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Deepro R. Mukerjee

Partner
deepro.mukerjee@kattenlaw.com
New York Office
p+1.212.940.8552
f+1.212.940.8776
Overview

Deepro Mukerjee is the national co-chair of Katten’s Patent Litigation practice. For nearly 20 years, he has litigated patents and other intellectual property rights relating to a wide variety of technologies, from pharmaceutical compounds and biotechnology processes to electrical circuit interrupting devices and computer software programs. An experienced Hatch–Waxman litigator, Deepro is involved in dozens of Paragraph IV litigations on behalf of some of the largest pharmaceutical companies in the world—often taking these cases to trial and subsequent appeals. The scope of his pharmaceutical practice extends to being lead counsel on several past and current inter partes review (IPR) proceedings.

In addition to his substantial litigation experience, Deepro often advises on complex, patent-centric due diligence projects and provides intellectual property counsel to multinational corporate clients for complex transactions, such as public offerings and venture capital financings. He also counsels companies in better leveraging existing and newly constituted IP portfolios.

Deepro is a frequent university guest lecturer and has been recognized by the IAM Patent 1000 for several years in a row.

Shown below is a selection of Deepro’s engagements.

Experience
  • Lead trial counsel for one of the world’s largest pharmaceutical companies in an infringement dispute regarding multiple patents for topical foam acne treatment Evoclin®; defendant Glenmark Pharmaceuticals filed an antitrust counterclaim in response. Katten successfully persuaded the US District Court for the District of Delaware to dismiss the counterclaim.
  • Lead trial counsel for some of the world's largest generic pharmaceutical companies in several Hatch-Waxman litigations throughout the country.
  • Lead trial counsel for a premier processor and distributor of amniotic surgical tissue grafts in breach of contract and tortious interference case pending in the US District Court for the District of Maryland; co-counsel for the same client in a patent infringement action in the US District Court for the District of Alabama.
  • Lead trial counsel for one of the world’s largest fresh produce distributors in a plant patent litigation in the US District Court for the Southern District of Florida.
  • Lead trial counsel in the US District Court for the District of Delaware involving multiple patents associated with pre-colonoscopy cleansing using sodium picosulfate, magnesium oxide and anhydrous citric acid; recently obtained a Judgment of Non-infringement on both asserted Orange Book patents.
  • Lead trial counsel in the US District Court for the District of Delaware involving a patent that purports to be related to the treatment of deep vein thrombosis using rivaroxaban.
  • Lead trial counsel in the US District Court for the District of Delaware involving multiple patents associated with the treatment of early-stage idiopathic Parkinson’s disease and moderate-to-severe restless legs syndrome using rotigotine.
  • Lead trial counsel in the US District Court for the Middle District of Florida involving a patent directed to a controlled release of mesalamine. Successfully obtained a Rule 36 affirmance from the US Court of Appeals for the Federal Circuit affirming the original trial court victory. The affirmance was entered in less than 24 hours after oral argument.
  • Lead trial counsel in the US District Court for the District of New Jersey involving multiple patents directed to methylnaltrexone bromide formulation for subcutaneous injection
  • Lead trial counsel in the US District Court for the District of Delaware involving multiple patents associated with the treatment of irritable bowel syndrome with constipation, and chronic idiopathic constipation using linaclotide.
  • Lead trial counsel in the US District Court for the District of Delaware involving a patent associated with the treatment of inflammatory and pruritic manifestations of corticosteroid-responsive dermatoses in patients aged 12 years or older using Olux-E®.
  • Lead trial counsel in the US District Court for the District of Delaware involving multiple patents associated with the treatment of major depressive disorder using vortioxetine hydrobromide.
  • Lead trial counsel in the US District Court for the District of New Jersey involving multiple patents associated with the treatment of glycemic control in adults with type 2 diabetes mellitus using canagliflozin.
  • Lead trial counsel in the US District Court for the District of Delaware involving a patent associated with the treatment of HIV-1 infection in adults and in pediatric patients weighing at least 40 kg using dolutegravir or abacavir, dolutegravir and lamivudine.
  • Lead trial counsel in the US District Court for the Southern District of Florida involving a patent associated with the treatment of symptoms associated with seasonal and perennial allergic rhinitis using levocetirizine dihydrochloride solution.
  • Lead trial counsel for a leading online provider of employment-related services in a patent infringement action in the US District Court for the Southern District of California. Successfully argued a case-dispositive Markman hearing which led to favorable settlement.
  • While at a prior firm:
    • Lead trial counsel for one of Europe's leading voice recording companies in a patent infringement action involving patents related to voiceover IP. Invalidated nearly all of the asserted system claims at the Markman stage.
    • Lead trial counsel for a sponsorship-driven, social-media marketer in a patent litigation in the US District Court for the Eastern District of Texas. Successfully obtained a stay by petitioning the USPTO to accept a covered business method petition on several of the asserted patents.
    • Lead trial counsel for a high-end jewelry designer in a copyright infringement matter involving novel questions of law relating to the availability of copyright protection for jewelry designs; case settled.
Deepro R. Mukerjee

Education

  • JD, Fordham University School of Law
  • BS, Fordham University, summa cum laude
  • BA, University of Oxford
    Trinity College

Bar Admissions

  • New York

Court Admissions

  • US Court of Appeals, Federal Circuit
  • US District Court, Southern District of New York
  • US District Court, Eastern District of New York
  • US Patent & Trademark Office

Memberships

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