Theodore J. Chiacchio

Partner

Theodore J. ChiacchioMr. Chiacchio has amassed over 15 years of experience litigating high-stakes, complex, federal civil cases. Much of Mr. Chiacchio’s litigation experience has come litigating Hatch-Waxman patent infringement actions with respect to which Mr. Chiacchio has represented both brand-name and generic drug companies. Mr. Chiacchio has extensive experience in all phases of litigation, including having taken the depositions of many key expert and fact witnesses, active involvement in Markman hearings on claim construction, and drafting of summary judgment and other dispositive motions. Mr. Chiacchio has actively participated in five Hatch-Waxman trials cumulatively amounting to over two months of trial time. In addition to his litigation experience, Mr. Chiacchio is a USPTO-registered patent attorney and has spent a considerable portion of his career preparing Opinions of Counsel and otherwise counseling clients regarding patent infringement/non-infringement, freedom to operate, patent validity/invalidity, and patent enforceability/unenforceability matters. Mr. Chiacchio also has substantial experience preparing and prosecuting patent applications relating to Life Sciences technologies.

Mr. Chiacchio’s representative clients have included GlaxoSmithKline, Daiichi-Sankyo, Sandoz, Lupin, and Mylan. Mr. Chiacchio has handled or otherwise has been integrally involved with matters relating to a wide range of molecules including darunavir (Prezista®), capecitabine (Xeloda®), ranolazine (Ranexa®), guaifenesin (Mucinex®), mometasone furoate (Nasonex®), bimatoprost (Lumigan® .01%), ondansetron (Zofran®), ofloxacin (Floxin Otic®), levetiracetam (Keppra®), carbamazepine (Carbatrol®), nisoldipine (Sular®), pantoprazole (Protonix®), doxercalciferol (Hectorol®), paricalcitol (Zemplar®), fenofibrate (Tricor®), escitalopram (Lexapro®), desloratadine (Clarinex®), ibandronate (Boniva®), rosuvastatin calcium (Crestor®), PEGylated rFVIII (Adynovate®), atorvastatin calcium (Lipitor®), lamivudine/zidovudine (Combivir®), memantine (Namenda®), bupropion HCl (Welbutrin®), budesonide inhalation suspension (Pulmicort Respules®), and cefuroxime axetil (Ceftin®).

Mr. Chiacchio earned his Bachelor of Arts degree (Biology, French) from Bucknell University in 1999 and his Juris Doctor degree from Cornell University Law School in 2002. Prior to joining Spence PC, Mr. Chiacchio served as an associate at Kenyon & Kenyon (now part of Andrews Kurth Kenyon) and, most recently, practiced for just short of a decade at a top tier patent litigation boutique in Chicago, IL.

Education:

  • J.D., Cornell University Law School, 2002
  • B.A., Bucknell University (Biology, French), 1999

Admissions:

  • Bar of New York
  • Bar of New Jersey
  • U.S. Patent and Trademark Office
  • United States Court of Appeals for the Federal Circuit

Publications and Speaking Engagements

  • Theodore J. Chiacchio, The Federal Circuit’s Approach to the Infringement Analysis in Hatch-Waxman Cases, IP Watchdog (April 3, 2018).
  • Theodore J. Chiacchio, Examining CAFC Application of §271(g)(1)’s “Materially Changed” Exception to Infringement Liability, IP Watchdog (February 23, 2018).​
  • Theodore J. Chiacchio, Inherent Anticipation: Federal Circuit Cases Over the Past Two years (April 24, 2017), available at https://www.linkedin.com/pulse/inherent-anticipation-federal-circuit-cases-over-past-chiacchio.
  • Theodore J. Chiacchio, A Review of Enhanced Damages Since Halo: Minimizing Potential Exposure to Enhanced Damages, IP Watchdog (Sept. 14, 2017).
  • Patents 101, presentation to Chicago-Kent Patent Hub (September 19, 2017)
  • Theodore J. Chiacchio & Jacob R. Graham, Where Is Your Place of Business? The “Regular and Established Place of Business” Analysis After In re Cray (October 30, 2017), available at https://www.spencepc.com/2017/10/30/the-regular-and-established-place-of-business-analysis-after-in-re-cray/
  • Theodore J. Chiacchio, Avoiding Drug Development Clinical Trials from Being an Invalidating Public Use, IP Watchdog (Nov. 9, 2017).
  • Theodore J. Chiacchio, Analyzing Obviousness and Anticipation Challenges to Claims Directed to an Isolated Component of a Prior Art Mixture, IP Watchdog (Jan. 10, 2018)

Representative Experience

  • Represented generic drug manufacturer in defending against allegations of infringement of patent directed to a pseudopolymorph of the anti-HIV drug darunavir and compositions comprising darunavir, patent directed to a process for synthesizing darunavir, and patent directed to a process for synthesizing a key intermediate in the synthetic pathway for preparing darunavir.
  • Represented plaintiff in action alleging misappropriation of technical know-how and unjust enrichment in action to correct inventorship and re-assign patent directed to PEGylated arginine deaminase enzyme.
  • Represented medical device manufacturer in defending against allegations of infringement of patent directed to ocular surgical methods involving the use of small-gauge instruments to conduct vitrectomy procedures.
  • Represented patent-holder brand-name drug company in action alleging infringement of patent directed to a method of using ofloxacin to treat otopathy.
  • Represented patent holder before the European Patent Office in responding to Opposition to European patents directed to the anti-hemophelia biopharmaceutical rFVIII (blood-clotting protein) and pharmaceutical compositions containing rFVIII.
  • Represented patent challenger in Inter Partes Review proceeding before the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board challenging the validity of patent directed to ethanolate form of the anti-HIV drug darunavir.
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