Overview

Eric H. Yecies is a trial attorney in Holland & Knight's New York office and a member of the firm's Intellectual Property Group. Mr. Yecies focuses his practice on intellectual property litigation, with an emphasis on trying high-profile cases in the pharmaceutical, chemical, biotechnology and medical device areas. He has first chair trial experience in multiple federal district courts, as well as significant complex appellate litigation experience in the federal courts of appeal.

Mr. Yecies litigates patent, trade secret, trademark, false advertising, anti-competitive, counterfeiting and licensing cases across a broad range of technical disciplines. His cases have involved controlled-release pharmaceuticals, fixed-dose combinations, nanoparticles, transdermal delivery, immuno-therapies, pain management, endocrine and hormone products, anti-hypertensives, cholesterol inhibition, genetic engineering and therapies, injectables, medical diagnostic agents, consumer products, gas compression, crop science, and oncologic and neurologic treatments. Mr. Yecies also counsels in these areas on patent validity and infringement, licensing, commercial collaborations, patent prosecution, corporate due diligence, U.S. Food and Drug Administration (FDA) citizen petitions and other regulatory disputes.

In addition, Mr. Yecies is experienced in commercial matters involving contracts, torts, antitrust, arbitration, bankruptcy, real estate, immigration, private wealth services and corporate transactions – particularly when these issues relate to the technical industries of his clients.

Mr. Yecies provides pro bono services as lead counsel for nonprofit organizations, including as trademark counsel for a Brooklyn-based community outreach organization and as immigration counsel for a client of a Manhattan-based domestic violence nonprofit. Mr. Yecies served as lead counsel for the co-founders of a data gathering, research and distribution center in a Freedom of Information Act (FOIA) litigation against the U.S. Department of Justice, Civil Division. He has also drafted intellectual property-focused employment agreements for a nonprofit serving the international medical needs of the poor and vulnerable.

Mr. Yecies is a member of the firm's Hiring Committee.

Mr. Yecies regularly speaks and publishes about intellectual property law, including guest lecturing at the University of Pennsylvania. In the community, Mr. Yecies is a member of the University of Pennsylvania Alumni Interview Program for Bergen County, New Jersey and is actively involved with the Promise Academy Schools in Harlem.

