John Kilyk, Jr.

Member

Mr. Kilyk practices law exclusively in the field of intellectual property, including patent interference, opposition, legal opinion, prosecution, and litigation matters, with specific concentration in the areas of biotechnology, chemistry, and pharmaceuticals. Recent technologies with which he has been involved include new chemical compounds, nucleic acid sequences, proteins, chemical and biological assays, monoclonal antibodies, cell lines, DNA cloning and amplification techniques, genetic vectors, medical treatments, pharmaceutical compositions, polymeric membranes, chemical syntheses, enzymatic reactions, and chemical surface treatments.

Mr. Kilyk has served as trial counsel in numerous patent lawsuits, including bench and jury trials before the U.S. district courts, proceedings before the U.S. International Trade Commission, and appeals before the U.S. Courts of Appeal for the Federal and Seventh Circuits. In addition, he has served as counsel in many interference proceedings before the U.S. Patent and Trademark Office, as well as in opposition proceedings before foreign patent offices.

With extensive experience in formulating patent strategies and in managing patent portfolios, Mr. Kilyk counsels and renders opinions on patent validity, patent infringement, technology licensing, and the protection of trade secrets and other proprietary information. He also prepares and prosecutes patent applications in the U.S. and foreign countries, as both independent activities and as part of coordinated overall patent strategies on behalf of clients. He has been instrumental in securing patent protection for breakthrough technologies in the U.S. and internationally.

Professional Affiliations

• American Intellectual Property Law Association (AIPLA) (Member, Biotechnology, Chemical Practice, and Interference Committees)
• Intellectual Property Law Association of Chicago (IPLAC) (Member, Biotechnology Committee)
• Intellectual Property Owners Association (IPO)

Articles and Publications

As a frequent source in connection with intellectual property legal issues concerning biotech, chemical, and pharmaceutical matters, Mr. Kilyk has been referenced and/or quoted in the following publications:

• Fortune, "Top Legal Challenges For Business Leaders" (May 12, 2008)
• EMBO Journal, "Where the Future Went" (November 1, 2005)
• GeneForum, "DNA-Rights Defenders: Get Off My Genetic Property: Money Creates Conflict of Research vs. Privacy" (February 23, 2005)
• The Boston Globe, "Putting Patents in Their Place" (January 29, 2003)
• Newsday "Court Boosts Patent Rights of Biotech Companies" (July 17, 2002, on-line edition)
• Clarin, "Cual es el Negocio que Hacen con el Genoma Humano" (November 14, 2001)
• The American Bar Association Journal, "The Big Gene Profit Machine" (April 2001)
• The Scientist, "Protecting Intellectual Property" (October 29, 2001), and "Clinton, Blair Stoke Debate on Gene Data" (April 3, 2000)
• Forbes, "Chemical Condom in the Works" (March 1, 2001, on-line edition)
• Business Week Online, "Generic Biotech Drugs? Don't Count Them Out" (February 1, 2001)
• USA Today, "DNA-Rights Defenders: Get Off My Genetic Property" (September 25, 2000), and "You Might Not Own Your Own DNA" (September 19, 2000)
• Signals Magazine, "Biotech Patent Fights" (September 15, 2000)
• "Accidental Prior Use," 64 J. Pat. Off. Soc'y 392 (1982)

Mr. Kilyk's views and analysis have been relied upon in a number of law review articles with respect to intellectual property issues.  For example, he has been referenced and/or quoted in the following law review articles:

• Alloway, "Inherently Difficult Analysis for Inherent and Accidental Biotechnology Inventions," Suffolk Law Review, 38: 73-93 (2004)
• Burk and Lemley, "Inherency," William and Mary Law Review, 47(2): 371-411 (2005)
• Gardner, "U.S. Intellectual Property Law and the Biotech Challenge:  Searching for an Elusive Balance," New Hampshire Bar Journal, 44: 24-93 (2003)
• Vidergar, "Inadequacy of Current Patent Schemes in Biomedical Context," Oregon Intellectual Property Newsletter, 4(1): 15-18 (2003)
• Vidergar, "Biomedical Patenting:  Permitted, But Permissible?," Santa Clara Computer and High Technology Law Journal, 19(1): 253-283 (2002)

