Steven E. Feldman

Steve Feldman is the head of Hahn Loeser’s Intellectual Property Practice Area, the Partner-in-Charge of the firm’s Chicago office and a member of the firm’s Board of Directors. His practice encompasses complex intellectual property litigation, prosecution, licensing, and counseling involving patents, trade secrets, trademarks and unfair competition, copyrights, data privacy and security, and NIL (Name, Image, and Likeness) compliance, policies, and rights. Steve also regularly supports clients on corporate transactions and due diligence.

A seasoned trial lawyer and patent attorney, Steve often takes a lead role in trials, Markman hearings, and appeals. Steve helps clients to build and manage strategic intellectual property portfolios domestically and internationally. He assists clients with IPRs and appeals before the Patent Trial and Appeal Board at the USPTO, and in European Patent Opposition proceedings.

As a licensed patent attorney with a background in materials science and engineering, Steve’s experience stretches across a wide variety of technical areas, including:

• Pharmaceuticals and biotechnology, including bioassays; biosimilars and bio-betters, cell and antibody-based diagnostics and therapies, 3D printing technologies for tissue and organ regeneration, medical implants, surgical tools, dialysis machines, radio frequency (RF) steering mechanisms and locating systems, surgical robots, MRI, CAT scan and PET imaging devices, ultrasonic imaging systems, dental implants and devices, and healthcare management tools.
• Automotive and aerospace materials, parts and systems, including innovative steel, and casting technologies, aluminum alloys, nanomaterials, coatings and heat treatments, rare earth magnets, polymeric materials and additives, materials handling equipment, construction and building materials.
• Water and resource management technologies including UV wastewater treatment systems and desalination systems.
• Alternative energy technologies including clean coal, biofuels, ethanol processing and solar cells.
• Color management equipment and materials, including printing and color pigments, color management software, and hardware.
• Lighting and photonic materials and technologies including high brightness LEDs; semiconductor lasers; receivers and transmission devices; cellular and satellite equipment.
• Law enforcement and personal protection equipment.
• Computers, Internet of Things, Digital Control Systems, Software, Electronic Commerce.

Steve brings two decades of experience litigating and providing strategic counseling to clients in the area of competitive pharmaceutical products, including Hatch-Waxman Act related patent litigation arising of ANDAs, 505(b)(2) NDAs and skinny labels. Most recently he assisted a client in defeating not one, but two preliminary injunction motions following two separate hearings before Judge Albright in the Western District of Texas in a case involving a levothyroxine liquid formulation. Other cases of note involve drugs such as Norvasc^®, Boniva^®, Actonel^®, Fosrenol^®, Antara^®, Aripiprazole^® OLSO, Uroxatral^®, Eloxatin^®, Ultracet^®, Omnaris^®, Benicar^®, Benicar^® HCT, Lotrel^®, Zometa^®, Reclast^® ,Treanda^®, Plavix^®, Xiidra^® and Oxtellar^®.

In addition, Steve advises clients on Food and Drug Administration marketing exclusivities and strategies and has litigated such matters in the U.S. District Court, District of Columbia, and the U.S. Court of Appeals, District of Columbia Circuit. He also assists clients on mergers, acquisitions, sourcing licensing and distribution agreements in the pharmaceutical and biotechnology areas and has experience with related FTC and antitrust issues arising out of pharmaceutical settlements.

Steve also represents clients in matters involving the protection and enforcement of trade secrets. He guides clients in implementing trade secrets audit and protection programs, negotiating joint venture agreements, and preparing effective confidentiality/nondisclosure arrangements.

Steve earned his J.D., with honors, from George Washington University Law School in 1995. A nationally recognized leader in intellectual property matters, Steve is a frequent lecturer and a member of the George Washington University Intellectual Property Advisory Board. He also serves on the Executive Counsel for Northwestern University’s Institute for Sustainability and Energy.

