Steven E. Feldman is the head of Hahn Loeser’s Intellectual Property Practice Area and the Partner-in-Charge of the firm’s Chicago office. He focuses his practice on complex intellectual property litigation, prosecution and counseling involving patents, trade secrets, trademarks and unfair competition, copyrights and associated licensing and due diligence, both domestically and internationally. A seasoned trial lawyer and patent attorney, Steve has taken a lead role in trials, Markman hearings and appeals. Steve also regularly supports clients on corporate transactions and due diligence and helps clients to build and manage strategic patent and trademark portfolios worldwide.
A licensed patent attorney with a background in materials science and engineering, Steve’s practice encompasses litigating, prosecuting and licensing matters across a wide variety of phamaceutical, medical, chemical and materials related technologies. These technologies include steel, aluminum alloys with nano-particulate additives, NiCoCrALY based coatings and superalloys, heat treatments, rare earth magnets, and polymer materials and additives; printing and color pigments, color management software, and hardware high brightness LEDs and other lighting technologies; semiconductor lasers; automotive and aerospace parts and systems; receivers and transmission devices, computer hard-disk drives and brushless direct current motors, computer source code and call center/e-commerce technology; alternative energy technologies including clean coal, biofuels, ethanol processing and solar cells; and medical diagnostic and analytical devices.
Steve has extensive experience litigating chemical and pharmaceutical cases at the trial and appellate levels, including cases involving Hatch-Waxman patent infringement litigation pertaining to prescription pharmaceuticals. He has taken a lead role in cases involving a number of major drugs, including invalidating patents relating to Norvasc, Boniva and Actonel. Other cases of note include the drugs Floxin Otic (which resulted in a $5 million award to a generic client), Actonel®, Antara®, Aripiprazole OLSO®, Boniva®, Uroxatral®, Eloxatin®, Ultracet®, Omnaris®, Benicar®, Lotrel®, Zometa®, Reclast®, Treanda® and Plavix.
In addition, Steve provides strategic counseling regarding Food and Drug Administration marketing exclusivities arising out of Abbreviated New Drug Application (ANDA) patent infringement litigation and has litigated such matters in the U.S. District Court, District of Columbia, and the U.S. Court of Appeals, District of Columbia Circuit. He has overseen large-scale patent licensing programs in the pharmaceutical and biotechnology areas and has experience with related FTC and antitrust issues arising out of pharmaceutical settlements.
Steve also regularly advises medical and analytic instrument manufacturers, research medical centers, certification boards and doctors concerning a variety of intellectual property issues, and has served on the faculty of the American Congress of Neurological Surgeons (2009-10). Steve’s experience encompasses a wide range of medical and diagnostic device technologies, including cancer and other diagnostic assays, surgical tools, dialysis machines, radio frequency (RF) steering mechanisms and locating systems, surgical robots, MRI, CAT scan and PET imaging devices, ultrasonic imaging systems, healthcare management tools, and dental implants and devices.
Steve’s practice also includes representing clients in matters involving the protection and enforcement of trade secrets. He has assisted clients in implementing trade secrets audit and protection programs, negotiating joint venture agreements and preparing effective confidentiality/nondisclosure arrangements.
A nationally recognized leader in intellectual property matters, Steve is a frequent lecturer and is also a member of the George Washington University Intellectual Property Advisory Board and the Northwestern University Institute for Sustainable Energy Executive Counsel.
Professional History
• Partner, Hahn Loeser & Parks, 2015-present
• Partner, Husch Blackwell LLP, 2008-15
• Partner, Welsh & Katz, Ltd., 2001-08
Experience
• Lead counsel for Apotex in a significant jurisdictional case where the Court of Appeals for the Federal Circuit held that Apotex has standing as a subsequent ANDA filer to challenge one of Daiichi’s Orange Book listed patents for the drug Omnaris® (olmesartan medoxomil), despite the patent having been disclaimed by Daiichi.
• Lead counsel for Apotex in successfully obtaining summary judgment of patent invalidity in the U.S. District Court for the District of Delaware in a case involving a generic version of Warner Chilcott’s osteoporosis drug Actonel (risedronate). The decision was affirmed on appeal by the Court of Appeals for the Federal Circuit.