Experience

  • Misappropriation of Trade Secret and Unfair Competition (Hydrogen Gas Compression): Represented PDC Machines in a trade secret litigation against Nel Hydrogen concerning hydrogen gas compression technology. Successfully opposed a partial motion to dismiss and a motion to compel arbitration and stay the case. This case is settled. PDC Machines, Inc. v. Nel Hydrogen ASA, et al., No. 17-cv-05399 (E.D. Pa.)
  • Patent Infringement (Chemotherapy): Representing Dr. Reddy's in a patent infringement litigation filed by Eli Lilly under the Hatch-Waxman Act in response to Dr. Reddy's filing of a Section 505(b)(2) New Drug Application seeking approval to market its version of ALIMTA®, pemetrexed injection indicated for the treatment of nonsquamous, non-small cell lung cancer and mesothelioma (in combination with cisplatin). Two-day bench trial. This case is on appeal before the Federal Circuit. Eli Lilly and Co. v. Dr. Reddy's Laboratories, Ltd. et al., No. 10-1376, (TWP) (D. Ind.), No. 18-2128 (Fed. Cir.)
  • Breach of Contract (Gene Therapy): Representing Sloan-Kettering in a breach of contract and fraud litigation filed by EGT concerning a vector for the treatment of thalassemia. Won partial motion to dismiss in federal court on claim for replevin, claims of the individual plaintiffs, and a portion of the breach of contract claim. Awarded sanctions. This case is pending in the Supreme Court of the State of New York. Errant Gene Therapeutics, LLC v. Sloan-Kettering Institute for Cancer Research, No. 15-cv-2044 (AJM) (S.D.N.Y.), 2016 WL 205445; No. 18-2108 (2d Cir.), Index No. 150856/2017 (N.Y.S.C.)
  • Patent Infringement (Pain Management): Representing Actavis in a patent infringement litigation filed by Endo under the Hatch-Waxman Act in response to Actavis' filing of an Abbreviated New Drug Application seeking approval to market a generic version of OPANA ER®, oxymorphone hydrochloride extended release tablets indicated for the relief of moderate to severe pain in patients requiring continuous around-the-clock opioid treatment for an extended period of time. Won partial motion to dismiss and invalidated one patent-in-suit for lack of patentable subject matter. First-chaired portions of the three-day bench trial. This case is on appeal before the Federal Circuit. Endo Pharms. Inc.et al. v. Actavis, Inc. et al., No. 14-1381 (RGA) (D. Del.), 2015 WL 7253674, No. 18-1054 (Fed. Cir.)
  • Patent Infringement (Weight Loss): Represented Actavis in a patent infringement litigation filed by Vivus under the Hatch-Waxman Act in response to Actavis' filing of an Abbreviated New Drug Application seeking approval to market a generic version of QSYMIA®, phentermine/topiramate extended-release tablets indicated for adjunctive therapy in the treatment of obesity. This case is settled. Vivus, Inc. v. Actavis Laboratories FL, Inc., Nos. 14-3786, 15-1636, 15-6256 (SRC) (D.N.J.)
  • Design Patent and Correction of Inventorship (Water Bottle): Lead counsel for NY2O in a correction of inventorship litigation filed by Mr. Rosado concerning design patents for water bottles. This case is settled. Rosado v. NY2O, LLC et al., No. 14-cv-6636 (WFK) (E.D.N.Y.)
  • Patent Infringement (Anti-Epileptic): Represented Actavis in a patent infringement litigation filed by Supernus under the Hatch-Waxman Act in response to Actavis' filing of an Abbreviated New Drug Application seeking approval to market a generic version of OXTELLAR XR®, oxcarbazepine extended-release tablets indicated for adjunctive therapy in the treatment of partial seizures. First-chaired portions of the seven day bench trial. Finding of non-infringement for one patent-in-suit. This case ended after appeal. Supernus Pharmaceuticals, Inc. v. Actavis, Inc. et al., No. 13-4740 (RMB) (D.N.J.), 2016 U.S. Dist. LEXIS 14111, No. 16-1619 (Fed. Cir.)
  • Patent Infringement (Pain Management): Represented Actavis in a patent infringement litigation filed by Endo under the Hatch-Waxman Act in response to Actavis' filing of an Abbreviated New Drug Application seeking approval to market a generic version of OPANA ER®, oxymorphone hydrochloride extended release tablets indicated for the relief of moderate to severe pain in patients requiring continuous around-the-clock opioid treatment for an extended period of time. Defeated preliminary injunction and launched product. Won summary judgment of collateral estoppel. First-chaired portions of the five week bench trial and invalidated a patent-in-suit. This case is settled after appeal. Endo Pharms. Inc.et al. v. Actavis, Inc. et al., Nos. 12-8985, 13-0436 (TPG) (S.D.N.Y.), 2014 WL 1272846, 2015 WL 1208444, 2015 WL 9459823, 2016 WL 1732751, No. 15-2021 (consolidated) (Fed. Cir.)
