Thomas Pontani

Thomas C. Pontani began practicing as a patent agent in 1978 and started practicing intellectual property law as an attorney in 1982. Thomas is a registered patent attorney with extensive experience in prosecuting and litigating patents, with a specific focus on litigations under the Hatch-Waxman Act.

Since the enactment of the Hatch-Waxman Act in 1984, Thomas has successfully represented U.S. and foreign clients under the Act, assisting them to enter the U.S. market concerning generic drugs such as tamoxifen, ciprofloxacin, albuterol/ipratropium, terazosin, enalapril, norethindrone/ethinylestradiol, cyclosporine, bupropion, omeprazole, nabumetone, amoxicillin/clavulanic acid, and others.

Thomas also has extensive experience in the preparation of opinions on patent validity, infringement, and freedom-to-operate issues in the chemical, pharmaceutical, and mechanical arts. In addition, Thomas has prosecuted numerous patents, especially in the chemical, pharmaceutical, and mechanical arts for more than 25 years.

He has also counseled clients on intellectual property issues and has lectured on U.S. patent law and practice in Europe, India, and China. Thomas earned his M.S. and Ph.D. from the University of Innsbruck and subsequently earned his J.D. from Fordham University School of Law. He is fluent in German.

EXPERIENCE :

• Won a judgment of non-infringement of multiple patents directed toward vehicular tilt control apparatuses on behalf of a German auto parts maker. These judgments were affirmed by the U.S. Court of Appeals for the Federal Circuit, which agreed with our arguments that intrinsic evidence and the prosecution history supported the district court’s constructions of the claim terms at issue and finding of non-infringement based thereon.
• Represented Sagent Agila against Cumberland in the District of Delaware. Achieved dismissal of complaint for patent infringement after proving the client’s ANDA contained a substance excluded by the patent claims.

EDUCATION :

• Fordham University School of Law, J.D., 1982
• University of Innsbruck, Ph.D., 1977
• University of Innsbruck, M.S., 1974

BAR ADMISSIONS :

• New York
• United States Patent and Trademark Office

COURT ADMISSIONS :

• U.S. Court of Appeals for the District of Columbia Circuit
• U.S. Court of Appeals for the Federal Circuit
• U.S. Court of Federal Claims
• U.S. District Court — Eastern District of New York
• U.S. District Court — Eastern District of Wisconsin
• U.S. District Court — Western District of New York
• U.S. District Court — Western District of Wisconsin

AFFILIATIONS :

• American Bar Association
• New York State Bar Association
• ITC Trial Lawyers Association