Emer Simic
Partner


esimic@greengriffith.com
312.883.8017
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An accomplished litigator who excels at guiding clients through complicated intellectual property issues, Emer focuses her practice on pharmaceutical patent litigation, post-grant review, opinions and client counseling.

As a partner at Green, Griffith & Borg-Breen, she takes a solutions-focused approach to her work, digging deep into the technical details to formulate winning legal strategies.

“I always enjoy digging into the science,” she says, having studied chemistry, biology and physiology at Cambridge University. “But the value Green Griffith brings is in the application of the law to the science to achieve the client’s goals: Does the client need to change their product formulation or their legal approach to get to market? Does the client have adequate patent protection for their products and are they ready for litigation? We like to think three steps ahead to protect and advance each clients’ interests with innovative legal approaches.”

Emer has broad experience representing both patent holders and defendants in Hatch-Waxman and patent infringement cases. She has served as trial counsel in patent infringement cases before the U.S. District Court, and successfully represented clients in inter partes reviews (IPRs) before the Patent Trial and Appeal Board.

“We are always prepared to go to trial,” Emer says, “but that’s not our ultimate objective. Our focus is always ensuring that our clients reach their business goals.” 

Beyond her many courtroom achievements, Emer is also a savvy business advisor to her clients in the pharmaceutical, life science, biotechnology and chemical industries. Viewing every client as a long-term partnership, Emer considers her counseling role as one that evolves over the full life-cycle of an initiative, from partnering with the client’s technical and business teams to formulate product development and regulatory strategies, all the way through patent litigation and market launch.

Originally from Ireland, Emer is a qualified Barrister. In 2020, Emer was listed in Intellectual Asset Management’s (IAM) Patent 1000 in Litigation and was named as an “IP Star” by Managing IP. Emer was selected as a “Rising Star” the last nine years by Illinois Super Lawyers and as a “Leading Lawyer” by Leading Lawyers (2016-2020). Emer is Co-Chair of the Coalition of Women’s Initiatives in Law (Chicago Chapter) Community Outreach Committee and serves on the Board of the Coalition (Chicago Chapter). Emer is an active member of the Intellectual Property Owners Association (IPO) and the Chicago Women in Intellectual Property (ChiWIP). Before joining Green Griffith, she was an associate at Leydig, Voit and Mayer, Ltd.

Education

Chicago-Kent College of Law, J.D.
Honorable Society of King’s Inns, Barrister-At-Law
University of Cambridge, M.Phil.
University of Cambridge, BA, natural sciences

Professional Affiliations
  • American Bar Association
  • Intellectual Property Owners Association
  • The Coalition of Women’s Initiatives in Law (Chicago Chapter), Board Member; Co-Chair, Community Outreach Committee
  • Chicago Women in IP
Court Admissions
  • State of Illinois Supreme Court

