Jeremy J. Edwards
Partner
Services & Specializations
Admissions
District of Columbia;
Maryland;
US Court of Appeals, Federal Circuit;
US Patent & Trademark Office;
USDC, District of Columbia;
USDC, District of Maryland
Address
1901 L Street NW, Suite 620, Washington, DC 20036
Office Tel.
202.830.0540
Mobile Tel.
410.627.6833
Overview
Jeremy has represented numerous parties in patent litigation spanning a variety of fields, from automotive to biotechnology to medical devices to optics. He has extensive experience representing clients in life sciences patent litigation, especially in cases brought under the Hatch Waxman Act.
- As lead IPR counsel, obtained complete victory for Petitioner. The USPTO’s final written IPR decision held unpatentable all claims of the challenged compound patent, which was directed to phosphoramidite reagents used in oligonucleotide synthesis.
- Secured a complete victory for Amneal Pharmaceuticals, with Judge Noreika of the U.S. District Court for the District of Delaware ruling that Ameal did not infringe several patents of CMP Development LLC in releasing a generic of Carospir, a high blood pressure medication. CMP Development did not appeal.
- Represented patentee, Evofem, in pharmaceutical patent litigation, resulting in the sole generic challenger withdrawing its challenge to the patents.
- Earned a complete victory for Amneal Pharmaceuticals over Noven Pharmaceuticals in connection with Amneal’s ANDA for a therapeutic equivalent of the Minivelle® estrogen patch; at trial, persuaded Judge Stark of the District of Delaware to invalidate all asserted claims of all three Noven patents for failure to meet both the written description and enablement requirements of Section 112 of the Patent Act.
- Persuaded the Federal Circuit entire panel, including Judge Newman, to affirm the decision of the PTAB that all claims of six patents were invalid as obvious; this victory over Jazz Pharmaceuticals helped pave the way for client Amneal Pharmaceuticals in connection with its bid to market a therapeutic equivalent of Xyrem® for the treatment of narcolepsy.
- Persuaded the Federal Circuit to vacate a trial decision rendered against Actavis after being brought on for the appeal, with the Federal Circuit instructing the district court to enter judgment of non-infringement in favor of Actavis.
- Secured complete victory for Allergan in first-to-file litigation over Beyaz® and Safyral® (Merck and Bayer), persuading a unanimous Federal Circuit panel to reverse and invalidate the patents under the on-sale bar.
- Scored a complete non-infringement victory for Watson before Judge Andrews in the United States District Court for the District of Delaware, obtaining a rare, expedited schedule and delivering a trial presentation so compelling that Judge Andrews announced his decision from the bench at the close of evidence, before any post-trial briefing.
- Top 25 Attorney for Hatch-Waxman/ANDA Litigation, Patexia, 2024
- Super Lawyers® Rising Stars, Intellectual Property Litigation, 2014-2018
- JD, University of Maryland School of Law, With Honors (Moot Court), 2005
- BS, University of Maryland (Biology), University and Departmental Honors, Phi Beta Kappa, 2000
- Presenter. “USPTO Provides Guidance in Light of Amgen v. Sanofi,” World Intellectual Property Forum, Bengaluru, India, January 12, 2024.
- Co-author. “Clarifying the Interplay of Patent Term Adjustment and Obviousness-Type Double Patenting: In Re Cellect,” September 5, 2023.
- Author. “Law360 – Lessons On Attorney Fee Motions In Fed. Circ. Patent Case,” Law360, June 9, 2023.
- Co-author. “5 Takeaways from the U.S. Supreme Court Decision in Amgen v. Sanofi,” May 23, 2023.
- Co-presenter. “Is Your Life Sciences Patent Enabled? The U.S. Supreme Court is Considering that Question,” Procopio Perspectives podcast, March 29, 2023. Transcript.
- Moderator. “Is Your Life Sciences Patent Enabled?” webinar, March 14, 2023.
- Co-presenter. “ANDA Litigation Overview” Webinar for Shanghai IP Protection Center, December 21, 2022. (> 23,000 attendees)
- Author. “7 Ways Patent Litigators Can Leverage Inventor Testimony,” Law360, January 11, 2022. (Named to Law360’s list of most-read guest expert articles of 2022.)
- Co-author. “Trial in ANDA Litigation: Strategies and Tactics for Pharmaceutical Patent Litigators,” American Bar Association, Section of Intellectual Property Law, 2020.
- Co-presenter. “Patent Litigation and the Power of Correlative Microscopy,” Microscopy Society of America’s Microscopy and Microanalysis 2014 Meeting, Hartford, CT, August 2014.
- Author. “Patent Litigation and the Power of Correlative Microscopy,” Microscopy and Microanalysis, Vol. 20, Supplement 3, 2014.
- Panelist. “Developments in Obviousness,” ACI Paragraph IV Disputes Conference, New York, NY, April 2014.
- Baranauckas, Carla. “Teva Fails To Convince Judge Inhaler Patents Require Drug,” Law360, November 7, 2024.
- Mehta, Rani. “Behind the case: How Procopio secured life sciences PTAB win — Procopio partner Jeremy Edwards explains how his team identified the best prior art when seeking to cancel a patent,” Managing IP, July 30, 2024.
- “IP Weekly,” summary of Hongene PTAB victory, Global IP Strategy Hub, July 26, 2024.
- Baranauckas, Carla. “Teva Wins Pause Of Order Ousting Patents From Orange Book,” Law360, June 13, 2024.
- Koenig, Bryan. “FTC Intervenes In Teva-Amneal Row To Push Patent Delisting,” Law360, March 25, 2024.
- Mehta, Rani. “Lawyers beware: Fed Circuit cracks down on double patenting,” Managing IP, September 1, 2023.
- Mehta, Rani. “Counsel: Federal circuit right to clarify attorney fee challenge,” Managing IP, May 25, 2023.
- Cruz, Adrian. “Procopio Cory Snags International M&A Attorney in Silicon Valley,” Law360, November 14, 2022.
- Mehta, Rani. “Novartis’s planned SCOTUS appeal may be a long shot, but the case raises interesting Section 112 and procedural questions, say counsel,” Managing IP, September 22, 2022.
- “Midsize Moves: Patent Litigators Join in D.C.,” The American Lawyer, February 24, 2022.
- Lidgett, Adam. “Health Hires,” Law360, February 18, 2022.
- Knaudt, Kamila. “Procopio expands east, hires two new life science partners for future D.C. office,” San Diego Daily Transcript, February 18, 2022.
