Kelsey I.Nix

Of Counsel

New York + 1.212.326.8390

Kelsey Nix has more than 30 years of experience representing clients in their most important patent, trade secret, copyright, and trademark cases. Clients describe him as a strategic and creative litigator who focuses on the end result.

Kelsey has represented companies in the federal courts and the ITC in a wide range of technologies, including medical devices, aviation and avionics, pharmaceuticals, biotechnology, banking and trading platforms, encryption, electronic commerce, clean technology such as light emitting diodes, microprocessors, telephony, security systems, modems, NiMH batteries, and machine tools.

Kelsey has been lead counsel in more than 30 cases. Exemplary cases as lead counsel include successfully defending an international spirits manufacturer against patent infringement allegations in the ITC and in New York and Texas district courts and obtaining a complete defense victory on summary judgment in a copyright and trademark infringement case concerning aviation maintenance manuals.

Kelsey is a member of the ABA, the American Intellectual Property Law Association, and the ITC Trial Lawyers Association. He has served on the editorial boards of Intellectual Property 360 (2015) and the AIPLA Quarterly Journal (2012-2014), the board of the Columbia University Engineering Alumni Association, IPO's standards setting committee, and AIPLA's trade secrets committee.

Kelsey has been an invited lecturer at patent and trade secret conferences sponsored by many leading IP associations. He has published articles on patent and trade secret law and has been quoted as an authority on patent law in many influential publications, including The National Law Journal.

Experience

  • 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 moves for additional discovery regarding real-party-in-interest, leading to termination of IPRs before institutionJones Day defended patent owner, Purdue Pharma L.P., in connection with two inter partes review (IPR) petitions brought by the petitioner, Kashiv Pharma, LLC, against U.S. Patent Nos. 9,492,392 and 9,492,393.
  • 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.
  • CAE enforces antitrust claims and defends trade secret and copyright claims against Gulfstream Aerospace Corp.Jones Day successfully represented CAE Inc., a global leader in the development and manufacture of aviation flight simulators and pilot training programs, in enforcing antitrust claims and defending trade secret and copyright claims against Gulfstream Aerospace Corp. involving the Gulfstream G650 business jet.
  • Purdue Pharma asserts patent infringement claims under Hatch-Waxman Act related to OxyContin® against AbhaiJones Day successfully represented Purdue Pharma L.P. in a Hatch-Waxman patent infringement action against the defendant, Abhai LLC's, submission of an Abbreviated New Drug Application to the FDA seeking approval of generic versions of OxyContin®, a widely prescribed drug 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).
  • Purdue Pharma asserts patent infringement claims under Hatch-Waxman Act related to OxyContin® against MylanJones Day successfully represented Purdue Pharma L.P. in a Hatch-Waxman patent infringement action against defendants, relating to the defendants' submission of an Abbreviated New Drug Application to the FDA seeking approval of generic versions of OxyContin®, a widely prescribed treatment for pain relief.
  • Kiss Products obtains consent judgment on patent and contract claims against Pretty WomanJones Day successfully represented Kiss Nail Products, Inc. in an action for patent infringement and breach of contract against Pretty Woman, LLC and its founder and CEO, John Manzione, relating to artificial nail products.
  • Purdue Pharma asserts patent infringement claims under Hatch-Waxman Act related to OxyContin® against KVK-Tech and AbhaiJones Day is representing Purdue Pharma L.P. in a Hatch-Waxman patent infringement action against defendants, relating to the defendants' submission of an Abbreviated New Drug Application to the FDA seeking approval of generic versions of OxyContin®, a widely prescribed treatment for pain relief.
  • St. Jude and Juno secure $12.25 million settlement resolving patent dispute with Novartis Pharmaceuticals and University of PennsylvaniaJones Day represented St. Jude Children's Research Hospital ("St. Jude") in enforcing breach of contract claims and defending patent invalidity claims against the University of Pennsylvania ("Penn") and Novartis Pharmaceuticals ("Novartis").
  • BAE Systems acquires Perimeter Internetworking Corp., d/b/a SilverSky, for £144.4 million (US$232.5 million)Jones Day advised BAE Systems, a leading multinational defense, security, and aerospace company, on its acquisition of Perimeter Internetworking Corp., d/b/a SilverSky, a commercial cyber service provider, for £144.4 million (US$232.5 million).
  • K Road DG forms joint venture and provides $56 million funding for Green Charge NetworksJones Day advised K Road DG LLC in connection with its $56 million capital infusion in, and joint venture with, Green Charge Networks, LLC, a leader in intelligent customer-sited energy storage.
  • Twelve Beverage obtains permanent injunction against continued trademark infringementJones Day represented Twelve Beverage, LLC, a beverage manufacturer, in a trademark infringement case brought by Barnie's II, Inc. in the Middle District of Florida.
  • Purdue Pharma pursues patent infringement suit involving OxyContin(R) against generic drug maker TevaJones Day represents Purdue Pharma L.P., The P.F. Laboratories, Inc., and Purdue Pharmaceuticals L.P. in a Hatch-Waxman Act patent infringement litigation matter relating to Teva Pharmaceuticals USA, Inc.'s attempt to market a generic version of Purdue's controlled-release OxyContin(R) pain relief medication.
  • Schwarz Pharma defends against claims of patent infringement involving omeprazoleJones Day successfully defended Schwarz Pharma, Inc. and other defendants against claims of patent infringement relating to omeprazole, which is used to treat ulcers and gastric reflux disease and is one of the most widely prescribed drugs.
  • 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.
  • The following represents experience prior to joining Jones Day.

