Christopher S. Kroon is an IP litigator at Duane Morris. As a registered US patent attorney and partner of the firm, Chris represents generic pharmaceutical, biotechnology and medical device companies in intellectual property litigation in federal district courts throughout the US, as well as inter parte review (IPR) proceedings before the US Patent Trial and Appeal Board (PTAB). Chris has particular experience in Hatch-Waxman and medical device cases, and has handled intellectual property cases covering diverse areas of technology including recombinant proteins, fluorescent and halogen lighting, epidermal scanners, and semiconductors.
Pharmaceutical and Biotechnology Experience
Chris counsels and represents pharmaceutical and biotechnology clients from the earliest stages of product selection and pre-litigation activities (including patent avoidance and invalidation strategies) through the entirety of filing the Paragraph IV notice letter, fact and expert discovery, claim construction, trial, and appeal. Chris has litigated disputes concerning pharmaceutical compounds, drug and finished dose formulation (including oral, topical, injectable, and subcutaneous dosage forms), crystallization and polymorphs, dosing schedules, drug indications and uses, adverse events, pharmacokinetics/pharmacodynamics, organic and process chemistry, and methods of treatment.
Chris has fought to bring generic equivalents of many well-known pharmaceutical products to market across a number of therapeutic classes, including COPAXONE® (multiple sclerosis); PRISTIQ® (antidepressant); EFFEXOR® and EFFEXOR XR® (antidepressant); AZILECT® (Parkinson’s disease); AXIRON® (testosterone therapy); NIASPAN® (extended-release niacin); ONGLYZA® and KOMBIGLYZE® (diabetes); ARICEPT® (Alzheimer's disease); ABILIFY® (antipsychotic); AVINZA® (morphine sulfate); and LUNESTA® (sedative).
Medical Device, Health and Life Sciences Experience
Chris has extensive experience representing and counseling clients operating in the medical device, health and life sciences industries. Chris has represented global medical device companies in connection with products in the upper extremities (shoulder, elbow, wrist and hand), lower extremities (foot and ankle including bone plates and screws), and biologics markets (xenograft), as well as large joint orthopedic devices for the hip and knee (acetabular cup systems, modular hip replacement prostheses, artificial knee implant technology). Chris is also registered to practice before the U.S. Patent and Trademark Office and has prosecuted patent and trademark applications relating to cardiac defibrillators, stents, catheters and other transvascular devices, as well as recombinant proteins and hormone detection kits. In addition, Chris provides pre-litigation counseling, assisting with developing non-infringing designs and evaluating the use of litigation alternatives, such as IPR proceedings and ex parte reexaminations.
Chris represents clients across broad range of industries, including companies in the electronics, lighting, building and high-performance materials technology sectors. He has represented companies from the Fortune 100 to close-held corporations and individual inventors across diverse technologies, including semiconductors, fluorescent, halogen and LED lighting products, telecommunications systems, data compression technologies, epidermal scanners, fire arms, RNA/DNA genetic testing systems, asphalt shingles, PVC piping and pavement repair materials, to name several. Chris has also represented clients in trademark and copyright litigation and in asserting or defending claims of trade secret misappropriation and unfair competition. Chris also handles transactional matters relating to intellectual property including infringement and validity opinions, patent licenses, confidentiality agreements and due diligence.
Technical and Legal Background
Chris’s technical background roots in biochemistry. After graduating from the University of New Hampshire summa cum laude, Chris joined the vascular surgery department at Boston Medical Center where he worked for several years as a research scientist in the vascular surgery department. Chris is a 2004 magna cum laude graduate of the Franklin Pierce Law Center, where he was an editor of the Franklin Pierce Law Review, and also studied at Tsinghua University in Beijing, China. Chris is registered to practice before the U.S. Patent and Trademark Office and is admitted to practice in Massachusetts, the First Circuit, and the Federal Circuit. He is a member of the Massachusetts and Boston Bar Associations, the American Bar Association and the Boston Property Law Association.