  • False Advertising Litigation (Product Description): Represented Actavis in a false advertising litigation filed by Endo concerning product description for generic form of oxymorphone hydrochloride extended-release tablets. Won partial motion to dismiss. Won subsequent motion to dismiss with prejudice. This case is settled. Endo Pharms. Inc. v. Actavis, Inc. et al., No. 12-07591 (DMC) (D.N.J.), No. 13-4096 (3d Cir.), 2013 WL 4774494, 592 Fed. Appx. 131, 2016 WL 1090356 
  • Misappropriation of Trade Secret and Unfair Competition (Transdermal Devices): Represented Zydus Noveltech in a trade secret litigation filed by Mylan Technologies in Vermont state court concerning transdermal delivery devices. Won partial summary judgment. This case settled shortly before trial. Mylan Technologies, Inc., et al., v. Zydus Noveltech, Inc. et al., No. S 41-1-09 Cncv (HMT) (Vt. Super. Ct.)
  • Patent Infringement (Hormone Therapy): Represented Watson in a patent infringement litigation filed by Warner Chilcott under the Hatch-Waxman Act in response to Watson's filing of an Abbreviated New Drug Application seeking approval to market a generic version of LO LOESTRIN® Fe, norethindrone acetate and ethinyl estradiol tablets, ethinyl estradiol tablets and ferrous fumarate tablets indicated for use by women to prevent pregnancy. One patent voluntarily dismissed. This case ended after appeal. Warner Chilcott v. Watson Laboratories, Inc., No. 12-02928 (DMC) (D.N.J.)
  • Patent Infringement (Branded Hormone Therapy): Represented Watson (subpoenaed) in a patent infringement litigation filed by Warner Chilcott under the Hatch-Waxman Act in response to Mylan's filing of an Abbreviated New Drug Application seeking approval to market a generic version of GENERESS® Fe, norethindrone acetate and ethinyl estradiol chewable tablets, and ferrous fumarate chewable tablets indicated for use by women to prevent pregnancy. This case ended after appeal. Warner Chilcott v. Mylan, Inc. et al., Nos. 11-06844, 11-07228 (JAP) (D.N.J.)
  • Patent Infringement (Anti-Retroviral): Represented Teva in a patent infringement litigation filed by ViiV under the Hatch-Waxman Act in response to Teva's filing of an Abbreviated New Drug Application seeking approval to market a generic version of EPZICOM®, abacavir/lamivudine tablets indicated in combination with other antiretroviral agents for the treatment of HIV-1 infection. Won favorable claim construction. This case ended after appeal. ViiV Healthcare UK Ltd., et al. v. Teva Pharms. USA, Inc., No. 11-688 (RGA) (D. Del.); Nos. 14-1303, -1304, -1315 (Fed. Cir.)* 
  • Patent Infringement (Chemotherapy): Represented APP and Teva in patent infringement litigations filed by Eli Lilly under the Hatch-Waxman Act in response to APP's and Teva's filing of Abbreviated New Drug Applications seeking approval to market generic versions of ALIMTA®, pemetrexed injection indicated for the treatment of nonsquamous, non-small cell lung cancer and mesothelioma (in combination with cisplatin). These cases ended after appeal.  Eli Lilly and Co. v. Teva Parenteral Meds. et al., No. 10-1376, (TWP) (D. Ind.); Nos. 11-1561, -1562, 2012-1037 (Fed. Cir.), 689 F.3d 1368; Nos. 11-1561, -1562, 12-1037 (Fed. Cir.)*
  • Patent Infringement, Licensing and Arbitration (Anti-hypertensive): Represented Teva in launch-at-risk patent infringement litigations – with billions of dollars in alleged damages – filed by Novartis under the Hatch-Waxman Act in response to Teva's filing of an Abbreviated New Drug Application seeking approval to market a generic version of LOTREL®, amlodipine/benazepril capsules indicated for the treatment of hypertension. These cases settled shortly before trial. Novartis Corp. et al. v. Teva Pharms. USA, Inc., Nos. 04-4473, 08-0686 (GEB) (D.N.J.), 565 F. Supp. 2d 595 (2007), 565 F. Supp. 2d 595 (2008)* 
  • Patent Infringement and Licensing (Cholesterol Inhibition): Represented Teva in patent infringement litigations filed by Schering under the Hatch-Waxman Act in response to Teva's filing of an Abbreviated New Drug Application seeking approval to market a generic version of VYTORIN®, ezetimibe (cholesterol absorption inhibitor)/simvastatin (HMG CoA reductase inhibitor) tablets and ZETIA®, ezetimibe tablets. Filed Federal Circuit amicus brief. These cases are settled. Schering Corp. et al. v. Teva Pharms. USA, Inc., Nos. 10-1058, -4473 (JLL) (D.N.J.); No. 10-1262 (amicus) (Fed. Cir.)*
