Adam M.Nicolais

Associate

New York + 1.212.326.3617

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Adam Nicolais focuses his intellectual property practice on pharmaceutical and mechanical arts patent litigation and post-grant invalidity proceedings, including inter partes reviews (IPRs) and post-grant reviews (PGRs). His litigation experience includes infringement and invalidity investigations, discovery, motion practice, claim construction, and trial. Adam's experience also includes structuring and drafting intellectual property licenses and settlement agreements.

Experience

  • Merck unit files DJ action involving pneumococcal vaccine patentsJones Day is representing Merck Sharp & Dohme Corp. in an action in Delaware district court against Wyeth, LLC seeking declaratory judgment of invalidity and non-infringement of U.S. patent Nos. 8,895,024; 8,808,708 and 9,399,060 relating to a new 15-valent pneumococcal conjugate vaccine, known as V114, for the prevention of invasive pneumococcal disease in adults 18 years of age and older.
  • Sloan Kettering and Juno Therapeutics win over $1.1 billion after jury verdict and post-trial motions in patent dispute with Kite Pharma/Gilead involving CAR-T therapyOn behalf of patentee Sloan Kettering Institute and exclusive licensee Juno Therapeutics (a subsidiary of Celgene Corporation, a Bristol Myers Squibb company), Jones Day and co-counsel prevailed in a jury trial that spanned eight days and involved 22 witnesses, wherein the jury awarded our clients $752 million in compensation for the infringement of their patents by Kite Pharma, Inc. (a Gilead Sciences, Inc. company) through the making and selling of its infringing CAR-T therapy, YESCARTA®.
  • Merck asserts patent infringement claims under Hatch-Waxman Act relating to Bridion® against 16 generic drug makersJones Day is representing Merck & Co., Inc. in Hatch-Waxman patent infringement actions against 16 generic drug maker defendant groups, relating to the defendant groups' submissions of Abbreviated New Drug Applications to the FDA seeking approval of generic versions of Bridion®, a first-in-class agent for the reversal of certain types of neuromuscular blockade in adults undergoing surgery.
  • Celgene acquired by Bristol-Myers Squibb for approximately $74 billionJones Day advised Celgene Corporation (NASDAQ: CELG) in connection with the intellectual property and technology transactions aspects of its cash-and-stock merger with Bristol-Myers Squibb (NYSE: BMY) which has an equity value of approximately $74 billion.
  • Purdue Pharma asserts patent infringement claims under Hatch-Waxman Act related to OxyContin® against IntellipharmaceuticsJones Day is representing Purdue Pharma L.P. in a Hatch-Waxman patent infringement action against defendants, relating to the defendants' submission of a Section 505(b)(2) New Drug Application to the FDA seeking approval of an extended-release oxycodone formulation.
  • Purdue Pharma successfully resolves Hatch-Waxman patent infringement claims against Ascent related to OxyContin®Jones Day successfully represented Purdue Pharma L.P. in related Hatch-Waxman patent infringement actions against defendant Ascent Pharmaceuticals, Inc., pertaining to the submission of an Abbreviated New Drug Application to the FDA seeking approval of a generic version of OxyContin®.
  • Purdue Pharma successfully resolves Hatch-Waxman patent infringement claims against Epic Pharma related to OxyContin®Jones Day successfully represented Purdue Pharma L.P. in related Hatch-Waxman patent infringement actions against defendants Epic Pharma, LLC and PuraCap Pharmaceutical LLC, pertaining to the submission of an Abbreviated New Drug Application to the FDA seeking approval of a generic version of OxyContin®.
  • Purdue Pharma successfully resolves Hatch-Waxman patent infringement claims against Amneal and Kashiv related to OxyContin®Jones Day successfully represented Purdue Pharma L.P. in related Hatch-Waxman patent infringement actions against defendants Amneal Pharmaceuticals, LLC and Kashiv Pharma, LLC, pertaining to the submission of an Abbreviated New Drug Application to the FDA seeking approval of generic versions of OxyContin®, a widely prescribed treatment for pain relief.
  • Bio-Rad enforces patent directed to fluorescence detection apparatuses against Thermo Fisher ScientificJones Day represented Bio-Rad Laboratories, Inc., a major life sciences and clinical diagnostics manufacturer, in successfully resolving parallel U.S. and European patent infringement actions, and related inter partes reviews in the U.S. Patent and Trademark Office, against Thermo Fisher Scientific, Inc., in enforcing Bio-Rad's patents relating to fluorescence detection apparatuses useful in polymerase chain reaction (PCR).
  • Bio-Rad enforces patent directed to temperature control reaction modules against Thermo Fisher ScientificJones Day represented Bio-Rad Laboratories, Inc., a major life sciences and clinical diagnostics manufacturer, in successfully resolving a U.S. patent infringement action against Thermo Fisher Scientific, Inc., in enforcing Bio-Rad's patent relating to temperature control reaction modules useful in polymerase chain reaction (PCR).
  • Major Japanese electronics manufacturer defends patent infringement claims involving softwareJones Day is defending a Japanese electronics manufacturer against allegations by Uniloc USA, Inc. that certain software infringes Uniloc's U.S. Patent No. 8,571,194, entitled System and Method for Initiating a Conference Call.
  • Purdue Pharma defends against claims of patent infringementJones Day represents Purdue Pharma L.P., The P.F. Laboratories, Inc., and Purdue Pharmaceuticals L.P. in a patent infringement litigation brought by plaintiff Depomed, Inc., based on Purdue's manufacture and sale of its own patented controlled-release OxyContin(R) pain relief medication.
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