Nagendra (Nick) Setty

Mr. Setty is a partner and a co-chair of the Intellectual Property practice group in the firm's Palo Alto and San Francisco offices.

Mr. Setty has an international practice representing leading global businesses such as Bank of America, Cipla, Cisco, EchoStar, Landis + Gyr, LG, McKesson, Samsung, Siemens and Verint.  His practice focuses on litigating jury, bench and arbitration trials in patent, trademark, trade secrets, and copyright cases.  Over the past 20 years, he has served as lead counsel in more than 120 IP cases, spanning a broad range of technologies.  Mr. Setty is a frequent lecturer and author on IP related topics, and is recognized for his IP litigation expertise in Chambers USA. 

Mr. Setty has extensive experience with chemical, pharmaceutical, and mechanical technologies, including anti-HIV therapeutics, antibiotics, cardiac therapeutics, fine and industrial chemicals, large-scale manufacturing equipment, ophthalmic pharmaceutical formulations, pesticides, and polychlorinated biphenyl (PCB) remediation.

Education

• J.D., Emory University School of Law, 1992
• B.S., Emory University, 1987

Admissions

• Georgia
• United States Patent and Trademark Office

Merial LTD and BASF Agro BV v. Cipla Limited, Velcera, Inc., Fidopharm, Inc. (Fed. Cir. 2011; M.D. Ga. 2011, Land, J.) – Trial and appellate counsel for Cipla, largest Indian pharma, in dispute involving patent infringement and contempt issues concerning veterinary products containing fipronil and methoprene; assumed case on appeal and for post-contempt remedies issues.

Bayer Healthcare LLC v. Cipla Limited et al. (S.D.N.Y. 2011, Castel, J.) – Lead counsel for Cipla in dispute involving veterinary products containing imidacloprid and permethrin.

Bio-Kor Metics, LTD. v. Five Star Formulators, Inc., (N.D. Cal. 2010, Armstrong, J.) – Lead counsel for trademark owner Bio-Kor in counterfeiting and trademark infringement matter involving CHRISTINA line of spa and high end cosmetics and treatments.

Pieczenik v. Shionogi Pharma (D.N.J. 2010, Pisano, J.) – Lead counsel for Shionogi in multi-defendant litigation involving genetically modified cell lines and monoclonal antibodies.

Shionoghi Pharma, Inc. v. Mylan Pharmaceuticals, Inc. (D. Del. 2007; Sleet, J.) – Lead counsel for Shionoghi (Sciele) in pharmaceutical patent infringement case involving Sular®; case resolved favorably.

American Combustion, Inc. & American Air Liquide, Inc. v. Process Technology, Inc., 1:97-CV3299-CC (N.D. Ga. 1998) (Cooper, J.) - Lead counsel for ACI in complex patent litigation involving two patents and trade secrets in the field of combustion systems and burner designs used in electric arc furnaces; obtained favorable Markman ruling through special master that court adopted after reconsideration by master; settled favorably in 2002.

Ciba Vision Corp. v. Alcon Laboratories, Inc. 1997 WL 667942 (N.D. Tex. 1997) - Represented defendant Alcon (ophthalmic product subsidiary of Nestle) in complex pharmaceutical patent infringement matter involving non-steroidal anti-inflammatory drugs (NSAIDs), against subsidiary of Novartis; persuaded court to expedite resolution due to delay on final FDA drug approval; won summary judgment on all claims on eve of trial leading to highly favorable settlement before Federal Circuit argument.

Smith & Nephew, Inc. v. Howmedica, Inc., CV 97 2811 DV (W.D. Tenn. 1997) - Represented plaintiff in complex patent infringement matter eventually involving six patents directed to orthopedic products such as femoral nails, total knee replacement systems, and coatings.

Recycling Sciences, Inc. v. Roy F. Weston, Inc. Civil Action No. 95 C 4422 (N.D. Ill. 1995) – Represented defendant Weston in patent litigation involving methods of removing polychlorinated biphenyl compounds (PCBs) from contaminated soil and sludge.

Scandipharm, Inc. v. Glycomed, Inc. 94-1075-A (E.D. Va. 1995) - Represented Scandipharm in complex patent infringement/trade secrets action involving partially desulfated heparin compositions therapeutic in treating cystic fibrosis.

Novamax, Inc. v. Southern Industrial Chemicals, Inc. (N.D. Ga. 1995; Shoob, J.) - Trial counsel for defendant on trade secrets and contempt issues concerning industrial chemicals and formulae.

Honors

• America's Leading Business Lawyers, Chambers USA, 2004 - 2010
• Georgia Super Lawyers, Super Lawyers, 2004 - 2011
• Georgia's Legal Elite, Georgia Trend Magazine, 2006 - 2008

Memberships

• APAA (Asian Patent Attorneys Association)
• NASABA (North American South Asian Bar Association)
• NAPABA (National Asian Pacific American Bar Association)
• Atlanta Bar Association
• State Bar of Georgia
• INTA (International Trademark Association)

