Jonathan Bachand

Partner

Washington DC

(202) 640-6400

jonathan.bachand@knobbe.com

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Overview

Experience

Recognition

Resources

Jon Bachand focuses his practice on helping companies protect their most important products and innovations. He represents various clients in all areas of intellectual property law with an emphasis on representing medical device and pharmaceutical companies in adversarial patent proceedings. Super Lawyers magazine has repeatedly named Jon a “Rising Star” in the field of intellectual property litigation.

Jon has experience representing companies in all phases of district court litigation and in 337 investigations before the International Trade Commission. He is a co-chair of the firm’s International Trade Commission practice. Jon represents both patent owners and petitioners before the Patent Trial and Appeal Board (PTAB) in inter partes review proceedings involving medical devices, pharmaceuticals, life-sciences, and chemical processing patents. A former judicial clerk to the Honorable Kimberly A. Moore of the United States Court of Appeals for the Federal Circuit, Jon has significant appellate experience and has successfully represented numerous clients in appeals before the Federal Circuit from both district court and PTAB proceedings.

Jon is a partner in the Washington, D.C. office, which he helped start as one of its founding attorneys in 2008. He is a member of the firm’s pro bono committee and organizes Knobbe’s representation of American Service Veterans before the Court of Appeals of Veterans Claims. Jon is the former chair of the Chemical Engineering and the Law Forum of the American Institute of Chemical Engineers; and is actively involved in numerous organizations including the Federal Circuit Bar Association and the ITC Trial Lawyers Association. He is the former chair of the Washington DC region of the USC Gould Alumni Association. Jon lives in Arlington Virginia with his family, including their rescue dog Ralphy.

Education

University of Southern California - Gould School of Law (USC) (J.D., 2006), Order of the Coif

Northeastern University (B.S. Chemical Engineering, 2003), Minor in History, Carl S. Ell Scholar, Tau Beta Pi - Engineering Honor Society, Omega Chi Epsilon – Chemical Engineering Honor Society

University of Southern California - Gould School of Law (USC)

Northeastern University

State Bar of California

District of Columbia Bar

Supreme Court of the United States

U.S. Court of Appeals for the Federal Circuit

U.S. Court of Appeals for Veterans Claims

U.S. District Court - Central District of California

U.S. District Court - Northern District of California

U.S. District Court - Southern District of California

U.S. Patent and Trademark Office

Biosimilars

Biotechnology

Chemical

Clean Technology

Medical Devices & Procedures

Pharmaceuticals

Sporting Goods & Recreation

Practice Areas

IP Strategy

Appellate Litigation

Hatch-Waxman Litigation

ITC Litigation

Trade Secret & Employment Mobility Litigation

Patents

PTAB IPR & Post-Grant Proceedings

In Re Certain Light-Based Physiological Measurement Devices and Components Thereof, USITC Inv. No. 337-TA-1276 (ITC 2023)

Represented Masimo against Apple in International Trade Commission investigation relating to infringement of Masimo’s patented pulse oximetry technology. Obtained exclusion order and cease and desist order banning importation and sale of Apple Watches. Appeal pending.

Acera Surgical, Inc. et al v. Nanofiber Solutions, LLC et al, 1-20-cv-00980 (D. Del. 2023)

Successfully represented Acera and the Washington University of St. Louis in district court litigation involving five patents related to Acera’s electrospun soft-tissue repair technologies.

Acera Surgical Inc. v. The Research Foundation for the State University of New York, IPR Nos. 2022-01036, 2002-01000 (PTAB 2023)

Represented Acera as petitioner against two patents asserted against it in district court litigation. After institution, the parties settled the disputes regarding the SUNY patents with terms favorable to Acera.

Tokyo Ohka Kogyo, Ltd. v. Fujifilm Electronic Materials U.S.A., Inc., Case No. PGR2022-00010 (2023)

Represented Tokyo Ohka Kogyo in PGR challenging a patent relating to cleaning compositions for removing residues from a semiconductor substrate. Obtained final written decision holding all challenged claims unpatentable.

Nanofiber Solutions, LLC, Acera Surgical, Inc., IPR2021-01016 (PTAB 2022)

Represented patent owner Acera and successfully defended the patentability of numerous claims asserted in co-pending litigation.

Perma Pure LLC v. Masimo Corp., IPR2019-01583 (PTAB 2021)

Represented Masimo in IPR proceeding defending a patent related to a device for drying a patient’s airstream without creating distortion impacting sensor readings. Argued for Masimo at Oral Hearing and obtained final written decision upholding the validity of all challenged claims.

