Education

  • Dickinson School of Law, J.D.
  • Temple University, B.S., Chemistry

Bar Admissions

  • District of Columbia
  • Pennsylvania
  • U.S. Court of Appeals - Federal Circuit
  • Supreme Court of the United States
  • U.S. Patent and Trademark Office
  • U.S. District Court – Eastern District of Texas
  • U.S. District Court - Southern District of Georgia
Who We Are

Michael R. Dzwonczyk

Dzwonczyk, M. and Shackelford, G., "Bristol-Myers Squibb Co. v. Teva Pharmaceuticals: Exploring the Effect of Postinvention Evidence of Unexpected Results on §103 Nonobviousness," AIPPI Journal of Japan, Vol. 60 No. 4, (June, 2015).
Dzwonczyk, M., "Implementing a 'Predictable' Obviousness Standard in the United States post-KSR," Canadian Intellectual Property Review, Vol. 25, No. T, 349 (December, 2009)
Dzwonczyk, M., "Looking at Federal Circuit Developments 2005: The Year in Review," 6 J. High Tech L. J. 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)
"Overview, Strategies, and Recent Trends in U.S. Pharmaceutical Litigation," Toyama Pharmaceuticals Manufacturers Assn. Conference, Toyama, Japan, September 4, 2018
"Trends in the Use of Antitrust Counterclaims Patent Litigation," JFTC conference presentation, Tokyo, Japan, June 22, 2018
"Industry Reaction to Impression Products v. Lexmark," JPAA, AIPPI-Japan conference presentations, Tokyo, Japan, June 18, 2018; Osaka, Japan, June 21, 2018
"The Evolving Principles of Venue and Jurisdiction in the Aftermath of TC Heartland," ACI Paragraph IV conference, New York, NY., April 23-25, 2018
"Walk Through a Basic IPR," Presentation to KPAA, Seoul, Korea, March 2018
"Has the Supreme Court's decision in Octane Fitness v. Icon Health adequately addressed the award of attorney fees in exceptional cases?" The Naples Roundtable Leahy Institute of Advanced Patent Studies, Naples, FL. Feb. 17-20, 2018
"Helsinn and the post-AIA On sale Bar of § 102," IIPRD International Symposium for R&D Scientists and IP Professionals, Stellar Gymkhana, Greater Noida, India, Sept. 27, 2017; Hotel Hilton (Andheri East), Mumbai, India, Sept. 25, 2017
"Navigating Disparate Results from District Courts and the PTAB after Novartis;" IIPRD International Symposium for R&D Scientists and IP Professionals, Stellar Gymkhana, Greater Noida, India, Sept. 27, 2017; Hotel Hilton (Andheri East), Mumbai, India, Sept. 25, 2017
"Recent Pharmaceutical Case Law Developments at the Federal Circuit," 2017 Fronteo Pharma Conf. Tokyo, Osaka, Japan, June 28 & 30, 2017
"Understanding various Exclusivities and Forfeiture of 180-Day Exclusivity," 2017 Fronteo Pharma Conf. Tokyo, Osaka, Japan, June 28 & 30, 2017
"The Role of IPRs in a Competitive Marketplace," JFTC Presentation, Tokyo, Japan, June 15, 2017
"Novartis v. Noven: Complicating the Uniform Treatment of Patent Claims," JPAA, AIPPI-LES Presentations, Osaka, Tokyo, Japan, June 12-14, 2017
"Developments in the Compulsory licensing of Pharmaceutical Patents in Southeast Asia and Australia," LES Asia Pacific Conf., Melbourne, Australia, May 9, 2017 (Authored)
