Areas of Practice
Education
  • The University of Michigan Law School, JD, 1998
  • New York University, Postdoctoral Research, 1995; Biochemistry
  • Vanderbilt University, PhD, 1994; Chemistry
  • Vanderbilt University, MS, 1994; Chemistry
  • Vanderbilt University, 1991; Chemistry and History, cum laude, with Honors in the College of Arts & Science
Bar & Court Admissions
  • New York
  • US Supreme Court
  • US Court of Appeals for the Federal Circuit
  • US Court of Appeals for the Seventh Circuit
  • US District Court for the Southern District of New York
  • US District Court for the Eastern District of New York
  • US Patent and Trademark Office

John J. Molenda, Ph.D.

Partner
1114 Avenue of the Americas
New York NY 10036
TEL: +1 212 378 7540
FAX: +1 212 506 3950

John Molenda is co-chair of Steptoe's Healthcare & Life Sciences Industry Practice, is head of the Intellectual Property Practice for the New York office, and has served on the firm's Executive Committee.  He focuses on patent litigation at the district court and appellate levels, opinions of counsel, due diligence, and post-grant proceedings, including inter partes reviews (IPRs) and reexaminations.  He represents clients across technologies, including biotherapeutics (biologics), pharmaceuticals (Hatch-Waxman), biochemical research tools, medical devices, semiconductors, and computer software.

Dr. Molenda's practice has a particular focus on biologics and biosimilars.  He currently represents two pharmaceutical companies in a case involving blockbuster biologics to lower cholesterol and is coordinating pre-litigation strategy and counseling for a global biosimilars program involving high-value monoclonal antibody and cytokine products.  Dr. Molenda has also led biologics teams conducting transaction-related diligence and pre-petition diligence in advance of IPR filings. He has spoken on recent developments involving biologics and biosimilars for ACI, Knowledge Group, BIOTECanada, Canaccord Genuity, and the Federal Circuit Bar Association (FCBA).

With respect to Dr. Molenda’s appellate practice, he litigates regularly in the U.S. Court of Appeals for the Federal Circuit, including briefing, oral argument, and complex motion practice.  He has held substantial roles in 20 Federal Circuit appeals, including recently arguing one of the first pharmaceutical-related IPR appeals.  Dr. Molenda is active in the Federal Circuit community, currently serving as a Vice Chair of the FCBA’s Bench & Bar Planning Committee.  He has previously held leadership roles on the FCBA’s Patent Litigation, Legislation, and Rules Committees.  Prior to private practice, he served as a Federal Circuit law clerk for the Honorable Alan D. Lourie.

With respect to Dr. Molenda’s district court practice, he litigates in district courts across the United States, including playing substantial roles in several trials, managing all aspects of pre-trial proceedings, assuming leading roles in mediations and Markman proceedings, and managing complex discovery.  Dr. Molenda has served as co-chair of PLI’s Fundamentals of Patent Litigation program since 2014.

Professional Affiliations

  • Federal Circuit Bar Association
    • Vice Chair, Bench & Bar Planning Committee (July 2016-present)
    • Co-Chair, Rules Committee (December 2011-October 2014)
    • Co-Chair, Legislation Committee (October 2008-October 2011)
    • Vice Chair, Patent Litigation Committee (October 2005-October 2008)
  • New York Intellectual Property Law Association
  • New York State Bar Association

Noteworthy

  • New York Super Lawyers, Intellectual Property Litigation, 2017
  • IAM Patent 1000, Litigation: New York, 2015-2017
  • IAM Patent 1000, US Court of Appeals for the Federal Circuit: National, 2015-2017
  • FCBA Legislation Committee Individual Leadership Award, 2011
  • FCBA Legislation Committee Leadership Award, 2011

Representative Speaking Engagements

  • Moderator, "PTAB-Practice Pharma," FCBA Annual Bench & Bar Conference, June 24, 2017
  • Speaker, "Untangling the Inner Workings of IPRs for Biosimilars,” ACI 8th Annual Summit on Biosimilars, June 12, 2017
  • Panelist, “The Ongoing Jurisdiction Debate: From Mylan to TC Heartland,” ACI 11th Annual Paragraph IV Disputes, April 25, 2017. Click here for Bloomberg BNA article. 
  • Annual speaker, “Fundamentals of Patent Litigation,” PLI, New York, 2012-2017
  • Annual speaker, “Basics of Accounting for Lawyers: What Every Practicing Lawyer Needs to Know,” PLI, New York, 2010-2017
  • Panelist, “Impact of CBMRs and IPRs on Litigation,” FCBA Annual Bench & Bar Conference, June 24, 2016
  • Speaker, “Strategic Considerations in Litigating Biologics and Biosimilars Cases,” ACI 7th Annual Summit on Biosimilars, June 14, 2016
  • Speaker, “The Strategic Use of IPRs in Biologics and Biosimilars Litigation,” Knowledge Group, May 26, 2016 
  • Speaker, “AbbVie v. Janssen and Its Impact on Biologics and Biosimilars,” ACI 6th Annual Summit on Biosimilars (New York, June 2, 2015) and ACI US Biosimilars (Munich, April 20, 2015)
  • Speaker, “Recent Legal Developments Impacting Biologics and Biosimilars,” Knowledge Group, October 2, 2014
  • Speaker, “Association for Molecular Pathology v. Myriad Genetics, Inc. and Its Impact on In-House Counsel Practice,” AIPLA Corporate Practice Committee, August 20, 2013
  • Speaker, “Implications of Lovenox® and Abbott’s Citizen Petition on Biosimilars Development,” Knowledge Congress, July 13, 2012
  • Speaker, “An Insider’s Guide to the Federal Circuit,” ACI 6th Annual Paragraph IV Disputes, April 24, 2012
  • Speaker, “Overview of the Biologics Act and Recent Developments Concerning Its Implementation,” BIOTECanada, November 15, 2011
  • Speaker, “The Biologics Act: Impact on Regulatory Success of Follow-On Biologics,” Canaccord Genuity 31st Annual Growth Conference, August 9, 2011
  • Moderator, “Industry Perspectives on the Impact of the Federal Circuit's Therasense Decision,” FCBA, June 14, 2011
  • Moderator, “Industry Perspectives on the Biologics Act,” FCBA, April 26, 2011
  • Moderator, "Overview of the Biologics Price Competition and Innovation Act," FCBA, March 2, 2011

Representative Publications

  • "Current Trends In Biologics-Related Inter Partes Reviews," IP Law360, July 20, 2017
  • "Retractable Technologies, Inc. v. Becton, Dickinson & Co.: The Federal Circuit’s Debate over Claim Construction Methodology and Deference Rages on," NYIPLA Bull., October/November 2011
  • "Strategic Approaches to the Doctrine of Claim Differentiation: A Guide for Patentees and Accused Infringers," 12 IP Litig., no.1, January/February 2006
  • "Understanding the Federal Circuit’s Internal Debate and Its Decision to Rehear Phillips v. AWH Corp. En Banc," 86 J. Patent & Trademark Office Soc'y 911, 2004