Phone: 516-200-5338

Email: JMarkey@MarkeyIPLaw.com

James G. Markey, Esq.

Markey IP Law Firm LLC

55 Lumber Road, Suite 2

Roslyn, NY 11576

James G. Markey practices in the area of intellectual property law with a focus on patent

proceedings, including multiple related reissue applications regarding transdermal dosage

forms and merged reexaminations regarding heart catheters, paper pulp treatment,

polyacrylonitrile production and an exercise treadmill, with excellent results. Mr. Markey's

background also includes over a decade of intellectual property litigation and trial experience

in a variety of technical fields.

Prior to practicing law, Mr. Markey worked as a design engineer for a company that

manufactured heat transfer equipment for the chemical process and energy industries.

Admitted to practice in New York and Florida and registered to practice before the U.S.

Patent and Trademark Office, Mr. Markey is a 1985 graduate of St. John's University

School of Law and a graduate of Manhattan College (B.E., Chemical Engineering).

epresentative Matters

Liti

ation

 Represented major pharmaceutical and hospital products company in defense of

patent infringement claims involving porous artificial bone implant technology.

Won judgment in district court and settled favorably on appeal. American

Standard, Inc.

v.

 Represented developer of coronary and peripheral dilatation catheter technologies in

reexamination and assertion of patent claims against infringer. Representation

involved four successful merged patent reexamination procedures before the

directed to dilatation catheter balloons. Schneider (USA) Inc. v. CR. Bard and

E.I DuPont Nemours and Company.

 Represented angioplasty and angiography products company in assertion of patent

directed to guiding catheters and defense of allegation of infringement of patent

directed to dilatation catheter balloons. Schneider (USA) Inc. v. Cordis Inc.

 Represented angioplasty and angiography products company in assertion of patent

directed to guiding catheters. Schneider (USA) Inc. v. Advanced Cardiovascular

Systems Inc.

 Represented global high-tech company in assertion of inkjet patent, trademark and

copyright rights against infringers and defense of antitrust counterclaims. Won jury

composition used to emulsify and burn oil.

 Represented company with patent and trademark on reclosable plastic bags,

obtaining temporary exclusion order in a Rule 337 action before the International

Trade Commission, effectively preventing damages from anti-competitive trade

originating outside of U.S. borders. In Re Reclosable Plastic Bags.

 Represented international supplier of industrial gases and specialty chemicals in

cybersquatting case. Sued a cybersquatter for trademark violations and won a

complete transfer of all Internet rights. Air Products and Chemicals, Inc. v.

Equitech, Inc.

 Represented international polymer and plastics company in damages phase of

 Represented worldwide consumer products and services company in action for

trademark infringement, false advertising and unfair competition regarding a so-

called nutritional supplement. Virgin Enterprises, Inc. vs. Virgin Earth, Inc.

 Represented maker of popcorn vending warmer technology, obtaining preliminary

injunction against patent infringer for the patent owner. Achieved favorable

settlement of claims thereafter. Stein Industries, Inc. v. Jarco Industries, Inc.

 Represented office products company in defense of allegations of design patent

infringement regarding computer accessory product. Vu-Ryte Inc. v. Rink King

Inc.

 Handled patent due diligence on purchase of major line of over the counter drugs for

an international healthcare products company.

 Handled patent due diligence relating to several worldwide introductions of new

regarding listings of patents in the FDA "Orange Book" of prescription drugs.

 Provided trademark license counseling to international apparel company based in the

Far East regarding various designer clothing lines in the U.S. Facilitated favorable

settlement oflicense termination issues when necessary.

 Prosecuted patent applications for controlled release dosage forms, including oral

including: artificial bone implants; orthopedic reconstruction devices; coronary

catheters; peripheral catheters, blood oxygenators and related instrumentation.

 Provided patent opinions and prepared and prosecuted patent applications directed to

hydrogen fuel cell technology, hydrogen storage and gas separation for international

supplier of industrial gases and specialty chemicals.

 Represented international chemical company in multiple merged reexamination

procedures regarding competitor's patent directed to paper pulp manufacture.

Efforts resulted in reexamination certificate canceling all of competitor's patent

claims.

 Represented chemical company in favorable merged reexamination proceeding

dmissions

 New York

 Florida

 U.S. Patent and Trademark Office

 U. S. District Courts for the Eastern and Southern Districts of New York

 U.S. Court of Appeals for the Federal Circuit

Virtual Law Partners LLP

- Partner, 2006-2010

- Partner, 2004-2006

Edmonds

-

Design Engineer,

1981-1986