Michael R. Dzwonczyk Partner

Mr. Dzwonczyk has over 15 years experience successfully representing multinational companies in patent litigation, including trials and appeals of patent cases and Section 337 cases at the International Trade Commission.   His experience has encompassed technical areas that include recombinantly produced hormones, pharmaceuticals, protein synthesis and expression products, fibers, films, polymers, plastics and medical devices.  His interference practice has included topics in chemistry and biotechnology including hormone and gene therapeutics, as well as anticholesterics.  Mr. Dzwonczyk also counsels clients on intellectual property issues, including validity and infringement of intellectual property rights, licensing and contract matters and Hatch-Waxman issues.
 
He has lectured on numerous topics including strategies for drafting pre-litigation opinions, pharmaceutical litigation strategies, experimental and exempt uses after Merck, and Patent Law Reform.  He serves as Chair of  FCBA's amicus committee and Vice-Chair of the AIPLA Chemical Practice Committee.  Prior to working as a patent attorney, Mr. Dzwonczyk worked at FMC Corporation agricultural chemicals research facility on the synthesis, isolation and characterization of novel plant growth regulators, herbicides and insecticides.

Mr. Dzwonczyk  is an adjunct professor of law at George Washington University's National Law Center, where he co-teaches International and Comparative Patent Law. He has been quoted by The Washington Post, The Legal Times, The Corporate Legal Times, Bloomberg News Service, The IP Law Bulletin, and others.  He contributes regularly to the APLF e-newsletter Issues and has authored amicus curiae briefs to the Federal Circuit in, e.g., Aukerman v. Chaides, CPC International v. ADM Co., Phillips v. AWH Corp., and to the United States Supreme Court in Merck v. Integra.

District of Columbia, Pennsylvania
U.S. Court of Appeals - Federal Circuit
Supreme Court of the United States
U.S. Patent and Trademark Office

Dickinson School of Law (J.D.  1990)
Temple University (B.S. Chemistry, 1984)

Interlates Limited et al v. Kemira Chemicals Inc. and J.M. Huber Corp., No. 3:04-cv-05834-RJB (W.D. Wa. 2004)

Ortho-McNeil Pharm., Inc., et. al. v. Mylan Labs., Inc. et al., 348 F. Supp. 2d 713 (N.D.W.V. 2004), aff'd 161 Fed. Appx. 944 (Fed. Cir. 2005)

In re Certain Breath Test Systems For The Detection Of Gastrointestinal Disorders And Components Thereof, ITC Inv. 337-TA-495 (2003)

Georgetown University v. Dr. Ian Woosley and Dr. Yiwang Chen, No. 00-703-A (E.D. Va. 2000)

AHP Corp., Woco Investments Ltd., Pre Jay Holdings Ltd. v. Novo Nordisk Pharmaceuticals, Inc. (D.N.J. 1999)

Applied Medical Resources, Inc. v. U.S. Surgical Co., No SACV 99-625-AHS (EEx) (C.D. Ca. 1999)

In re Certain Recombinantly Produced Hormones, ITC INv. No. 337-TA-358 (1994)

Recent Decisions Impacting Patent Litigation
Strategies for Effective Opinion Drafting
Looking at Federal Circuit Developments 2005: The Year in Review, 6 J. High Tech L. 113 (2006)
Dzwonczyk, M. and Hissong, D., EST Patents After Fisher, The Patent Lawyer, Vol. 2, Issue 3, 18 (2005)
Dzwonczyk, M. et. al. "The Shaky Foundations of the Written Description Requirement", World IP Contacts handbook, 2005, Managing Intellectual Property, ed. (2005)

“Recent Decisions Impacting Patent Litigation,” presented at the AIPLA 2007 Advanced Patent Litigation Seminar, Washington, D.C., June 9, 2007.

“KSR Int Co. v. Teleflex Inc. , - Practically Speaking What This Means To You,” presentation at APLF webcast Roundtable Panel Discussion, May 11, 2007.

“Leveraging Pharmaceutical Patent Exclusivities,” presented at the Symposium on Global Perspective on Pharma and Biotech Patents, Taj Residency, Ummed, Ahmedabad, India, April 19, 2007.

