Ted Mathias serves as lead counsel in complex patent litigation, including cases involving more than 15 patents. He regularly handles litigation intersecting patent and antitrust law with a particular focus on advising clients in the pharmaceutical industry.
Lauded as an intellectual property “litigation star” by Benchmark Litigation, Ted represents clients in district courts across the country and before the U.S. Court of Appeals for the Federal Circuit. He has extensive experience representing patent owners and accused infringers of patents covering pharmaceuticals, medical devices, mechanical devices, e-commerce, and software. His practice includes litigating cases involving antitrust claims arising from patent disputes, standards setting, patent pooling, intellectual property licensing issues, and sham suits.
Ted notably served as lead counsel to a client who became the first party to survive summary judgment on a claim involving exclusionary rebating practices in the pharmaceutical industry. Regularly advising on patent remedies, he was part of an Axinn team that defended a $1.4 billion claim for a pharmaceutical client that settled following a two-week trial. He also successfully defended an $800 million trade secrets claim, obtaining summary judgment of no lost profits.
In addition to his trial work, Ted represents clients in private dispute resolution proceedings, mediations, and government investigations concerning antitrust, unfair competition, false advertising, and Internet privacy issues.
Ted is Chair of the American Bar Association Section of Intellectual Property Law’s Section 102/103 Subcommittee. Ted’s pro bono work includes defending prisoners’ rights in multiple cases, including class action litigations.
Professional Activities
- American Bar Association, Section of Intellectual Property Law, 102/103 Subcommittee, Chair
- American Bar Association, Section of Intellectual Property Law, Willful Infringement Subcommittee, Prior Chair
- American Bar Association, Section of Intellectual Property Law, Damages Subcommittee, Prior Chair
Experience
Indivior Inc. et al v. Alvogen Pine Brook LLC (2-17-cv-07106, D.N.J.)
Represented Alvogen in a patent infringement and antitrust litigation regarding Indivior’s opioid dependency treatment drug Suboxone® Film. The court denied a motion for summary judgment directed to Alvogen’s antitrust claim directed to exclusionary rebating practices. The case is the first of its kind in the pharmaceutical industry where the antitrust plaintiff was able to avoid summary judgment.
Takeda Pharmaceutical Company Ltd. et al v. Norwich Pharmaceuticals Inc. (2:20-cv-08966, D.N.J.)
Represented Norwich in a patent infringement action involving 18 patents and over 400 patent claims regarding Takeda’s (previously Shire’s) brand lisdexamphetamine capsules, Vyvanse®.
Boehringer Ingelheim Pharm. Inc. et al. v. Mankind Pharma et al. (No. 18-cv-689-CAFC, D. Del.)
Obtained favorable settlement following expert discovery in patent litigation concerning multibillion-dollar treatments for diabetes. Led and defended multiple fact and expert depositions.
Pernix Ireland Pain DAC v. Alvogen Malta Operations Ltd. (1:16-cv-00139, CAFC)
For Alvogen, obtained a Federal Circuit decision affirming a trial verdict by the U.S. District Court for the District of Delaware (with Federal Circuit Judge William Bryson sitting by designation), that patents covering Zohydro® (hydrocodone extended-release capsules) were invalid. The decision removed the patents as a barrier to Alvogen bringing its lower-cost generic product to market more than a decade before the patents were set to expire.
Genzyme Corp. and Sanofi-Aventis US LLC v. Zydus Pharmaceuticals (USA) Inc. (1:16-cv-00540, D. Del., CAFC)
Represented Zydus Pharmaceuticals (USA) Inc. in a Hatch-Waxman patent infringement action involving a plerixafor injection marketed under the brand name Mozobil® for use in stem cell transplantation therapy. Dr. Reddy’s Laboratories and Teva Pharmaceuticals USA Inc. previously challenged the validity of the asserted patents in the U.S. District Court for the District of Delaware and lost at trial. The verdict was affirmed on appeal to Federal Circuit. Axinn developed novel invalidity arguments, relying on prior art references that the prior litigants failed to identify. After a four-day bench trial, the district court found the asserted patent claims valid.
Purdue Pharma LP et al. v. Alvogen Pine Brook LLC (No. 15-0687-TBD, Consolidated, D. Del.)
Represented Alvogen in a Hatch-Waxman patent litigation action against Purdue Pharmaceuticals and Grünenthal GmbH involving abuse-deterrent hydrocodone bitartrate extended-release tablets marketed as Hysingla® ER. Case settled favorably on the eve of trial.
Purdue Pharma L.P. v. Abhai, LLC (No. 16-25 (SLR), D. Del.)
