John Garretson

Shook Hardy & Bacon LLP

$ $$$

Grand Boulevard 2555
Kansas City 64108 MO US

John D. Garretson’s national patent litigation and counseling practice focuses on pharmaceuticals, biotech, medical devices and information technology. He has successfully handled cases in federal courts across the country, including more than a dozen trials and appeals to the Federal Circuit, and has first-chaired cases for both domestic and international clients.

He is a co-author of “U.S. Patent Litigation — 150 Questions and Answers,” published in Japan, and is a contributing author to Patent Resources Group’s “Pharma and Biotech Strategies — Hatch-Waxman and Litigation” (2011).

He is frequently quoted in industry publications such as Law360, Genetic Engineering and Biotechnology News, Ingram’s and Inside Counsel with respect to biotech, Food and Drug Administration and pharmaceutical patent issues.

Before his legal career, Mr. Garretson was a sailing, celestial navigation and coastal charting instructor at Culver Summer Naval School in Culver, Indiana. He also served as technical director and as a board member of the Georgetown Gilbert & Sullivan Society, a community musical theater group in Washington, D.C.

A former trombonist, orchestra member and occasional jazz group musician, Mr. Garretson sang baritone in the University Glee Club of New York City, a men’s choral group that gives concerts in the United States and internationally.

In addition, he is a member of the Samaritan’s Circle for the New York City Rescue Mission, a ministry and shelter that reaches out to New York City’s homeless population.

Representative Matters:

  • Pactiv v. Mitsubishi Gas Chemical America et al. – (activated oxygen scavengers) Lead counsel for MGCA in defense of five-patent infringement suit involving meat packaging systems incorporating gas exchange technology; case successfully resolved without payment or other obligation to plaintiff.
  • Ethox Chemicals v. The Coca-Cola Company – (polyethylene terephthalate gas barrier additives) Lead trial counsel for The Coca-Cola Company in patent inventorship case relating to technology for making plastic soda bottles.
  • Spectrum Brands v. Eveready Battery Co. – (lithium batteries) Lead counsel for Energizer in defense of inter partes reexamination relating to lithium battery patent.
  • Japan Tobacco, Inc. v. Kappos – (crystalline oxoquinoline) Lead litigation counsel for Japan Tobacco in patent term adjustment litigation relating to proper B delay calculation under 35 U.S.C. § 154(b)(1)(B).
  • In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Litigation – (Amrix®) Trial counsel for plaintiffs Cephalon, Eurand, and Anesta AG in eight Hatch-Waxman cases against Mylan, Barr, Impax and Anchen relating to the skeletal muscle relaxant Amrix®.
  • Tyco Healthcare Group L.P. and Mallinckrodt Inc. v. Mutual and URL – (temazepam) Counsel for plaintiffs/counterclaim defendants in antitrust case based on prior Hatch-Waxman litigation relating to 7.5 mg Restoril®; obtained summary judgment on antitrust claims.
  • Sciele Pharma et al. v. Mylan Labs, et al. – (Sular®) Counsel for plaintiffs in Hatch-Waxman action over Sciele’s blood pressure drug Sular®; case successfully resolved upon patent expiration.
  • Hoffmann-La Roche v. Mylan, v. Teva, and v. Roxane – (Xeloda®) Counsel for Roche in three Hatch-Waxman cases involving the anti-cancer drug Xeloda®.
  • Warner-Lambert v. Teva Pharmaceuticals – (quinapril, Univasc®) Represented intervenor and patent licensee Schwarz Pharma in litigation related to Teva’s filing of a Paragraph IV ANDA on quinapril hydrochloride.
  • Housey Pharmaceuticals v. Boehringer Ingelheim Corp. et al. – (Mobic®) Defended Boehringer and international sister companies against drug discovery infringement allegations related to cell-based screening assays. Won summary dismissal of case by demonstrating lack of an actionable claim under 35 U.S.C. § 271(g).
  • Purdue Pharma v. Faulding Inc. et al. – (Kadian®) Represented Purdue Pharma in asserting infringement of patent claims related to sustained-release opioid formulations.
  • Various counseling matters related to skin applications, including tretinoin, alpha-hydroxy acid, hydrating/emollient, liposomal and transdermal patch formulations.

Education:

  • J.D., cum laude, Georgetown University Law Center, 1993
  • C.S., with highest honors, Universidad Complutense de Madrid, 1990 (Spanish)
  • A.B., cum laude, Harvard University, 1989 (Biology)

Bar Admissions:

  • Missouri
  • New York
  • U.S. District Court, District of Kansas
  • U.S. District Court, Eastern District of Missouri
  • U.S. District Court, Western District of Missouri
  • U.S. District Court, Eastern District of New York
  • U.S. District Court, Southern District of New York
  • U.S. Court of Appeals, Federal Circuit
  • U.S. Court of Appeals, Sixth Circuit
  • U.S. Court of Appeals, Tenth Circuit
  • U.S. Court of Appeals, Eleventh Circuit
  • U.S. Patent and Trademark Office

Memberships:

  • American Intellectual Property Law Association, Intellectual Property Practice in Japan Committee
  • Defense Research Institute, Intellectual Property Litigation Committee, (former Vice-Chair)
  • Intellectual Property Owners Association
  • Law360, Life Sciences, Editorial Advisory Board (former member)
  • New York Intellectual Property Law Association

Clerkships:

  • The Hon. Boyce F. Martin, Jr., U.S. Court of Appeals, Sixth Circuit

Community Involvement:

  • Culver Summer Naval School, Culver, Indiana, Sailing, Celestial Navigation and Coastal Charting Instructor
  • Georgetown Gilbert & Sullivan Society, Washington D.C., Technical Director and Board Member
  • Samaritan’s Circle for the New York City Rescue Mission
  • University Glee Club of New York City, Baritone Singer

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Grand Boulevard 2555
Kansas City 64108 MO US
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Lina Stillman

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Broadway 42
New York 10006 NY US
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