Peterka, James T.

James T. Peterka




Jim Peterka focuses his practice primarily on Hatch-Waxman pharmaceutical patent litigation. Jim regularly counsels generic pharmaceutical and biotechnology companies in all aspects of patent litigation. His Hatch-Waxman experience ranges from pre-litigation activities, including patent design-around and invalidity counseling and preparation of Paragraph IV notice letters, through discovery, claim construction proceedings, trial and appeal. He also represents clients in connection with a variety of FDA regulatory issues. Jim is Co-Chair of Locke Lord's IP Pharmaceutical and Biotechnology Group.

In addition to his Hatch-Waxman practice, Jim has significant experience involving patent litigation and patent counseling in a variety of other areas, including food science, materials science and mechanical engineering. His intellectual property practice also extends to trade-secret litigation, copyright and trademark prosecution and litigation, and evaluation and analysis of intellectual property in the context of commercial transactions.

Jim also has experience litigating and counseling clients with respect to various contract and environmental law issues, and regulatory, liability and transactional matters in the agricultural field.

He has handled a variety of pro bono matters, including trademark registration and licensing, landlord-tenant disputes and family law matters, through the St. Procopius Legal Aid Clinic, Chicago Volunteer Legal Services Foundation, Lawyers for the Creative Arts and the Center for Disability and Elder Law.

Representative Experience

Jim's representative experience includes:

Hatch-Waxman Litigation

  • Represented a generic drug company in two separate actions involving patents related to delayed-release oral mesalamine products (Lialda® and Asacol® HD)
  • Represented a generic drug maker in a case involving a method patent related to an anti-spastic agent. Obtained a finding of non-infringement and invalidity of all claims from the trial court, which was affirmed by the Federal Circuit (Zanaflex Capsules®)
  • Represented a generic drug maker in a patent-infringement case involving a patent directed to methods for treating obesity. Obtained precedential opinion concerning the sufficiency of paragraph IV notice letters under the Hatch-Waxman Act (Meridia®)
  • Represented one of several generic drug companies in a Hatch-Waxman patent-infringement case concerning an extended-release antibiotic product (Biaxin XL®)
  • Represented a generic drug company in a patent-infringement and antitrust action related to an antidepressant (Paxil®)

Patent Litigation

  • Represented an ethanol plant in a multifaceted case involving several patents directed to methods of recovering corn oil from the byproducts of ethanol production
  • Represented a computer hardware manufacturer in a patent-infringement case involving patents directed to user-authentication devices and systems
  • Represented a manufacturer of printing press cleaning equipment in a patent-infringement case involving patents directed to printing press cleaning systems and methods for making the same. Obtained summary judgment of non-infringement for one of the patents-in-suit and affirmance by the Federal Circuit

Professional Affiliations and Recognitions

  • Member, American Bar Association ‎
  • Member, American Intellectual Property Law Association (AIPLA)‎
  • Named, Emerging Lawyer, Leading Lawyer℠ (2015-2019)‎
  • Named, Super Lawyers® Illinois Rising Star, Intellectual Property ‎Litigation (2012-2014)‎