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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, Commercial Litigation, and Plaintiffs’ Litigation groups, is a litigator who tries patent infringement, trade secret and antitrust/unfair competition cases.  Jeff also tries complex commercial disputes, including business divorce and antitrust matters with multi-tier and international markets.  Jeff litigates technical cases in many fields including patent matters involving pharmaceuticals, medical and surgical devices, 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 arising from the design and manufacture of products ranging from medical and surgical devices to athletic shoes. 

Jeff has tried dozens of cases as lead counsel in state and federal courts nationwide.

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.

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

Notable Representations

Patent, Antitrust and Trade Secret Litigation

  • Mallinckrodt in a series of Hatch-Waxman cases against a number of generic pharmaceutical companies that involve Mallinckrodt’s inventions of opioids with extremely low levels of impurities.  The first wave of litigation was successful and the defendants are enjoined from launching a product until 2023.
  • Mallinckrodt and Nuvo Research in multiple patent infringement cases seeking to enforce patents that cover the arthritis pain medication Pennsaid.
  • Mallinckrodt in a Hatch-Waxman case against Actavis involving XARTEMIS, an extended release oxycodone HCI and acetaminophen drug approved for treatment of acute pain.
  • Dr. G. David Jang in securing a favorable jury trial verdict against Boston Scientific for infringing Dr. Jang’s patents that protect his invention of certain balloon-inflatable coronary stents.
  • United Promotions and its Colombian counterpart, Promotoras Unidas, in matters arising from misappropriation of patent applications and trade secrets and anti-competitive business practices by a competitor.  Kasowitz ultimately reached settlement on portions of the claims in Colombia and Mexico, in which the defendant disgorged all revenues.
  • Equifax in asserting patents directed to Internet/online authentication technology.  The matter settled with a licensing arrangement after Markman.
  • The owner of One Times Square against CBS in the first U.S. litigation concerning digital video insertion technology and rights of publicity.
  • 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.
  • 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.
  • Johnson Wax in a dispute concerning automated distribution and logistics systems.  The jury entered a verdict in client’s favor, including an award of costs and attorneys’ fees.
  • Teva Pharmaceuticals, one of the world’s largest pharmaceutical companies, through trial of a Hatch-Waxman case relating to Prevacid®.
  • Teva Pharmaceuticals in a Hatch-Waxman case relating to Crestor®.
  •  Minerals Technologies through trial of a series of cases relating to wet-end papermaking technology.  The trial focused on novel issues of acid-base chemistry.
  • Impax Laboratories in a Hatch-Waxman case relating to Prilosec®.
  • Oklahoma Medical Research Foundation in a dispute relating to Xigris® (drotrecogin alfa), the first drug approved for treatment of sepsis/septic shock in humans.
  • Emory University in enforcing patents covering Epivir® (lamivudine), one of the first anti-retroviral agents approved to treat HIV and HBV.

Transnational Arbitration

  • Adidas in a patent and inventorship dispute concerning novel midsole materials and design.
  • Rauma, then the largest public company in Scandinavia, in a series of disputes over dissolution of a joint venture to design automated panelboard manufacturing systems.
  • 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, a leading manufacturer of automated panelboard manufacturing equipment, in an inventorship/business divorce dispute.
  • Raytheon in claims arising from the design of styrene manufacturing facilities.
  • SIPA, an Italian packaging manufacturer, in claims over ownership and inventorship of patents covering automated manufacturing of PET bottles.

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

  • Recognized as a leading patent lawyer by IAM Patent 1000
  • Awarded "Georgia IP Litigator of the Year" by Managing Intellectual Property
  • Named a "US Life Science Star" and awarded "Hatch-Waxman (Branded) Litigator of the Year" by LMG Life Sciences
  • Recognized by The Legal 500 in the area of “Intellectual Property – Patent Litigation: Full Coverage”
  • Named among the “Legal Elite” by Georgia Trend magazine
  • Selected for inclusion in Georgia Super Lawyers®
  • Boss of the Year, Georgia Association of Legal Secretaries

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