Matthew L. Fedowitz

Partner
Washington, D.C. area
1900 Duke Street, Suite 600
Alexandria, VA 22314
D: 703.684.2526
Contact My Assistant
Jennifer O'Connor Fay

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 District of Columbia
   Intellectual Property Section Chair 2015-2016
  Secretary 2016-2017

Awards & Recognition

IAM Patent 1000 – The World’s Leading Patent Practitioners, 2014-2017
Selected for inclusion in Virginia Rising Stars, 2014-2015
Selected for inclusion in Washington, D.C. Rising Stars, 2014-2015

Publications & Speaking

GMA Science Forum, Speaker: “Food Law 201:  Intellectual Property and Patents,” Washington, DC (April 2016)

GeNext Counsel, Congress and Awards, Speaker: “Mergers & Acquisitions – How to Excel in This Sphere,” Mumbai, India (March 2016)

GMA Legal Conference 2016, Speaker: “Tackle the IP Challenges Faced by Grocery Manufacturers and Retailers,” Palm Springs, CA (January 2016)

Current Developments in Inter Partes Review, Speaker, Denver, CO (October 2015)

Global IPR 2015 Conclave, Speaker: “Best Practices for Handling REMS Blockades,” Mumbai, India (September 2015)

Animal Power, IP Pro Life Science, Issue 015 (March 2014)

Barring Pay-For-Delay, Reverse Payment Settlements, Law360 (October 2009)

What is the TPP and where is it going? IP Pro Life Sciences, Issue 021 (June 2014)

Overview of the Patent Trial and Appeal Board, The Federal Lawyer (August 2014)

Overview of the Patent Trial and Appeal Board, The Computer & Internet Lawyer, Volume 31 (December 2014)

Matthew has a broad intellectual property practice ranging from life science and medical device patent portfolio development, management and strategic patent prosecution to litigation in federal district court and inter partes proceedings before the Patent Trial and Appeal Board. 

Matthew also has significant experience in the identification of pharmaceuticals and consumer products as business development opportunities; patent clearance analyses of chemical and life science products 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; patent reexaminations; patent 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 heterocyclic organic chemistry in the pharmaceutical and carbohydrate fields.

Representative Cases

Bayer Intellectual Property GMBH, et al vs Breckenridge Pharmaceutical, Inc. et al. Civil Action No.: 1:15-cv-00902-SLR (District of Delaware) – Challenging patents on rivaroxaban.

OSI Pharmaceuticals, LLC et al. vs Breckenridge Pharmaceutical, Inc. and Natco Pharma Ltd. Civil Action No.: 1:15-cv-00772-SLR-SRF (District of Delaware) – Challenging patents on erlotinib.

Ferring B.V., et al. vs Actavis, Inc., et al. Civil Action No.: 2:15-cv-04222-KSH-CLW (District of New Jersey) – Challenging patents on tranexamic acid.

Otsuka Pharmaceutical Co., Ltd vs Actavis, Inc. Civil Action No.: 1:14-cv-07106 (District of New Jersey) – Challenging patents on aripiprazole.

Novartis Pharmaceuticals Corporation and Novartis AG vs Breckenridge Pharmaceutical, Inc. Civil Action No.: 1:14-cv-01043 (District of Delaware) – Challenging patents on everolimus.

Sanofi and Sanofi-Aventis U.S. LLC v. Alembic Pharmaceuticals Limited, Civil Action No.: 14-424 (District of Delaware) – Challenging patents on dronedarone.

Hospira, Inc. and Orion Corporation vs Intas Pharmaceuticals Ltd. and Accord Healthcare, Inc. USA, Civil Action No.: 1:14-cv-336 (Middle District of North Carolina) – Challenging patents on dexmedetomidine hydrochloride.

Acorda Therapeutics, Inc., et al. v. Accord Healthcare, Inc., et al. Civil Action No.: 1:14-cv-00932-LPS (District of Delaware) – Challenging patents on dalfampridine (Ampyra).

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


MEDIA CENTER

All Media
Press Releases
6/6/17
Merchant & Gould Listed in IAM Patent 1000
Three Merchant & Gould offices and fourteen individuals were recognized in the IAM Patent 1000 list of “the world’s leading patent professionals” for 2017.In its rankings of firms and individuals, IAM Patent 1000 includes Merchant & ...
Press Releases
10/28/16
Kyle Bass Organization, Merchant & Gould Client, Nabs First Win in Post Grant Review of Gattex® Drug Patent
Merchant & Gould is pleased to announce that its clients, Hayman Capital and the Coalition for Affordable Drugs (CFAD), secured an unprecedented win on Oct. 21, when the Patent Trial and Appeal Board (PTAB) found most claims in U.S. Patent No. 7,056,886 ...
Press Releases
10/17/16
Merchant & Gould Ranked in IAM Patent 1000
Merchant & Gould's patent practice has been recognized in this year's edition of IAM Patent 1000, a publication by Intellectual Asset Management that lists the world’s leading patent professionals. In its 2016 rankings of firms and individuals, ...
Events
4/18/16
Food Law Workshop at GMA Science Forum in D.C.
Merchant & Gould attorneys Matthew Fedowitz and Mary Bram will be facilitating a workshop titled "Food Law 201: Intellectual Property and Patents" on April 18, 2016 at the GMA Science Forum in Washington, D.C. The GMA Science Forum has educated ...
Events
3/4/16
Matthew Fedowitz on Panel at Legal Conference in Mumbai
Matthew Fedowitz, a partner in Merchant & Gould's Washington, D.C. office, will be participating in the GENNEXT 2016 Counsel Congress and Awards on March 4 in Mumbai, India as a panelist for a session titled "Mergers & Acquisitions – ...
Events
2/25/16
Merchant & Gould Attorneys Participate in GMA Legal Conference in CA
Two partners from Merchant & Gould's Washington, D.C. office are scheduled to participate in an interactive panel on protecting intellectual property at the Grocery Manufacturers Association 2016 Legal Conference in Rancho Mirage, California.Matt Fedowitz ...
Events
10/8/15
Inter Partes Review CLE & Networking Reception in Denver
Current Developments in Inter Partes Review CLE & Networking Reception Since its inception as a provision under the America Invents Act (AIA), the inter partes review process has continued to evolve before the Patent Trial and Appeal Board (PTAB). Please ...
Articles
6/19/14
What is the TPP and where is it going?
Articles
4/1/13
Generic Co. Lobs Antitrust Suit To Access Brand-Name Meds
Click here to read Law360, April 1, 2013 article.  M&G's B. Jefferson Boggs, Matthew L. Fedowitz, Christopher Sorenson and Aaron M. Johnson are among those representing the plaintiff.