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

  • U.S. District Court for the Northern District of Illinois

  • Registered Patent Attorney, U.S. Patent and Trademark Office, No. 61,235

Honors
  • Honored in “Chicago’s Notable Women Lawyers” by Crain’s Custom Media, 2020
  • Listed in Intellectual Asset Management’s (IAM) Patent 1000 in Litigation, 2020
  • Named as an “IP Star,” Managing IP, 2020
  • Named in the Illinois Rising Stars list, as published in Illinois Super Lawyers, 2012-2020
  • Selected by peers as a Leading Lawyer in Intellectual Property Law and Patent Law – Leading Lawyers Network, 2016-2020
Representative Matters
  • Assertio Therapeutics & APR Applied Pharma Research v. Patrin Pharma – Emer is counsel for Assertio and APR in litigation against Patrin related to Patrin’s Abbreviated New Drug Application that seeks approval to market a generic equivalent to Assertio’s Cambia® diclofenac potassium powder for oral solution product.
  • Par Pharmaceutical v. QuVa Pharma et al. – Emer is counsel for QuVa in a trade secret action regarding vasopressin for injection.
  • Dexcel v. Takeda – Emer was counsel in successfully defending Dexcel against alleged infringement of Takeda’s Orange Book-listed patents for lansoprazole delayed-released orally disintegrating tablets (“ODT”). As a result of this ruling, Dexcel launched the first lansoprazole ODT product sold Over-The-Counter (“OTC”) in the US market.
  • Par v. Horizon (PTAB) – Emer was counsel in successfully defending one of Horizon’s Orange Book-listed patent for its RAVICTI® oral liquid product in an IPR proceeding against Par, IPR2015-01117. Par appealed PTAB’s decision to the Federal Circuit. The Federal Circuit affirmed per curiam PTAB’s decision upholding the patentability of Horizon’s ’012 patent.
  • Par v. Horizon (PTAB) – Emer was counsel for Horizon in defending multiple IPR proceedings (IPR2017-0167, -01768, -01769, and -01550) filed by Par against Horizon’s patents relating to Horizon’s RAVICTI® product used for the treatment of Urea Cycle Disorders (UCD) in patients two months of age and older. Pursuant to a settlement agreement reached between the parties, the IPRs were terminated.
  • Horizon v. Par (E.D. Tex.) – Emer was counsel for Horizon in Hatch-Waxman litigation against Par related to Par’s Abbreviated New Drug Application that seeks approval to market a generic equivalent to Horizon’s RAVICTI® oral formulation for the treatment of Urea Cycle Disorders (UCD) in patients two months of age and older. Subsequent to the Federal Circuit per curiam affirmation of PTAB’s decision upholding the patentability of Horizon’s ’012 patent, this litigation in E.D. Tex. was voluntarily dismissed and a new suit was filed in Delaware.
  • Horizon v. Par (D. Del. and D.N.J.) – Emer was counsel for Horizon in Hatch-Waxman litigations against Par related to Par’s Abbreviated New Drug Application that seeks approval to market a generic equivalent to Horizon’s RAVICTI® oral formulation for the treatment of Urea Cycle Disorders (UCD) in patients two months of age and older. Those litigations were successfully settled.
  • Horizon v. Lupin – Emer was counsel for Horizon in Hatch-Waxman litigations against Lupin related to Lupin’s Abbreviated New Drug Application that seeks approval to market a generic equivalent to Horizon’s RAVICTI® oral formulation for the treatment of Urea Cycle Disorders (UCD) in patients two months of age and older. Those matters settled.
  • Lupin v. Horizon (PTAB) – Emer was counsel for Horizon in defending IPR proceedings (IPR2017-01159 and IPR2017-01160) filed by Lupin against Horizon’s patents relating to Horizon’s RAVICTI® product used for the treatment of Urea Cycle Disorders (UCD) in patients two months of age and older. Pursuant to a settlement agreement reached between the parties, the IPRs were terminated.
  • Lupin v. Horizon (PTAB) – Emer was counsel for Horizon in defending IPR proceedings (IPR2016-00829) filed by Lupin against Horizon patents relating to Horizon’s RAVICTI® product used for the treatment of Urea Cycle Disorders (UCD) in patients two months of age and older. Horizon appealed PTAB’s final written decision to the Federal Circuit. Pursuant to a settlement agreement reached between the parties, Lupin withdrew as Appellees from the Federal Circuit Appeal.
  • Horizon v. Watson – Emer was counsel for Horizon in litigation against Watson related to Watson’s Abbreviated New Drug Application that was seeking approval to market a generic equivalent to Horizon’s Rayos® tablet product. That litigation was successfully settled.
  • Pfizer v. Lupin – Emer was counsel for Lupin in litigation related to Lupin’s Abbreviated New Drug Application that was seeking approval to market a generic equivalent of Pristiq® desvenlafaxine. That litigation was successfully settled.
  • Apotex v. Lupin – Emer was counsel for Lupin in litigation related to Lupin’s generic Accupril® (quinapril) products. That litigation was successfully settled.
  • Purdue v. Sandoz – Emer was counsel for Sandoz in litigation related to Sandoz’s Abbreviated New Drug Application that was seeking approval to market a generic equivalent to Purdue’s OxyContin®oxycodone extended release products.
  • Schering v. Sandoz – Emer was counsel for Sandoz in litigation related to Sandoz’s Abbreviated New Drug Application that was seeking approval to market a generic equivalent to Schering’s Noxafil® posaconazole product.
  • Abbott v. Lupin – Emer was counsel for Lupin in litigation related to Lupin’s Abbreviated New Drug Application that was seeking approval to market a generic equivalent to Abbott’s Trilipix® choline fenofibrate product. That litigation was successfully settled.
  • Eli Lilly v. APP Pharmaceuticals – Emer was counsel for APP at trial in litigation related to APP Pharmaceutical’s Abbreviated New Drug Application that was seeking approval to market a generic equivalent to Eli Lilly’s Alimta® pemetrexed product.
Speaking Engagements & Presentations

“Inventions at the ‘Litigation’ Stage: Inter Partes Review and/or District Court,” Panelist, “Inventing and ‘Reinventing’ Under Patent Law” Virtual Event, Notre Dame Law School, September 2020

“Strategic Considerations When Coordinating Your Patent Litigation,” Moderator, International Women’s Leadership Forum, Chicago, IL, September 2019

Publications

“Equity Matters: How My Firm Defies the Statistics on Women in Legal Leadership—and How Yours Can Too,” Best Lawyers Women in the Law Business Edition, June 2020
(view article here)

Powerful advice. Persuasive advocacy.