Timothy C. Bickham

Partner

• tbickham@steptoe.com
• vCard
• Washington Office

Timothy C. Bickham is a partner in the Washington office of Steptoe & Johnson LLP, where he is a member of the Intellectual Property group. Mr. Bickham's practice focuses on litigating patents and licensing intellectual property. He has extensive experience in pharmaceutical and medical device patent litigation and Section 337 litigation before the U.S. International Trade Commission. Mr. Bickham has litigated patent cases in district courts throughout the United States and has coordinated several international patent enforcement efforts.

Mr. Bickham is a frequent lecturer on international patent matters to professional and academic groups in Europe, Asia, and South America. He is also a lecturer at the Intellectual Property Training Institute sponsored by the George Washington University and the Asia Pacific Legal Institute, where he served as the Director of External Affairs and Associate Fellow. Mr. Bickham has also lectured on patent procurement and licensing for the National Technology Transfer Center. He was an advisor to the George Washington University's Dean Dinwoody Center for Intellectual Property Studies, where he organized many of the Center's programs.

Mr. Bickham has a special interest in Brazil and has been an invited lecturer at events sponsored by several Brazilian organizations, including: ABPI- Associação Brasileira da Propriedade Intelectual; SBDI – Sociedade Brasileira de Direito International; EMARF Seminario Propriedade Industrial; and Agif - The Pharmaceutical Management and Innovation Agency (based at the Butantan Institute in São Paulo).

Mr. Bickham's articles have been published in the American Intellectual Property Law Association's Quarterly Journal and the Intellectual Property Litigator.

Representative Matters

Pharmaceutical District Court Cases

• MonoSol Rx, LLC v. Biodelivery Sciences International, Inc. et al (D. N.J., 2010) – Representing MonoSol Rx, LLC, an innovative drug delivery company, against drug manufacturers in a patent infringement and false patent marking matter related to MonoSol’s patent on a medicated film drug delivery system.
• Represented Laboratoires Fournier, an innovator pharmaceutical company, in several patent infringement actions under the Hatch-Waxman Act based on filings of Abbreviated New Drug Applications to market generic versions of the blockbuster cholesterol and triglyceride regulating drug TriCor® (48 mg and 145 mg). Mr. Bickham represented Laboratoires Fournier against Lupin Pharmaceuticals, Impax Laboratories, Biovail Laboratories and Teva Pharmaceuticals in litigations in the District of New Jersey.
• In re Tricor Antitrust Litigation (D. Del.) – Represented Laboratoires Fournier S.A. in antitrust actions relating to patent litigation and marketing practices, brought by generic drug manufacturers, class action plaintiffs, and state attorney generals.
• Represented Laboratoires Fournier, an innovator pharmaceutical company, in several patent infringement actions under the Hatch-Waxman Act based on filings of Abbreviated New Drug Applications to market generic versions of the blockbuster drug TriCor® (48 mg and 145 mg products). Mr. Bickham represented Laboratoires Fournier against Reliant Pharmaceuticals, Ranbaxy Pharmaceuticals, Par Pharmaceuticals, Cipher Pharmaceuticals, and Teva Pharmaceuticals in litigations in the District of New Jersey, District of Delaware, District of Puerto Rico. 
• Represented Laboratoires Fournier in two patent infringement actions under the Hatch-Waxman Act based on filings of Abbreviated New Drug Applications to market generic versions of TriCor® (micronized) 200 mg capsules. Mr. Bickham represented Laboratoires Fournier in litigations against Novopharm Limited and Impax Laboratories in the Northern District of Illinois.

