Petruzzi_Heather

Heather M. Petruzzi

Heather M. Petruzzi advises life sciences and medical device companies on complex intellectual property matters. She represents clients in post-grant proceedings before the Patent Trials and Appeal Board (PTAB), in IP litigation before district courts and at the Federal Circuit, and in patent prosecution before the United States Patent and Trademark Office (PTO), and she also provides counseling on IP strategy and due diligence. 

PTAB and PTO: Ms. Petruzzi represents clients as lead counsel across a variety of technologies in strategic post-grant proceedings before the PTAB, including inter partes review (IPR). She also prosecutes strategic patent portfolios for universities, startups and large companies.

Litigation: Ms. Petruzzi represents pharmaceutical companies in ANDA litigation, medical device clients, and life sciences clients in district court. She handles pre-litigation investigations, discovery, claim construction, expert discovery, expert reports and depositions. She has experience coordinating global litigation and foreign opposition strategies for both pharmaceutical and medical device clients. Ms. Petruzzi also drafts briefs and prepares for oral argument before the Federal Circuit in appeals from the district court and the PTO.

Counseling, Policy and Corporate Advice: Ms. Petruzzi counsels clients on freedom to operate matters and drafts invalidity and non-infringement opinions. She also counsels clients on IP policy and pending legislation issues. She works with clients on licensing, IP sales and acquisitions, and performs due diligence analyses.

Ms. Petruzzi serves on the firm’s post-grant proceedings, life sciences and medical device working groups. She is also a member of the firm’s Hiring Committee.

Professional Activities

Ms. Petruzzi serves as a co-chair of the Conference Committee for the PTAB Bar Association. She is also a member of the Federal Circuit Bar Association, the Intellectual Property Owners Association, the Intellectual Property and Innovation Committee of the US Council for International Business, the American Intellectual Property Law Association, and the American Bar Association. 

Experience

  • Lead counsel in 13 IPRs and counsel in the district court for Becton, Dickinson and Company. The PTAB upheld the validity of two of the patents, denied institution of seven IPRs, three IPRs are awaiting an institution decision, and one IPR is in the trial phase. The patents, which are also at issue in the litigation, are directed to microfluidics technology.
  • Lead counsel for Patent Owner Bristol Myers Squibb in an IPR that ended in a favorable settlement, and as counsel in another IPR that was denied institution. The patents concerned the Eliquis compound and formulation.
  • Counsel for Bristol Myers Squibb in a large Hatch-Waxman case concerning its blockbuster drug, Eliquis, in which the client prevailed at trial against all generic defendants. Lead infringement and validity strategy for the formulation patent.  
  • Lead counsel in IPRs on behalf of petitioner, Becton, Dickinson and Company challenging several patents directed to medical devices that led to favorable settlements. The patents were at issue in concurrent district court litigation.
  • Advise global pharmaceutical client on consistent global patent strategy across Europe and Asia, including coordinating with foreign counsel, participating in drafting briefs, and attending hearings.

Recognition

Insights & News

Credentials

  • Education

    • JD, George Washington University Law School, 2008

      with high honors Order of the Coif; Public Contracts Law Journal, Moot Court Board
    • BS, Chemistry/International Studies/Spanish, University of Richmond, 2005

      summa cum laude Phi Beta Kappa
  • Admissions

    • District of Columbia

    • New York

    • United States Patent and Trademark Office

    • US Court of Appeals for the Federal Circuit

  • Languages

    • Spanish

Credentials