Jeffrey (Jeff) B. McIntyre is a partner in the firm’s Patent Prosecution and Litigation group on the Chemical / Pharmaceutical / Biotech team. He has decades of experience in all aspects of patent law, focusing primarily on chemical-related technologies.
Jeff is an experienced litigator with a track record of vigorously enforcing and defending against patent infringement claims to achieve the client’s business and litigation goals. His vast knowledge of patent prosecution informs off-the-beaten-path claims and defenses, providing a tactical advantage.
He is a skilled strategist and Certified Licensing Professional (CLP) steering clients clear of others’ IP in due diligence, freedom-to-operate, and pre-litigation contexts and negotiations. He is also a focused communicator providing clear advice and guidance to clients ranging from Fortune 500 companies to emerging entities to sole inventors.
Jeff uses a hands-on, cradle-to-grave approach when obtaining patents, starting with identifying the best application drafting and filing strategies. His deep understanding of patent office procedures and tendencies, in tandem with potential future litigation pitfalls, allows him to pursue and achieve valuable, valid patent protection.
Representative Experience
Any result the lawyer or law firm may have achieved on behalf of clients in other matters does not necessarily indicate similar results can be obtained for other clients.
- Co-Lead Counsel. Represented patentee in two cases related to sunscreen technology and photostability in the District of Delaware. Both cases settled on favorable terms for client.
- Co-Lead Counsel. Represented defendant in an action in the Middle District of Florida involving lens coatings for glasses which transition to sunglass protection in sunlight. Case settled on favorable terms for client.
- Co-Lead Counsel. Represented patentee in an action in the Middle District of Florida involving processing equipment for producing eyeglass lenses. Case settled on favorable terms for client.
- Lead Counsel. Represented patentee in a patent infringement action in the Northern District of Ohio in a case involving acoustic windshield technology. Case settled on favorable terms for client.
- Lead Counsel. Represented defendant toy manufacturer in a suit brought by a non-practicing entity in the Northern District of Ohio. Case settled on favorable terms for client.
- Lead Counsel. Represented non-U.S. defendant against a major competitor in the hydrogen gas generator market in a case brought in the District of Delaware. Case settled on favorable terms for client.
- Lead Counsel. Represented non-US defendant against a major competitor in food processing technology in the District of Hawaii. Case settled on favorable terms for client.
- Represented patentee in a patent infringement action in the Northern District of Ohio in a case related to automotive windshields. After a jury trial, the patents were held valid and willfully infringed. Subsequently, double damages and attorney fees were awarded.
- Represented patentee in a patent infringement action in the District of Delaware in a case related to biosensors. After a bench trial, the patent was held valid and infringed.
- Represented patentee in a case related to a blowing agent/refrigerant involving a reversal of an earlier summary judgment determination against patentee and clarification of 35 USC 102(g) by the Federal Circuit. See, 622 F.2d 1367. A subsequent jury trial was held.
- Represented patentee in a unique expedited procedure in the District of Delaware in a case involving steel technology. A subsequent jury trial was held.
- Represented brand name pharmaceutical manufacturer in case relating to the treatment of AIDS. Summary judgment granted in favor of client.
- Represented brand name pharmaceutical manufacturer in case relating to the treatment of herpes. Case settled on favorable terms for client.
- Represented brand name pharmaceutical manufacturer in case relating to the treatment of prostate cancer. Summary judgment granted in favor of client.
- Represented patentee chemical company in a case relating to the use of monoclonal antibodies in diagnostics. Case settled on favorable terms for client.
Certifications
- Certified Licensing Professional (No. 3403), Expires May 2025
Professional & Civic Engagement
- American Bar Association
- American Intellectual Property Law Association (AIPLA)
- District of Columbia Bar Association
- Intellectual Property Owners Association (IPO)
Thought Leadership
Publications
- “Does Claim Construction For Patent Opinions Now Require a Crystal Ball?” (Pavo Solutions, Part III), August 16, 2022
- “Sure, A Court Can Rewrite Patent Claims. But Can It Change A Disclosure?” (Pavo Solutions, Part II), August 8, 2022
- “Can A Court Rewrite Claim Language During Claim Construction? If You Don't Ask For It, You'll Never Know,” (Pavo Solutions, Part I), August 3, 2022
- “Biogen v. Mylan Written Description - What Does The Federal Circuit's Decision Really Mean?” December 8, 2021
- “Biogen v. Mylan: Make Sure Your Patent Applications Cover Your Current R&D,” December 1, 2021
- “GSK vs. Teva: Induced Infringement, Skinny Labels and Fat Damages,” October 6, 2020
- “Persion v. Alvogen: Inherency in Obviousness Attacks,” January 13, 2020
- “Onyx v. Cipla: Companies Beware - What Your Patent Agent Tells You May Not Be Privileged,” March 4, 2019
- “Boston University v. Everlight: Claim Invalid For Lack Of Enablement Because 17% Was ‘Physically Impossible,’” August 10, 2018
- “Jazz v. Amneal: Public Accessibility of Prior Art v. Reasonable Pertinence of Analogous Art,” June 26, 2018
- “Biosimilars IPRs: Any Lessons From PTAB Institution Decisions On Coherus Petitions?” May 2, 2018
- “Apotex v. OSI Pharmaceuticals: Beware What You Say To The SEC,” February 12, 2018
Media Coverage
- “Fed. Circ. Written Description Scrutiny Has Lessons for Attorneys,” Law360, December 21, 2021
- “UC Takes Next Step With Filament Light Bulb Case: Manufacturers and ITC,” Technology Transfer Tactics, October 23, 2020
- “Don't Lose your University's IP to Faculty ‘Consulting Time,’” Technology Transfer Tactics, October 17, 2019
- “UC Light Bulb Case May Signal More Aggressive Infringement Defense by Schools,” Technology Transfer Tactics, October 3, 2019
- “Total Compliance with Bayh-Dole Assignments Must be Goal,” Technology Transfer Tactics, February 27, 2019
Presentations
- “Considerations for Negotiation and Drafting Enforcement Terms in IP License Agreements,” Tech Transfer Central Webinar (with Tia D. Fenton), February 17, 2021
- “Privilege in IP Litigation: Overcoming Challenges in Review, Applicability to Foreign Attorneys, Disclosure,” Strafford CLE Webinar Panel, September 12, 2019
