Jason W. Balich

Overview

Jason Balich is a trial and appellate lawyer who protects clients’ technology and defends their freedom to use it. Jason’s experience includes successfully defending multiple patent owners—from manufacturers to public universities—facing inter partes review challenges at the Patent Trial and Appeal Board (PTAB) where the PTAB denied institution. He also focuses his practice on trade secrets. For instance, he has represented a plaintiff seeking to protect its trade secrets and a patent owner looking to stop a competitor’s infringement. In addition, Jason regularly represents defendants in patent and commercial litigation, including Hatch-Waxman ANDA litigation, before district courts and at the International Trade Commission (ITC).

With an understanding of technology, business, and the law, Jason provides a unique perspective when working with clients. He has an MBA, worked in marketing at 3M Company, and has owned his own business. Jason knows firsthand the need to avoid litigation and helps clients respond to demand letters by patent assertion entities to dissuade them from filing a lawsuit in the first place, performs freedom-to-operate analysis, and helps clients set up practices that best protect their technologies from competitors.

Jason’s counseling and litigation experience spans a diverse set of industries including pharmaceuticals, biotechnology, medical devices, data storage media, electro-hydraulic devices, military equipment, and consumer electronics.

Jason has experience litigating in numerous jurisdictions, including the District of Delaware, the Southern District of Florida, the Northern District of Illinois, the District of Massachusetts, the District of New Jersey, and the Eastern District of Virginia.

A thought leader on a variety of topics, Jason has a regular column in a chemical engineering magazine and frequently provides CLE lectures. He’s known for writing about trade secrets, NDAs, insurance, patent infringement, and prior art, among other subjects.  

Jason studied engineering at Princeton and is the co-inventor of four US patents as a product development engineer for 3M.

Experience

Patent Trial and Appeal Board (PTAB)

Represented patent owners whose patents are challenged in inter partes reviews (IPRs) before the PTAB in the following technologies:

• Anti-viral nucleoside reverse transcriptase inhibitors (for HIV). Outcome: institution denied.
• Anti-cancer CAR-T cell therapy. Outcome: institution denied.
• Multi-mode personal computers. Outcomes: 1 patent statutory disclaimed; 3 institutions denied.
• Represented a CAR-T cell biotechnology company in an interference proceeding before the PTAB. Outcome: client’s patent upheld; interference terminated.

International Trade Commission (ITC)

• Performed case management and assisted in litigation strategy for two International Trade Commission (ITC) Investigations.
• Responsible for hearing testimony of an expert witness resulting in a finding of non-infringement for one patent in ITC Inv. 337-TA-1012 on behalf of the firm’s Respondent client.
• Coordinated discovery and motion practice in ITC Inv. 337-TA-1076, including oral arguments for a motion in limine.

District Court Litigation

Represented clients in a diverse set of industries:

• A diesel auto parts company as defendant in a district court trademark infringement lawsuit. Served as second-chair. Outcome: secured victory. 
• An electro-hydraulic actuator company as plaintiff in district court trade secret litigation. (ongoing)
• A Canadian military helmet manufacturer as defendant in district court patent litigation. (ongoing)
• A Canadian telematics company as defendant in district court trade secret litigation. (ongoing)
• Multiple generic pharmaceutical companies as defendants in Hatch-Waxman generic drug litigation (PIV / ANDA litigation). Outcomes: 4 favorable settlements; 1 case dismissed as not infringed.
• A Massachusetts-based medical device company as defendant in a patent litigation. Outcome: favorable settlement.
• An Australian branded pharmaceutical company as a plaintiff/patentee in a patent enforcement action. Outcome: favorable settlement.

Experienced in all phases of litigation:

• Worked with clients to devise litigation strategy
• Drafted over a dozen notice letters for P-IV certifications in abbreviated new drug applications (ANDAs) in connection with Hatch-Waxman litigation
• Drafted pleadings: complaints and answers
• Worked with clients to understand document preservation and production requirements
• Drafted discovery requests and responded to opposing discovery requests
• Assisted experts in drafting expert reports
• Prepared fact and expert witnesses for deposition
• Taken and defended both fact and expert depositions
• Drafted summary judgment, Daubert, claim construction, discovery motions and briefs
• Produced a technology tutorial video on polymorphs as part of a Markman hearing
• Oral arguments and hearings for summary judgment, claim construction (Markman) proceedings, compelling discovery, protective orders, and motions in limine
• Trial and post-trial briefing
• Settlement negotiations, arbitration, and drafting settlement agreements

Appellate Litigation

• Argued before the Seventh Circuit in an appeal to a district court’s grant of opposing party’s motion for summary judgment. (pending)

Counseling

• Helped clients respond to demand letters from patent assertion entities (a.k.a. patent trolls) to successfully avoid litigation.
• Audited a client’s patent portfolio to advise on the coverage it provided to current planned and future products.
• Performed patent landscape evaluations and freedom-to-operate analysis, including providing opinion letters regarding noninfringement of client’s products and invalidity of competitor’s patents in the fields of protein antagonists, chemical processing, human tissue-based products, and microbial therapy.
• Helped client set up best practices for protecting trade secret ethylene blocking technology.
• Evaluated whether drugs undergoing clinical trial would qualify for “new chemical entity” (NCE) exclusivity upon approval by FDA
• Drafted nondisclosure agreements, licensing agreements, joint development agreements, and material transfer agreements.
• Performed pre-acquisition due diligence of patent portfolios.

Recognition

• Repeatedly recognized on the Best Lawyers: Ones to Watch list by The Best Lawyers in America®
• Repeatedly named to the list of Massachusetts Rising Stars by Super Lawyers
  
  

Interests

• Director, Sandy Point Sailing Association, Beverly, MA
• Private pilot
• Races J/80 sailboats in regional, national, and international competitions