    Patent Litigation

    Successfully represented a major lighting device manufacturer in defending its LED designs against a claim of patent infringement in the Eastern District of Texas. The case was settled on favorable terms for the client after successful motion to disqualify the patentee's trial counsel and the U.S. Patent Office granted request to reexamine the patent in suit.

    As co-chair in an ITC investigation involving digital signal processors, successfully represented a semiconductor manufacturer in defending against claims of patent infringement. Following a two-week trial, the asserted patent was found invalid, unenforceable for inequitable conduct, and not infringed.

    Lead trial counsel in a patent infringement case concerning computer systems for global trade financial processes in a two-week jury trial.

    Co-chair in a two-week jury trial of a major medical device manufacturer where the Federal Circuit decided an interlocutory appeal in client's favor that plaintiff's foreign counterpart patents could not be asserted in a U.S. district court.

    Co-lead trial counsel in three cases involving 12 patents and four accused products relating to mailing systems and internet postage dispensing systems in the District of Delaware.  Case settled successfully for client following claim construction and decision on summary judgment cross-motions.

    Successfully represented patentee in one-week evidentiary hearing on preliminary injunction motion involving three patents on controlled-release pain medication. Preliminary injunction granted and affirmed by the Court of Appeals for the Federal Circuit.

    Second chair in seven-week jury trial successfully defending manufacturer of wireless security system against patent infringement claims in the District of Minnesota.

    Successfully represented eyeglass manufacturers against patent infringement claims. Summary judgment of non-infringement affirmed by Federal Circuit.

    Trade Secret Litigation

    Represented a major medical device manufacturer in defending against claims of theft of trade secrets and patent infringement.  Successfully argued appeal of summary judgment of no trade secret misappropriation in the Court of Appeals for the Sixth Circuit.  Plaintiff then dismissed its patent infringement claims with prejudice in view of motion for summary judgment of patent invalidity.

    Trademark Litigation

    Lead trial counsel for a leading hedge fund in a trademark infringement case in the District of Delaware against another hedge fund and in related proceedings before the Trademark Trial and Appeal Board.  Case settled on successful terms with defendant agreeing to change its company name and to abandon four trademark applications.

    Lead trial counsel in trademark and patent infringement case concerning machine tools in the Southern District of New York.  Obtained permanent injunction against further trademark and patent infringement.

    Corporate Transactions and Licensing

    Advised a European private equity fund in connection with the purchase of a well-known global trademark portfolio in a bankruptcy proceeding.

    Negotiated the intellectual property provisions in a licensing transaction for a billion-dollar video game franchise.

    Advised a leading aerospace company on trade secret and patent issues in connection with an aircraft licensing transaction.

    Medical Device Litigation and Counseling

    Counseled companies and private equity funds and represented them in litigation concerning many types of medical devices, including cardiac catheters, urethral valves, vascular resistance gauges, digital mammography systems, portable cardiopulmonary resuscitators, clinical nitric oxide monitors, micro insulin pumps, neurovascular microcatheters to treat aneurysms, and nasopharyngeal brain cooling systems.

    Speaking Engagements

    • May 17, 2019
      AIPLA Spring Meeting, Plenary Session, Mid-Year Review of Trade Secret Developments
    • November 16, 2018
      Georgetown-Berkeley Conference on The Role of the Courts in Patent Law & Policy: The Impact of the Evolving Apportionment Standard on Patent Damages Awards
    • November 7, 2008
      In re Bilski: The Patentability of Business Methods Under 35 U.S.C. §101, The New York Intellectual Property Law Association's Fall CLE Program
    • May 9, 2007
      Injunctive Relief in the ITC, The New York, New Jersey, and Connecticut Intellectual Property Law Associations' Joint Patent Practices Seminar
    • April 1, 2003
      Developing A Coherent Claim Construction Strategy That Will Be Successful in the District Court and on Appeal, American Conference Institute: Maximizing Pharmaceutical Patent Life Cycles
    • November 5, 2002
      Patent Damages, International Property Owners Association Annual Meeting
    We use cookies to deliver our online services. Details of the cookies and other tracking technologies we use and instructions on how to disable them are set out in our Cookies Policy. By using this website you consent to our use of cookies.