Ian Scott

Ian concentrates his practice on patent litigation, with an emphasis in pharmaceutical patent litigation under the Hatch-Waxman Act. Ian has extensive experience in the preparation of legal opinions in connection with planning for litigation, including opinions regarding patentability, invalidity, freedom-to-operate and priority of invention of U.S. patents and publications.

Ian also provides counseling for clients in connection with the protection of their intellectual property rights and avoidance of third-party rights. He is experienced in all areas of the preparation, prosecution and exploitation of patent applications, including licensing of intellectual property rights and due diligence analyses. Ian counsels clients in a broad array of technical fields, including pharmaceuticals and pharmaceutical formulations, chemistry and chemical processes, industrial gases and related applications, medical devices, small molecules, polymers, polymer blends and dispersions, UV absorbers, cosmetics and golf equipment.

• Represented Apotex Inc. in the widely-followed celecoxib (Celebrex) ANDA matter against Pfizer. The Eastern District of Virginia granted Apotex’s motion for summary judgment holding that Pfizer’s reissued patent-in-suit had been improperly granted under Section 251 of the Patent Act.
• Representing Apotex Inc. in the febuxostat, milnacipran, lacosamide and bivalirudin patent litigations currently pending in various U.S. federal district courts.
• Represented Apotex Inc. in a patent infringement action regarding Apotex’s ANDA to make a generic version of LYSTEDA (tranexamic acid).
• Represented Apotex Inc. in a patent infringement action regarding Apotex’s ANDA to make a generic version of PRISTIQ® (desvenlafaxine). Matter pending.
• Represented Sandoz Inc. in a patent infringement action regarding Sandoz’s ANDA to make a generic version of Shire’s ADHD product INTUNIV® (guanfacine hydrochloride). Settled prior to trial.
• Represented Sandoz Inc. in patent infringement action regarding Sandoz’s ANDA to make a generic version of Helsinn’s anti-nausea product ALOXI® (palonosetron hydrochloride injection).
• Represented Sandoz Inc. in a patent infringement action regarding Sandoz’s ANDA to make a generic version of Roche’s VALCYTE® (valganciclovir hydrochloride).
• Represented Apotex Inc. in a patent infringement action regarding Apotex’s ANDA to make a generic version of AVODART® (dutasteride). Settled prior to trial.
• Represented Apotex Inc. in a patent infringement action regarding Apotex’s ANDA to make a generic version of ACULAR LS® (0.4% ketorolac tromethamine). We led the negotiations that resulted in a successful settlement of the matter after the close of expert discovery.
• Represented Sandoz Inc. in a patent infringement action regarding Sandoz’s ANDA to make a generic version of Abbott’s cholesterol product NIASPAN® (niacin). Settled prior to trial.
• Represented Sandoz Inc. in a patent infringement action regarding Sandoz’s ANDA to make a generic version of Abbott’s ZEMPLAR® (paricalcitol). Settled prior to trial.
• Represented Apotex Inc. in a patent infringement action regarding Apotex’s ANDA to make a generic version of Sanofi-Aventis’ anti-cancer product TAXOTERE®, the active ingredient of which is docetaxel. Following a two-week trial, obtained an order for Apotex striking down the patents-in-issue as invalid as obvious and unenforceable due to Sanofi-Aventis’ inequitable conduct in procuring the patents. Successfully argued on appeal with the Federal Circuit affirming trial court decision (April 2012). Of import is that inequitable conduct defense remains viable in ANDA litigations because of this ruling.
• Handled a patent infringement action regarding Apotex’s ANDA to make a generic version of Pfizer’s migraine product Relpax®, the active ingredient of which is eletriptan hydrobromide.
• Represented Sandoz Inc. in a patent infringement action regarding Eon/Sandoz’s abbreviated new drug application (ANDA) to make a generic version of Pfizer’s anti-seizure product Neurontin®, the active ingredient of which is gabapentin.
• Represented Sandoz Inc. in a patent infringement action regarding Sandoz’s ANDA to make a generic version of Allergan’s glaucoma drops COMBIGAN® (brimonidine tartrate/timolol maleate.)
• Represented Apotex Inc. in a patent infringement action regarding Apotex’s ANDA to make a generic version of Wyeth’s anti-depressant product EFFEXOR XR® (venlafaxine hydrochloride). Settled on favorable terms during trial.
• Represented Sandoz Inc. in a patent infringement action regarding Sandoz’s ANDA to make a generic version of Endo’s pain product OPANA® ER (oxymorphone hydrochloride).
• Handled a patent infringement action regarding Sandoz’s ANDA to make a generic version of Pfizer’s antimuscarinic tablet Detrol and Detrol LA®, the active ingredient of which is tolterodine tartrate.
• Represented Sandoz Inc. in a patent infringement action regarding Sandoz’s ANDA to make a generic version of Merck’s anti-nausea product EMEND® (aprepitant).
• Represented Apotex Inc. in a patent infringement action regarding Apotex’s ANDA to make a generic version of Procter’s osteoporosis product ACTONEL® (risedronate).
• Represented Sandoz Inc. in a patent infringement action regarding Sandoz’s ANDA to make a generic version of Medicis’ acne product SOLODYN® (minocycline hydrochloride).
• Handled a patent infringement action regarding Schwarz Pharma’s ANDA to make a generic version of Braintree Labs’ constipation product Miralax®, the active ingredient of which is polyethylene glycol. During discovery, Braintree dismissed its infringement complaint, waiving the remaining portion of the 30 month stay on FDA approval of Schwarz Pharma’s product.