Represented KVK Tech Inc. in connection with a patent infringement suit filed by Purdue Pharma and Grünenthal in connection with a proposed generic version of the blockbuster drug OxyContin®. Plaintiffs asserted multiple patents relating to an abuse-deterrent formulation of oxycodone and to oxycodone with improved purity. Obtained a favorable settlement agreement after extensive briefing and arguments relating to claim construction of multiple patents directed to abuse-deterrent formulations for opioid products.
DePuy Synthes Products, LLC v. Globus Medical, Inc. (No. 11-652-LPS, D. Del.)
Obtained a $16 million jury verdict on behalf of medical device maker DePuy Synthes Products LLC, a Johnson & Johnson company. Led the presentation of damages evidence, examined both parties' damages experts and multiple fact witnesses. The jury found that all asserted claims of three patents were valid and infringed, and awarded the full 15% royalty that DePuy Synthes requested.
Obtained summary judgment in a trade secrets case claiming $800 million in lost profits.
Defended pharmaceutical client in a multibillion-dollar patent case and obtained a favorable settlement after a two-week trial.
Successfully opposed a motion for preliminary injunction, enabling a major pharmaceutical manufacturer to launch its generic drug product.
Obtained summary judgment ruling of noninfringement in a patent case on behalf of a software developer and successfully defended the judgment on appeal to the Federal Circuit.
Represented two software developers in a Federal Circuit appeal of an adverse judgment and permanent injunction in a patent case involving municipal bond auctions. Obtained a stay of the injunction and reversal of the judgment.
Represented a steel fabricator in a Federal Circuit appeal of an adverse judgment and permanent injunction in a patent case involving segmented truck covers. Obtained a stay of the injunction, a stay of execution on the judgment, and a waiver of the supersedeas bond requirement.
Obtained favorable settlement for a water treatment company in breach-of-contract arbitration.
Examined liability expert and obtained a favorable post-trial settlement in an institutional reform litigation brought by a class of detained and committed youths.
Honors
- Benchmark Litigation, Connecticut Litigation Star: Intellectual Property (2020 – 2024)
- Best Lawyers in America (2024)
- U.S. District Court for the District of Connecticut Pro Bono Honor Roll (2023)
- American Bar Association, Antitrust Student Writing Competition, First Place (2000)
News
- Nine Axinn Attorneys Named to the U.S. District Court for the District of Connecticut 2023 Pro Bono Honor Roll
- Nine Axinn Partners Ranked in the 2024 Edition of Benchmark Litigation
- Axinn Attorneys Named to Best Lawyers 2024
- Axinn Partners Ranked as Litigation Stars in the 2023 Edition of Benchmark Litigation
- Axinn Partners Ranked as Litigation Stars in the 2022 Edition of Benchmark Litigation
- View More ›
Thought Leadership
- What’s at Stake in Bystolic 'Side Deals' Litigation, Law360, November 21, 2023
- US Fed Circuit Says No to Conflating Patent Enablement with FDA Approval, BioWorld, July 25, 2023
- Axinn IP Update: The Supreme Court Hears Arguments About the Enablement Standard in Amgen v. Sanofi, March 28, 2023
- Innovation Impact Taking Center Stage in US Supreme Court Enablement Case, BioWorld, February 6, 2023
- New U.S. Legislation Creates Momentum for Biosimilars, BioProcess Online, June 25, 2021
- Opinion: Purple Book Patent Listings Are Only a First Step, The Center for Biosimilars, May 8, 2021
- Frandly Fire, Intellectual Property Magazine, December 2020 / January 2021 Issue
- Opinion: The Legal and Regulatory Year in Review, The Center for Biosimilars, December 24, 2020
- Ginsburg Death Threatens Biosimilars in Looming Obamacare Case, Bloomberg Law, September 25, 2020
- Driveshaft Case Brings More Confusion to Patent Eligibility, Law360, August 6, 2020
- Axinn Patent Attorneys Discuss Insulins Under the BPCIA vs Hatch-Waxman, The Center for Biosimilars, July 21, 2020
- Genentech and Amgen Cease Fire on Biosimilar Litigation, The Center for Biosimilars, July 9, 2020
- Axinn IP Update: District Court Retains Subject Matter Jurisdiction But Grants Dismissal After Paragraph III Conversion, Axinn Update, July 8, 2020
- Old Drug, New Tricks? How the BPCIA Could Increase Generic Competition for Insulins, BioProcess Online / Biosimilar Development, June 23, 2020
- Axinn Patent Attorneys Talk ACA Pushback and the BPCIA, The Center for Biosimilars, May 4, 2020