Honors

• AV^® Preeminent™ Peer Review Rated (Highest Rating) – Martindale-Hubbell
• Selected by peers as a Leading Lawyer in Intellectual Property Law – Leading Lawyers Network
• Listed among the Top Lawyers in Illinois in Intellectual Property Law – Chicago Lawyer

Representative Matters

Mr. Kilyk has counseled or represented clients with respect to intellectual property issues in the private, academic, and government sectors. In particular, he has worked with a variety of corporations, from multinational corporations to start-ups, as well as many universities and governmental organizations. Representative clients include Akros Pharma, Cabot, Cabot Microelectronics, Cornell University, Dainippon Sumitomo Pharma, DePuy Orthopaedics, Euclid Development, GenVec, Human Genome Sciences, ImmunoGen, Johns Hopkins University, Kyowa Hakko, Maxygen, Mitsubishi Tanabe Pharma, National Institutes of Health, Nitto Denko, Osaka University, Reverse Proteomics Research Institute, Santhera Pharmaceuticals, Sumitomo Chemical, Riken, Toyobo, University of Pittsburgh, Wako Pure Chemical Industries, and Xoma Technology.

Contested Proceedings

1. Patent Interferences

Mr. Kilyk has represented clients in numerous patent interferences in the U.S. Representative patent interferences are identified below:

• Interference No. 103,708, which was subsequently reconstituted as Interference Nos. 104,710-104,715 (represented the National Institutes of Health against Transkaryotic Therapies/General Hospital Corporation, Syntex, and Whitehead Institute/Somatex Therapy in patent interferences pertaining to human gene therapy)
• Interference No. 103,815 (represented the National Institutes of Health against the University of Michigan in patent interference pertaining to gene therapy for treating restenosis with thymidine kinase)
• Interference No. 104,432 (represented GenVec against Genetic Therapy in patent interference pertaining to viral coat protein targeting technology)
• Interference No. 104,756 (represented GenVec against Sumitomo Pharmaceuticals in patent interference pertaining to adenoviral vectors, complementary cell lines, and related technology)
• Interference No. 104,822 (represented GenVec against Transgene in patent interference pertaining to adenoviral vectors, complementary cell lines, and related technology)
• Interference No. 104,825 (represented GenVec against Cell Genesys in patent interference pertaining to adenoviral vectors, complementary cell lines, and related technology)
• Interference No. 104,827 (represented GenVec against the University of Texas in patent interference pertaining to adenoviral vectors, complementary cell lines, and related technology)
• Interference No. 104,829 (represented GenVec against Gencell in patent interference pertaining to adenoviral vectors, complementary cell lines, and related technology)
• Interference No. 105,046 (represented GenVec against Transgene in patent interference pertaining to vector composition and production methods)
• Interference No. 105,075 (represented Sumika Fine Chemicals against Lundbeck Pharmaceuticals in patent interference pertaining to synthesis method for pharmaceutical citalopram)
• Interference No. 105,158 (represented Cabot Corporation against Honeywell International in patent interference pertaining to tantalum with special physical characteristics for sputtering)
• Interference No. 105,168 (represented Akros Pharma/Japan Tobacco against Robert Koch Institute and Millennium Pharmaceuticals in patent interference pertaining to antibodies and related technology)
• Interference No. 105,231 (represented Sumika Fine Chemicals against Lundbeck Pharmaceuticals in patent interference pertaining to chemical intermediate for pharmaceutical production)
• Interference No. 105,494 (represented Human Genome Sciences against Northwestern University in patent interference pertaining to specific polynucleotide and protein)
• Interference No. 105,558 (represented Human Genome Sciences against Northwestern University in patent interference pertaining to antibodies)
• Interference No. 105,588 (represented the National Institutes of Health against Crucell Holland B.V. in patent interference pertaining to melanoma vaccine)
• Interference No. 105,590 (represented Human Genome Sciences against Amgen pertaining to polynucleotides that encode polypeptides that inhibit apoptosis for use in cancer vaccines)
• Interference No. 105,652 (represented Human Genome Sciences against Research Development Foundation pertaining to toxic protein conjugates for killing B lymphocytes)
• Interference No. 105,718 (represented National Institutes of Health against New York University in patent interference pertaining to recombinant cell expressing human CCR5 and human CD4 polypeptide for use in, e.g., HIV (AIDS) diagnostic and therapeutic methods)