  • Patent Infringement (Anti-fungal): Represented Teva in a patent infringement litigation filed by Merck under the Hatch-Waxman Act in response to Teva's filing of an Abbreviated New Drug Application seeking approval to market a generic version of CANCIDAS®, caspofungin acetate, an echinocandin antifungal drug. This case is settled. Merck & Co., Inc. et al. v. Teva Parenteral Medicines, Inc. et al., No. 08-6026 (SRC) (D.N.J.)*
  • Patent Infringement and Licensing (Chemotherapy): Represented Teva in launch-at-risk patent infringement litigations—with over a billion dollars in alleged damages—filed by Sanofi under the Hatch-Waxman Act in response to Teva's filing of an Abbreviated New Drug Application seeking approval to market a generic version of ELOXATIN®, oxaliplatin indicated for colon cancer. Won summary judgment. Defeated appellate petition for writ of mandamus. Intervened in U.S. Food and Drug Administration (FDA) regulatory case and defeated summary judgment while winning cross-motion for summary judgment; won dismissal of appeal. Launched product. These cases are settled. Sanofi-Aventis, U.S. LLC. v. Sandoz, Inc., Nos. 07-2762, -2837, -3144, -5408 (JAP) (D.N.J.), 2009 U.S. Dist. LEXIS 51184, 2009 U.S. Dist. LEXIS 5645; Misc. Dkt. No. 905 (Fed. Cir. 2009); Nos. 09-1427, -1444 (Fed. Cir.); No. 09-1495 (D.D.C.); No. 09-5278 (D.C. Cir.)*
  • Patent Infringement (Gastrointestinal Medical Device): Represented Given Imaging in a patent infringement litigation filed by Olympus concerning its capsule endoscopy EndoCapsule®, and counterclaimed by Given concerning its capsule endoscopy PillCam®. This case is settled. Olympus Corp. et al. v. Given Imaging Ltd. et al., No. 06-2132 (JKG) (E.D. Pa.)*
  • Patent Infringement (Branded Anti-fungal): Represented Medicis in a patent infringement litigation filed by Medicis under the Hatch-Waxman Act in response to Paddock's filing of an Abbreviated New Drug Application seeking approval to market a generic version of LOPROX®, ciclopirox indicated for topical treatment of certain dermal infections. This case is settled. Medicis Pharm. Corp. et al. v. Paddock Labs. Inc., No. 06-2588 (MJD) (D. Minn.)*
  • Patent Infringement (Branded Pain Management): Represented Purdue Pharma in Endo's appeal of a patent infringement litigation filed by Purdue under the Hatch-Waxman Act in response to Endo's filing of an Abbreviated New Drug Application seeking approval to market a generic version of OXYCONTIN®, oxycodone indicated for moderate to severe pain. This case is settled after affirmance on appeal. Purdue Pharma LP v. Endo Pharms. Holdings Inc., Nos. 04-1189, -1347, -1357 (Fed. Cir.), 438 F.3d 1123*
  • Patent Infringement (Branded Anesthetic): Represented AstraZeneca in Mayne's appeal of a patent infringement litigation filed by AstraZeneca under the Hatch-Waxman Act in response to Mayne's filing of an Abbreviated New Drug Application seeking approval to market a generic version of DIPRIVAN®, propofol indicated for sedation. This case ended after affirmance on appeal. Abraxis Bioscience Inc. (AstraZeneca) v. Mayne Pharma., Inc., No. 06-1118 (Fed. Cir.), 467 F.3d 1370*
  • False Advertising Litigation (Product Labeling): Represented Pernod Ricard in false advertising litigation filed against Bacardi concerning use of the “Havana Club” trademark on labeling for rum products. This case is settled. Pernod Ricard USA LLC v. Bacardi USA, Inc., No. 06-cv-505 (SLR) (D. Del)*
  • Patent Infringement (Web-based Computer Technology): Represented Ford Motor Company in a patent litigation filed by Orion concerning Ford's internet-based car customization feature. Won motion to dismiss. This case is settled. Orion IP, LLC v. Mercedes-Benz USA LLC, et. al., No. 05-0322 (LED) (E.D. Tex.)*
  • Design Patent Infringement and Bankruptcy (Coffee Machine): Represented Sunbeam Products in a design patent litigation, arising out of bankruptcy litigation, filed by Wing Shing concerning Sunbeam's Mr. Coffee Commercial® coffee machine. This case settled after appeal and a petition for writ of certiorari. Sunbeam Products, Inc. v. Wing Shing Products Ltd., Nos. 04-1526, -1537, 05-667 (Fed. Cir., S. Ct.)*
  • Trademark Infringement and Counterfeiting (Automotive): Represented Ford Motor Company in this trademark litigation concerning counterfeiting of Ford's auto parts by automotive shops. Worked in conjunction with the Brooklyn District Attorney. This case ended after affirmance on appeal. Ford Motor Co. v. Black & Yellow Major Auto Parts, Inc. et. al., No. 04-4706 (RJD) (E.D.N.Y.), 2010 NY Slip Op 08387*
  • Licensing and Breach of Contract Arbitration (IP Licensing): Represented Lucent in a licensing and breach of contract dispute. This case ended after a week-long arbitration hearing. ThinkFire Services USA Ltd v. Lucent Tech. GRL LLC, No. 13 Y 133 01277 04 (A.A.A.)*