- Insulin Under the BPCIA: Opportunities and Obstacles, Biosimilar Development, April 22, 2020
- Axinn IP Update: Six Patents Directed to Humanized Monoclonal Antibodies Fall at PTAB, Axinn Update, February 27, 2020
- What ACA's Uncertain Future Means for Biologics Patents, Law360, February 27, 2020
- Life Sciences Cases to Watch in 2020, Law360, January 1, 2020
- Axinn IP Update: Federal Circuit Addresses BPCIA Safe Harbor, Damages, Axinn Update, December 19, 2019
- Fed Circ. Ruling May Affect Eligibility of Life Sciences Patents, Law360, November 21, 2019
- Can the FDA Salvage Interchangeable Follow-On Biologics?, BioProcess Online / Biosimilar Development, November 19, 2019
- Axinn IP Update: Section 287(c) Immunity Has Its Limits, Axinn Update, November 18, 2019
- Axinn IP Update: No Collateral Estoppel after PTAB Ruling on IPR, Axinn Update, October 9, 2019
- Failure to Launch: The Patent Thicket Delay of U.S. Biosimilars, Law360, October 9, 2019
- Axinn IP Update: PTAB Abused its Discretion in Denying Patentee Leave to Correct Chain of Priority, Axinn Update, October 4, 2019
- Axinn IP Update: Federal Circuit Says Method of Treatment Claims Are Not Per Se Eligible Under Section 101, Axinn Update, August 29, 2019
- A Hard Choice for Abbreviated Biologics License Applicants, Law360, February 4, 2019
- Axinn IP Update: Federal Circuit Affirms No Public Use Via Implied Confidentiality, Axinn Update, January 30, 2019
- Patent Dance Developments: A Tale of 2 Antibodies, Law360, October 26, 2018
- The CRISPR Tug of War, IPWatchdog, August 17, 2018
- Supreme Court Makes it Much Harder for Patent Trolls to Sue in East Texas, Ars Technica, May 22, 2017
- After-Developed Defenses Still Relevant After Halo, Law360, July 15, 2016
- SCOTUS Decision Could Affect Patent Disputes Between Medical Device Makers, Advisory Board, June 15, 2016
- Supreme Court Decision Could Ease Wins for Devicemakers in Patent Cases, Modern Healthcare, June 13, 2016
- Section 101 Requires Something More . . . But How Much More?, The Report, Fall 2015
- Mega Damages in Peril After Fed. Circ. Nixes Apple Verdict, Law360, September 19, 2014
- Entire Market Value Rule Vs. 'Convoyed Sales' Rule, Law360, April 7, 2014
- Should the Entire Market Value Rule Apply to Lost Profits?, Law360, November 5, 2013
- Growing Pains: The Seagate Standard After Powell v. Home Depot, April 5, 2012
- Use of License Agreements to Determine Reasonable Royalties, March 30, 2012
- Heightened Standard for the Entire Market Value Rule?, Law360, August 3, 2011
- Big League Perestroika? The Implications of Fraser v. Major League Soccer, University of Pennsylvania Law Review, 1999
- Squeeze Play: Will Baseball’s Economic Problems Cause More Legal Headaches for the National Pastime?, Sports Lawyers Journal, 1998
Events
- Informa Markets 13th Annual Pharma IPR Conference
- Magna Legal Services Battle of the Experts 2023
- ACI 9th Annual Paragraph IV Disputes Master Symposium
- Magna Legal Services 9th Annual Chopped for CHOP Conference 2023
- ACI 18th Annual Paragraph IV Conference
- Centerforce IP 2022: New Beginnings
- Centerforce IP Strategy Virtual Summit
- Centerforce IP Strategy Virtual Summit: COVID-19 & Beyond
- 2020 Festival of Biologics: World Biosimilar Congress USA
- 2019 Centerforce 8th Annual IP Strategy Summit - NYC
- Navigating Patent Thickets in BPCIA Litigation
- 2019 Festival of Biologics: World Biosimilar Congress Europe
- 2019 Festival of Biologics: World Biosimilar Congress USA
- 2018 Festival of Biologics: World Biosimilar Congress Europe
- Centerforce 4th Annual IP Strategy Summit - Boston
- Magna’s Mock Crisis; Part III
- Operating Company vs Operating Company Litigation: A Proactive Defense
- Aligning Your Enforcement Strategy with Business Goals
- Willful Infringement Before and After Powell v. Home Depot
- The Bar Gets Higher: Royalty Damages After Uniloc
- How Much Is That Patent Worth?
- Pitfalls in Royalty Calculations after Lucent and ResQNet
Education
- JD – magna cum laude, University of Pennsylvania School of Law School (2000) Order of the Coif
- MS – University of Massachusetts, Amherst (1997)
- BA – Amherst College (1992)
Admissions
- Connecticut
- District of Columbia
- New York
- U.S. Court of Appeals for the Federal Circuit
- U.S. Court of Appeals for the Third Circuit
- U.S. Court of Appeals for the Tenth Circuit
- U.S. District Court District of Columbia
- U.S. District Court District of Connecticut
Spotlight
“Connecticut Litigation Star: Intellectual Property” – Benchmark Litigation 2023