"Obviousness Update for PIV Litigation: Latest Developments in the Federal Courts and PTAB," 11th Annual Paragraph IV Disputes Conf. Conrad Hotel, New York, N.Y. April 24, 2017
"Tired of Exhaustion? A Look at the Upcoming Showdown in Lexmark," Fed. Cir. Lecture Lunch presentation, March 8, 2017
"Claim Construction and Markman Strategies Post-Teva," IIPRD International Sympsium for R&D Scientists and IP Professionals, Hotel Taj Krishna, Hyderabad, India, Sept. 26-27, 2016; Hotel Hilton (Andheri East), Mumbai, India, Sept. 28-29, 2016
"Personal Jurisdiction in Hatch-Waxman Cases post-Daimler," IIPRD International Symposium for R&D Scientists and IP Professionals, Hotel Taj Krishna, Hyderbad, India, Sept. 26-27, 2016; Hotel Hilton (Andheri East), Mumbai, India, Sept. 28-29, 2016
"The Evolving Contours of Obviousness in Pharmaceutical Cases," IPRD International Symposium for R&D Scientists and IP Professionals, Hotel Taj Krishna, Hyderbad, India, Sept. 26-27, 2016; Hotel Hilton (Andheri East), Mumbai, India, Sept. 28-29, 2016
"Examining the 2015 Amendments to the Discovery Provisions of the Federal Rules of Civil Procedure," AIPPI-LES Presentations, Tokyo, Osaka, Japan, June 20-23, 2016
"The Domestic-Only Exhaustion Rule After Lexmark," JPAA, AIPPI-LES Presentations, Tokyo, Osaka, Japan, June 20-23, 2016
"Re-Evaluating Claim Construction and Markman Strategies Post-Teva," 10th Annual Paragraph IV Disputes Conf., Conrad Hotel, New York, N.Y., April 25, 2016
"Recent Pharma Cases You Should Know for Drug Development," 2016 Global Drug Development Seminar, Belle-essence Hotel, Seoul, Korea, March 15, 2016
"Recent Decisions for Impacting HW Cases for PIV Filers," 2016 U.S. Bio-Pharma ANDA Patent Litigation Symposium, NTUH International Convention Center, Taipei, Taiwan, March 11, 2016
The Naples Roundtable, "Litigating the new proportionality requirement under the amended Federal Rules of Civil Procedure," Naples Grand Hotel, Naples, FL. Feb. 15-16, 2016
"Claim Construction in Pharma Cases after Teva," IIPRD International Symposim for R&D Scientists and IP Professionals, Hotel Hyatt Vastrapur, Ahmedabad, India, Oct. 5-6, 2015; Hotel Hilton (Andheri East), Mumbai, India Oct. 7-8, 2015
"Strategies for Navigating the Fractured Law of Structural Obviousness Post-Baraclude®," IIPRD International Symposium for R&D Scientists and IP Professionals, Hotel Hyatt Vastrapur, Ahmedabad, India, Oct. 5-6, 2015; Hotel Hilton (Andheri East), Mumbai, India Oct. 7-8, 2015
“Advanced Strategies for Pleading and Motions Practice in Paragraph IV Disputes,” IIPRD InternationalSymposium for R&D Scientists And IP Professionals, Hotel Hyatt Vastrapur, Ahmedabad, India, Oct. 5-6, 2015; Hotel Hilton (Andheri East), Mumbai, India, Oct. 7-8, 2015
"Managing Your Patent Litigation Strategy in a Post-Grant Review World," JPAA Semiannual Meeting, Osaka, Japan, June 22, 2015; JPAA Summer Meeting, Tokyo, Japan, June 25, 2015