Par Pharmaceutical, Inc. et al v. Amphastar Pharmaceuticals, Inc., Case 1-18-cv-02032 (2020)

Represented Amphastar defendant as lead counsel in a patent infringement action in the District of Delaware on patents relating to vasopressin formulations. Obtained a favorable case-dispositive settlement for client prior to expert discovery.

Advanced Aerodynamics, LLC v. Amax Group, USA LLC, 4-20-cv-00118 (SDTX 2020).

Successfully represented defendant Amax Group, USA as lead counsel in a patent litigation lawsuit involving drone technology. After serving Plaintiff with a Rule 11 motion contending their allegations of infringement were unsupported, Plaintiff withdrew its claims with prejudice.

ASM IP Holding BV et al v. Kokusai Semiconductor Equipment Corporation et al. IPR2018-01523, IPR2018-01523, IPR2018-01479, IPR2018-01357.

Represented ASM in a series of offensive and defensive inter partes reviews proceeding leading to a favorable settlement for ASM.

In re Sleep-Disordered Breathing Treatment Mask Systems and Components Thereof, USITC Inv. No. 337-TA-1134 (ITC 2018).

Represented Fisher & Paykel Healthcare in action before the International Trade Commission relating to patient interfaces for sleep apnea therapy and related inter partes reviews.

King v. O’Rourke, Case No. 17-4433 (2018).

Represented American Service Veteran in Appeal from the Board of Veterans’ Appeals for denial of service benefits to the United States Court of Appeals for Veterans Claims. Successfully obtained favorable remand for Veteran.

iCeutica Pty Ltd. and Iroko Pharmaceuticals, LLC v. Lupin Limited and Lupin Pharmaceuticals, Inc. Case No. 1:17-cv-00394 (2018).

Represented the Lupin defendants in a patent infringement action in the District of Maryland on patents relating to meloxicam (the active ingredient in Iroko’s Vivlodex® product.) Obtained a favorable and case dispositive ruling on Summary Judgment that Lupin’s ANDA Products did not literally infringe the patents-in-suit and that prosecution history estoppel applied, legally barring Plaintiffs from asserting that Lupin’s products infringed under the doctrine of equivalents.

In re Certain Sleep Disordered Breathing Treatment Systems and Components Thereof, USITC Inv. No. 337-TA-1022 (ITC 2017).

Represented Fisher & Paykel Healthcare in action before the International Trade Commission relating to patient interfaces for sleep apnea therapy. After favorable evidentiary ruling for Fisher & Paykel Healthcare, patentee unilaterally withdrew its complaint and terminated the investigation. 82 Fed. Reg. 27724.

Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359 (Fed. Cir. 2016).

Represented Illumina and obtained affirmance of IPR final written decision upholding the validity of all challenged claims from a patent directed to DNA sequencing-by-synthesis.

Forest Laboratories Holdings Ltd., et al v. Apotex Corp., et al., Case Nos. 13-cv-01602 and 13-cv-01604 (2016).

Represented the Lupin defendants in a patent infringement action in the District of Delaware on patents relating to milnacipran hydrochloride (the active ingredient in Forest Laboratories’ Savella® product). Achieved favorable case-dispositive settlement for client following a full bench trial.

Ariosa Diagnostics, Inc. v. Illumina, Inc., Case IPR2014-01093 (2016).

Represented Illumina in an IPR proceeding defending a patent directed to noninvasive prenatal screening methods. Obtained final written decision upholding the validity of all challenged claims.

Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., Case IPR2013-00517 (2015).

Represented Illumina in an IPR proceeding defending a patent directed to DNA sequencing-by-synthesis. Obtained final written decision upholding the validity of all challenged claims.

Merck & Cie, et al v. Watson Laboratories, Inc., et al, Case Nos. 13-cv-00978 and 13-cv-01272 (2013-2015).

Represented the Watson defendants through fact discovery in a patent infringement action in the District of Delaware on patent relating to a crystal polymorph of levomefolate calcium (an active ingredient in Plaintiffs’ Beyaz® and Safyral® products). Discovered offer for sale that led to the invalidation of the only asserted claim as anticipated.

EID Parry Ltd v. Lycored Ltd., et al., IPR2013-00262, -00263, -000264.

Represented Petitioner EID Party in three inter partes review filings. Achieved favorable case-dispositive settlement for client prior to institution decision.

