Aaron L. J. Pereira is a litigator and patent attorney, with a background in chemical & biomolecular engineering, and a decade of experience with all aspects of patent litigation, procurement, and counseling.
As a litigator, Aaron is known for his ability to distill dense technical records into simple and winning legal arguments, and has done so in federal courts around the country, at the ITC, and before the Patent Office. He has counseled some of the world’s largest and most sophisticated companies on matters of global patent strategy, market entry, and product competition. Aaron also has experience managing large parallel litigation in federal district court and at the Patent Office, and has developed a deep understanding of the procedural and substantive interplay between such proceedings. Aaron has several years of experience litigating and counseling in the life sciences space, with a special focus on Hatch-Waxman and BPCIA matters. He has also brought and defended copyright, trademark, Lanham Act, and general business tort claims in complex commercial litigation.
Aaron is also a registered patent attorney with several years of experience prosecuting patents in the chemical, pharmaceutical, and medical device space. This includes having managed the worldwide prosecution of several families of pharmaceutical dosage formulations, and drafting patent applications on pharmaceuticals and the methods and products of organic syntheses. Aaron also has experience rendering patent opinions.
In addition to litigating and prosecuting patents, Aaron has significant expertise in IP diligence. He has run several large IP reviews in support of multibillion-dollar acquisitions and private equity financing, in a variety of industries, with a focus on life sciences. Through this work, Aaron has developed a keen understanding of both the buy and sell side of such transactions, and a familiarity with the types of advice and reports needed to see them through to completion. He leverages this knowledge to counsel both startup companies, and those that would support or acquire them.
Aaron is active in bar associations and voluntary organizations, including the New York City Bar Association, where he serves as the current Chair of the Patents Committee. Aaron holds a joint J.D. and L.L.M. from the Benjamin N. Cardozo School of Law with a specialization in Intellectual Property, and has a B.S. in Chemical & Biomolecular Engineering from the University of Notre Dame.
- New York City Bar Association, Chair, Standing Committee on Patents
- South Asian Bar Associations of New York and New Jersey
Aaron’s representative litigation experience includes:
- Sanofi-Aventis Deutschland Gmbh v. Mylan Pharms. Inc., No. 19-1368 (Fed. Cir.) (represented patent owner in consolidated Federal Circuit appeals from IPR decisions on blockbuster drug patents)
- Sanofi-Aventis U.S. LLC et al. v. Merck Sharp & Dohme Corp., No. 1:16-cv-00812 (D. Del.) (represented plaintiff innovator company in Hatch-Waxman litigation on Lantus® insulin analog patents and related medical device patents)
- Sanofi-Aventis U.S. LLC et al. v. Mylan N.V. et al., No. 2:17-cv-09105 (D.N.J.) & No. 1:17-cv-00181 (N.D.W. Va.) – (represented plaintiff innovator company in Hatch-Waxman litigation on Lantus® insulin analog patents and related medical device patents)
- Respire Medical Holdings LLC v. OravanOSA, LLC, No. 1:16-cv-05880 (S.D.N.Y.) – (defended medical device company against claims of patent infringement regarding medical devices for the treatment of obstructive sleep apnea)
- Zoetis, LLC v. AX Pharm. Corp., No. 16-cv-02642 (D. Ariz.) (represented plaintiff innovator pharmaceutical company in patent infringement action on FDA-approved Apoquel®)
- Zoetis, LLC v. Attix Pharms. Inc., No. 16-cv-02640 (D. Ariz.) (represented plaintiff innovator pharmaceutical company in patent infringement action on FDA-approved Apoquel®)
- Concordia Pharms. Inc. v. Winder Labs, LLC, No. 2:16-cv-00004 (N.D. Ga.) (represented plaintiff pharmaceutical company in infringement action asserting Lanham Act and state law claims against pharmaceutical contract manufacturer)
- Sino Legend (Zhangjiagang) Chemical Co. Ltd. et al. v. Int’l Trade Comm. et al., No. 16A66 (S.Ct.) (represented respondent chemical company seeking denial of certiorari on appeal from successful trade secret verdict at ITC)
- Zoetis, LLC v. Roadrunner Pharmacy, Inc., No. 1:15-cv-03193 (D.N.J.) (represented plaintiff pharmaceutical innovator company in Lanham Act and patent infringement action on composition of matter pharmaceutical patents covering FDA-approved drug Apoquel®)
- Medical Components, Inc. et al. v. Osiris Medical, Inc., No. 15-cv-00305 (W.D. Tex.) (represented declaratory judgment plaintiff in patent and contract action related to medical device patent)