American Conference Institute’s (ACI’s) Paragraph IV Disputes Conference, "Defeating the Undefeatable: New Obvious Considerations for Paragraph IV Compound Patent Challenges in Light of Baraclude panel," April 27-28, 2015, New York, NY (moderator)
"Defeating the Undefeatable: New Obvious Considerations for Paragraph IV Compound Patent Challenges in Light of Baraclude," Program Chair and Panel Moderator, ACI's 9th Annual Paragraph IV Disputes Conference, The Conrad Hotel, New York, April 27, 2015
"Pre-and Early-Stage ANDA Litigation Considerations and Strategies," 18th Biopharmaceutical Production Forum, The Rennaissance Hotel, Seoul, Korea, April 2, 2015
"Claim Construction after Teva: Will Deference Make a Difference?" The Ninth Annual Akron Law Winter Institute, The Naples Beach Hotel & Golf Club, Naples, FL, Feb. 11-15, 2015
"The Role of Patents In India's Transition to an Innovation Economy," Keynote Address, GIPC's Seventh Annual Globe Intellectual Property Convention, The Lalit Hotel, Mumbai, India, January 15-17, 2015
“Recent Developments In Pharmaceutical and ANDA Cases,” UBIC JP Pharmaceutical Workshop, October 29-30, 2014, Hearton Hotel Kitaumeda, Osaka, Japan
“Recent Developments In Pharmaceutical and ANDA Cases,” IIPRD InternationalSymposium for R&D Scientists And IP Practitioners, September 22-25, 2014, Hotel Hilton, Mumbai, Hotel Taj Banjara, Hyderabad, India
“Recent Developments In Polymorph Patenting And Challenge Strategies For Solid Form Patents," IWPCPS® 16 International Workshop on Physical Characterization of Pharmaceutical Solids, June 16-19, 2014, Prague, Czech Republic
Moderator, Session Chair; mock trial in Crystalform, GmbH v. ABC Pharma, Inc., IWPCPS® 16 International Workshop on Physical Characterization of Pharmaceutical Solids, June 16-19, 2014, Prague, Czech Republic
Moderator and Session Chair, “Disputes, Resolution and Litigation," AUTM Asia 2014 - Opportunities and Challenges for Asia Emerging Market – From Innovation to Start-up, Taipei, Taiwan, April 9 – 11, 2014
"Bulletproofing Method Claims for Post-Limelight Enforcement," Second Annual University of Akron School of Law Naples Midwinter Patent Law Experts Conference, Naples, Fl. February 10-11, 2014
"Recent Developments at the Federal Circuit," Pharmaceutical Litigation In The United States Under The Hatch Waxman Act, UBIC Pharmaceutical Seminar, Tokyo, Japan, November 14–15, 2013
"Salient Features of the Hatch Waxman Act," Pharmaceutical Litigation In The United States Under The Hatch Waxman Act, UBIC Pharmaceutical Seminar, Tokyo, Japan, November 14–15, 2013
"ANDA Litigation Timeline Case Study : Lipitor®" Pharmaceutical Litigation In The United States Under The Hatch Waxman Act, UBIC Pharmaceutical Seminar, Tokyo, Japan, November 14–15, 2013
“PTO Procedures Practice Boot Camp For Paragraph IV Litigators.” ACI Paragraph IV Disputes Master Symposium, Sept. 29-Oct. 3, 2013, Hilton Chicago, Chicago, Ill.
