Bhavana Joneja

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Special Counsel

Overview
Experience
Memberships
Articles

Ms. Joneja is special counsel in the Intellectual Property practice group in the firm's New York office.

Areas of Practice

Ms. Joneja’s litigation experience includes all facets of trial work in both the district courts and the ITC. She has represented clients in matters involving several technical subject matters, including pharmaceutical compositions, chemicals, biomedical devices, internet security and business methods. In addition, Ms. Joneja has prosecuted numerous patent applications, prepared patentability and non-infringement opinions, and has experience with European patent oppositions involving biotechnology and biopharmaceuticals.

Education

J.D., Fordham Law School, 2003
Ph.D., Pennsylvania State University, 1998, Sigma Xi Grants-in-Aid of Research and the Pela Fay Braucher Scholarship
B.S., University of Delaware, 1994, Howard Hughes Research Initiative Grant

Admissions

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

Representative Engagements

IP Litigation:

In the Matter of Certain Flash Memory Controllers, Drives, Memory Cards, and Media Players and Products Containing Same, U.S. International Trade Commission Inv. No. 337-TA-619: Represented Respondents Power Quotient International and Corsair Memory, Inc. regarding a patent that relates to a memory card with flash memory and encryption capabilities.
Boehringer Ingelheim International GmbH et al. v. Mylan Pharmaceuticals Inc. (D. Del.): Represented Mylan in an ANDA litigation involving a drug approved for treating Parkinson’s disease and restless legs syndrome.
Sanko Machinery Co., Ltd. v. Schmucker S.r.L. (D.N.J.): Represented Schmucker in a patent infringement action relating to automated packaging machines. The plaintiff dismissed the action before Schmucker answered the Complaint because Schmucker demonstrated that its products did not infringe the patent-in-suit.
Counsel for intellectual property due diligence with Heller Ehrman’s Venture Law Group for clients including Telegraph Hill Partners and with Heller Ehrman’s Life Sciences Practice.
Dr. David Goldfarb and C. R. Bard Inc. v. W. L. Gore & Associates, Inc. (D. Ariz.): Represented the patentee and a large medical device manufacturer in patent litigation regarding vascular stents.
Rexall Sundown, Inc. v. Weider Nutrition International, Inc. and Leiner Health Products, Inc. (W.D. Wis.): Represented Rexall Sundown, Inc., a manufacturer and retailer of a broad line of nutritional supplements, in a patent litigation involving methods for making smaller tablets.
George Pieczenik and I.C. Technologies America, Inc. v. Dyax Corp. (D. Mass) and (Fed. Cir.): Defended Dyax Corp. in a patent litigation regarding phage display.
Ford Motor Company v. Black & Yellow Major Auto Parts, Inc. et al. (E.D.N.Y.): Represented Ford Motor Company in an action for trademark counterfeiting and trademark infringement.
SRI International Inc. v. Internet Security Systems, Inc. (D. Del.): Represented Internet Security Systems, Inc. in a patent litigation involving technology for monitoring and surveillance of computer networks for intrusion detection. Actively participated in all facets of discovery, including depositions, pretrial preparation and successful summary judgment submission.
bioMerieux SA and bioMerieux, Inc. v. GeneOhm Sciences, Inc., Infectio Diagnostic (I.D.I.), Inc. and Becton, Dickinson and Company (S.D. Cal.) and (9^th Cir.): District court and appellate counsel for GeneOhm Sciences and Becton, Dickinson and Company regarding an application by bioMerieux under 28 U.S.C. § 1782 to take discovery in the U.S. for use in foreign proceedings relating to intellectual property rights to methicillin-resistant Staph aureus (MRSA) detection technology.
Wardlaw v. Becton, Dickinson and Company (D. Conn.): Counsel for Becton, Dickinson and Company in an action for alleged patent infringement and breach of a licensing agreement.
Medical Technology, Inc. (d/b/a Bledsoe Brace Systems) v. Generation II Orthotics Inc. (Fed. Cir.): Appellate counsel for Bledsoe Brace Systems, a knee-brace manufacturer, appealing from an adverse jury verdict of patent infringement.
Becton, Dickinson and Company v. Med-Design Corp. (D. Del.): Counsel for Becton, Dickinson and Company in an action for correction of inventorship.
3M Company v. Sinotrade Imports Inc., Jason Ho and Siu Hung Chan (E.D.N.Y.): Represented 3M Company in an action for trademark counterfeiting and trademark infringement.

IP Opinion, Patent Office and Due Diligence Experience:

From 1998-2002 Ms. Joneja was a patent agent at the former intellectual property boutique Fish & Neave. There she counseled numerous biotechnology and biopharmaceutical clients and obtained extensive experience in world-wide patent prosecution, including interferences and foreign oppositions, in the area of biotechnology.
Represented Shell Oil Company, Pfizer Inc. and Dyax Corp. in connection with patent opinion work on various chemical, pharmaceutical and biopharmaceutical products.
Represented Bank of America in connection with due diligence investigation involving a potential acquisition.

Memberships

American Bar Association
American Intellectual Property Bar Association
New York Intellectual Property Law Association

Articles

Legal Publications:

“Scope of Claim Construction Affects Litigation of Validity,” New York Law Journal 229:114 (2003).
“Indirect Infringement (United States) Part I-The Doctrine and its History,” Patents & Licensing (1999).
“Indirect Infringement (United States) Part II-The Metabolite Cases,” Patents & Licensing (1999).

Scientific Publications:

“Pim-1 Kinase Protects Hematopoietic Fdc Cells from Genotoxin-Induced Cell,” Oncogene 19(32): 3684-92 (2000).
“Mitogenic Signaling and Inhibition of Apoptosis via the Erythropoietin Receptor Box-1 Domain,” J. Biol. Chem. 272: 11176-84 (1997).
“Mechanisms of Stem Cell Factor and Erythropoietin Proliferative Co-signaling in FDC2-ER Cells,” Blood 90(9): 3533- 45 (1997).
“A Sulfhydryl Oxidase from Chicken Egg White,” J. Biol. Chem. 271: 30510-16 (1996).