• Lead counsel for Apotex in defeating Hoffman Roche’s motion for preliminary injunction to prevent the launch by Apotex of a generic version of the osteoporosis drug, Boniva (ibandronate), which enabled client to launch as a first filer. Subsequently, the district court granted motion for summary judgment finding that Hoffman La Roche’s patents were invalid for obviousness. Hoffmann-La Roche Inc. v. Apotex Inc., et al. (D.N.J. 2012). The decision was affirmed on appeal by the Court of Appeals for the Federal Circuit.
• Lead counsel for Apotex, which obtained summary judgment of noninfringement on patents relating to the drug Antara, and avoided prolonged discovery while demonstrating that client’s formulation did not infringe. In re Fenofibrate Patent Litigation (S.D.N.Y. 2012).
• Extensive experience at both the trial and appellate level litigating Hatch-Waxman/abbreviated new drug application (ANDA) disputes. Pharmaceutical litigations of note include Norvasc (amlodipine) – Pfizer Inc. v. Apotex Inc., 480 F.3d 1348 (Fed. Cir. 2007); Floxin Otic (ofloxacin) (Daiichi Sankyo Co. Ltd. v. Apotex Inc., et al., 501 F.3d 1254 (Fed. Cir. 2007); Actonel (risedronate), Uroxatral (alfuzosin), Eloxatin (oxaliplatin), Ultracet (tramadol and acetaminophen), Omnaris (ciclesonide nasal spray), Benicar (olmesartan medoxomil), Lotrel (amlodipine and benazepril) and Plavix (clopidogrel).
• Lead counsel for Illinois Tool Works in patent infringement case involving enforcement of company patent on its innovative polyester/polyolefin packaging technology. Case ultimately settled. Illinois Tool Works Inc. v. Samuel Son & Co. Ltd. and Samuel Strapping Systems Inc. (N.D. Illinois 2012).
• Secured favorable outcome in defending against $500 million claim involving issues of patent misuse, patent exhaustion, implied license, breach of license agreement, and unjust enrichment. Minebea Co. v. Papst Licensing, 444 F.Supp.2d 68 (D.D.C. 2006).
• Counsel for Rockwell International Corp. in numerous patent infringement lawsuits and in worldwide licensing programs involving metalorganic chemical vapour deposition (MOCVD) semiconductor processing technology pertaining to high brightness LEDs, semiconductor lasers, solar cells and other semiconductor devices.
• Counsel for Rockwell Electronic Commerce Corp. in action for trade secret misappropriation relating to technologies involved in call center solutions.
• Counsel for Heico Corp. in obtaining summary judgments dismissing patent infringement and trade secret claims in a case involving jet engine parts in litigation with United Technologies Corp.
Publications & Speaking Engagements
USPTO Requires U.S. Licensed Attorney for Foreign Trademark Applicants and Registrants
July 23, 2019
European Data Privacy Regulations Now May Extend to U.S. Businesses
July 18, 2018
Keeping your Company off Thin Ice and Out of the Penalty Box: What you Need to Know About the Defend Trade Secrets Act
November 01, 2016
How Recent Court Decisions On Patent Exhaustion, Exceptional Case and Patentable Subject Matter, are Changing the Face of Patent Licensing
March 03, 2016
Shedding Light On The Changing Face of Intellectual Property Enforcement, Protection and Defense Who’s Alice? What The Heck Are IPRs and PGRs, And Why Should I Care? When’s Congress Finally Going To Do Something About Those Pesky Patent Trolls?
January 18, 2016
Evaluating the Merits of Bringing A Declaratory Judgment Action in Paragraph IV: Duplication or Necessity?
October 01, 2015
How to Keep your Patent Portfolio off Life Support and Out of the Morgue in View of Bilski, Mayo, Myriad, Alice, and Other Recent Court Decisions
January 01, 2015
Awards & Distinctions
Illinois Super Lawyers, Intellectual Property, 2020-21
IP Star, Managing IP, 2014
Memberships & Affiliations
American Bar Association, Member
American Intellectual Property Bar Association, Member
George Washington University Law School Intellectual Property, Member, Advisory Board
Intellectual Property Law Association of Chicago, Member
Licensing Executives Society, Member
Northwestern University Institute for Sustainability and Energy, Member, Executive Counsel
