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Jeffrey J. Toney

Partner | Silicon Valley, Atlanta
T (404) 260-6105
F (404) 260-6081

Jeffrey J. Toney, a partner in Kasowitz’s intellectual property group, is an intellectual property litigator who tries patent infringement, trade secret and unfair competition cases. Jeff has tried dozens of cases as lead counsel, including patent matters involving medical and surgical devices, pharmaceuticals, electronics and controls, internet and cellular communications, cable and satellite television technologies, biotechnology, paper and panelboard manufacturing, and materials engineering. He also tries complex commercial disputes concerning business and technology issues, including those arising from the design and manufacture of products ranging from medical and surgical devices to athletic shoes.

Jeff also serves as counsel in transnational arbitration matters. His experience includes proceedings before the International Chamber of Commerce; the Zürich and Stockholm Chambers of Commerce; the London Court of International Arbitration; and the American Arbitration Association. These matters were conducted in many venues in Europe, the United States, and Latin America and involved complex business disputes, including questions of inventorship and ownership of intellectual property rights of every kind.

Before practicing law, Jeff worked as a physical chemist. His published research received financing from the MesoAmerican Institute and the Tulane Fund.  

Notable Representations

Patent Litigation

  • Jang v. Boston Scientific Corp. et al., obtained a verdict in favor of Dr. G. David Jang against Boston Scientific Corporation for infringing Dr. Jang’s patents directed to coronary stent design and breaching its contractual obligations to pay him royalties.
  • Equifax, Inc. v. Verid, Inc. (N.D. Ga.), represented Equifax in asserting patents directed to Internet/online authentication technology. The matter settled with a licensing arrangement after Markman.
  • Jamestown LP v. CBS News Corp. (S.D.N.Y.), represented the owner of One Times Square against CBS in the first U.S. litigation concerning digital video technology and rights of publicity.
  • Kleen-Tex, Inc. v. Mountville Mills, Inc. (N.D. Ga.), represented Kleen-Tex, a leading manufacturer of mats and floor covering, asserting a patent directed to novel manufacturing techniques and novel mat designs. After trial, the court found the client’s patents valid and infringed and awarded “exceptional case” attorneys’ fees.
  • In re Gemstar Litigation (N.D. Ga), represented a major international communications/entertainment company (Gemstar/TV Guide), in a series of cases relating to set-top box technologies in which patent infringement, antitrust and patent misuse claims were involved. These cases were reported to be, at one stage, the largest set of patent cases in the country.
  • Southern Bonded Group v. S.C. Johnson & Sons (N.D. Ga.), represented Johnson Wax in a dispute concerning automated distribution and logistics systems. The jury entered a verdict in client’s favor, including award of costs and attorneys’ fees.
  • Takeda Pharmaceuticals v. Teva Pharmaceuticals (D. Del.), represented one of the world’s largest pharmaceutical companies (Teva) through trial of a Hatch-Waxman case relating to Prevacid® with market at issue in excess of $1 billion.
  • Teva Pharmaceuticals v. AstraZeneca et al. (E.D. Pa.), represented Teva in a Hatch-Waxman case relating to Crestor® with market at issue in excess of $2.5 billion.
  • Minerals Technology v. Omya (S.D.N.Y.), represented an international minerals company (MTI) through trial of a series of cases relating to wet-end papermaking technology.
  • AstraZeneca v. Impax Laboratories (S.D.N.Y.), represented a major Bay Area pharmaceutical company (Impax) in a Hatch-Waxman case relating to Prilosec®, with market at issue in excess of $1 billion.
  • Oklahoma Medical Research Foundation v. Eli Lilly Corp. (W.D. Ok.), represented OMRF in a dispute relating to Xigris® (drotrecogin alfa), the first drug approved for treatment of sepsis in humans.
  • Emory University v. BioChem Pharma, Inc. (N.D. Ga.), represented Emory University in enforcing patents covering Epivir® (lamivudine), one of the first anti-retroviral agents approved to treat HIV.

Transnational Arbitration

  • Adidas AG v. Miner Elastomer Products Corp. (ICC, Geneva), represented an athletic shoe manufacturer in a patent and inventorship dispute concerning novel midsole materials and design.
  • Rauma-Repola OY v. Hymmen GmbH (ZCC, Zürich), represented Rauma, then the largest public company in Scandinavia, in a series of disputes over dissolution of a joint venture and ownership of intellectual property concerning automated panelboard manufacturing systems.
  • Promotoras Unidas Ltda. v. Unit Chemical (ICC, Mexico City; AAA, Los Angeles), represented Promotoras Unidas, a major developer of chemical products and sanitizers, in a series of cases involving complex business disputes and ownership of intellectual property. Client was awarded attorneys’ fees.
  • Sunds Defibrator OY v. Crown Inc. (LCIA London), represented in the leading manufacturer of automated panelboard manufacturing equipment in an inventorship/business divorce dispute.
  • Raytheon Engineers & Constructors, Inc. v. Westlake Styrene, Inc. (AAA Houston, Tx.), represented Raytheon in claims arising from the design of styrene manufacturing facility.
  • SIPA SpA v. Nissei AG (ICC Geneva), represented SIPA, an Italian packaging manufacturer, in claims over ownership and inventorship of patents covering automated manufacturing PET bottles. Our client was awarded attorneys’ fees. The market is valued in excess of $50 million.

Expert Witness Experience

  • Invited to serve as Special Master for purposes of claim construction.
  • Served as expert witness in several matters concerning professional obligations and reasonableness of attorneys’ fees.

Honors and Awards

  • Awarded "Georgia IP Litigator of the Year" by Managing Intellectual Property (2016)
  • Named a "US Life Science Star" and awarded "Hatch-Waxman (Branded) Litigator of the Year" by LMG Life Sciences (2014)
  • Recognized by The Legal 500 in the area of “Intellectual Property – Patent Litigation: Full Coverage” (2013-2015)
  • Named among the “Legal Elite” by Georgia Trend magazine (beginning in 2007)
  • Selected for inclusion in Georgia SuperLawyers® (beginning in 2007)
  • Boss of the Year, Georgia Association of Legal Secretaries (1998-99)

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