Ray Nimrod is the Co-Chair of the firm’s Global Life Sciences Practice. He specializes in patent litigation and other technology-related cases. Ray has tried over 60 complex patent trials and has obtained eight-figure and nine-figure jury verdicts for his clients. He represents both plaintiffs and defendants in patent infringement actions, and also has extensive experience representing clients in patent inventorship and ownership disputes. Ray’s practice also includes PGR’s/IPR’s, patent interferences, due diligence in in connection with pharmaceutical product acquisition, and patent prosecution strategies.
In the life science area, Ray represents innovator pharmaceutical companies, biotechnology companies, research institutions, and start-ups. He has extensive experience acting as lead counsel for innovator pharmaceutical companies in Hatch-Waxman cases against generic filers. In the biotechnology space, his most notable ongoing representation involves CRISPR gene editing technology, where he acts as lead counsel for the Broad Institute, Harvard and MIT in patent interferences against University of California, Sigma-Aldrich and ToolGen. Ray also represents clients in connection with LEDs, polymers, chemicals, and computer software.
Ray was recognized by LMG Life Sciences as its 2019 General Patent Litigator of the Year–New York. He was also voted by his clients as a BTI Consulting “Client Service All Star.”
Mr. Nimrod has represented clients in a wide range of industries including pharmaceuticals, biotechnology, polymers, chemicals, plastics, computer software and hardware, and electronics. Representative clients that he has represented include Merck Sharp & Dohme, Johnson & Johnson, The Broad Institute of Harvard and MIT, Vifor, Fresenius, Vizio, Commvault, The Dow Chemical Company, Union Carbide, and Cree.
- Represented The Broad Institute, Inc. in a patent interference suggested by the University of California and Emmanuelle Charpentier challenging key Broad patents directed to use of CRISPR in eukaryotic cells, humans, other mammals, and plants. We, along with co-counsel, obtained a victory for the Broad, MIT and Harvard as the PTAB declared there was no interference in fact and dismissed the interference with our client's patents. This victory was widely reported in the press, where it was described as "a knockout in the biotech fight of the century" (Fortune) and "a blow to the University of California" in "a bitterly fought dispute" (NY Times).
- Currently representing Merck Sharp & Dohme in district court and IPR proceedings against Genentech in a matter relating to Merck’s KEYTRUDA® product. In both matters, Merck is challenging the validity of Genentech’s Cabilly patents, which relate to recombinant antibody technology.
- Currently representing Merck in Hatch-Waxman litigation brought by Sanofi-Aventis asserting that Merck’s proposed insulin glargine product infringes patents relating to insulin glargine formulations and the injection pen design.
- Currently representing Merck in two Hatch-Waxman litigations relating to Merck’s NuvaRing® product.
- Representation of Merck in Hatch-Waxman litigation brought in the District of Delaware to protect its CANCIDAS® product against a generic challenge by Xellia Pharmaceuticals. After a bench trial, the Court ruled in Merck’s favor and enjoined Xellia from launching its product.
- Represented Merck in Hatch-Waxman litigation against Fresenius Kabi relating to Merck’s CANCIDAS® product. After two week bench trial on issues of infringement and validity, obtained favorable settlement for Merck.
- Representation of The Dow Chemical Company and Rohm and Haas against Turkish chemical company Organik Kimya in the International Trade Commission alleging infringement of two patents and numerous trade secrets related to opaque emulsion polymers made in Turkey and imported into the United States. After uncovering evidence of massive spoliation relating to the trade secret claims, obtained default judgment on the trade secret claims, resulting in an unprecedented 25-year exclusion order and recovery of almost $2 million in sanctions. Affirmed by the Federal Circuit in all respects.
- Representation of Dow Chemical in infringement action against Nova Chemicals involving patents relating to next generation ethylene polymers. Obtained a jury verdict in Dow’s favor and entry of a judgments totaling $107 million.