Unimed Pharmaceuticals, LLC, et al v. Watson Laboratories Inc., et al, Case Nos. 13-cv-00236 and 13-cv-00496 (2013).

Represented the Watson defendants in a patent infringement action in the District of Delaware on patents relating to Plaintiffs’ AndroGel® 1.62% Product. Achieved favorable case-dispositive settlement for client during fact discovery.

Ranbaxy Labs., Ltd. and Ranbaxy, Inc. v. Vertex Pharmaceuticals, Inc., Case IPR2013-00024 (2013).

Represented Ranbaxy in an IPR proceeding challenging a patent relating to fosamprenavir (the active ingredient in Lexiva®). Achieved favorable case-dispositive settlement for client.

Springboard Medical Ventures LLC v. American Medical Systems, Case Nos. 8-cv-00481 (2008).

Represented the plaintiffs Springboard Medical Ventures in lawsuit filed in the Central District of California alleging patent infringement, trade secret misappropriation, unfair competition, and breach of contract regarding urologic sling technology. Achieved favorable case dispositive settlement for client without need to take any discovery.

Represented Defendant Bravo Sports in patent infringement lawsuit related to collapsible canopy chair technologies. Achieved favorable case dispositive settlement for client.

Awards & Honors

Named a Best Performing ANDA Attorneys Representing Defendants by Patexia Insight's 2021 ANDA Litigation Intelligence Report
Recognized in Benchmark Litigation's exclusive "Under 40 Hot List" for his work in intellectual property litigation (2018-2019)
Named a "Washington DC Rising Star" by Super Lawyers magazine for his intellectual property litigation practice (2014-2020)

Articles

Co-author, Issue Preclusion at the ITC: New Developments for Trademark-Based Claims, Knobbe Martens Firm Alert (August 2019)

What New Hires May Lack — and How to Fix It, Legal Management (May 2019)

Supreme Court to Review Post-AIA-On-Sale Bar, Intellectual Property Strategist (August 2018)

Hatch-Waxman And Copying: An Exception To The Exception?, Law360 (November 2017)

7 Tips For Using Foreign Language Documents in IPR, Law360 (November 2016)

Evidence Of Copying Is Irrelevant In Hatch-Waxman Cases, Law360 (September 2016)

Complex Litigation for Complex Molecules: An Introduction to the Biologics Price Competition and Innovation Act, 14 Orange County ABTL Report 3 (2012)

Author, Knobbe Martens Litigation Blog

“Term Act of 2019” Proposes Shifting Patent Challenge Burdens to Branded Companies (June 2019)

Four New Rules at the ITC That Patent Litigators Need to Know (June 2018)

ITC Reiterates the Importance of Quantitative Evidence to Establish a Domestic Industry (February 2018)

Federal Circuit Clarifies Scope of On-Sale Bar (February 2018)

Speeches & Seminars

"The ITC: Examining the Role of this Alternate Forum in Biosimilars Dispute," ACI Summit on Biosimilars, New York, NY (June 2019)

“Assessing the Implications of the Supreme Court’s Recent Decision in SAS and its Impact on PTAB Practice,” ACI Paragraph IV Disputes Master Symposium, Chicago, IL (October 2018)

"Deciphering the Business Implications of the On-Sale Bar," ACI Paragraph IV Disputes Conference, New York, NY (April 2018)

"Exploring the Recent Defense Trade Secrets Act," AIChE Annual Meeting, San Francisco, CA (November 2016)

"What You Need to Know about Being an Expert Witness," AIChE Annual Meeting, San Francisco, CA (November 2016)

"Patents: Offensive and Defensive Strategy for Chemical Engineers," AIChE Spring Meeting, Houston TX (April 2016)

"Case Study: Amgen Inc. v. Sandoz Inc. and the Impact on the Patent Dance and the Notice of Commercial Marketing," American Conference Institute’s 7th Annual Summit on Biosimilars, New York, NY (June 2016)

“How to Entrepreneur – Legal Matters, Intellectual Property Basics,” American Institute of Chemical Engineers 2015 Annual Meeting, Salt Lake City, UT (November 2015)

“Starting the Start-Up: IP Basics,” American Institute of Chemical Engineers 2015 Spring Meeting, Austin, TX (April 2015)

"Ballston LaunchPad Brain Fuel Session: Legal & Intellectual Property," Ballston LaunchPad, Arlington, VA (October 2013)

"Update on Current Legal Issues Impacting the Generic Industry,” GPhA/FDA Fall Technical Conference, Bethesda, MD (October 2011)