11-5989 (District of New Jersey) - Challenging formulation patents on risedronate sodium
 
Represents and advises generic pharmaceutical manufacturers on strategies for obtaining samples of REMS (Risk Evaluation and Mitigation Strategies) designated products.
 
Reckitt Benckiser, Inc. v. Watson Laboratories, Inc., Florida, Case No. 09-60609 (Southern District of Florida) - Won a seven-day trial defending Watson Laboratories, Inc., against allegations of patent infringement in a Hatch-Waxman action regarding extended release guaifenesin
 
In re Brimonidine Patent Litigation, Civil Action No. 07-MD-01866 (District of Delaware) - Represented Exela PharmSci., Inc., in a patent infringement action under the Hatch-Waxman Act brought by Allergan regarding brimonidine tartrate
 
Certain Sucralose, Sweeteners Containing Sucralose, and Related Intermediate Compounds Thereof, Inv. No. 337-TA-604 - Represented six different respondents, including two manufacturers in China, in a case brought by Tate & Lyle alleging infringement of process patents relating to the production of sucralose and certain intermediate compounds. In September 2008, the ALJ issued an initial determination finding no violation by our clients based on non-infringement and other grounds. On April 4, 2009, after a full review of the decision, the commission upheld the ALJ's findings that there was no violation of Section 337, resulting in a complete victory for our clients.
 
Yu et al (Human Genome Sciences, Inc.) v. Browning et al (Biogen Idec) Browning v. Yu, Interference No. 105,485 - Represented Human Genome Sciences in an interference proceeding relating to LymphoStat-B, a human monoclonal antibody that inhibits the biological activity of B-lymphocyte stimulator (BLyS), before the U.S. Patent and Trademark Office Board of Patent Appeals and Interferences
 
Enzo Therapeutics, Inc. v. Yeda Research & Dev. Co., (Eastern District of Virginia) 467 F. Supp.2d 579, 477 F. Supp.2d 699 - Represented Yeda Research and Development Co. in a 146 Action involving interferon-β2
 
DeLucas (Fluidigm Corp.) v. Santarsiero (Takeda San Diego), Interference No. 105,403 - Represented Fluidigm Corp. in an interference where the Board of Patent Appeals and Interferences invalidated more than 400 claims from Takeda San Diego's patents
  
Represents clients involved in inter partes disputes before the United States Patent and Trademark Office’s Patent Trial and Appeal Board 
 
Regularly represents generic pharmaceutical clients in the review, identification and analysis of competitor's patents for target products
 
Frequently prepares opinions and countless product clearance evaluations as well as representing investors in patent diligence matters for chemical, medical device, life science and pharmaceutical companies
 

Publications & Speaking

Interviewed for article, Animal power, IP Pro by Franki Webb 
Barring Pay-For-Delay, Reverse Payment Settlements, Law360 (October 2009)