- Represented Everlight Electronics in declaratory judgment action against Nichia Corp.After Nichia alleged that hundreds of Everlight products infringed two Nichia patents relating to white LEDs and threatened Everlight’s customers, Everlight brought a declaratory judgement action seeking to invalidate Nichia’s patents. Nichia then counterclaimed for infringement. After a three-week trial in the Eastern District of Michigan, the jury found all asserted claims invalid.
- Representation of Cree in an ITC victory against light bulb retailer Feit and its Taiwanese supplier Unity. After a one-week trial, the ITC judge rendered a 500+ page decision finding that Feit/Unity infringed five Cree patents and that Feit falsely advertised its products as being ENERGY STAR compliant. Within days of the ITC’s final determination and the ensuing exclusion order, Feit took a royalty-bearing license.
- Representation of Union Carbide in a case against Shell involving Union Carbide's patent on catalysts for making ethylene oxide. Obtained a jury verdict in favor of Union Carbide and entry of a $153 million damages award. The Federal Circuit affirmed the judgment in Union Carbide’s favor and reversed a pre-trial ruling adverse to Union Carbide that had limited the scope of damages presented to the jury. The favorable appellate ruling exposed Shell to substantially higher damages and the case settled shortly thereafter.
- Representation of Cree in patent infringement action brought by The Fox Group involving silicon carbide technology in the Eastern District of Virginia. The district court granted summary judgment of invalidity, which was affirmed on appeal by the Court of Appeals for the Federal Circuit. Cree also received summary judgment of non-infringement on a separate patent after prevailing at the Markman hearing.
- Representation of Merck subsidiary MSD Consumer Products in multiple related patent infringement litigations in the district of New Jersey against various generic drug manufacturers who had filed ANDAs seeking approval to make generic versions of Merck's ZEGERID OTC product. MSD Consumer Products obtained highly favorable settlements against Perrigo, Zydus Pharmaceutical, and Par Pharmaceuticals.
- Representation of Merck subsidiary Merck Animal Health in a patent infringement litigation against Boehringer Ingelheim Vetmedica ("BI") in the District of Delaware. Merck Animal Health asserted that a BI vaccine against a prominent disease that strikes pigs infringed a patent on isolated cultures of the bacterium that caused the disease. The parties settled after a highly favorable claim construction ruling for our client eliminated BI's primary defense.
- Representation of Dow Chemical in a patent infringement suit brought by Montell seeking hundreds of millions of dollars in damages for Dow’s use of a claimed catalyst system. Montell alleged that Dow used the catalyst system in connection with Dow’s annual production of billions of pounds of linear low density polyethylene. After depositions of Montell’s key scientists in Italy on inequitable conduct issues, Dow was able to achieve a highly favorable settlement before trial.
- Representation of Dow Chemical in a patent infringement action brought by Exxon in the Eastern District of Texas to enjoin Dow from manufacturing its metallocene-based polymers. In this matter, Exxon brought in four law firms to litigate the case against Dow. After a two-week bench trial, the district court ruled that Dow did not infringe Exxon’s basic patent on this technology.
- Representation of Dow Chemical in the U.S. Patent Office in several interferences declared between Dow’s inventors and Exxon’s inventors relating to metallocene catalyst technology and metallocene-based polymers. The parties had collectively spent hundreds of millions of dollars to develop these technologies. The interferences included testimony periods involving dozens of witnesses. Dow obtained favorable rulings in the interferences.
- Representation of Dow Chemical in an action brought by Dow against Exxon for declaratory judgment that Exxon’s patent relating to wire and cable was invalid and that Exxon engaged in unfair competition by asserting the patent in the marketplace against Dow’s customers. During discovery in the proceeding, Dow obtained from Exxon a covenant not to sue Dow or any of its customers. The court thereafter dismissed Dow’s unfair competition claim, stating that Dow had no basis to pursue its claim. Dow achieved a reversal of the district court’s decision in an appeal to the Federal Circuit.
