Payam Moradian is a Senior Associate at Adli Law Group P.C. Mr. Moradian's extensive legal background includes detailed knowledge of U.S. and International intellectual property law. His practice focuses on all aspects of patent prosecution, with emphasis on active pharmaceutical ingredients and dosage forms, antibodies, and petrochemicals. He has in depth experience with due diligence, clearance and opinion work in areas including antibody screening and antibody production, synthetic peptides, peptide purification, refrigerants, active pharmaceutical ingredients and dosage forms.
Prior to joining Adli Law Group, Mr. Moradian served as Patent Counsel for Nephcor. Inc., a medical device company located in Orange County, California, which specializes in dialysis and ultra filtration. He began his career with the Intellectual Property firm of Kenyon & Kenyon in New York where he practiced for nearly nine (9) years.
Mr. Moradian obtained his law degree with honors from Boston University School of Law in 2001. He obtained his B.A. with a Major in Biology and Minor Chemistry from New York University in 1997. His Biology GPA includes four graduate courses: Biochemistry (A), Cell Biology (A), Toxicology (A) and Environmental Resources (A). His Honors Courses included Chemistry and Organic Chemistry.
Practice Industries:
- Biotechnology
- Pharmaceuticals
- Chemical and Materials
Representative Patent Matters:
Patent Prosecution
- Practice Areas: active pharmaceutical ingredients, formulations, small organic compounds, antibodies, medical devices, treatment of cancer, nutritional supplements, polymers, alloys, sequencing, construction materials, fermentation, and petrochemicals.
- Practice Areas: active pharmaceutical ingredients, formulations, small organic compounds, antibodies, medical devices, treatment of cancer, nutritional supplements, polymers, alloys, sequencing, construction materials, fermentation, and petrochemicals.
- Supervised more than 30 attorneys, interns, and paralegals during my tenure.
- Managed a large docket for a large pharmaceutical company in the U.S. and foreign jurisdictions, such as E.U., India, China, Canada, Taiwan, Mexico, Brazil, and Australia.
- Managed the U.S. docket for a petroleum research company.
- Managed the U.S. docket for a nutritional supplement company.
- Assisted with dockets for several biotechnology companies.
- Prosecuted applications for small clients, including medical device applications.
- Managed and trained over 50 attorneys, interns and paralegals during my tenure.
- Supervised foreign associates and helped in selecting foreign associates that were more cost efficient and effective.
Patent Litigation
- KV Pharmaceuticals Co. v. Lannett Company, Inc., Civil Action No. 08-338-JJF (D. Del.): Retained expert and drafted expert declaration in less than one week to support a preliminary injunction motion. Drafted expert reports on infringement and validity. Reviewed claim construction for Markman proceedings.
- Reckitt Benckiser Inc. et al v. Tris Pharma, Inc., Civil Action No. 09-cv-03125-FLW-DEA (D.N.J.): Drafted expert reports for Markman proceedings.
Opinions/Due Diligence/Clearance/Licensing
- Performed and supervised due diligence, clearance and opinion work in areas including antibody screening (including phage display) and production, synthetic peptides, peptide purification, medical device, active pharmaceutical ingredients, dosage forms, alloys, battery technology, and hydrocarbon synthesis.
Below are some examples:
- Drafted non-infringement opinion for an over-the-counter medical device that was relied upon by one of the large pharmaceutical companies in a litigation.
- Advised a large pharmaceutical company that a patent that it owed millions of dollars in royalty was likely invalid because it did not provide guidance on how to measure a specific claimed value that was critical to infringement.
- Advised a client that the patents of a company it sought to takeover was likely not that valuable because the background section of the patent admitted that the company's bestseller drug was in the prior art and the patent covered inherent metabolic results.
- Retained a lab and devised experiments to see if a pharmaceutical product transformed into patented product overtime.
- Retained and supervised outside contractors to carry out clinical trials for a nutritional supplement.
- Performed a clearance search and drafted opinion for all the steps of a process for making a synthetic peptide.
- Spent five years as part of team-advising clients on all aspects of antibody phage display. Attended court hearings and updated clients on status of different litigations. Drafted opinions for several patents. Contributed to licensing agreements.
- Participated in meetings with third parties who were performing due diligence on a client's patent portfolio.
- Performed clearance searches for protein production patents and followed the relevant patents and applications on a regular basis for any court/USPTO actions.
- Advised a pharmaceutical company about improving its patent portfolio to better protect its NDA product.
- Advised a large chemical company that it was free to operate its process for making a hydrocarbon.
- Advised a client that its draft of a license agreement was problematic because it created false inventorship.
- Advised a client that a patent for a battery was invalid by publication of an earlier application by the same company.
Interference Practice (Dispute about who invented an invention first)
- Danishefsky (Sloan-Kettering) v. Hoefle (Helmholtz-Zentrum fur Infektionsforschung Gmbh): Interference No. 105,298 (small organic compounds (epothilones) and methods of their use for treating cancer): Was lead associate and drafted the motions and expert reports for our client Sloan-Kettering that invalidated the opposing side's claims to methods of treatment of cancer for lack of sufficient data.
- Greenwald (Enzon) v. Bailon (Hoffmann-La Roche), Interference No. 105,414 (pegylated compound (human leukocyte interferon)).
- Li (Pfizer) v. Singer (Teva), Interference No. 105,366 (crystal forms of active pharmaceutical ingredients (azithromycin)).
- Byrn (Pfizer) v. Aronhime (Teva), Interference No. 105,384 (crystal forms of active pharmaceutical ingredients (atorvastatin)).
Oppositions/Third Party Observations/Protests
- Retained an expert in India and filed a protest against a patent in India that resulted in invalidation of the patent to a crystalline form of a pharmaceutical.
- Filed protests against patents in the U.S.
- Defended pharmaceutical company against opposition in the EP.
Trademark Prosecution
- Filed and prosecuted trademark applications and design patents for clients.
