Profile
Jayadeep “Jay” R. Deshmukh represents clients in complex intellectual property and patent infringement cases, with more than 20 years of experience advising on major Hatch-Waxman Act litigations. Many of his clients are international generic drug makers, who he counsels on product launches and defends against suits from brand-name manufacturers. Jay regularly serves as settlement and Food and Drug Administration (FDA) counsel for smaller generic pharmaceutical companies, advising on exclusivity matters against the Office of the Chief Counsel of the FDA.
Recognized by both The Legal 500 and LMG Life Sciences, Jay also has deep experience working with the Federal Trade Commission and advising companies who seek patent litigation counsel in the European Union (E.U.), where he defends clients in more than 10 E.U. jurisdictions.
Jay previously served as senior vice president of Global IP at Ranbaxy Laboratories, an international generic pharmaceutical company, where he was responsible for the creation of the company’s global intellectual property department.
Concentrations
- ANDA Hatch-Waxman litigation
- Generic medications
- Patent litigation
Capabilities
Experience
- Represented Zydus and Cadila Healthcare in a Hatch-Waxman patent infringement action involving a generic version of IMBRUVICA®.°
- Represented Zydus in two Hatch-Waxman patent infringement actions involving a generic version of INVOKANA® and INVOKAMET®.°
- Represented Ranbaxy Pharmaceuticals in an appeal before the Federal Circuit, vacating a preliminary injunction against Ranbaxy in a patent infringement action brought by multibillion-dollar companies Glaxo Group and Glaxo Wellcome (now Glaxo SmithKline). Ranbaxy launched the generic version of antibiotic CEFTIN, boasting $200 million in sales the first year.°
- Represented Ranbaxy Pharmaceuticals in securing a settlement in a patent infringement lawsuit filed by pharmaceutical giant Pfizer involving LIPITOR®. Ranbaxy launched the first and exclusive generic LIPITOR drug, boasting $500 million in sales the first year.°
- Represented Apotex in securing a critical appellate victory in a patent infringement action brought by Aptalis concerning muscle relaxant AMRIX®. The Federal Circuit vacated the district court’s order stating Apotex infringed Aptalis’ patent. Apotex launched the generic version of AMRIX®.°
- Represented Ranbaxy Pharmaceuticals in prevailing on appeal before the U.S. Court of Appeals for the D.C. Circuit over the FDA in a Hatch-Waxman proceeding in which Ranbaxy requested that the FDA relist a patent so it could exclusively market the associated drug. Ranbaxy sold $100 million of the generic version of high cholesterol drug ZOCOR.°
- Represented Ranbaxy Pharmaceuticals in obtaining a settlement in a Hatch-Waxman action against pharmaceutical giant AstraZeneca, resulting in a six-month exclusivity period to sell the generic version of acid reflux drug Nexxium, the second most-sold pharmaceutical.°
°The above representations were handled by Mr. Deshmukh prior to his joining Greenberg Traurig, LLP.
- Senior Vice President of Global IP, Ranbaxy Laboratories, 1998-2009
- Process Research Engineer, Sherwin Williams, 1987-1989
Recognition & Leadership
- Listed, The Legal 500 United States, Intellectual Property: Patents: Litigation (Full Coverage), 2021-2022
- Listed, LMG Life Sciences, “Life Science Star – Hatch-Waxman Patent Litigation,” 2021-2022
Credentials
- J.D., Case Western Reserve University School of Law, 1992
- M.S., Cleveland State University, 1989
- B.E., Manipal Institute of Technology, 1984
- New York
- New Jersey
- Ohio
- Hindi
- Marathi