- Representation of Johnson & Johnson subsidiary in inventorship dispute relating to new biological drugs for the production of red blood cells. The dispute included lawsuits in Germany and the United States and culminated in a major multi-year arbitration. After thirty-four days of testimony over eight months, the arbitration panel ruled in favor of the J&J subsidiary.
- Representation of Merck in infringement action to prevent launching of generic version of a Merck antibiotic. Obtained claim construction ruling favorable to Merck on all issues, thereby eliminating primary defense of non-infringement and leading to settlement of case shortly thereafter.
- Representation of Critikon in a patent infringement action involving safety catheters designed to prevent accidental needle sticks. Obtained judgment of infringement and injunction against infringing products.
- Representation of Ethicon in patent infringement actions involving endoscopic surgical devices, surgical staplers and breast biopsy devices.
- Representation of Dow AgroSciences in a case filed by Cargill alleging that Dow AgroSciences infringed four patents relating to a new type of canola oil that largely eliminates trans-fats in foods. Dow Agrosciences obtained summary judgment of invalidity before trial for the two most commercially-significant Cargill patents. After trial, the district court held that Cargill committed inequitable conduct in obtaining the two remaining patents, thereby rendering them unenforceable. The district court's opinion was subsequently affirmed on appeal by the Federal Circuit.
- Representation of Alza Corporation against a charge that its cancer chemotherapy drug, Doxil®, infringed the plaintiff’s patent. Obtained a favorable Markman ruling, and the court consequently disposed of the infringement issues in the case in Alza’s favor on summary judgment.
- Representation of Alza Corporation in an inventorship dispute over the inventorship and ownership of the patent on drug delivery vehicle for the chemotherapy agent, Doxil®. One of the founders of the company that developed Doxil® claimed that he and the other plaintiff were the true inventors of the drug delivery vehicle. The plaintiffs sought ownership of the patent and unjust enrichment damages of over $90 million. In a bench trial in the Northern District of California, the district court ruled for Alza and its inventors on all issues.
- Representation of Johnson & Johnson’s McNeil Laboratories in a seven-week jury trial in an action asserting that Bayer’s new analgesic gelcap product infringed McNeil’s patent. McNeil prevailed in the trial and obtained an injunction leading to the removal of Bayer’s product from the market.
- Representation of Medtronic in an appeal to the Federal Circuit after the district court entered judgment that Medtronic infringed Bard’s patent directed to a blood filter used in heart bypass surgery. The Federal Circuit ruled in Medtronic’s favor, remanding the case for further proceedings. During the trial on remand, Medtronic established non-infringement through cross-examination of Bard’s own technical experts, without Medtronic presenting any witness on the issue. Medtronic obtained a jury verdict of non-infringement and final judgment in its favor.
- Representation of McNeil and Johnson & Johnson in an action in which Richardson-Vicks asserted a patent against McNeil and Johnson & Johnson for an analgesic product. In this pre-KSR case, the district court entered judgment of obviousness in favor of defendants, despite a jury verdict of non-obviousness and despite the patent owner’s evidence of synergistic effects.
- Loyola University Chicago School of Law
- University of Notre Dame
(B.S., Chemical Engineering, 1981)
- The State Bar of New York
- The State Bar of Illinois
- United States Supreme Court
- United States Courts of Appeals:
- Federal Circuit
- Seventh Circuit
- United States District Court:
- Northern District of Illinois
- Jenner & Block, Chicago:
- Partner, Vice-Chair of the Intellectual Property Practice, 2004-2009
- BTI Client Service All-Stars, 2020
- The Best Lawyers in America for Patent Litigation, 2020, 2021
- LMG Life Science Award as General Patent Litigator of the Year – New York for 2019
- Managing Intellectual Property: IP Star, 2014
- Illinois Super Lawyers:
- Intellectual Property Law, 2005
- Intellectual Property Litigation, 2006, 2007, 2008
- Lawdragon Magazine:
- 500 "New Stars, New Worlds", 2006
- Member, The United States Patent and Trademark Office
- Member, The American Intellectual Property Law Association
- Member, The Illinois Bar Association
- Member, The Chicago Bar Association