James G. Markey is chair of Duane Morris' Life Sciences interdisciplinary practice group. He practices in the area of intellectual property law with a focus on patent and trademark counseling and prosecution for clients in the pharmaceutical, healthcare, industrial gases and chemicals, and apparel industries. His clients include Purdue Pharma, a pharmaceutical and healthcare products company, and Air Products and Chemicals, a world leader in industrial gases and chemicals. Mr. Markey also provides client counseling for Onward Kashiyama U.S.A., a designer clothing company, regarding trademark and patent matters. Mr. Markey has extensive experience in reexamination matters and proceedings, including merged reexaminations regarding heart catheters, paper pulp treatment, polyacrylonitrile production and an exercise treadmill, with results that the clients involved found satisfactory. Mr. Markey's background also includes over a decade of intellectual property litigation and trial experience in a variety of technical fields.

Prior to practicing law, Mr. Markey worked as a design engineer for a company that manufactured heat transfer equipment for the chemical process and energy industries.

Admitted to practice in New York and Florida and registered to practice before the U.S. Patent and Trademark Office, Mr. Markey is a 1985 graduate of St. John's University School of Law and a graduate of Manhattan College (B.E., Chemical Engineering).

Areas Of Practice

Patent and Trademark Counseling and Prosecution

Representative Matters

Litigation

Represented major pharmaceutical and hospital products company in defense of patent infringement claims involving porous artificial bone implant technology. Won judgment in district court and settled favorably on appeal. American Standard, Inc. v. Pfizer Inc.
Represented developer of coronary and peripheral dilatation catheter technologies in reexamination and assertion of patent claims against infringer. Representation involved four successful merged patent reexamination procedures before the Patent and Trademark Office. Client's patent was ultimately held to be valid and infringed. Resulted in $45 million judgment for the client in Federal Court, which was affirmed on appeal. Schneider (USA), Inc. v. SciMed Life Systems, Inc.
Represented angioplasty and angiography products company in assertion of patent directed to guiding catheters and defense of allegation of infringement of patent directed to dilatation catheter balloons. Schneider (USA) Inc. v. C.R. Bard and E.I. DuPont Nemours and Company.
Represented angioplasty and angiography products company in assertion of patent directed to guiding catheters and defense of allegation of infringement of patent directed to dilatation catheter balloons. Schneider (USA) Inc. v. Cordis Inc.
Represented angioplasty and angiography products company in assertion of patent directed to guiding catheters. Schneider (USA) Inc. v. Advanced Cardiovascular Systems Inc.
Represented global high-tech company in assertion of inkjet patent, trademark and copyright rights against infringers and defense of antitrust counterclaims. Won jury verdict and negotiated favorable settlement prior to entry of judgment. Hewlett-Packard Co. v. Nukote International, Inc.
Represented international chemical company in assertion of trade secret rights regarding catalysts used to crack oil to make gasoline. Won favorable settlement for client prior to trial. Akzo Nobel Inc. v. Intercat Inc.
Represented company founder in patent litigation regarding biological composition used to emulsify and burn oil.
Represented company with patent and trademark on reclosable plastic bags, obtaining temporary exclusion order in a Rule 337 action before the International Trade Commission, effectively preventing damages from anti-competitive trade originating outside of U.S. borders. In Re Reclosable Plastic Bags.
Represented international supplier of industrial gases and specialty chemicals in cybersquatting case. Sued a cybersquatter for trademark violations and won a complete transfer of all Internet rights. Air Products and Chemicals, Inc. v. Equitech, Inc.
Represented international polymer and plastics company in damages phase of patent litigation regarding earliest patents directed to isotactic polypropylene. Studiengesellschaft Kohle m.b.H. v. Dart Industries, Inc.
Represented international window covering company in action to invalidate competitor's patent regarding motorized window shades and claiming unfair competition. Hunter Douglas, Inc. v. Harmonic Design, Inc.
Represented worldwide consumer products and services company in action for trademark infringement, false advertising and unfair competition regarding a so-called nutritional supplement. Virgin Enterprises, Inc. vs. Virgin Earth, Inc.
Represented maker of popcorn vending warmer technology, obtaining preliminary injunction against patent infringer for the patent owner. Achieved favorable settlement of claims thereafter. Stein Industries, Inc. v. Jarco Industries, Inc.
Represented office products company in defense of allegations of design patent infringement regarding computer accessory product. Vu-Ryte Inc. v. Rink King Inc.
Represented foreign manufacturer and importer of kitchen appliances in defense of allegations of patent infringement. Rival Inc. v. Hiraoka H.K.

Non-Litigation Matters

Handled patent due diligence on purchase of major line of over the counter drugs for an international healthcare products company.
Handled patent due diligence relating to several worldwide introductions of new lines of prescription drugs for an international pharmaceutical company.
Provided opinions and counseling for international pharmaceutical company regarding listings of patents in the FDA "Orange Book" of prescription drugs.
Provided trademark license counseling to international apparel company based in the Far East regarding various designer clothing lines in the U.S. Facilitated favorable settlement of license termination issues when necessary.
Prosecuted patent applications for controlled release dosage forms, including oral and transdermal dosage forms.
Prosecuted multiple reissue applications for transdermal pain management patches.
Provided patent opinions, and prepared and prosecuted patent applications, including reexamination proceedings for leading international medical device companies. Technologies involved were applied to wide-ranging applications, including: artificial bone implants; orthopedic reconstruction devices; coronary catheters; peripheral catheters, blood oxygenators and related instrumentation.
Provided patent opinions and prepared and prosecuted patent applications directed to hydrogen fuel cell technology, hydrogen storage and gas separation for international supplier of industrial gases and specialty chemicals.
Represented international chemical company in multiple merged reexamination procedures regarding competitor's patent directed to paper pulp manufacture. Efforts resulted in reexamination certificate canceling all of competitor's patent claims.
Represented chemical company in favorable merged reexamination proceeding regarding client's patent for production of polyacrylonitrile.
Represented exercise equipment company in favorable reexamination of patent directed to treadmills.
Provided patent opinions and prosecuted patent applications regarding golf balls and golf clubs.

Admissions

New York
Florida
U.S. Patent and Trademark Office
U.S. District Courts for the Eastern and Southern Districts of New York
U.S. Court of Appeals for the Federal Circuit

Education

St. John's University School of Law, J.D., 1985
Manhattan College, B.E.Chem.Eng., 1981

Experience

Duane Morris LLP
- Partner, 2006-present
Jones Day
- Partner, 2004-2006
Pennie & Edmonds LLP
- Partner, 1987-2003
Kane Dalsimer Kane Sullivan Kurucz Levy Eisele & Richard
- Associate, 1986-1987
Doyle & Roth Manufacturing Co.
- Design Engineer, 1981-1986

Civic and Charitable Activities

Youth Advocacy Center
- Member of Advisory Board