Accolades

• Lead counsel for Apotex in a significant jurisdictional case where the Court of Appeals for the Federal Circuit held that Apotex has standing as a subsequent ANDA filer to challenge one of Daiichi’s Orange Book listed patents for the drug Omnaris^® (olmesartan medoxomil), despite the patent having been disclaimed by Daiichi.
• Lead counsel for Apotex in successfully obtaining summary judgment of patent invalidity in the U.S. District Court for the District of Delaware in a case involving a generic version of Warner Chilcott’s osteoporosis drug Actonel (risedronate). The decision was affirmed on appeal by the Court of Appeals for the Federal Circuit.
• Lead counsel for Apotex in defeating Hoffman Roche’s motion for preliminary injunction to prevent the launch by Apotex of a generic version of the osteoporosis drug, Boniva (ibandronate), which enabled client to launch as a first filer. Subsequently, the district court granted motion for summary judgment finding that Hoffman La Roche’s patents were invalid for obviousness. Hoffmann-La Roche Inc. v. Apotex Inc., et al. (D.N.J. 2012). The decision was affirmed on appeal by the Court of Appeals for the Federal Circuit.
• Lead counsel for Apotex, which obtained summary judgment of noninfringement on patents relating to the drug Antara, and avoided prolonged discovery while demonstrating that client’s formulation did not infringe. In re Fenofibrate Patent Litigation (S.D.N.Y. 2012).
• Extensive experience at both the trial and appellate level litigating Hatch-Waxman/abbreviated new drug application (ANDA) disputes. Pharmaceutical litigations of note include Norvasc (amlodipine) – Pfizer Inc. v. Apotex Inc., 480 F.3d 1348 (Fed. Cir. 2007); Floxin Otic (ofloxacin) (Daiichi Sankyo Co. Ltd. v. Apotex Inc., et al., 501 F.3d 1254 (Fed. Cir. 2007); Actonel (risedronate), Uroxatral (alfuzosin), Eloxatin (oxaliplatin), Ultracet (tramadol and acetaminophen), Omnaris (ciclesonide nasal spray), Benicar (olmesartan medoxomil), Lotrel (amlodipine and benazepril) and Plavix (clopidogrel).
• Lead counsel for Illinois Tool Works in patent infringement case involving enforcement of company patent on its innovative polyester/polyolefin packaging technology. Case ultimately settled. Illinois Tool Works Inc. v. Samuel Son & Co. Ltd. and Samuel Strapping Systems Inc. (N.D. Illinois 2012).
• Secured favorable outcome in defending against $500 million claim involving issues of patent misuse, patent exhaustion, implied license, breach of license agreement, and unjust enrichment. Minebea Co. v. Papst Licensing, 444 F.Supp.2d 68 (D.D.C. 2006).
• Counsel for Rockwell International Corp. in numerous patent infringement lawsuits and in worldwide licensing programs involving metalorganic chemical vapour deposition (MOCVD) semiconductor processing technology pertaining to high brightness LEDs, semiconductor lasers, solar cells and other semiconductor devices.
• Counsel for Rockwell Electronic Commerce Corp. in action for trade secret misappropriation relating to technologies involved in call center solutions.
• Counsel for Heico Corp. in obtaining summary judgments dismissing patent infringement and trade secret claims in a case involving jet engine parts in litigation with United Technologies Corp.

• Six Hahn Loeser Attorneys Honored by 2024 Illinois Super Lawyers
  January 29, 2024
• Best Lawyers Recognizes 87 Hahn Loeser Attorneys Across 53 Specialties
  August 17, 2023
• Hahn Loeser Attorneys Cooper, Feldman and Rollo Named to 2023 Illinois Super Lawyers List
  January 26, 2023
• Best Lawyers Recognizes 75 Hahn Loeser Attorneys Across 45 Specialties
  August 18, 2022
• Hahn Loeser & Parks LLP Attorneys Named to 2022 Illinois Super Lawyers
  January 28, 2022
• Hahn Loeser & Parks LLP Attorneys Named to 2021 Illinois Super Lawyers
  January 29, 2021
• Hahn Loeser & Parks LLP Attorneys Named to 2020 Illinois Super Lawyers & Rising Stars Lists
  February 07, 2020
• Hahn Loeser & Parks LLP Moves Chicago Office to New Space to Allow for Continued Expansion
  September 20, 2019
• Cooper, Calderas and Feldman Elected to Hahn Loeser’s Board of Directors
  July 18, 2017
• Feldman Elected to Board of Directors of Hahn Loeser
  February 28, 2017
• Hahn Loeser & Parks LLP Continues to Expand; Opens Office in Chicago
  June 16, 2015

• Speaker

  The Current State of the Skinny Label (Life Sciences Patent Network North America 2023)

  May 04, 2023
• Author

  USPTO Requires U.S. Licensed Attorney for Foreign Trademark Applicants and Registrants

  July 23, 2019
• Author

  European Data Privacy Regulations Now May Extend to U.S. Businesses

  July 18, 2018
• Speaker

  Keeping your Company off Thin Ice and Out of the Penalty Box: What you Need to Know About the Defend Trade Secrets Act

  November 01, 2016
• Speaker

  How Recent Court Decisions On Patent Exhaustion, Exceptional Case and Patentable Subject Matter, are Changing the Face of Patent Licensing

  March 03, 2016
• Speaker

  Shedding Light On The Changing Face of Intellectual Property Enforcement, Protection and Defense: Who’s Alice? What The Heck Are IPRs and PGRs, And Why Should I Care? When’s Congress Finally Going To Do Something About Those Pesky Patent Trolls?

  January 18, 2016
• Speaker

  Evaluating the Merits of Bringing A Declaratory Judgment Action in Paragraph IV: Duplication or Necessity?

  October 01, 2015
• Author

  How to Keep your Patent Portfolio off Life Support and Out of the Morgue in View of Bilski, Mayo, Myriad, Alice, and Other Recent Court Decisions

  January 01, 2015