Stephen J. ElliottSpecial Counsel
Mr. Elliott has represented both plaintiffs and defendants in patent litigation covering a wide range of technologies, including pharmaceuticals, optics, electronics, software, medical devices, biotechnology and financial services. He has also represented defendants in individual and class-action antitrust litigation relating to patents. He has conducted appeals in the Second, Fifth and Federal Circuits.
He has extensive experience in Hatch-Waxman pharmaceutical patent litigation strategies, drafting settlement and license agreements, drafting patent clearance opinions, conducting intellectual property due diligence, and analyzing damages in patent and antitrust litigation. He has also advised clients on patent prosecution strategies, product lifecycle issues, and antitrust compliance.
Mr. Elliott is registered to practice before the United States Patent and Trademark Office.
Mr. Elliott earned an undergraduate degree in Chemical Engineering from M.I.T. Prior to practicing law, he worked as a process and materials engineer for Intel Corporation, where he developed integrated circuit manufacturing technology.
Selected Publications and Presentations
- Co-author, “Chapter 8: Hatch-Waxman Litigation from the Perspective of Pioneer Pharmaceutical Companies” in Patent Litigation Strategies Handbook (ABA Section of Intellectual Property Law) (2d ed. forthcoming) (also co-author of 1st ed., 2012 and 2013 supp.)
- “Reverse Payments, 'Actavis' and Settlement of Hatch-Waxman Disputes” in New York Law Journal (Sept. 8, 2015)
- “Injunctions, Standard Essential Patents and F/RAND” in New York Law Journal (March 14, 2013).
- Co-author, “Chapter 8: Hatch-Waxman Litigation from the Perspective of Pioneer Pharmaceutical Companies” in Patent Litigation Strategies Handbook (ABA Section of Intellectual Property Law) (2d ed. forthcoming).
- Co-author, “Chapter 2: Overview of Antitrust and Misuse Law in the Patent Context” in the Antitrust Counterattack in Intellectual Property Litigation Handbook (ABA Section of Antitrust Law 2010).
- “Chapter 13: Antitrust, FTC and State Competition Law” in Pharmaceutical and Biotech Patent Law (PLI 2008).
- A Primer on Net Neutrality, 13 NY Litigator 30 (Summer 2008).
- Stephen Elliott & Charles Graybow, The Right to License Packages of Patents for a Single Royalty, 18 Intellectual Property and Technology Law Journal 10 (January 2006).
- Stephen J. Elliott et al., 2003 Antitrust Developments in Regulated Industries, 2004 (No. 2) Columbia Business Law Review 459 (2004).
- Stephen J. Elliott et al., Antitrust Immunities at the Crossroads: The Current Status of the Noerr and State Action Doctrines, 2003 (No. 2) Columbia Business Law Review 547 (2003).
- “Settling a Paragraph IV Dispute” (Master Class) at Paragraph IV Disputes: Expert Insights on Hatch-Waxman Litigation Strategies (ACI April 2008).
- “Antitrust Analyses of Pharmaceutical Patent Litigation Settlements” at Paragraph IV Disputes (ACI April 2007).
- “Patent Cases in the U.S. Supreme Court” at the 12th Annual Institute on Intellectual Property Law (PLI Sept 2006).
- “Defending Indirect Purchaser Class Actions” at Class Action Litigation Prosecution and Defense Strategies 2004 (PLI July 2004).
- Concurrences Review, Best Antitrust Business Article: Intellectual Property Category (2020)
SELECTED REPRESENTATIONSIntellectual Property Litigation
- Represent Columbia University in asserting patent claims relating to computer security technology.
- Represented BlackBerry in asserting patent claims relating to the 3G and LTE mobile wireless standards.
- Represented Acorda in appealing an invalidity judgment relating to method of treatment patents.
- Represent the licensing entity Sisvel/Audio MPEG in asserting patent claims relating to digital audio data compression technology.
- Advised a pharmaceutical company in successfully opposing inter partes review of its patents relating to method of treatment claims, and represent it in appealing an invalidity judgment relating to the same patents.
- Carried out IP due diligence and patent analyses for purchasers in connection with acquisitions of pharmaceutical companies.
- Represent Acorda Therapeutics in opposing inter partes review of its patents relating to a treatment for multiple sclerosis in the U.S. Patent and Trademark Office.
- Represent Novo Nordisk in defending against patent infringement claims in the International Trade Commission relating to its recombinant hemophilia A drug, Novoeight.®
- Represented Ferrosan Medical Devices in defending patent infringement claims in the ITC.
- Represented sanofi-aventis in asserting patents covering the antihistamine Allegra.®
- Represented Nintendo in defending infringement claims relating to its hand-held 3-D gaming device.
- Represented CLS Bank International in obtaining district court dismissal of infringement claims relating to software and computer systems for clearing foreign exchange transactions.
- Represented QinetiQ Ltd. in asserting infringement claims relating to opto-electronic components.
- Represented Institut Straumann AG in defeating, in the district court and on appeal, infringement claims relating to dental implants.
- Represented FalconStor Software in defending infringement claims relating to data storage software and devices.
- Represented Sirius Technologies in defending trade secret misappropriation claims concerning nickel plating chemistry used to manufacture disk storage drives.
- Represented Pfizer in defending antitrust class actions relating to patent litigation over the neurological drug Neurontin.®
- Represented Pfizer in obtaining dismissal of claims in antitrust class actions concerning a patent litigation settlement relating to the heart medication Procardia® XL.
- Represented Bristol-Myers-Squibb in obtaining dismissal of antitrust counterclaims in patent litigation concerning the cancer drug Taxol.®