Areas of Practice
- Intellectual Property and Litigation
- American Biltrite Inc. et al. v. Linatex Limited Plc, et al., Case No. 1:19-cv-12466-NMG (D.Mass, J.Gorton). Represented plaintiff in trademark cancellation suit pursuant to 15 U.S.C. §1119 and 1120 for fraud and lack of acquired distinctiveness. Case resolved on terms client found favorable.
- Wright Medical Technology, Inc. v. Paragon 28 LLC, Case No. 1:18-cv-010691-STV (D.Colo.). Represent Wright Medical in a patent infringement and trade secret misappropriation suit involving ten patents related to bone plating systems and related distraction device. Matter is currently pending.
- Nuance Communications, Inc. v. MModal LLC, Case No. 1:17-cv-01484-JFB-SRF (D.Del.). Represent MultiModal in a patent infringement suit filed by Nuance Communications involving five patents related to speech recognition and transcription technology. Matter is currently pending.
- MModal Services, Ltd. v. Nuance Communications, Inc., Case No. 1:18-cv-00901-SJC (N.D.Ga.). Represent MModal Services, Ltd. in a patent infringement suit filed against Nuance Communications involving five patents related to speech recognition and transcription technology. Matter is currently pending.
- Alnylam Pharmaceuticals v. Dicerna Pharmaceuticals, Case No. 15-cv-4126 (Commonwealth of Massachusetts - Leibensperger). Member of the trial team representing Dicerna in a trade secret misappropriation suit concerning RNA interference technology. Resolved before trial on terms the client found favorable.
- Dicerna Pharmaceuticals v. Alnylam Pharmaceuticals, Case No. 17-cv-11466 (D.Mass - NMG). Member of the trial team representing Dicerna in an antitrust suit brought against Alnylam Pharmaceuticals concerning RNA interference technology. Resolved before trial on terms the client found favorable.
- Spineology Inc. v. Wright Medical Technology, Inc., Case No. 15-cv-00180 (D.Minn.- Erickson). Member of the trial team representing Wright Medical in a patent infringement litigation concerning bone reaming device used during hip replacement and spinal surgery. Won summary judgment of noninfringement. The case is currently on appeal before the Federal Circuit.
- Represented Wockhardt in Paragraph IV litigation involving Otsuka's oral Abilify. Negotiated a settlement and license agreement permitting entry into the market prior to the expiration of the Orange Book Patents.
- AngleFix Technology, Inc. v. Wright Medical Technology, Inc., Case No. 13-cv-02407 (W.D. Tenn.- J.McCalla). Member of the trial team representing Wright Medical in a patent infringement litigation concerning bone plates and screws used during bone repair procedures. Most claims held invalid by PTAB; granted summary judgment of invalidity and noninfringement with respect to remaining claims.
- Howmedica Osteonics Corp. et al. v. Wright Medical Technology, Inc., 2:11-cv-6499 (D.N.J. 2011) Represented defendant Wright Medical Technology, Inc. in a patent infringement matter relating to acetabular cup assembly with selected bearing.
- Wright Medical Technology, Inc. v. OsteoImplant Technology, Inc., Case No. 04-cv-1167 (D.N.J.- M. Bumb). Patent infringement litigation with tens of millions at stake concerning modular hip replacement prostheses. Settled on terms the client found favorable.
- Howmedica Osteonics v. Wright Medical Technology, Inc., Case No. 00-cv-1167 (D.N.J.- S. Wigenton). Won summary judgment in the District of New Jersey in a patent infringement litigation concerning artificial knee implant technology with tens of millions at stake. Decision affirmed by Federal Circuit.
- Wright Medical Technologies Inc. v. LifeCell Corp., (2007 AAA Arbitration). Represented Wright Medical in a five-day arbitration concerning distribution rights to LifeCell’s GraftJacket® xenograft tissue product.
- Teva Pharmaceuticals et al. v. Amneal Pharmaceuticals, et al., 17-00074 (D.Del. G. Sleet). Currently representing Amneal Pharmaceuticals as declaratory judgment plaintiff against Teva in litigation involving method of manufacturing COPAXONE®, the active ingredient of which is glatiramer acetate.