Articles

• Sheppard Mullin Snags Fish & Richardson IP Litigator, Law360, October 18, 2011
• "A Review of Recent Intellectual Property Damages Developments," coauthor, paper presented at Fifteenth Annual IP Institute, State Bar of Georgia Conference and the PLI Patent Litigation Conference, Atlanta Georgia (2009).
• "Enablement and Written Description - Sometimes Forgotten and Often Confused Defenses to Patent Infringement," 841 PLI/Pat 399, Patent Litigation (2005).
• "Knorr-Bremse: Step One Toward Overhaul," ABA IPL Newsletter, 22:2, 3-4 (2004).
• "Claim Construction - Is There a Perfect Path?" ABA IPL Newsletter, 22:4, 4-5 (2004).
• "Protective Orders and Other Devices for Protecting Source Code and Sensitive Technical Information in Litigation," coauthor, paper for Third Annual Conference on IT Litigation, Law Seminars International, Atlanta, Georgia (2003).
• "Markman Strategies Post-Festo," 18th Annual ABA Intellectual Property Conference, Washington, D.C. (2003).
• "Cracking the Code - Protective Orders and other Confidentiality Tools in IT Software Litigation," coauthor, paper presented at Second Annual Conference on IT Litigation, Law Seminars International, Atlanta, Georgia (2002).
• "The Festo Case - Choosing Between Certain Unfairness and Uncertain Fairness," Issue of Technology Law Newsletter, State Bar of Georgia (2002).
• "In Search of the Ideal Scheduling Order - Timing and Sequence of Key Events in Patent Litigation," coauthor, paper presented at The Fifth Annual Intellectual Property Litigation, Law Seminars International, San Francisco, California (2001).
• "Proving Patent Damages At Trial: A Review of Recent Patent Damages Decisions and An Update on the Proper Use of Financial Expert Testimony," coauthor, 669 PLI/Pat 719 (Patent Litigation) (2001).
• "In Search of the Ideal Scheduling Order - Timing and Sequence of Key Events in Patent Litigation," coauthor, paper presented at Patent Litigation, Law Seminars International, Atlanta, Georgia (2001).
• "Proving Patent Damages At Trial: A Review of Recent Patent Damages Decisions and An Update on the Proper Use of Financial Expert Testimony," coauthor, 619 PLI/Pat 755 (Patent Litigation) (2000).
• "Effective Use of Opinions of Counsel in Patent Litigation," paper presented at Litigating Patent Disputes, American Conference Institute, Washington, D.C. (2000). 

Speeches

• “Protecting Your Intellectual Property,” TIE Vista Summit (Atlanta, 2011)
• “The Litigator’s Perspective,” AIPLA 2011 Mid-Winter Institute – Patent Reform (Orlando, 2011)
• “What Israeli Companies Really Need to Know About IP in the US” (Israel, 2011)
• “Direct and Cross Examination of Damages Witness,” Practicing Law Institute (PLI) – Patent Litigation (Atlanta, 2010)
• “Current Issues in Patent Damages," New York State Bar IP Institute (New York, 2010)
• “Current Issues in Patent Marking,” American Conference Institute (ACI) (Webinar, 2010)
• “Mock Markman Hearing,” NASABA – South Asian Bar (Boston, 2010)
• “Litigating Patent Disputes – Current Issues in Patent Damages,” The Daily Journal (San Jose, 2010)
• “Current Issues in Patent Damages,” University of Virginia School of Law (Charlottesville, 2010)
• “In re Bilski – Practical Implications,” Bar Ilan University (Tel Aviv, 2010)
• "Patent Marking after Bon Tool,” Georgia State University School of Law (Atlanta, 2010)
• “IP Issues for the Israeli-American Company,” American Israeli Chamber of Commerce (Atlanta, 2010)
• “Patent Marking After Bon Tool,” Southeastern Medical Device Association (SEMDA) (Atlanta, 2010)
• "How to Develop Business," MCCA Annual Meeting, New York (November 19, 2008)
• "Outlook for Patent Litigation in 2009," State Bar of Georgia 14th Annual IP Law Institute (November 13, 2008)
• "Demonstration of a Direct and Cross Examination of an Invalidity Expert," PLI Patent Litigation 2008, Atlanta (November 10-11, 2008)
• "The Court Keeps an Eye Over Its Shoulder," Federal Circuit Year in Review: 2007-2008, Shearn Delamore & Co., 2008 Intellectual Property Conference, Kuala Lumpur - Malaysia (November 2008)
• "Recent Developments in Patent Litigation," presenter, PLI Patent Litigation (2007; co-chair)
• PLI "Patent Litigation," (2008; co-chair)
• "Alternative Dispute Resolution in Patent Litigation," co-chair, LSI Patent Litigation (2005)
• "Phillips v. AWH," NAPABA Annual Meeting, Chicago (2005)
• "Patent Law Reform," LSI Botechnology Conference, Seattle (2005).
• "Written Description and Enablement Defenses in Patent Litigation," PLI Patent Litigation, Atlanta (2005)
• "Hot Topics in Patent Litigation - Phillps v. AWH, Merck v. Integra and Patent Law Reform," ABA Annual Meeting, Chicago (2005)
• "The Art and Science of Business Development," National South Asian Bar Association - National Conference, Santa Monica (2004-2007)
• "Law Seminars International Presents - Opening Moves in Patent Disputes," Atlanta (2004)
• "Early Stages of Patent Litigation," co-chair, Law Seminars International, counsel in a Mock Markman Hearing, Atlanta (2004)
• "How to Prepare for and Conduct Markman Hearings," speaker, Claim Construction from the Appellate Perspective, Practicing Law Institute Program, Atlanta (2004)