James M. Hafertepe | McAndrews

James M. Hafertepe

jhafertepe@mcandrews-ip.com
312.775.8000


James M. Hafertepe Shareholder 312.775.8000 Overview Practices & Industries Representative Matters Jim Hafertepe is a Shareholder at McAndrews, having joined the firm after graduating from law school in 1995. Jim practices in all areas of intellectual property law with a particular emphasis on patent and technology-related disputes (e.g., litigation, arbitration, and post-grant proceedings). He has successfully represented clients in Federal district courts throughout the country, the Federal Circuit, other appellate courts, and before the United States Patent and Trademark Office. His practice also includes counseling clients on licensing, clearance opinions, patent and trademark prosecution, portfolio strategy, and portfolio management. Jim has managed all aspects of complex, high-stakes intellectual property litigation and arbitration, including multiple cases where sales of the client’s accused products exceeded billions of dollars. For example, he has extensive experience handling complicated discovery, working with technical experts, writing and arguing dispositive motions, conducting patent claim construction hearings, conducting multi-week trials and arbitrations, and writing appellate briefs. In addition, Jim has spearheaded the damages portions of at least seven major patent cases, obtaining substantial awards and settlements for firm clients (e.g., $166 million, $63.75 million). Beyond court litigations and arbitrations, Jim has successfully handled multiple post-grant proceedings before the United States Patent and Trademark Office, including inter partes review and inter partes reexamination proceedings. Jim also has coordinated litigation strategies across multiple forums (domestic and international). For example, working with OUS counsel, Jim recently handled multiple related high-stakes litigation matters simultaneously pending in several U.S. district courts, the UK, Germany, the Unified Patent Court, the United States Patent and Trademark Office, and the European Patent Office. Jim’s experience encompasses a broad spectrum of medical devices and other technologies, including continuous glucose monitors, coronary angioplasty catheters, drug-eluting stents, cardiac defibrillators/pacemakers, biotechnology, satellite systems, barcode printers, semiconductors for hard disk drives, and internet communications technology. Jim received a Bachelor of Science degree in Aeronautical and Astronautical Engineering from the University of Illinois at Urbana-Champaign in 1992, where he graduated with honors. While at the University of Illinois, Jim spent four semesters as a co-op engineer at the Thiokol Corporation in Utah, where he worked on the solid rocket propulsion system for NASA’s Space Shuttle program. As a result of this valuable engineering experience, Jim gained a firsthand understanding of how things really happen in industry, which has shaped his approach to practicing law. After receiving his engineering degree, Jim attended the University of Chicago Law School, graduating with honors in 1995. EDUCATION University of Illinois, B.S.A.A.E., with honors, 1992 University of Chicago, J.D., with honors, 1995 BAR ADMISSIONS/REGISTRATIONS Illinois U.S. District Court for the Northern District of Illinois U.S. Court of Appeals for the Federal Circuit U.S. Court of Appeals for the Sixth Circuit U.S. Patent and Trademark Office Education University of Illinois, B.S.A.A.E., with honors, 1992 University of Chicago, J.D., with honors, 1995 Practices IP Litigation Post-Grant Practice IP Transactions Trademarks & Copyrights Bar Admissions/Registrations Illinois U.S. District Court for the Northern District of Illinois U.S. Court of Appeals for the Federal Circuit U.S. Court of Appeals for the Sixth Circuit U.S. Patent and Trademark Office Industries Medical Devices Life Sciences Industrial & Mechanical Chemical Computer & Electronics Technology Representative Matters Jim has been significantly involved in the following representative cases: Abbott Diabetes Care Inc. et al. vs. DexCom, Inc., Civil Action No. 21-977 (D. Del. 2021-24) (Patent infringement). Abbott Diabetes Care Inc. et al. vs. DexCom, Inc., Civil Action No. 23-239 (D. Del. 2023-24) (Patent infringement). DexCom, Inc. vs. Abbott Diabetes Care Inc., IPR2023-01396, IPR2023-01397, IPR2024-00520 (PTAB 2023-24) (Inter partes reviews). DexCom, Inc. vs. Abbott Diabetes Care Inc., IPR2023-01409 (PTAB 2023-24) (Inter partes review). Tim A. Fischell et al. vs. Cordis Corp. et al., Civil Action No. 16-0928 (D. N.J. 2016-20) (Patent-related contract dispute). Abbott Laboratories et al. v. Cardinal Health 529, LLC, IPR2019-00098 (PTAB 2018-20) (Inter partes review). Abbott Cardiovascular Systems Inc. et al. v. Medtronic Vascular, Inc. et al. (2015-16) (Arbitration). Wyeth and Cordis Corp. et al. v. Abbott Laboratories et al., Civil Action No. 09-4850 (D. N.J. 2009-13) (Patent infringement). Cordis Corp. et al. v. Abbott Laboratories et al., Civil Action Nos. 08-0230 and 08-1021 (D. N.J. 