Vincent L. Capuano, Ph.D.

practices in the area of intellectual property law with an emphasis in the life sciences, including pharmaceutical and biopharmaceuticals, cannabis, medical devices including delivery devices, and generics and biosimilars. Vince has over 20 years’ experience in pre-litigation strategic planning and patent litigation, U.S. PTO contested matters (IPRs), and all areas of patent procurement, exploitation and enforcement, including domestic and foreign patent preparation and procurement, patent validity and infringement analysis, patent licensing and due diligences. Dr. Capuano is a recognized thought leader and frequent speaker on intellectual property strategies affecting life sciences companies. He is experienced in the use of trade secrets to protect intellectual property in the pharma and cannabis spaces, and has litigated those cases, as well as numerous patent infringement cases.

Vince was an organic chemist prior to entering the practice of law. Vince holds a Ph.D. in organic chemistry from the University of Texas at Austin (1991, advisor Jonathan Sessler) and is a graduate of Ohio State University (B.S., Chemistry, 1987) and the University of Akron (J.D. 1999). After his Ph.D. studies, he was an NIH/CNRS postdoctoral fellow with Jean-Pierre Sauvage - Nobel Prize in Chemistry 2016 - at the Universite Louis Pasteur in Strasbourg, France.

Resume

Experience

•Duane Morris LLP
- Partner, 2008-present
•Sterne, Kessler, Goldstein & Fox PLLC
- Associate/Director, 1998-2008
•Oldham & Oldham Co., LLP
- Patent Agent/Law Clerk, 1996-1998

Honors and Awards

•Listed as a Patent Star in Managing Intellectual Property's IP Stars, 2013-2020

•Listed in LMG Life Sciences Intellectual Property Stars, 2018 and 2019

•Listed in Massachusetts Super Lawyers in the field of intellectual property, 2016-2018

•Named to Euromoney's LMG Life Sciences Stars, 2012, 2013 and 2016

Publications

Selected Publications

•Author, 2019 Cannabis Patent Review II: Patented (and Unapproved) Therapeutic Uses for CBD, Duane Morris LLP, February 12, 2020
•Author, 2019 Cannabis Patent Review I: Extraction and Purification, Duane Morris LLP, December 5, 2019

•Quoted, How much pot in that brownie? Chocolate can throw off tests, AP News, August 26, 2019

•Quoted, Making Your Mark and Protecting It, Marijuana Business Magazine, July 2019

•Co-author, Navigating the Cannabis Patent Landscape, Corporate Counsel, July 1, 2019

•Quoted, Pending Case, Cannabis Companies May Be Able to Prosecute Patent Infringements in Court, Corporate Counsel, May 21, 2019

•Quoted, Colo. Ruling Could Provide Road Map For Cannabis Inventors, Law360, April 26, 2019

•Author, UCANN's Liquid Cannabis Patent Survives Section 101 Challenge by Pure Hemp; Judge Questions Novelty, Usefulness and Nonobviousness, Duane Morris Alert, April 22, 2019

•Author, Is New Hampshire the Next State to Legalize Cannabis?, Duane Morris Alert, February 4, 2019

•Author, Can You Patent a Bong Made Out of an Apple? Duane Morris LLP, January 7, 2019
•Co-author, Biosimilars Now Just About Ready to Roll, Genetic Engineering & Biotechnology News, September 1, 2012
•Co-author, Claim Construction Strategies for Trial and Appeal in Pharma Litigation, Corporate Counsel Magazine, August 15, 2012
•Quoted, New Laws of Nature Law: Ruling Questions Scientific Patents, ABA Journal, July 1, 2012
•Co-author, Addressing Breach of Method-of-Use Patents by Generics, Law360, May 2, 2012
•Co-author, Federal Circuit Addresses Infringement of Method-of-Use Patents by Generics in Yasmin Case, Duane Morris Alert, April 18, 2012
•Co-author, A Proposal to Curb Misuse of 'Exceptional Case' Allegations Against ANDA Applicants, GenericsWeb INNsight, June 2010
• Takeda V. Mylan - Keeping Your Ducks In A Row, Law 360, January 13, 2009
• Obviousness of Chemical Compounds: The Lead Compound Concept, Intellectual Property Today, July 2007

Speaking Engagements

Selected Speaking Engagements

•Speaker, Blunt Talk About Cannabis Patents, ACS National Meeting and Expo, San Diego, August 26, 2019

•Presenter, Cannabis 202: IP Issues Facing the Cannabis Industry, Duane Morris Cannabis Webinar Series, June 18, 2019

• Pharmaceutical Patent Invalidity Challenge Score Card: District Courts v. The PTAB, American Conference Institute's Paragraph IV Disputes Conference, New York, April 2016
• Legal & Regulatory Implications of 'Similarity' and 'Interchangeability,' Biosimilars Clinical Studies & Analytical Similarity Summit, Boston, March 2016
• Update from the U.S.: Regulatory Exclusivities, Biosimilars Progress and New Court Decisions, World Generic Medicines Congress, Barcelona, Spain, April 3, 2014
• Latest Developments in Pharma/Life Sciences Patent Litigation, Fordham University School of Law IP Summit, New York, November 2013
• Understanding the Nuts and Bolts of Biosimilar Regulatory Requirements, 14th Annual Business of Biosimilars Conference, Boston, October 15, 2013
• Litigation Management Strategy Discussion: Special Litigation Considerations for Paragraph IV Disputes Involving Multiple ANDA Filers, Momentum's International Congress on Paragraph IV Litigation, New York, September 2013
•Speaker, Third Party IP: Preserving Freedom to Operate, The Food and Drug Law Institute's conference on IP Throughout the Drug Development Lifecycle, Washington D.C., July 2012
• New Standards in Inequitable Conduct Post-Therasense: Ethical Considerations for Paragraph IV Cases, ACI Conference on Paragraph IV Disputes, New York, April 2012
• Successfully Navigating Claim Construction in Life Sciences Litigation, Intellectual Property Owners Association Chat Channel webinar on current topics in IP, January 2012
• New Standards and Controversies in Double Patenting Type Obviousness: Repercussions for Paragraph IV Challenges, ACI Conference on Paragraph IV Disputes, May 2011
• Double Patenting: A Newly Vigorous Defense in Patent Litigation, Intellectual Property Owners Association Chat Channel webinar on current topics in IP, February 2011
• Litigating with Multiple ANDA Filers: Brand Name and Generic Perspectives, ACI Conference on Paragraph IV Disputes, San Francisco, December 2010
• Pre-Litigation Strategy, Analysis and Preparation for PIV Disputes, CBI's 3rd Annual Life Sciences Congress on Paragraph IV Disputes, Alexandria, Virginia, October 2010
• Biosimilars and Follow-On Biologics, Licensing Executives Society, Chicago, May 2008