“IP Risk Avoidance and What to do if You Get Sued,”  presented at the Third Global Conference on API Outsourcing & Compliance, Zhejiang, Hangzhou, China, April 12-13, 2007.

“Pharmaceuticals and Patent-Eligible Subject Matter After LabCorp,”  presented at the Institute of Intellectual Property and Social Justice at Howard University School of Law, Fourth Annual Intellectual Property Seminar, March 1-2, 2007, Washington, D.C.

“Looking at Patent Law Developments 2006:  The Year in Review,” presented at the AIPLA online seminar, “Patent, Trademarks and Copyright: Hot Topics in 2006,” January 12, 2007.

“Discovery in US Litigation: Compulsion and Compliance,” presented at Brussels IP 2006, The PanEuropean Intellectual Property Summit, Brussels (Belgium), December 7, 2006; also presented at Patentanwaltskammer Conf., Europaisches Patentamt, Munich, Germany, March 27, 2007.

“Medical Treatment Method Patents in the U.S. and Europe,” presented at the  Kyoto University Industry-Academia Collaboration Seminar 2006, Medicine Related Patents and Universities, Kyoto University School of Medicine, Kyoto, Japan (Nov. 9, 2006).

“Pretrial Practice and Procedure,” U.S. IP Patent Litigation Seminar and Mock Trial Presentation, Hainan, China, November 6-7, 2006.

Panel Chair, Moderator, “Patent Reform and the New Proposed Rule Changes: Protecting Innovation in a Changing Environment”, CALBIO 2006, San Diego Marriott Hotel & Marina, May 18, 2006

“Section 337 vs. District Court Distinctions and Implications for Intellectual Property Litigation Strategy,” Eighth Annual Sughrue Symposium on Intellectual Property Law & Policy, The University of Akron School of Law (March 13, 2006)

Insights into IP Infringement - A Law Firm Perspective, IPR Summit 2006: International Conf. on IPR (Bangalore, India, January 31, 2006)

Experimental and Exempt Uses of Pharmaceutical Inventions  After Merck, IPR Summit 2006: International Conf. on IPR (Delhi, India, January 25, 2006)

Biotechnology Symposium, Federal Circuit Developments 2005, Safe Harbor/Experimental Use, Inherency, Obviousness and Utility, Suffolk University School of Law, Boston, MA (November 18, 2005)

The Extraterritorial reach of §271(f), Rochester Intellectual Property Lawyers Association (RIPLA) Annual Meeting (November 9, 2005)
 
Claim Construction and the Phillips v. AWH Corporation Cases, Seventh Annual Sughrue Symposium on Intellectual Property Law & Policy, The University of Akron School of Law (March 7, 2005) (panel discussion)

Strategies for Drafting Opinions of Counsel: What Will Knorr-Bremse Change?,  AIPLA 2004 Advanced Computer and Electronic and Biotechnology and Chemical Patent Practice Seminars (June 2004)

Should the Hatch-Waxman Act apply to generic biologics?, AIPLA 2003 mid-winter meeting (January 24, 2003), Biotechnology Committee panel presentation

The Need for the Statutory Creation of an Experimental Use Exception: Harmonizing Roche, Embrex and Madey, presented to the BADC IP section, Washington, D.C. (Dec. 9, 2002)

Strategies for Effective Opinion Drafting, AIPLA 2002 Advanced Biotechnology, Chemical Patent Practice Seminar (May 2002)

"Discovery After Seagate Under the New Rules," Mock Deposition and Trial Presentation, AIPPI Japan Fall Meeting, Tokyo, Japan, November 7, 2007

"Patent Drafting Dilemmas after KSR Using the Problem Solution Approach," TACPI Tokyo Conference Panel Presentation, Tokyo, Japan, Nov. 6, 2007

"The Impact of Recent Decisions on Chemical Patent Practice," AIPLA Annual Meeting, Chemical Practice Committee, Speakers Presentation, October 19, 2007

"Early Access Agreements In Pharma: Authorized Generics and the Battle Over Generic Market Exclusivity," LES Annual Meeting 2007, Vancouver, BC, Canada, October 16, 2007

"The Unobvious Implications of MedImmune for Licensors, Licensees and Litigants," APLF Annual Meeting, The Benjamin N. Cardozo School of Law, September 26, 2007