Alan B. Clement is the Chair of the Intellectual Property Group of Locke Lord LLP and is a partner in the New York Office. He has significant experience in all fields of intellectual property, including litigation, patent and trademark prosecution, licensing and counseling.
For the past 15 years, Alan Clement has been intimately involved in a number of multi-patent complex Hatch-Waxman pharmaceutical patent infringement litigations, including acting as lead trial counsel on numerous matters.
From written discovery to fact depositions, to expert reports and depositions, to motion practice and to lead counsel at trial (including cross examination of key expert witnesses of brand companies), he has been involved in all aspects of these actions. Some of his specific Hatch-Waxman experience includes:
- Rhone Poulenc v. Andrx (Dilacor): Counsel in litigation relating to sustained release diltiazem Geomatrix patents, resulting in a settlement for Andrx.
- Biovail v. Andrx (Tiazac): Trial counsel in litigation relating to a surface active agent sustained release diltiazem patent, securing a verdict of noninfringement at trial (verdict was upheld on appeal) (decisions reported at 158 F.Supp.2d 1318 (S.D. Fla. 2000) and 239 F.3d 1297 (Fed. Cir. 2001)).
- Pfizer v. Andrx (Glucotrol XL): Counsel in litigation regarding four osmotic push-pull sustained release glipizide patents through the summary judgment stage and obtained a settlement on behalf of Andrx.
- Astra v. Andrx (Toprol XL): Counsel in litigation regarding salt selection sustained release metoprolol technology two patent action through the summary judgment stage, securing summary judgment of invalidity for double patenting and summary judgment of unenforceability for inequitable conduct. The double patenting invalidity ruling was upheld on appeal (decisions reported at 2006 WL 120343 (E.D. Mo. 2006) and 494 F.3d 1011 (Fed. Cir. 2007)).
- Eli Lilly v. Apotex (Strattera): Lead trial counsel in method of treating ADHD with atomoxetine patent obtaining invalidity ruling from District Court (decision reported at 676 F.Supp.2d 352 (D.N.J. 2009)). Case was reversed on appeal.
- Jazz v. Roxane (Xyrem): Lead counsel in case currently in litigation involving fifteen (15) patents on sodium oxybate solution, method of making, method of treatment, drug-drug interaction, pharmaceutical kit and exclusive computerized distribution system; resulting in settlement.
- Takeda v. Roxane (Uloric): Lead counsel in litigation regarding febuxostat patents covering polymorph and particle size resulting in settlement.
Other Intellectual Property Litigation Experience:
- Sears v. MLI Associates (Deicing chemicals): Lead trial counsel in securing jury trial verdict of noninfringement regarding two deicing formulation patents.
- In re Gartside (Hydrocarbon cracking quench technology): Lead counsel in interference proceeding through appeal to Court of Appeals for the Federal Circuit (decision reported at 203 F.3d 1305 (Fed. Cir. 2000).
- Seaco v. MLI Associates (Deicing chemicals): Lead counsel in patent interference proceeding through appeal to District Court (decision reported at 652 F.Supp.2d 244 (N.D.N.Y. 2009)).
- Innovative USA v. Sterling (Book technology): Lead counsel in patent infringement action regarding magnetic book patent, secured settlement for client.
- Innovative USA v. Innovative Education (Trademark): Lead counsel in securing settlement for client in trademark infringement action.
Alan’s experience with patent and trademark prosecution and opinion work has encompassed petrochemicals, hydrocarbon cracking processes, pharmaceuticals, lubricants, deicing chemicals, polymer technology, silicone chemistry, cosmetics and children’s books, both in the United States and abroad. This includes experience in chemical patent interferences. Additionally, he has experience in trademark and trade dress litigation.
- Partner, Locke Lord LLP
- Partner, Hedman & Costigan, P.C. (1994-2007)
- Associate and law clerk, Hedman & Costigan, P.C. (1988-1994)
- Process Engineer, Precision Valve Corporation (1984-1988)
- J.D., Pace University, 1990
- B.S., Chemical Engineering with concentration in polymer engineering, University of Massachusetts, 1984
Admissions : New York
Admitted To Practice :
- U.S. District Court for the Southern District of New York, 1991
- U.S. District Court for the Eastern District of New York, 2000
- U.S. District Court for the Northern District of New York, 2007
- U.S. Court of Appeals for the Federal Circuit, 1999
Rate : $$$$