Nicolas Barzoukas’ practice is devoted to intellectual property litigation. He concentrates on patent litigation in the pharmaceutical field. He has also litigated in industries related to chemistry, electronics, biotechnology, medical devices, lasers and mechanical systems. In 2001, the Texas Lawyer recognized him as one of 40 “Up-and-Comers” in the Texas legal community. Mr. Barzoukas was recognized in Chambers USA, 2007 - 2013 in the field of Patent Litigation in Texas.
His representations in Hatch-Waxman Act patent infringement suits have resulted in the protection of the franchises for several blockbuster pharmaceutical products, such as FOSAMAX®, FOSAMAX® OW, VASOTEC®, PEPCID®, ACTONEL®, VIOXX®, TEMODAR® and SINGULAIR®. Mr. Barzoukas has also asserted and defended parties in non-Hatch-Waxman patent cases in the pharmaceutical field involving products such as LOPROX®, VANOS®, ZIANA® and VASOTEC®. In addition, Mr. Barzoukas challenged the U.S. Patent and Trademark Office’s rule denying the application of Hatch-Waxman Act patent term restoration to patents receiving a new, 20-year, patent term established by the Uruguay Round Agreements Act.
Mr. Barzoukas participates in all aspects of litigation, from initial case development, to trial, to appellate representation. Specifically, he is involved in all aspects of discovery, Markman hearings, witness preparation and presentation, trials and appeals.
In addition to litigation matters, Mr. Barzoukas also counsels clients on intellectual property enforcement matters, defensive and offensive litigation strategy, freedom to operate, settlement negotiations and licensing. He has also directed complex prosecution matters involving the reexamination or reissue proceedings of asserted patents.
- Merck & Co., Inc. v. Teva Pharmaceuticals, Inc. - in a patent case involving the protection of one of the company’s top blockbuster drugs -- SINGULAIR® -- obtained judgment of infringement and defended against the generic’s allegations of invalidity and unenforceability.
- Schering Corporation v. Teva Pharmaceuticals, Inc. - after taking over a case at the appellate phase secured a reversal at the Federal Circuit of the district court’s judgment finding the patent protecting TEMODAR® unenforceable on grounds of inequitable conduct and prosecution laches.
- Apotex Corp. v. Merck & Co., Inc. - in patent case involving the process used to make ASOTEC®, one of Merck's blockbuster drugs. Plaintiff alleged that Merck’s product infringed two of its patents, gained a judgment of invalidity against both patents. The Federal Circuit affirmed the district court's decision invalidating the patents.
- Innocence Project - working with the Innocence Project representing a client in his application for parole stemming from a rape conviction in 1985, gained his release in 2007.
Publications, Speeches and Presentations
- "Teaching Old Drugs New Tricks," IP Worldwide, August/September 2000
- "Pill Splitting Raises Issues of Safety and Patent Coverage," National Law Journal, May 22, 2000
Speeches and Presentations
- "Chakrabarty to Myriad: Life Sciences Technologies and Patentable Subject Matter," BNA Bloomberg, March 28, 2013
- "The Patent Act's 'Safe Harbor': Open Issues and Their Impact," Bloomberg BNA, New York, November 13, 2012
- "Carve-outs, Skinny Labeling and Use Codes: Understanding Their Role in Orange Book Listing Strategies and Life Cycle Management," 12th ACI Conference on Maximizing Pharmaceutical Patent Life Cycles, New York, October 4 - 5, 2011
- "Ramifications of Ownership Issues in Litigation," Advanced Patent Litigation Course 2011, July 15, 2011
- "Global Litigation Strategies and Extraterritorial Patent Enforcement," Intellectual Property Owners Association Conference, March 17, 2008