"Keys To Maintaining Privilege In US Litigation," 2013 Korea-U.S. IP Judicial Conference, Seoul Korea, October 21, 2013
Session Chair, Mock Trial Participant, Trollpat LLC v, Hi-Tek Corp., International Forum and Mock Trials on ITC Investigation and Patent Damages, Taipei City, Taiwan, October 14, 2013
"U.S. Statutory Protection Against Infringing Imports and Claim Drafting Strategies," AIPF 2013 Annual Meeting, Washington, D.C., October 1, 2013
"Important Developments in Paragraph IV Litigation," IIPRD International Symposium On Strategies for Managing Pharmaceutical, Biotechnology & Chemical Patent Portfolios, Mumbai, India, September 26-28, 2013
"Reaching Policy-Driven Results in Akamai and Lighting Ballast," JPAA/JIPA Conferences, Tokyo/Osaka, Japan, August 29-30, 2013
Moderator, Session Chair, for Mock Trial in Solidphorm v. Chemdesign, IWPCPS® 15 International Workshop on Physical Characterization of Pharmaceutical Solids, June 24-27, 2013, Philadelphia, Pennsylvania, USA
"Strategies for Designing Around Solid Form Claims," IWPCPS® 15 International Workshop on Physical Characterization of Pharmaceutical Solids, June 24-27, 2013, Philadelphia, Pennsylvania, USA
"The Bifurcated Approach to Compulsory Licensing in the U.S.," 2013 LES International Conference, Rio de Janerio, Brasil, April 9, 2013
"Strategies for Generic Pharmaceutical Product Selection and Development," IIPRD International Symposium for R&D Scientists & IP Professionals of Pharmaceutical, Biotech and Chemical Industries, March 5-7, 2013, Mumbai, India
"Leveling the Pharmaceutical Patent Playing Field For Paragraph IV Filers through IPR," IIPRD International Symposium for R&D Scientists & IP Professionals of Pharmaceutical, Biotech and Chemical Industries, March 5-7, 2013, Mumbai, India
"The Strategic Use of Inter Partes Review in Hatch-Waxman Litigation," U. Akron Naples Midwinter Patent Law Experts Conference, Naples, Florida, February 5, 2013
"Divided Infringement and Induced Infringement of Pharmaceutical Claims," IIPRD International Symposium On Strategies for Managing Pharmaceutical, Biotechnology & Chemical Patent Portfolios, Mumbai, India, September 16-18, 2012 (speech)
"Important Developments in Paragraph IV Litigation," IIPRD International Symposium On Strategies for Managing Pharmaceutical, Biotechnology & Chemical Patent Portfolios, Mumbai, India, September 16-18, 2012 (speech)
"The Strategic Use of Inter Partes Review for Paragraph IV Filers," IIPRD International Symposium On Strategies for Managing Pharmaceutical, Biotechnology & Chemical Patent Portfolios, Mumbai, India, September 16-18, 2012 (speech)
BIO Korea Bio Health for Humanity 2012 Conference: The Challenges of InterPartes Review for Pharma and Bio Companies & Recent Judicial Developments Impacting the Bio and Pharma Enforcement Landscape, Seoul, Korea, September 13, 2012
"Recent Judicial Developments Impacting the Bio and Pharma Enforcement Landscape," BIO Korea Conference and Exhibition, Ilsanseo-gu, Korea, September 12 – 14, 2012 (speech)
"The Challenges of Inter Partes Review for Pharma and Bio Companies," BIO Korea Conference and Exhibition, Ilsanseo-gu, Korea, September 12 – 14, 2012 (speech)
"Filing Strategies to Avoid PGR Challenges and AIA's Prior Art Rules," JPAA Conference Tokyo, Japan, September 6; Osaka, Japan September 7, 2012 (speech)
"Patentees' Strategies for Defending an Inter Partes Review," Patent Practice Changes under the First-to-File and the Final Rules for Inter Partes Review, JPAA Conference, Tokyo, Japan, September 6; Osaka, Japan September 7, 2012 (speech)
"Sophisticated Aspects of Inter Partes Review," Patent Practice Changes under the First-to-File and the Final Rules for Inter Partes Review, JPAA Conference, Tokyo, Japan, September 6; Osaka, Japan September 7, 2012 (speech)
