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Troy A. Groetken
Shareholder

 

Troy Groetken is a shareholder with McAndrews, Held & Malloy, Ltd.  He has over 20 years of legal experience in the intellectual property field and more than 20 years of technical experience in the pharmaceutical, biotechnological and chemical fields.

As a registered U.S. patent practitioner, Troy regularly counsels and is known globally as the "go to" intellectual property attorney for Fortune 100 and 500 firmclients regarding complex intellectual property matters involving patent portfolio development, implementation and enforcement  (especially those matters impacted by recent changes caused by the AIA and ANDA/ABLA regulatory schemas); advises upon and institutes multi-level front-end and back-end licensing programs coordinated with a client-focused business modeling approach; and addresses multi-jurisdictional intellectual property integration issues, ranging from core and non-core patent portfolio due diligence analysis to global portfolio coordination matters (e.g., coordination of complex U.S. reexamination proceedings with European appeals and opposition), among others.  He regularly assists clients with a variety of technical disciplines involving the chemical, pharmaceutical and biotechnological arts encompassing new drug (small-molecule, protein, recombinant, combinatorial technologies, etc.) entities, API development and positioning, generic pharmaceuticals, biosimilars, pharmaceutical conjugates, surfactant technologies, agricultural compositions, food-based technologies, animal compositions, gellants, polyols, lubricants, coatings, elastomers, sealants, adhesives, biocides, medical devices, drug delivery formulations, laundry and cleaning products, inorganic and organic synthesis products, pharmaceutical supplements, personal care and cosmetic formulations, oil and gas technologies, alternative fuels, fuel cells, renewable energies, among others.  Troy also regularly counsels Fortune 100 mechanical and electrical companies with respect to intellectual property matters involving heavy-duty industrial products (e.g., diesel engines and aircraft technologies) to small appliances.

Prior to practicing patent law, Troy worked as a clinical consultant pharmacist, supervised drug research programs, evaluated drug management protocols, and performed drug treatment trials on behalf of various hospitals and research institutions.

Related Experience

  • Licensed pharmacist, Illinois, Iowa and Michigan

Honors & Awards

  • Lawyer of the Year, USA - Patents, Lawyer Monthly, 2016
  • Legal Elite Award Winner, 2016
  • "The Best Lawyers in America," selected by peers in 2012 - Present
  • "Rising Star," Illinois Super Lawyers independent survey, 2008, 2009
  • "40 Illinois Attorneys Under Forty to Watch," Law Bulletin Publishing Company, selected by peers in 2009

Representative Matters

  • Chiesi Farmaceutici s.p.A. v. Mesoblast International Sárl, Patent No. 2298863 (05/03/2016) Subject: Mesenchymal stem cells
  • Fatigue Fracture Technology, LLC v. Navistar, Inc., Case No. 15-cv-5667, (06/25/2015) Subject:  Fracturing technology
  • Kovin Associates, L.P. v. Duo-Gard Industries, Inc., Case No. 15-cv-2058, (03/09/2015) Subject: Roofing technology
  • Desmond Mark Chapman v. Osiris Therapeutics, Inc., Case No. T 1147/15-3.3.08 (07/09/2015) Subject: Mesenchymal stem cells
  • Polyguard Products, Inc. v. W R. Meadows, Inc., (02/28/11 – 03/2012) Subject:  Sealant based product and process
  • Shire LLC v. Travis C. Mickle, Ph.D. and KemPharm, Inc. (09/29/10 – 05/12/12) Subject:  Pharmaceutical conjugates
  • Strawman Limited v. Osiris Therapeutics, Inc. (European Opposition) (2012) Subject:  Joint Repair Using Mesenchymal Stem Cells
  • Cognate Therapeutics Inc.; Harvey Vaughan John Adams v. Osiris Therapeutics, Inc.(European Opposition) (2008) Subject: Muscle regeneration using stem cells
  • Akzo Nobel v. Stepan Company (European Opposition) (2006) Subject:  Surfactant technology

Publications

  • Patents, www.lawyer-monthly.com, LM77-16, p. 87.  View File. 
  • Inter Partes Review, Development and Procedures, Today's General Counsel, Vol. 12, No. 1, Feb/Mar 2015.
  • An alternative litigation strategy: ADR + IPR, Insidecounsel.com, March 26, 2014. View File.
  • Should the Supreme Court address claim construction in patent cases?, Insidecounsel.com, March 12, 2014. View File.
  • Sufficiency of disclosure and the great divide between the U.S. and Europe, Insidecounsel.com, February 26, 2014. View File.
  • The perfect storm that led to the rise of design patents, Insidecounsel.com, February 12, 2014. View File.
  • Can personalized medicine survive Prometheus?, Insidecounsel.com, January 29, 2014. View File.
  • Is Patent Reform, Round II a bad idea?, Insidecounsel.com, January 15, 2014. View File.
  • Using Patents as a Business Asset in Today’s Economy, Life Science Leader, July 2011

Presentations

  • Best Practices: PGR Procedures, U.S. and Foreign Venues - 2016
  • Best Practices Regarding Patent Prosecution Under 35 U.S.C. § 101, U.S. and Foreign Venues - 2015
  • Best Practices: IPR Procedures, U.S. and Foreign Venues - 2015
  • Best Practices With Respect to U.S.C. § 112, U.S. and Foreign Venues - 2014
  • Best Practices: Controlling Litigation Costs, U.S. and Foreign Venues - 2013
  • "U.S. Patent Reform:  A Major Update," Numerous U.S. and European venues – October-November 2011 and May 2012
  • "KSR – Practical Approaches," American Intellectual Property Law Association (AIPLA) Roadshow – June 23, 2011
  • "Biosimilars Legislation in the U.S.," U.S. and EPO Patent Law Update Symposium – Chicago, May 19, 2011
  • "Biosimilars Legislation in the U.S.," U.S. and EPO Patent Law Update Symposium – Munich, May 3, 2011

Professional & Community Involvement

  • American Intellectual Property Law Association (AIPLA)
  • American Pharmaceutical Association (APhA)
  • American Society of Consultant Pharmacists (ASCP)
  • Association of Patent Law Firms (APLF)
  • Federal Circuit Bar Association
  • Batavia Lions Club
  • Batavia Moose Lodge
  • Millcreek Neighborhood Crime Watch Captain

Areas of Practice

Industries

News Releases

Bar Admissions / Registrations

  • Illinois
  • Iowa
  • United States Supreme Court
  • Federal Circuit Court of Appeals
  • District Courts for the Northern District of Illinois and the Southern District of Iowa
  • U.S. Patent and Trademark Office
  • Registration Certificate (Roll of Patent Agents)
  • Canadian Patent Office

Education

  • John Marshall Law School, LL.M., Intellectual Property Law, Honors
  • Drake University Law School, J.D., cum laude
  • Drake University, College of Pharmacy, B.S., Pharmacy, cum laudeRho Chi