Non-Pharmaceutical District Court Cases

• Bondtech Corporation v. OnSite Sterilization LLC (E.D. Ken., 2010) – Representing Bondtech Corporation, a full service company designing, engineering and manufacturing autoclaves systems, in a declaratory judgment patent infringement matter related to autoclave systems used for waste sterilization.
• Newport Controls, LLC v. Balboa Instruments, Inc., et al. (C.D. Cal., 2010-2011) – Represented Balboa Instruments in a six-patent patent infringement action involving spa controllers, as well as in a related antitrust and unfair competition matter. The case settled on favorable terms.
• Bayer CropScience LP v. Tessenderlo Kerley, Inc. and Phoenix Environmental Care, LLC (M.D. N.C., 2009-2010) – Represented Tessenderlo Kerley and Phoenix Environmental Care in patent, copyright, and trademark infringement matter related to pesticides and fungicides. The case settled on favorable terms.
• Bright Solutions, Inc. v. Tire Seal, Inc., EF Products, L.P., and Ritchie Engineering Company, Inc. (E.D. Tex., 2005-2008) – Represented Bright Solutions in a six-patent infringement case related to air conditioner leak detection systems. The case settled on favorable terms.
• Cognitronics Imaging Systems Inc., et al. v. Recognition Research Inc. and Captiva Software Corporation (S.D. Cal., 2001-2003) – Represented Recognition Research in a patent infringement matter related to Optical Character Recognition (OCR) software. The case settled.
• Triflo Medical, Inc. v. Lapeyre (D. D.C., 2002) – Represented Triflo Medical in a patent ownership dispute related to artificial heart technology.

ITC Investigations

• Certain Endoscopic Probes for Use in Argon Plasma Coagulation Systems, USITC Inv. No. 337 – TA – 569:  Represented respondents Canady Technology LLC and Canady Technology Germany GmbH against allegations of patent and trademark infringement with regard to medical devices. After trial, the complainant's patent was found not to be infringed by Canady and there was also a finding of no domestic industry. The ALJ thus found no violation and this decision was affirmed by the Commission. The Commission decision was affirmed on appeal by the Federal Circuit.
• Certain Foam Footwear, USITC Inv. No. 337 – TA – 567: Represented respondent Australia Unlimited against allegations of trade dress and design patent infringement related to foam shoes. Succeeded in having trade dress allegations dismissed and negotiated a settlement based on cross-licensing of design patents.
• Certain Devices for Determining Organ Positions and Certain Subassemblies Thereof (2005), USITC Inv. No. 337 – TA – 555: Represented Resonant Medical Inc. in this matter involving alleged patent infringement. Investigation terminated on the basis of a settlement agreement which permitted a start-up company respondent to continue selling the accused complex medical device.
• Certain Point of Sale Terminals and Components Thereof (2004), USITC Inv. No. 337 – TA – 524: Represented respondent Lipman USA and Lipman Electronic Engineering against allegations of patent infringement on point of sale terminals (e.g., for swiping credit cards). Succeeded in forcing patent owner to withdraw complaint and persuaded the Administrative Law Judge to issue a seven figure sanction against the complainant.
• Certain Semiconductor Timing Signal Generator Devices, Investigation No. 337-TA-465 and Certain Power Saving Integrated Circuits and Products Containing Same, Investigation No. 337-TA-463: Represented Integrated Circuit Systems, Inc. in cross-filed Section 337 actions against Cypress Semiconductor Corp.

Selected Publications

• Intellectual Property Advisory - Federal Circuit Affirms Patent Term Adjustment Calculation
  January 8, 2010
• Federal Circuit Puts Teeth in the ‘Process’ of Product-By-Process Claims
  August 2009, The Intellectual Property Strategist
• Intellectual Property Advisory - Recent Bills (Re)Introduced in Congress Directed to Pharmaceutical Companies
  March 30, 2009
• Intellectual Property Advisory - FDA Denies 30-Month Stay of Approval of Certain ANDAs Under the QI-Act
  March 23, 2009
• Intellectual Property Advisory - Amendments to Chinese Patent Law Affecting Pharmaceutical and Biotech Companies
  February 16, 2009
• Intellectual Property Advisory - New Requirements for Submission of Bioequivalence Data for Generic Drug Applications
  January 28, 2009
• The Harmonization of International Intellectual Property
  The ITC Reporter , Volume 22, Issue 2, 1999.
• Ninth Circuit Ruling Should Not Affect Venue for US Patent Litigation
  IP Litigator, 1996.

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Professional Affiliations

• American Bar Association
• American Intellectual Property Law Association