Fallon, Peter J.

Peter J. Fallon


Partner

 

Overview

Peter Fallon is a seasoned professional with outstanding judgment, and a proven ability to develop patent portfolios and provide strategic intellectual property counseling. He also provides opinions to industry leading corporations in the fields of energy, pharmaceuticals, high-technology materials, advanced chemical manufacturing, oilfield services and products, high performance ultra-nanocrystalline diamond technology, electro-mechanical hydraulic actuators, and geospatial technologies. Peter has extensive U.S. and foreign filed patent prosecution experience including appeals, reexaminations and reissue proceedings, interference and derivation practice, and Patent Trial and Appeal Board proceedings. Peter’s patent infringement litigation experience includes discovery, fact depositions, expert reports and depositions, motion practice and trial experience.

Peter has experience counseling clients in all issues related to patent prosecution, including but not limited to preparing and filing patent applications. As well as, preparing Freedom to Operate, validity, and non-infringement opinions, and Paragraph IV Certification Notice Letters for international and domestic pharmaceutical companies. His experience includes representing pharmacy benefit management (PBMs) companies and other health care organizations in a range of corporate and transactional matters and in regulatory and administrative proceedings. Peter's legal experience includes lead roles in corporate and entity formation, managed care contracting, joint ventures, outsourcing and commercial contracting.

He also has extensive experience in patent prosecution based tasks including drafting patent applications for submission to the United States Patent and Trademark Office, amendments, appeal briefs, and conducting legal research.

Peter has extensive knowledge of pharmaceuticals and is a licensed pharmacist.

Representative Experience

Hatch-Waxman:

  • Senju Pharmaceutical v. Apotex, Inc. (Gatifloxacin): Assisted with the preparation of expert reports and taking the deposition of a 30(b)(6) witness. In this case, the Firm's Hatch-Waxman litigation team litigated this matter through trial and obtained an invalidity ruling from the District Court, which the Federal Circuit recently affirmed per curiam.
  • Bristol-Myers v. Andrx (Fosinopril): Assisted in the representation of Andrx Pharmaceuticals in this action through trial and secured a verdict of noninfringement. Bristol-Myers did not appeal the decision of the trial court.
  • Glaxo v. Andrx (Wellbutrin SR): Assisted in securing a judgment of noninfringement from the trial court on summary judgment.
  • Pfizer v. Andrx (Glucotrol XL): Assisted in the litigation of this action through the summary judgment stage, wherein a settlement was obtained on behalf of Andrx.
  • Senju v. Apotex (Zymar): Assisted in obtaining invalidity ruling on gatifloxacin eye drop solution patents from District Court (decisions reported at 717 F.Supp. 2d 404 (D. Del. 2010) and 836 F.Supp.2d 196 (D.Del. 2011). Invalidity ruling was upheld on appeal.
  • Shire v. Roxane (Vyvanse): Assisted in ongoing litigation regarding eighteen (18) lisdexamphetamine prodrug, x-ray crystallography, pharmacokinetics, methods of preventing abuse and formulation patents.

Intellectual Property:

  • Counsel clients in all issues related to patent prosecution, including but not limited to preparing and filing patent applications.
  • Freedom to Operate, validity, and non-infringement opinions, and Paragraph IV Certification Notice Letter for international and domestic pharmaceutical companies.
  • Counsel for a New York based non-profit on trademark and copyright matters.

Professional Affiliations and Recognitions

  • New York State Bar Association
  • New York Intellectual Property Law Association
  • American Intellectual Property Law Association