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John A. Bauer

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+1.212.692.6795

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John is an experienced patent litigator with first chair trial and appellate experience before district courts and the Court of Appeals for the Federal Circuit. As a patent litigator having litigated a wide range of complex technologies, he has represented pharmaceutical, medical device, diagnostic, industrial equipment, and telecommunication companies as well as universities — all resulting in favorable outcomes. The pharmaceutical litigation has included both small molecules (Hatch-Waxman) and large molecules (biologics)

John also has experience before the Patent Trial and Appeal Board (PTAB) and Board of Patent Appeals and Interferences (BPAI), including Inter Partes Review (IPR) and Post Grant Review (PGR) proceedings and interferences.

Prior to joining Mintz, John was a partner in an international law firm, where he focused on patent litigation, inter partes proceedings, due diligence, and client counseling.

Education

  • Catholic University (JD)
  • Ohio State University (BS, Genetics)

Experience

  • Represent a pharmaceutical company asserting patent infringement against multiple generic manufacturers in a Hatch-Waxman litigation involving the statin Livalo®.  After a two-week trial, the district court found the patents valid and infringed.  Mr. Bauer’s cross examination was quoted in the favorable opinion.  The case is now on appeal to the Federal Circuit.
  • Represent a pharmaceutical company in a PGR alleging a patent covering a method of treating cancer is invalid.
  • Represent a pharmaceutical company in an IPR alleging a patent covering a therapeutic composition of iduronate-2-sulfatase is invalid.
  • Represented an eyeglass manufacture in an IPR and successfully invalidated two patents at issue directed to fluid filled adjustable eyeglasses.
  • Represented a pharmaceutical company asserting patent infringement against a generic manufacturer in a Hatch-Waxman litigation involving delayed release prednisone, Rayos®.  The case settled favorably.
  • Represented a pharmaceutical company asserting patent infringement against another pharmaceutical company for its manufacture and sale of the anti-cancer agent, Istodax®. The case settled favorably for millions of dollars.
  • Defended a pharmaceutical company against a charge of patent infringement alleging damages for hundreds of millions of dollars for its manufacture and sale of recombinantly produced EPO, Recormon®.  After a successful trial, case settled favorably just before Federal Circuit oral argument.
  • Defended a medical device company against a charge of patent infringement for its manufacture and sale of a self-expanding nitinol stent, Radius®. Case settled favorably after a jury trial, but before the jury rendered its verdict.
  • Defended a manufacturer of multi-million dollar computer controlled plate glass coating equipment against a charge of patent infringement alleging damages for the use of said equipment.  The case settled favorably.
  • Defended a major university against a charge of patent infringement involving laser technology. District Court granted summary judgment of no infringement and the case settled favorably after a Federal Circuit decision.
  • Represented a telecommunications company in a bet the company patent infringement case involving telecommunications and e-commerce. Initially defeated a motion for a preliminary injunction and subsequently won the case on a motion for summary judgment of no infringement.
  • Defended a pharmaceutical company in a case involving alleged infringement of a recombinant tPA analog, Reteplase®. Obtained partial summary judgment of no infringement before the pharmaceutical company was purchased and forced by the FTC to sell its rights to Reteplase® to a third party.
  • Defended a molecular diagnostics company against a charge of patent infringement relating to biological assays. Case settled favorably just prior to Markman hearing.
  • Successfully represented a pharmaceutical company and university that sued the USPTO in district court to obtain the correct (and significantly longer) period of Patent Term Adjustment (PTA).
  • Horizon Pharma AG and Jagotec AG v. Watson Laboratories, Inc. - Florida, et al. (1:13cv5124, DNJ) - Co-counsel and represented Jagotec AG, a wholly owned subsidiary of Skyepharma, in this Hatch-Waxman/Paragraph IV litigation. The case was settled on favorable terms.
  • Successfully Challenged Validity in IPR Proceedings — Adjustable Focus Eyeglasses Successfully represented Petitioners Adlens USA, Inc., and Adlens, Ltd., in two inter partes review proceedings challenging the validity of patents covering fluid filled, adjustable eyeglass lenses. The PTAB invalidated all challenged claims in the patents. IPR2015-01821, IPR2015-01824

Recognition & Awards

  • Member, American Intellectual Property Law Association (AIPLA)
  • Member, American Bar Association
  • Member, Association of Trial Lawyers of America (ATLA)
  • Member, Federal Circuit Bar Association

Recent Insights

News & Press

Viewpoints

The Patent Trial and Appeal Board (PTAB) issued an August 2018 update to the American Invents Act Trial Practice Guide (the “Updated TPG”).  The Updated TPG incorporates the PTAB’s current practices and provides further explanation of certain aspects of the PTAB’s standard practices to the public. 
On May 10, 2017 and following a Patent Trial and Appeal Board (PTAB) reexamination decision upholding certain claims, the United States Court of Appeals for the Federal Circuit ruled in Cisco Systems, Inc. v. Cirrex Systems, LLC that all of the appealed claims of a fiber optic patent held by Cirrex are invalid for lack of a written description support required by 35 U.S.C. § 112.
In Univ. of Utah Res. Foundation et al. v. Ambry Genetics Corp., No. 2014-1361 (Fed. Cir. Dec. 17, 2014), the Federal Circuit once again has weighed in on the patent eligibility of Myriad Genetics, Inc.’s patents related to BRCA1 and BRCA2 genes.

News & Press

Mintz has secured a string of substantial victories in Hatch-Waxman litigation for innovative drug manufacturers Kowa Pharmaceutical Co., Ltd., Kowa Pharmaceuticals America, Inc., and Nissan Chemical Industries Ltd.
John Bauer, a Member in the New York Mintz office and experienced patent litigator, is featured in this American Lawyer profile that discusses his intellectual property practice and his passion for racecar driving.

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