* Matter handled prior to joining Holland & Knight

  • Corporate IP Counseling (Ballistics): Lead counsel for a foreign consumer products company on international transfer and protection of intellectual property rights, corporate formation and funding, immigration and federal government contracts.
  • Citizen Petition (Transdermal Patch and Therapy): Lead counsel for a pharmaceutical company on the filing of a Citizen Petition with FDA concerning dose proportionality requirements for approval of generic and 505(b)(2) applications to a branded transdermal patch.
  • Launch "At Risk" Patent Counseling (Opioid Antagonist): Lead counsel for pharmaceutical company on analysis of, and a decision concerning, a potential launch-at-risk of its generic product.  
  • Corporate IP Counseling (Oncogenetic Biomedicines): Counseled client, including as lead counsel, on numerous joint development, research and material transfer agreements concerning multiple oncogenetic biomedicines.
  • Patent Prosecution (Transdermal Device and Therapy): Lead counsel for a biotechnology company on the filing of a pharmaceutical patent application for a transdermal device and therapy.
  • Patent Opinion Counseling (Branded Immuno-adjuvant Therapy): Represented branded pharmaceutical company on freedom to operate opinion concerning immuno-adjuvant technologies and therapies.*
  • Patent Litigation Counseling (Branded Nanoparticle Oncologic): Advised branded pharmaceutical company concerning the strengths and weaknesses of the litigants' case in an ongoing pharmaceutical patent litigation, where the client held a vested interest.*
  • False Advertising and Trademark Infringement Counseling (Seed Science): Counseled agribusiness client concerning investigation of potential false advertising and trademark infringement.*
  • Patent Counseling (Patent Law of the Sea): Advised oil company concerning jurisdictional reach of U.S. patent law to various depths and distances of the ocean from the mainland.*

* Matter handled prior to joining Holland & Knight

Credentials

Education
  • New York University School of Law, J.D.
  • University of Pennsylvania, M.A., Biology, Molecular Concentration, magna cum laude
  • University of Pennsylvania, B.A., Biology, Molecular Concentration, cum laude
Bar Admissions/Licenses
  • New York
Court Admissions
  • U.S. District Court for the Southern District of New York
  • U.S. District Court for the Eastern District of New York
  • U.S. District Court for the Northern District of New York
  • U.S. Court of Appeals for the Federal Circuit
Memberships
  • New York Intellectual Property Law Association, Inventor of the Year Committee, Co-Chair, 2013-2015
  • American Bar Association
  • New York State Bar Association
Honors & Awards
  • Rising Star, New York Super Lawyers magazine, 2013-2018
  • Martindale-Hubbell AV Preeminent Peer Review Rated
  • Corporate LiveWire, Global Awards, IP Litigation, 2016
  • Empire State Counsel, New York State Bar Association, 2007
  • Normal Ostrow Scholarship Award, Moot Court Board, New York University School of Law, 2004

Publications

Speaking Engagements

News