Overview

Adam Nicolais’ intellectual property practice focuses on pharmaceutical, mechanical, and biotechnology patent litigation in district courts and post-grant invalidity proceedings before the United States Patent and Trademark Office's (USPTO) Patent Trial and Appeal Board (PTAB).

Adam represents leading pharmaceutical, biotechnology, and consumer product companies in complex, high-profile cases enforcing and defending their intellectual property rights. He has experience with issues arising under the Hatch-Waxman Act and the Defend Trade Secrets Act (DTSA). His litigation experience includes pre-lawsuit investigations all the way through trial in district courts and the PTAB. Adam's experience also includes structuring and drafting intellectual property licenses, settlement agreements, and patent portfolio due diligence. He played a key role in the successful resolution of several Hatch-Waxman litigations and recently was part of a team that helped Juno Therapeutics and Sloan Kettering win a more than $1.1 billion final award in a case in which the jury found the defendant Kite Pharma willfully infringed the asserted patent for a cancer immunotherapy. He also recently represented patent holder Merck in Hatch-Waxman patent infringement actions against 16 generic defendant groups related to the blockbuster drug Bridion®, a first-in-class agent for the reversal of certain types of neuromuscular blockade in adults undergoing surgery, which resulted in a district court final judgment ruling that the asserted patent was infringed and not invalid.

As a practitioner, Adam is known for his ability to present even exceptionally complex cases with highly technical issues in a manner that is as simple as possible, and hence, highly effective. Down-to-earth and practical, Adam's approach resonates with judges, juries, and decisionmakers in general.

Adam’s interpersonal style is calm, organized, and centered. In patent litigation, enormous amounts can be at stake – occasionally even the financial viability of an entire company. Stress levels can be astronomical. By focusing on the practical and raising solutions, Adam helps clients think strategically and operate effectively in very challenging situations. 

Experience

In re Sugammadex, No. 2-20-cv-02576 (CCC) (MF) (consolidated) (D.N.J.)*

  • Represented Merck & Co in Hatch-Waxman patent infringement actions against 16 generic drug maker defendant groups.
  • The case related to the defendant groups’ ANDA submissions to the FDA seeking approval of generic versions of Bridion® (sugammadex), a first-in-class agent for the reversal of certain types of neuromuscular blockade in adults undergoing surgery.
  • Patent infringement of U.S. Patent RE44,733 direct to 6-mercapto-cyclodextrin derivatives.
  • District Court final judgment found ’733 patent infringed and not invalid.

 Juno Therapeutics, Inc. et al. v. Kite Pharma, Inc., No. 2-17-cv-07639 (C.D. Cal.)*

  • Represented Plaintiffs Juno Therapeutics, Inc. (a subsidiary of Celgene Corporation, a Bristol Myers Squibb company) and Sloan Kettering Institute.
  • Patent dispute concerned CAR-T therapy.
  • Patent infringement of U.S. Patent No. 7,446,190 directed to chimeric antigen receptors.
  • Won jury trial proving that the making and selling of Yescarta® infringed the ’190 patent.
  • Defeated Defendant’s claims of incorrect certificate of correction and invalidity.
  • Awarded $1.1 billion after jury verdict and post-trial motions.

*experience acquired prior to joining Rothwell Figg.

Education

J.D., Fordham University School of Law

B.S., Chemistry, Wagner College (summa cum laude)

Bar & Court Admissions

Bar Admissions

  • District of Columbia
  • New York
  • U.S. Patent and Trademark Office
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