Current Employment Position(s)

Partner

Lawyer Overview

Nick Cerrito's practice includes all areas of patent litigation with a special focus on pharmaceutical and biotechnology litigation and related Food and Drug Administration topics, including the Drug Price Competition and Patent Term Restoration Act of 1984 (the Hatch-Waxman Act). Nick's representation in these areas has ranged from large innovator pharmaceutical companies and generic manufacturers to established biotechnology companies and start-ups. His practice is centered on creating strategies to respond to issues that arise at the interface of the patent and FDA laws. Nick also has experience litigating in the fields of industrial chemicals, electronics, computer sciences, and mechanical engineering.

Nick's practice also includes deal work and due diligence in the area of pharmaceutical product acquisition, strategic planning, and patent prosecution. Nick has appeared in courts throughout the country and has argued numerous appeals. He also has been an invited lecturer at conferences focusing on the Hatch-Waxman Act and on pharmaceutical litigation and pharmaceutical patent strategies.

Nick worked at Pennie & Edmonds from 1990 through 2003 and was part of the litigation team that established that in vivo conversion of a drug into a patented compound can be an act of infringement. As co-lead trial counsel, he successfully represented the only defendant (out of four) to prevail in the largest pharmaceutical litigation to date — In re Omeprazole (AstraZeneca, L.P. v. Schwarz Pharma Inc. and KUDCo*) (S.D.N.Y) (Fed. Cir. 2003), a case involving Prilosec® that arose under the Hatch-Waxman Act.

Areas of Practice

• Intellectual Property
• Patent Litigation
• Patent Prosecution
• Life Sciences
• Pharmaceuticals

Representative Cases

• Aventis Pharma Deutschland GmbH and King Pharmaceuticals v. Lupin Pharmaceuticals USA, Inc. (D.Md. 2005) - Atlace®
• Bristol-Myers Squibb Co. v. Danbury Pharmaceutical (S.D.N.Y. 1991) - Buspar®
• Exxon Co. v. Lubrizol Corp. (S.D.Tex.) (Fed. Cir.) - industrial chemicals
• In re Omeprazole Litigation, Case Nos. 99-CIV-8928, -9888; MDL Docket No. 1291 (M-21-81)
• In re: Omeprazole (S.D.N.Y.) (Fed. Cir. 2003) - Prilosec®
• Ishihara Chemical v. LeaRonal, Inc. (E.D.N.Y.) (2d Cir. in related case) - industrial chemicals
• King Pharmaceuticals and Astellas US LLC v. Sicor Inc. and Teva Pharmaceuticals USA, Inc. (D.Del.2005) - Adenoscan®
• King Pharmaceuticals and Aventis Deutschland GmbH v. Cobalt Pharmaceuticals (D. Mass. 2002) - Altace®
• King Pharmaceuticals and Wyeth v. Teva Pharmaceuticals USA, Inc. (D.N.J. 2005) - Sonata®
• King Pharmaceuticals Research & Development, Inc. v. Item Development AB, Interference No. 105,620
• King Pharmaceuticals v. Barr Laboratories (S.D.N.Y. 2004) - Prefest®
• King Pharmaceuticals v. KV Pharmaceuticals (D. Del. 2003) - Levoxyl®
• King Pharmaceuticals v. Mylan Labs (N.D. W.Va. 2003) - Levoxyl®
• King Pharmaceuticals, Inc. v. CorePharma, LLC (E.D.N.Y. 2003) - Skelaxin®
• King Pharmaceuticals, Inc. v. Eon Labs, Inc. (E.D.N.Y. 2003) - Skelaxin®
• King Pharmaceuticals, Inc. v. Mutual Pharmaceuticals Co., Inc. (E.D. Pa. 2004) - Skelaxin®
• Marion Merrell Dow v. Geneva Pharmaceuticals (D.Col.) - Seldane®
• Marion Merrell Dow v. Hoechst-Roussell (D.N.J.) - Cardizem®
• Novartis Corp. v. Ben Venue Laboratories, Inc. (D.N.J.) (Fed. Cir.) - Aredia®
• Purdue Pharma L.P. v. Teva Pharmaceuticals Indus. Ltd. (S.D.N.Y. 2001) - Oxycontin®
• Purdue Pharma v. Faulding Pharmaceuticals (D.Del.) - McContin®
• Schwarz Pharma, Inc. v. Paddock Laboratories, Inc. (D. Minn. 2005) - Univasc®
• Schwarz Pharma, Inc. v. Teva Pharmaceuticals (D.N.J. 2001) - Univasc®
• Schwarz Pharma, inc. v. Teva Pharmaceuticals (D.N.J. 2004) - Uniretic®
• Talaria Theraputics, Inc. v. Esperion Theraputics, Inc. et al. (E.D.V.) - cholesterol reducing agents
• Tanabe Seiyaku Co. and Marion Merrell Dow v. ABIC Pharmaceuticals (ITC 1992) - Cardizem®
• Tanabe Seiyaku Co. and Marion Merrell Dow v. Fermion Pharmaceuticals (ITC 1992) - Cardizem®
• Tanabe Seiyaku Co. and Marion Merrell Dow v. Profarmaco (ITC 1992) - Cardizem®
• Tanabe Seiyaku Co. v. Mylan Pharmaceuticals, et al. (I.T.C.) (Fed. Cir.) - Cardizem®
• Zenith Labs. v. Bristol-Myers Squibb Co. (D.N.J.) (Fed. Cir.) - Duracef®
• Patent Prosecution and Portfolio Management
• Product Acquisitions
• Strategic Alliance with Palatin Technologies

West Practice Categories

Copyrights, Intellectual Property Law, International Intellectual Property, Patent Litigation, Patents, Technology Licensing, Trade Dress, Trade Secrets, Trademarks

Bar Admissions

• New York, First Department

Education

• New York Law School

Address

222 East 41st Street
New York, NY 10017-6702

Phones

1.212.326.3413 (Business Phone)

Faxes

1.212.755.7306 (Business Fax)

Emails

Contact Us (Business Email)

Websites

http://www.jonesday.com