- Elli Lilly, et al. v. Amneal Pharmaceuticals Inc. et al., 13-00851 (D.Ind. S.Barker). Represented Amneal Pharmaceuticals in litigation involving AXIRON®, the active ingredient of which is testosterone.
- Abbott Laboratories v. Sandoz Inc., 10-538 (D.Del. - S. Robinson). Representing Sandoz in ANDA litigation regarding NIASPAN®, the active ingredient of which is niacin.
- King Pharmaceuticals, Inc. et al. v. Actavis Inc., et al., Case No. 07-05041 (D.N.J. – G. Brown). Represented Actavis in ANDA litigation regarding AVINZA®, the active ingredient of which is morphine sulfate.
- Wyeth v. Apotex Inc. et al., Case No. 08-CIV-22308 (S.D.Fla. - F. Moreno). Represented Apotex in ANDA litigation regarding EFFEXOR® XR (venlafaxine hydrochloride). Settled after two phases of trial were completed.
- Sepracor v. Wockhardt, Case No. 09-CV-1302 (D.N.J. - D.Cavanaugh). Represented Wockhardt in ANDA litigation regarding LUNESTA®, the active ingredient of which is eszopiclone. Settled prior to trial on terms the client found favorable.
- Pfizer, Inc. v. Wockhardt, Case No. 12-CV-817 (D.Del.- S. Robinson). Representing Wockhardt in ANDA litigation regarding PRISTIQ®, the active ingredient of which is desvenlafaxine.
- Teva v. Watson, Case No. 10-CV-5078 (D.N.J. — C.Cecchi). Represented Watson Pharmaceuticals, Inc. in Hatch-Waxman Litigation against Teva Pharmaceutical Industries Ltd. concerning the Parkinson's disease drug AZILECT®, the active ingredient of which is rasagiline. The matter was settled during trial.
- Member of a team of lawyers representing a Fortune 100 pharmaceutical company in a multibillion-dollar patent and antitrust litigation arising out of technology relating to the pharmaceutical application of recombinant proteins.
- Represented one of the largest manufacturers and distributors of lighting products in the United States. Representation involves several matters dealing with both design and utility patents concerning fluorescent and halogen light bulbs.
- Successfully opposed summary judgment on behalf of a small independent inventor against a Fortune 200 pharmaceutical company in a landmark decision relating to correction of patent inventorship.
- U.S. Patent and Trademark Office
- U.S. District Court for the District of Massachusetts
- U.S. Court of Appeals for the First Circuit
- U.S. Court of Appeals for the Federal Circuit
- Franklin Pierce Law Center, J.D., magna cum laude, 2004
Editor, Franklin Pierce Law Review
- University of New Hampshire, B.S., summa cum laude, 1999
- Duane Morris LLP
- Partner, 2013-present
- Associate, 2005-2012
- Testa, Hurwitz & Thibeault LLP
- Associate, 2004-2005
- Summer Associate, 2003
- Boston Medical Center
- Scientist, Vascular Surgery Department, 1999-2001
- University of New Hampshire
- Cancer Research Assistant, 1998-1999
Honors and Awards
- Listed in Massachusetts Rising Stars, 2014-2017
- American Bar Association
- Massachusetts State Bar Association
- Boston Bar Association
- American Intellectual Property Bar Association
- Author, "COVID-19: Work Together, but Make Sure to Keep Your Secrets," World Intellectual Property Review, April 29, 2020
- Author, "Protecting Against Government Intrusion for COVID-19 Therapies," Duane Morris Alert, April 7, 2020
- Co-author, "Chapter 18: ANDA Preparation (with an Eye toward Approval and Litigation) and the FDA Review," Pre-ANDA Litigation: Strategies and Tactics for Developing a Drug Product and Patent Portfolio, 2014
- "U.S. Supreme Court Restores Generic Pharma's Ability to Challenge Orange Book Use Code Information," Duane Morris Alert, April 19, 2012
- "New Terrain," a legal analysis of the impact of the Supreme Court's decision in eBay Inc., et al. v. MercExchange LLC, 8-K Magazine, Fall 2006
- "Trade Secrets: A Concealed Weapon?" Spirit Airline's Skylights Magazine, January/February 2007