703-740-4542

tfleming@ga-iplaw.com

Thomas Fleming is an intellectual property and Litigation partner in the New York office of Kirkland & Ellis LLP. He is a veteran trial lawyer with extensive experience in complex commercial litigation, intellectual property litigation and patent litigation. He has co-chaired numerous jury patent trials, arbitrations and ITC proceedings in the areas of biotechnology, pharmaceuticals, medical devices and chemical products. He has been lead counsel in patent and trade secret litigation matters in these life sciences technology areas, as well as in general commercial and products litigations. He has also argued numerous appeals, including before the Federal Circuit.

Thomas also advises Fortune 100 companies on intellectual property aspects of international merger and acquisition matters, licensing and other deal related matters. He litigated matters for DuPont, Pioneer Hi-Bred, Roche, Genentech, ARIAD Pharmaceuticals and Jarden. He has also directed several successful trademark and Lanham Act litigations on behalf of international clients and their U.S. subsidiaries.

Thomas is listed in The Best Lawyers in America 2019-23; The Legal 500 U.S. and NY Metro SuperLawyers 2014-23; Best Lawyers in New York 2020-23. He is a recipient of the 2010 Legal Aid Society Pro Bono Publico Award.

Publications and Speaking Engagements

He contributed to the Thomson/Reuters Publication on “Recent Trends in Patent Infringement Lawsuits,” and also to the West Publications treatise “Commercial Litigation in New York State Courts.” He co-authored NYSBA articles “Federal Rules of Civil Procedure: Amendments” and “Expert Witness Disclosure and Core Work Product.”

He is a frequent lecturer on complex litigation issues, including NYIPLA Cutting Issues in Patent Litigation and EDiscovery (2014); Huron Legal Judges Roundtable (2014);“Masters Conference on Data Privacy Issues,” Washington, D.C., 2012; “Expert Witnesses at Trial,” NY County Lawyers Association 2012; “E-Discovery,” Director’s Roundtable for Corporate Counsel, October; “NY Ethics Rules in Patent Litigation,” JPPCLE New York, April 2010.

Notable representations in biotech, crops sciences and chemicals areas:

In Re JUUL Labs adv. Various State Attorneys General (various jurisdictions) 2022-23.

Boehringer Ingelheim v. Mylan Pharm, etal. (D. Del 2020-2022) patent litigation against numerous defendants.

Novo Nordisk v. Teva Pharmaceuitcals (D. Del. 2023) generic life sciences patent litigation.

UCB v. Teva Pharm. and Watson Labs. (D. Del. 2021-22) successful trial win and appeal affirmance. topical treatment for Parkinsons disease.

Butamax v. Gevo, Inc. (D.Del.) Patent litigation re recombinantly modified organisms used in producing next generation of biofuels.

Monsanto Company v. EI DuPont (AAA NY) Lead trial counsel in successful multi-day arbitration relating to GMO crops and related chemistries.

Amgen v. Roche (D. Mass./USITCS) Co-lead counsel in patent infringement suit and ITC proceeding, regarding pegylated-EPO product, and remedy.

Syngenta Seeds v. Dow AgroSciences, Monsanto and Pioneer Hi-Bred Int’l (D. Del.) Co-lead in defense of Pioneer culminating in defense verdict in patent infringement case involving insect resistant transgenic corn. The case settled on favorable terms on eve of trial.

Aventis Crop Science NV v. Pioneer Hi-Bred, Int’l and Mycogen Plant Science (M.D.N.C.) Led defense on behalf of Pioneer of patent infringement claims and, with other defendants, secured a declaration finding the case exceptional because the patents-in-suit were found unenforceable for inequitable conduct.

Ariad v. Eli Lilly (D. Mass.) Represented Ariad in successful jury trial prosecuting patents relating to cellular signaling pathways and related therapeutics. Handled examinations of numerous fact and expert witnesses at trial, including the damages expert which resulted in verdict for client in excess of $65 million.

Prior Experience

• Kaye Scholer LLP, New York, NY (December 2003-May 2012)
• Clifford Chance Rogers & Wells, New York, NY (January 2001-December 2003)

Memberships & Affiliations

• Intellectual Property Owners Association: Patent Law Committee
• CPR Institute: Task Force on Mediation of Patent Disputes
• American Bar Association Sections on Litigation and Intellectual Property