2. Patent Oppositions

Mr. Kilyk has represented clients in numerous patent oppositions in Europe and other countries.  Representative patent oppositions are identified below:

• Opposition Against Australian Patent 50287/96 (pertaining to filtered injectable viral vector preparation wherein the viral vector contains a transgene encoding an angiogenic peptide)
• Opposition Against European Patent 0 559 884 (pertaining to vivo administration of therapeutic viral vectors to muscle cells)
• Opposition Against European Patent 0 784 690 (pertaining to adenoviral vector technology, including complementing cell lines, systems, and propagation methods)
• Opposition Against European Patent 0 790 213 (pertaining to process for preparing highly disperse silicon dioxide)
• Opposition Against European Patent 0 866 873 (pertaining to adenoviral vector stock and methods of testing expression or toxicity and propagating adenoviral vector)
• Opposition Against European Patent 0 919 627 (pertaining to cells for producing therapeutic viral vectors)
• Opposition Against European Patent 1 387 769 (pertaining to coating composition for preparing ink-jet recording medium)

3. Litigation Experience

• DuPont Air Products NanoMaterials L.L.C. v. Cabot Microelectronics Corporation, Civil Action No. CV06-2952-PHX-ROS (D. Ariz. 2006) [represented Cabot Microelectronics in patent infringement suit relating to chemical-mechanical polishing compositions]
• Master Tech Products, Inc. v. Prism Enterprises, Inc., Civil Action No. 00C 4599 (N.D. Ill. 2000) [represented Prism in a trade secret theft and breach of contract dispute involving vehicle oil system testing technology]
• Urologix, Inc. v. BSD Medical Corp., TherMatrx, Inc., and Oracle Strategic Partners, L.P., Civil Action No. 4-96-647 (D. Minn. 1996) [represented TherMatrx and Oracle in patent license dispute in the area of benign prostate hyperplasia treatment]
• Waters v. Solarex Corp., Civil Action No. 91-C-6120 (N.D. Ill. 1991) [represented Solarex and co-defendant Amoco in patent and trademark infringement suit relating to product incorporating solar cell technology]
• Teepak, Inc. v. Viskase Corp., Civil Action No. 90-CV-7-183-DT (E.D. Mich. 1990) [represented Viskase as patentee in declaratory judgment action with respect to fibrous casings]
• Prism Technologies, Inc. v. Re-Heater, Inc., Civil Action No. CV-90-2900 (C.D. Cal. 1990) [represented patentee Prism in infringement suit regarding chemical heat packs]
• Re-Heater, Inc. v. EPI Products USA, Inc., Civil Action No. CV-90-0072 (C.D. Cal. 1990) [represented defendant EPI and indemnifiers Prism Technologies and Baxter Travenol in suit with respect to chemical heat packs and activators]
• UPC Games, Inc. v. S. & A. Restaurant Corp., Civil Action No. CA3-90-1917-D (N.D. Tex. 1990) [represented UPC Games as patentee in patent infringement suit involving scanner codes]
• Henkel Corp. v. Coral, Inc., 754 F. Supp. 1280 (N.D. Ill. 1990), aff'd without op., 945 F.2d 416 (Fed. Cir. 1991) [represented defendant Coral in preliminary injunction evidentiary hearing in the field of aluminum cleaning compositions]
• Schering Corp. v. Interferon Sciences, Inc., Civil Action No. 89-131 (D. Del. 1989) [represented Interferon Sciences, Anheuser Busch and related defendants in patent infringement suit concerning recombinant alpha-interferon]
• Viskase Corp. v. Brechteen Co., Civil Action No. 89-CV-73683-DT (E.D. Mich. 1989) [represented patentee Viskase in infringement suit regarding fibrous casings]
• Hybritech, Inc. v. Abbott Laboratories, 4 U.S.P.Q.2d 1991 (C.D. Cal. 1987) [represented Abbott as defendant in preliminary injunction proceeding for patent infringement in the monoclonal antibody field]
• Teepak, Inc. v. Union Carbide Corp., Civil Action No. 86-C-2373 (N.D. Ill. 1986) [represented Union Carbide and co-defendant Viskase in patent infringement suit with respect to the manufacture of cellulose casings]
• White Chemical Corp. v. Walsh Chemical Corp., Civil Action No. C-C-86-562-P (W.D.N.C. 1986) [represented defendants Walsh and Chatham on behalf of indemnitor Ethyl Corporation in patent infringement suit in the area of flame retardants]
• Akzo N.V. v. E.I. du Pont de Nemours & Co., 635 F. Supp. 1336 (E.D. Va. 1986), aff'd, 810 F.2d 1148 (Fed. Cir. 1987) [represented Akzo as patentee in suit against DuPont for patent infringement in the area of polymerization processes]
• In re Certain Aramid Fibers, ITC Inv. No. 337-TA-194 (U.S. Int'l Trade Comm. 1985), aff'd, 808 F.2d 1471 (Fed. Cir. 1986), cert. denied, 482 U.S. 909 (1987) [represented Akzona as respondent in ITC investigation initiated by DuPont concerning aramid fiber technology]
• E.I. du Pont de Nemours & Co. v. Akzona, Inc., Civil Action No. 84-10 (D. Del. 1984) [represented Akzona as defendant in patent infringement suit concerning aramid fiber technology]

