Nicolas Barzoukas’s practice is devoted to intellectual property litigation. He concentrates on patent litigation in the pharmaceutical field, but he has also litigated patents 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. Mr. Barzoukas has been recognized in Chambers USA, 2007-2014 in the field of Patent Litigation in Texas, which in 2011, resulted in his recognition as a top IP lawyer by the Houston Business Journal.
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®, Singulair® and Nasonex®. 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 through trial and appellate representation. Specifically, he has been involved in all aspects of discovery, and has conducted Markman hearings, opening statements, witness presentation, closing arguments and appellate arguments before the Federal Circuit. Additionally, he has often coordinated the strategy and conduct of foreign corresponding trials related to cases co-pending in the United States.
Mr. Barzoukas also organized and taught the patent litigation course at The University of Texas School of Law from 2008 to 2011 as an adjunct faculty member.
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 proceedings before the Patent Office involving challenges to asserted patents.
- Merck & Co., Inc. v. Teva Pharmaceuticals, Inc. - tried the case asserting the patent protecting one of the company’s top blockbuster drugs-- Singulair® -- obtained judgment of infringement and defended against the generic’s allegations of invalidity and unenforceability. The judgment was never appealed.
- Merck Sharp & Dohme Corp. v. Apotex Inc. - tried the case asserting a patent protecting the crystalline form of the active ingredient for Nasonex® and successfully defended a multifaceted attack on the patent’s validity. As of 2014, this product has enjoyed 17 years of protection.
- 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 Vasotec®, 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 of New York represented a client in his application for parole, based upon innocence, stemming from a wrongful conviction in 1985, and gained his release in 2007. “Cell Door to Open in Lost-DNA Case,” by Miles Moffeit, Denver Post November 17, 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
- “Patent Law Handbook,” 1994-95, 1995-96 and 1996-97 Eds.,(Clark Boardman Callaghan), Ch. 2
Speeches and Presentations
- “In the Limelight: Strategies and Theories of Inducement, Contributory and Divided Infringement in Paragraph IV Litigation,” 8th Annual Paragraph IV Disputes, New York, New York, April 29, 2014
- “Section 101 - Trends in BioTech Patentability,” 27th Annual Advanced Intellectual Property Law Course, Dallas, Texas, March 21, 2014
- “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 Patent Litigation,” Advanced Patent Litigation Course 2011, July 15, 2011
- Federal Circuit Sitting in Houston Symposium, Panelist with Honorable Judges Michel, Gajarsa, Clevenger and Atlas, Houston, Texas, November 4, 2009
- “Global Litigation Strategies and Extraterritorial Patent Enforcement,” Intellectual Property Owners Association Conference, Washington, D.C., March 17, 2008
- “Markman Hearings After Phillips,” 2007 Rocky Mountain Intellectual Property & Technology Institute, Denver, Colorado, May 24, 2007
- “Tips and Techniques for Protecting or Attacking Pharma Patents,” Annual Meeting of the Intellectual Property Institute of Canada, Banff, Alberta, October 16, 2004
- “Pharmaceutical Patent Litigation,” Annual Meeting of the Houston Intellectual Property Assoc., Galveston, Texas, September 23, 2004