- RainDance Technologies, Inc. et al. v. 10X Genomics, Inc., No. 1:15-cv-00152 (D. Del.) (involved in representation of patent owners in infringement action on droplet-based microfluidic technologies and diagnostic tools)
- Sirona Dental Systems GmbH et al. v. 3Shape A/S et al., No. 1:15-cv-00278 (D. Del.) (represented defendant dental medical device manufacturer in patent infringement action related to intraoral dental scanner technology)
- Implus Footcare, LLC v. Maverick Sports Medicine, Inc. d/b/a Pro Tec, No. 5:15-cv-00659 (E.D.N.C.) (represented plaintiff patent owner in infringement lawsuit on massage therapy device patent)
- Conbraco Indus., Inc. v. Mitsubishi Shindoh Co., Ltd., No. 3:14-cv-00368 (W.D.N.C.) (represented declaratory judgment plaintiff in patent litigation on metal alloy patents)
- Babolat VS North America Inc. v. Topteam Tech. Taiwan Co., Ltd., No. 1:15-cv-01033 (D. Colo.) (represented declaratory judgment plaintiff on patent related to motion sensing sports equipment)
- Concordia Pharms. Inc. v. Method Pharms, LLC et al., No. 3:14-cv-00016 (W.D. Va.) (represented plaintiff pharmaceutical company at successful jury trial on novel Lanham Act claims related to drug listing services)
- In re Akebia Therapeutics, Inc., 3:14-mc-80294 (N.D. Cal.) & No. 15-15274 (9th Cir.) (represented biotechnology company in defending against discovery of confidential material in response to subpoenas issued pursuant to § 1782)
- T.R.B. Int’l, S.A. v. Old Navy, LLC, No. 1:15-cv-05675 (S.D.N.Y.) (represented plaintiff high fashion design house in copyright litigation on articles of clothing)
- Ethox Chemicals LLC et al. v. The Coca-Cola Company, No. 6:12-cv-01682 (D.S.C.) (represented plaintiff chemical company in patent inventorship dispute related to polymer additive and gas barrier technology)
- Olaf Sööt Design, LLC v. Stage Technologies Inc. and Metropolitan Opera Association, Inc., No. 13-cv-7326 (S.D.N.Y.) – (represented defendants engineering company and opera house in patent infringement action on mechanical device patent)
- Keystone Global LLC v. Décor Essentials Ltd. et. al., No. 12-cv-9077 (S.D.N.Y.) (represented defendant car accessory manufacturers in patent infringement lawsuit related to automobile device patent)
Aaron’s representative International Trade Commission experience includes:
- In re Single-Molecule Nucleic Acid Sequencing Systems and Reagents, Consumables, and Software for Use with Same, Investigation No. 337-TA-1032 (represented complainant biotechnology company challenging DNA sequencing patents in dispute over cutting-edge gene sequencing and diagnostic technologies)
Aaron’s representative PTAB experience includes:
- General Electric Co. v. Vestas Wind Systems A/S et al., IPR2018-00928 (represented patent challenger on patent related to wind turbine electricity generation and field management systems)
- Mylan Pharms. Inc. et al. v. Sanofi-Aventis Deutschland GmbH et al., IPR2017-01528 (represented patent owner on pharmaceutical formulation patents covering blockbuster peptide drug, Lantus®)
- Mylan Pharms. Inc. et al. v. Sanofi-Aventis Deutschland GmbH et al., IPR2017-01526 (represented patent owner on pharmaceutical formulation patents covering blockbuster peptide drug, Lantus®)
- Maverick Sports Medicine, Inc. v. Implus Footcare, LLC, IPR2016-01227 (represented patent owner in successful denial of institution on massage therapy device patent)
- 3Shape Medical A/S v. Sirona Dental Systems GmbH, IPR2016-00481 (represented patent challenger on intraoral scanning and dental technology patent)
- Stage Technologies, Inc. v. Olaf Soot Design, LLC, IPR2015-00116 (represented patent challenger on mechanical/industrial device patent)
- Stage Technologies, Inc. v. Olaf Soot Design, LLC, IPR2015-00117 (represented patent challenger on mechanical/industrial device patent)
- Drafted numerous sets of IPR papers for use both offensively and defensively, in negotiations and settlement, to achieve strategic business results
Articles & Presentations
Panitch Schwarze Attorney Aaron L.J. Pereira to Present at Hatch-Waxman and IPR Strategy Webinar // July 29, 2020
Panitch Schwarze attorney Aaron L.J. Pereira, will present at the “Hatch-Waxman and IPR Strategy in Light of Recent Case Decisions: Addressing Emerging Issues” webinar.
Panitch Schwarze Team to Discuss Hatch-Waxman Disputes in District Court and at the PTAB // June 29, 2020
Panitch Schwarze partners Travis W. Bliss, Erin M. Dunston, and Philip L. Hirschhorn and Panitch Schwarze counsel Aaron Pereira are teaming up to present a webinar for Lawline on the interplay between district court and PTAB practice, including strategic considerations and recent developments.
Panitch Schwarze Lands Powerhouse IP Litigation and Life Sciences Group // April 10, 2020
Panitch Schwarze Belisario & Nadel has expanded its IP life sciences and litigation practices by adding a formidable group of patent litigators and prosecutors.