Speaking Engagements and Presentations

Mr. Kilyk has participated in panels pertaining to intellectual property and has been quoted extensively in a variety of news articles concerning biotech and chemical patent matters. He also has spoken at conferences and at seminars arranged by clients, especially on the practical aspects of patent procedures and strategy and the effective use of the patent system as a part of a client's overall business strategy.

Mr. Kilyk's public speaking engagements and presentations, which evidence his practical approach to the use of the patent system, include the following:

• "Mock Trial Witness Examination in a U.S. Patent Infringement Trial," presented at seminar entitled "Principal Issues in U.S. Infringement Cases" (Osaka, November 16, 2009)
• "Innovation as a Business Tool," at Kellogg School of Management for Executive Education Course (presented in collaboration with the World Intellectual Property Organization) entitled "Strategies for Management of Intellectual Property" (Chicago, June 7, 2006; June 13, 2007; and June 10, 2008)
• Chair and Speaker for "Life Cycle Patent Management for Biotech Innovations" Panel Presentation at BIO (Biotechnology Industry Organization) Annual International Convention (Chicago, April 9-12, 2006)
• Speaker for "The Human Genome Project, DNA Science and the Law: The American Legal System's Response to Breakthroughs in Genetic Science" Panel Discussion at American University Law School Symposium (Washington, D.C., October 19, 2001) [panel discussion transcript appears in the American University Law Review, Volume 51, Number 3, pages 367-494 (February 2002), and was reported on in BNA's Patent, Trademark & Copyright Journal, Vol. 62, No. 1545, pages 577-78 (October 26, 2001)]
• "A Few Tips On Minimizing Patent Attorney Fees," presented at Sixth Annual Conference on Patents, Licensing, and Biotechnology Transfer: The Academic/Industry Interface (Santa Fe, 1991)
• "What Japan Can Expect From Proposed Changes in the United States International Trade Law and Practice and Recent Important Decisions," presented at AIPPI Conference (Tokyo, 1988)
• "Some Special Considerations of a Section 337 International Trade Commission Action As It Relates to Patents and Proprietary Rights," presented at ABA Annual Meeting (New York, 1986)

Bar Admissions and Registrations

• Illinois, 1983
• Registered to practice before the U.S. Patent and Trademark Office, 1982

Courts

• U.S. Supreme Court
• U.S. District Court for the Northern District of Illinois (Member, Trial Bar)
• U.S. Court of Appeals for the Federal Circuit
• U.S. Court of Appeals for the Seventh Circuit
• Illinois State Courts

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