345 Park Avenue
New York, New York
10154

212.407.4098

646.619.4822

Warren K. MacRae
Partner

Warren MacRae has been counseling clients in all aspects of patent law for two decades. He focuses his practice on chemical patent matters, with particular emphasis on Hatch-Waxman litigation and pharmaceutical patent law. Mr. MacRae also has extensive technical expertise in diverse technologies including polymer chemistry, biotechnology, medical and mechanical devices, nutraceuticals, organoleptics, and food chemistry. A substantial portion of his practice is devoted to patent litigation.

Mr. MacRae has represented clients before the Court of Appeals for the Federal Circuit and has successfully argued numerous appeals to the Board of Patent Appeals and Interferences (BPAI) of the United States Patent and Trademark Office (USPTO). He has successfully represented clients in both inter parte and ex parte proceedings before the USPTO, and has provoked and prosecuted numerous interferences at the USPTO to final judgment or settlement.

Mr. MacRae also has extensive experience counseling clients from the point of preparing patent applications through licensing and successful resolutions of a wide range of disputes involving patents. He advises clients regarding strategic re-examinations of US patents and oppositions to foreign patent applications resulting in freedom to operate for his clients, and manages numerous collaborative technology and licensing arrangements for the pharmaceutical industry.

Representative cases that Mr. MacRae has litigated include Hoffmann-La Roche, Inc. v. Apotex, et al. (obtaining summary judgment of infringement of several patents against multiple generic defendants; and defeating multiple allegations of invalidity and inequitable conduct); Hoffmann-La Roche, Inc. v. Cobalt, et al. (obtaining preliminary injunction on multiple patents against generic manufacturer); Warner Chilcott Company, LLC and Hoffmann-La Roche, Inc. v. Teva Pharmaceuticals, Inc.; Montell North America Inc. v. The Dow Chemical Company, Inc.; Mead Johnson & Co. v. Barr Laboratories; Eli Lilly & Co. v. Barr Laboratories; GlaxoSmithKline Beecham Corp. v. Synthon Pharmaceuticals, Ltd., and In re Basell Poliolifine, Italia S.p.A., 547 F.3d 1371 (Fed. Cir. 2008).

Prior Work Experience

Prior to joining Loeb & Loeb LLP, Mr. MacRae was a partner at Bryan Cave LLP.

Publications/Speeches

Moderator, ACI Paragraph IV Disputes (April 24-25, 2012)
Presenter, "Getting the Most out of Your Method of Use Claims and Use Codes," NJIPLA 25th Annual Pharmaceutical / Chemical Patent Practice Update, Iselin, New Jersey (December 7, 2011)

St. John's University, M.S., Organic Chemistry, 1999

St. John's University School of Law, J.D., 1992

St. John's University, B.S., 1985, cum laude, with honors in Chemistry

New York
United States Patent and Trademark Office

U.S. Supreme Court
U.S. Court of Appeals, Federal Circuit
U.S. District Court for the Eastern District of New York
U.S. District Court for the Southern District of New York
U.S. District Court for the Western District of New York

This Web site may constitute "Attorney Advertising" under the New York Rules of Professional Conduct and under the law of other jurisdictions.
Your use of our Web site or its facilities constitutes your acceptance of the Terms of Use and Privacy Policy, which are accessible in the link at the bottom left of this page.