"The Unique Written Description Requirement for U.S. Patents," United States-China Intellectual Property Judicial Conference, Renmin University, Beijing, China, May 28-30, 2012 (speech)
"Backtracking on Doha: A Changing U.S. Position on the Scope of Compliant Compulsory Licenses," 2012 LES International Conference, Commercializing Innovation to Save the World, Auckland, New Zeland, April 4, 2012 (speech)
"ANDA Litigation Timeline," Korean Drug Research Association Annual Conference, Seoul, Korea, March 22-23, 2012 (speech)
"Strategies for Selecting the Form of the ANDA Product," Korean Drug Research Association Annual Conference, Seoul, Korea, March 22-23, 2012 (speech)
"The Mechanics of ANDA Litigation - Strategies and Considerations for Enhancing Korean Pharmaceutical Companies’ Competitiveness in the U.S.: Understanding and Exploring U.S. Drug Patent Litigation," Korean Drug Research Association Annual Conference, Seoul, Korea, March 22-23, 2012 (speech)
"Synergizing Your AIA and Litigation Strategies," Sughrue Symposium on IP Law and Policy, Akron, Ohio, March 19, 2012 (speech)
"The Effective Use of Experts at the PTO Under AIA and in District Court," Administrative Patent Revocation Trials under AIA, Tokyo, Japan, March 5, 2012; Osaka, Japan, March 6, 2012 (speech)
Integrating Real Litigation into a PTO Revocation: Expert Witness Practice including Depositions and other Discovery; interaction with District Court proceedings,” Japan, March 5, 2012
"The AIA of 2011: Impact on Pharmaceutical Practice and Strategies for Portfolio Management," ITAG Global IP Convention 2012, New Delhi, India, January 7, 2012 (speech)
ITAG Global IP Convention New Delhi India, January 7, 2012 (speech)
"Amicus Curiae Practice Before the Federal Circuit," Innovation and Commerce-Global Legal Considerations: Joint U.S.-Japan Judicial Coference, Tokyo, Japan, October 25-28, 2011
"The Changing Global Standards of Description, Disclosure, and Sufficiency," Joint Chemical Practice/IP Practice in Europe Committee Meeting, AIPLA 2011 Annual Meeting, Washington, D.C., October 21, 2011
“The Exergen Pleading Requirements for Inequitable Conduct,” IIPRD International Symposium On Strategies for Managing Pharmaceutical, Biotechnology & Chemical Patent Portfolios, Mumbai, India, October 11, 2011
“ANDA Case Law Review of Recent Strategies, Tips and Tactics,” IIPRD International Symposium On Strategies for Managing Pharmaceutical, Biotechnology & Chemical Patent Portfolios, Mumbai, India, October 10, 2011
“Patents and the Written Description Requirement: Lessons Learned Since Ariad v. Lilly,” Strafford Web Seminars, Atlanta Ga., September 8, 2011
"Licensing IP and Its Role in Commercializing Technology: Structuring Key Pharma/Biotech Licensing Provisions in a Post-Recession US," 2011 InterBiz BioPartnering & Investment Forum, Jeju, Korea, July 8, 2011
"Generic Approaches to Solid Form Pharmaceuticals," IWPCPS® 13--Thirteenth International Conference on Physical Characterization of Pharmaceutical Solids, Indianapolis, Indiana, USA, June 20, 2011
"Compulsory Patent Licensing in the U.S.: Shhhhh! Don't Tell Anyone," 2011 LES International Conference, Licensing in the 21st Century - Better, Faster, Smarter, London, England, June 6, 2011
"An Overview and Current Trends in U.S. Biosimilars," iTAG Intellectual Property Rights Conference, Global IP Convention 2011 Bangalore, India, April 29, 2011
"Development Strategies Based on Early Stage Navigation of the Patent Landscape" Korea Drug Research Assocation, Seoul, Korea, April 26, 2011
“Litigating Infringement of Different Pharmaceutical Claims," Korea Drug Research Assocation, Seoul, Korea, April 26, 2011