2008-11) (Patent infringement). Cordis Corp. et al. v. Abbott Laboratories et al., Civil Action Nos. 07-2265, 07-2477, 07-2728, and 07-5636 (D. N.J. 2007-11) (Patent infringement). Medtronic Vascular, Inc., et al. v. Advanced Cardiovascular Systems, Inc. (“ACS”) & Abbott Laboratories, Civil Action No. 06-1066 PJH (N.D. Cal. 2006) (Patent infringement). Paxar Americas, Inc. v. Zebra Technologies Corp. et al., Civil Action No. 03-03-142 (S.D. Ohio 2003-2006) (Patent infringement; favorable settlement of $63.75 million). Medtronic, Inc. v. Guidant, Inc., Civil Action No. 00-1473 (MJD/JGL) (D. Minn. 2000-03) (Patent infringement). SciMed Life Systems, Inc. et al. v. Guidant Corporation, et al., Civil Action No. 04-4962 JNE/JGL (D. Minn. 2004) (Patent infringement). Boston Scientific Corp., et al. v. Guidant Corp., et al., Civil Action No. 02-5969 (N.D. Cal. 2002-2004) (Patent infringement). ACS v. SciMed Life Systems, Inc., Civil Action No. 02-4987 (N.D. Cal. 2002-2004) (Patent infringement). ACS v. Medtronic AVE, Inc., Civil Action No. 99-5393 (N.D. Cal. 1999-2002) (Patent infringement arbitration; ACS awarded $166 million and a permanent injunction). XOMA, Ltd., et al. v. Biosite, Inc., Civil Action No. 01-2580 (N.D. Cal. 2001-2002) (Patent infringement; misappropriation of trade secrets; fraud; unfair competition). ACS v. SciMed Life Systems, Inc., Civil Action No. 96-00946 (N.D. Cal. 1996-2000) (Patent infringement). ACS v. SciMed Life Systems, Inc., Civil Action No. 95-03580 (N.D. Cal. 1995-2000) (Patent infringement). ACS v. Medtronic, Inc., Civil Action No. 95-03577 (N.D. Cal. 1995-1999) (Patent infringement; ACS awarded enhanced damages and a permanent injunction; decision affirmed on appeal). Boston Scientific Corp. v. ACS, et al., Civil Action No. 95-12715 (D. Mass. 1995-1997) (Antitrust). SciMed Life Systems v. ACS (1994-1997) (3 Arbitrations; breach of contract; patent infringement). Practices IP Litigation Post-Grant Practice IP Transactions Trademarks & Copyrights Industries Medical Devices Life Sciences Industrial & Mechanical Chemical Computer & Electronics Technology Jim has been significantly involved in the following representative cases: Abbott Diabetes Care Inc. et al. vs. DexCom, Inc., Civil Action No. 21-977 (D. Del. 2021-24) (Patent infringement). Abbott Diabetes Care Inc. et al. vs. DexCom, Inc., Civil Action No. 23-239 (D. Del. 2023-24) (Patent infringement). DexCom, Inc. vs. Abbott Diabetes Care Inc., IPR2023-01396, IPR2023-01397, IPR2024-00520 (PTAB 2023-24) (Inter partes reviews). DexCom, Inc. vs. Abbott Diabetes Care Inc., IPR2023-01409 (PTAB 2023-24) (Inter partes review). Tim A. Fischell et al. vs. Cordis Corp. et al., Civil Action No. 16-0928 (D. N.J. 2016-20) (Patent-related contract dispute). Abbott Laboratories et al. v. Cardinal Health 529, LLC, IPR2019-00098 (PTAB 2018-20) (Inter partes review). Abbott Cardiovascular Systems Inc. et al. v. Medtronic Vascular, Inc. et al. (2015-16) (Arbitration). Wyeth and Cordis Corp. et al. v. Abbott Laboratories et al., Civil Action No. 09-4850 (D. N.J. 2009-13) (Patent infringement). Cordis Corp. et al. v. Abbott Laboratories et al., Civil Action Nos. 08-0230 and 08-1021 (D. N.J. 2008-11) (Patent infringement). Cordis Corp. et al. v. Abbott Laboratories et al., Civil Action Nos. 07-2265, 07-2477, 07-2728, and 07-5636 (D. N.J. 2007-11) (Patent infringement). Medtronic Vascular, Inc., et al. v. Advanced Cardiovascular Systems, Inc. (“ACS”) & Abbott Laboratories, Civil Action No. 06-1066 PJH (N.D. Cal. 2006) (Patent infringement). Paxar Americas, Inc. v. Zebra Technologies Corp. et al., Civil Action No. 03-03-142 (S.D. Ohio 2003-2006) (Patent infringement; favorable settlement of $63.75 million). Medtronic, Inc. v. Guidant, Inc., Civil Action No. 00-1473 (MJD/JGL) (D. Minn. 2000-03) (Patent infringement). SciMed Life Systems, Inc. et al. v. Guidant Corporation, et al., Civil Action No. 04-4962 JNE/JGL (D. Minn. 2004) (Patent infringement). Boston Scientific Corp., et al. v. Guidant Corp., et al., Civil Action No. 02-5969 (N.D. Cal. 2002-2004) (Patent infringement). ACS v. SciMed Life Systems, Inc., Civil Action No. 02-4987 (N.D. Cal. 2002-2004) (Patent infringement). ACS v. Medtronic AVE, Inc., Civil Action No. 99-5393 (N.D. Cal. 1999-2002) (Patent infringement arbitration; ACS awarded $166 million and a permanent injunction). XOMA, Ltd., et al. v. Biosite, Inc., Civil Action No. 01-2580 (N.D. Cal. 2001-2002) (Patent infringement; misappropriation of trade secrets; fraud; unfair competition). ACS v. SciMed Life Systems, Inc., Civil Action No. 96-00946 (N.D. Cal. 1996-2000) (Patent infringement). ACS v. SciMed Life Systems, Inc., Civil Action No. 95-03580 (N.D. Cal. 1995-2000) (Patent infringement). ACS v. Medtronic, Inc., Civil Action No. 95-03577 (N.D. Cal. 1995-1999) (Patent infringement; ACS awarded enhanced damages and a permanent injunction; decision affirmed on appeal). Boston Scientific Corp. v. ACS, et al., Civil Action No. 95-12715 (D. Mass. 1995-1997) (Antitrust). SciMed Life Systems v. ACS (1994-1997) (3 Arbitrations; breach of contract; patent infringement).