"ANDA Case Law Update," IIPRD International Symposium On Effective Strategies For Managing Pharma & Biotech Patent Portfolio, Mumbai, India, September 15-16, 2010; New Delhi. India, September 17-18, 2010
"Navigating the U.S. Biosimilar Pathway," Panel Speaker, ABA-IP Teleconference and Live Audio Webcast, June 29, 2010
"NeuBlocTM: Strategies for the Development of Noninfringing Alternatives," IWPCPS® 12 Twelfth International Workshop on Physical Characterization of Pharmaceutical Solids, June 21-24, 2010, Lille, France
"Ariad Pharmaceuticals v. Eli Lilly: Examining the Written Requirement for Patentability," Panel Speaker, ABA-IP Teleconference and Live Audio Webcast, April 21, 2010
"Exploring The Use of Alternative Forms as a Rational Design Strategy," 2010 Korean Drug Research Association Spring Conference, April 16, 2010
“National Approaches to the Compulsory Licensing of Drugs Under TRIPS,” 2010 LES International Conference The Role And Impact Of Emerging Economies, Sandton, Johannesburg, South Africa April 12, 2010
"The Advent of Biosimilars in the U.S. Where Are We Now? Where Are We Likely Headed?" (panel presentation), 26th Annual ABA Intellectual Property Law Conference, Arlington, Virginia, April 7, 2010
“Considerations in Developing an ANDA Strategy,” 2010 Korea Drug Research Association Spring Seminar, Seoul, Korea, April 16, 2010
"Bilski Applied, Bilski Denied," Twelfth Annual Richard C. Sughrue Symposium on Intellectual Property Law and Policy, Univ. Akron School of Law, Akron, Ohio, March 9, 2010
“Implementing a “Predictable” Obviousness Standard Post-KSR”, IPIC 83rd Annual Meeting, St. John’s, Newfoundland, Canada, September 25, 2009
“Litigating Effectively at the ITC,” UBIC Tokyo Conference 2009, Belle Salle Yaesu Conference Center, Tokyo, Japan September 18, 2009
“Authorized Generics and the Battle Over Generic Market Exclusivity,” IIPRD International Symposium on Strategies for Managing a Pharma/Biotech/Chemical Patent Portfolio, Hotel Le Royal Meridien, Mumbai, INDIA, September 2-4, 2009 Speeches
“NDA and ANDA Products: The Use of Solid Forms as a Rational Design Strategy, IIPRD International Symposium on Strategies for Managing a Pharma/Biotech/Chemical Patent Portfolio,” Hotel Le Royal Meridien, Mumbai, INDIA, September 2-4, 2009
“Compulsory Patent Licensing in the U.S. and Japan,’” Invited Lecture, 2009 LESI Conference, Licensing in Emerging Economies, Manila, Phillipines, June 8, 2009
“The Impact Of President Obama’s Healthcare Plan On Pharmaceutical Companies In The U.S.,” Invited Lecture, Korean Drug Research Association, Seoul, Korea, April 1, 2009
“IP Risk Management, IP Insurance, IP Litigation & Dispute Resolution,” Conference, Empowering Business Entities Through IPR, Kolkata, West Bengal, India, January 8-10, 2009
“The Unique Aspects of Litigating ANDA and Pharmaceutical Cases,” Invited Lecture, UBIC Conference, Trends in U.S. Litigation and How Japanese Companies Attack Them, Tokyo, Japan, September 19, 2008
“Lessons From KSR And Post-KSR Pharma Cases; Overview of ANDA litigation and the strategic use of ANDA's Infringement and Remedies under 271(e)(2) and 271(e)(4); Action for patent certainty under §355(j)(5)(c) and broadened declaratory judgment jurisdiction after Medimmune; Actions to delist pharmaceutical patents from the FDA Orange Book,” Symposium, Leveraging Patent Exclusivities, Resolving Principal Patent Issues Related to Pharma, Biotech & Chemicals, Noida, India, Aug. 21-23, 2008
“Prelitigation Chess in a post-Medimmune World,” Symposium, Tenth Annual Richard C. Sughrue Symposium on Intellectual Property Law and Policy, The University of Akron School of Law, Akron, Ohio, March 10, 2008
Strategies for Effective Opinion Drafting
Recent Decisions Impacting Patent Litigation