Sheila Swaroop

Partner

Orange County

949-760-0404

sheila.swaroop@knobbe.com

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Overview

Experience

Recognition

Resources

For nearly two decades, Sheila Swaroop has served as a passionate advocate and formidable litigator representing businesses of all sizes, ranging from small, fast-growing companies to major, established brands and market leaders. Her industry experience and technological know-how is extensive, and includes life sciences, pharmaceuticals, medical and dental devices, and consumer goods. A registered patent attorney, Sheila advises on pre-litigation strategy and enforcement, as well as the litigation of disputes through trial and appeal in district court, the International Trade Commission (ITC) and the Patent Trial and Appeal Board (PTAB).

Regardless of the size or complexity of the dispute, Sheila’s dedication to devising the right approach to problem-solving, either on attack or defense, has resulted in a favorable track record of success both in and out of court. Sheila understands how the court system works as both a litigator and having previously worked for a judge. She is personally committed to “the win,” and feels a sense of ownership in achieving the right result for her clients.

Tenacious and responsive, Sheila makes a point of knowing the facts and details of every claim in order to create an advantage for her clients. Because she has served as both plaintiff’s and defendant’s counsel, Sheila offers a holistic point of view when identifying the strengths and weaknesses of a case and then presenting the most effective argument. Because her client’s business objectives ultimately drive the litigation strategy, Sheila is reasonable, and her approach to advocacy and negotiation supports the settlement process if and when appropriate.

Sheila’s litigation skills are demonstrated by her tangible experience before the International Trade Commission (ITC). When representing the patent owner, Sheila was able to block an infringing competitor’s products from entering the U.S. for her client, one of the world’s largest dental implant manufacturers. On defense, Sheila helped to obtain dismissal of an ITC case prior to trial on behalf of a medical device client. Sheila’s ability to manage complex litigation issues on an expedited time frame are supported by her first-hand knowledge of the unique rules, regulations and procedural aspects of the ITC.

Sheila is a founding member and current President of the Howard T. Markey Intellectual Property Inn of Court. In addition, she previously served as a member of the Ninth Circuit Judicial Conference, a board member of the Orange County chapter of the Association of Business Trial Lawyers, and a former President of the South Asian Bar Association of Southern California.

Clerk Experience

Law clerk to the Honorable Saundra Brown Armstrong, U.S. District Court, Northern District of California, 1999-2000
Judicial extern to the Honorable Gary L. Taylor, U.S. District Court, Central District of California, 1997

Education

University of California - Berkeley (CAL) (J.D., 1999)

Harvard University (B.A. Biology, 1996), cum laude

University of California - Berkeley (CAL)

Harvard University

State Bar of California

U.S. Court of Appeals for the Federal Circuit

U.S. District Court - Central District of California

U.S. Patent and Trademark Office

Aesthetics & Personal Care Products

Biosimilars

Biotechnology

Medical Devices & Procedures

Pharmaceuticals

Practice Areas

Consumer Products Litigation

Appellate Litigation

Hatch-Waxman Litigation

ITC Litigation

Medical Device Litigation

Trade Secret & Employment Mobility Litigation

Trademark & Brand Protection Litigation

Patent Office Litigation

In re Certain Sleep Disordered Breathing Treatment Systems and Components Thereof, USITC Inv. No. 337-TA-1022 (ITC 2017).

Represented Fisher & Paykel Healthcare in action before the International Trade Commission relating to patient interfaces for sleep apnea therapy. After favorable evidentiary ruling for Fisher & Paykel Healthcare, patentee unilaterally withdrew its complaint and terminated the investigation. 82 Fed. Reg. 27724.

In re Certain Dental Implants, USITC Inv. No. 337-TA-934 (ITC 2016).

Represented Nobel Biocare in the United States International Trade Commission in investigation based on two patents. Obtained order excluding imports of competitor’s products. Obtained Rule 36 summary affirmance by the Federal Circuit in July 2017.

mophie v. Shah, et al., SA-13-CV-01321-DMG (C.D. Cal.).

Obtained jury verdict of willful infringement, a permanent injunction and damages of $4.5 million for mophie in lawsuit for trademark, trade dress, and copyright infringement relating to infringing battery cases for smartphones.

iCeutica Pty Ltd. and Iroko Pharmaceuticals, LLC v. Lupin Ltd. and Lupin Pharmaceuticals, Inc., Case No. 14-cv-01515 (2017).

Represented the Lupin defendants in a patent infringement action in the District of Delaware on patents relating to diclofenac acid (the active ingredient in Iroko’s Zorvolex® product). Achieved favorable case-dispositive settlement for client.

Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359 (Fed. Cir. 2016).

Represented Illumina and obtained affirmance of IPR final written decision upholding the validity of all challenged claims from a patent directed to DNA sequencing-by-synthesis.

Nobel Biocare USA LLC et al. v. Technique D’Usinage Sinlab, SA-12-CV-730-LMB (E.D. Va.).

Represented Nobel Biocare in DJ action of non-infringement and invalidity of patents relating to guided dental surgery and computer-assisted planning of dental implant overdenture bars. Obtained summary judgment of non-infringement six months after initiation of suit.

Represented Smith & Nephew at jury trial relating to patents on negative pressure wound therapy. Obtained favorable district court ruling of invalidity for obviousness.

Nobel Biocare USA, LLC et al. v. BlueSky Bio, LLC, SA-08-CV-1407-ODW (C.D. Cal).

Represented Nobel Biocare in action for patent and trademark infringement relating to dental implants and abutments. Obtained favorable Markman ruling. Case resolved by settlement.

Nobel Biocare USA, LLC v. Materialise, N.V., SA-07-CV-898-CJC (C.D. Cal.).

Represented Nobel Biocare in DJ action for non-infringement of the Nobel Guide guided dental surgery product. Obtained summary judgment of non-infringement, both literal and doctrine of equivalents. Case resolved by settlement.

Boss Industries, Inc. vs. Yamaha Motor Corporation, U.S.A., SA-05-CV-00422-DAK (D. Utah).

Defended Yamaha in patent litigation for snowmobile seats. Obtained favorable claim construction leading to summary judgment of non-infringement. Affirmed on appeal. 333 Fed. Appx. 531 (Fed. Cir. 2009).

Alltech, Inc. v. Cenzone Tech, Inc., et al., SA-06-CV-0153-RM (S.D. Cal.).

Represented patent owner Alltech in action for patent infringement on compositions and methods for combating mycotoxins in animal feed. Obtained summary judgment of infringement, and summary judgment dismissing a defense of invalidity and dismissing an antitrust counterclaim. The parties settled their dispute shortly before trial under confidential terms, with the defendant agreeing to pay an undisclosed sum to Alltech.

Represented manufacturer of bottle-inspection equipment accused of patent infringement. After jury trial and verdict of infringement, defeated claims for damages and injunction. All claims for infringement were defeated after appeal.

Pfizer Inc. v. Ranbaxy Labs. Ltd., 457 F.3d 1284 (Fed. Cir. 2006).

Represented defendants in patent infringement action in the District of Delaware on two patents relating to atorvastatin calcium (the active ingredient in Pfizer’s Lipitor® product). On appeal following a two-week bench trial, the Court of Appeals for the Federal Circuit invalidated the later-expiring patent

Represented patent owner Specialized and obtained award of treble damages, permanent injunction, and attorneys’ fees.

Specialized Bicycle Components, Inc. v. Scott USA, Inc., 2005 WL 1865409 (N.D. Cal. 2005).

Represented patent owner Specialized and defeated summary judgment sought by defendant.

VP Intellectual Properties, LLC v. Nobel Biocare USA, Inc. et al., SA-99-CV-3136-JLL (D.N.J.).

Defended Nobel Biocare in action for patent infringement relating to dental implants and abutments. Case resolved by settlement.

In the Matter of Certain Personal Watercraft and Components Thereof, USITC Inv. No. 337-TA-452 (ITC 2001).

Represented patentee Yamaha in Section 337 investigation of personal watercraft accused of infringing eleven patents. Case settled on favorable terms after four-week bench trial.

Awards & Honors

Sheila has received multiple awards for her accomplishments:

Selected by peers for inclusion in The Best Lawyers in America® for her work in intellectual property litigation (2018 - 2022) and patent litigation (2023)
Selected for inclusion in the 2017 - 2021 "Southern California Super Lawyers" lists for her work in intellectual property litigation by Super Lawyers magazine
Named a 2018 and 2022 "Life Science Star" for Patent Litigation in the Legal Media Group's (LMG) "LMG Life Sciences" Guide
Named to the Daily Journal's list of 2017 "Top IP Lawyers in California"
Named one of the "Top Women Attorneys in Southern California" by Super Lawyers from 2012 to 2015
Consistently named as one of Southern California's "Rising Stars" in intellectual property law in yearly surveys of her peers published by the Los Angeles magazine and Super Lawyers magazine (2005-2016)

Articles

Sheila Swaroop and Jonathan Bachand, Issue Preclusion at the ITC: New Developments for Trademark-Based Claims, Knobbe Martens Firm Alert (August 2019)

Sheila Swaroop and Jonathan Bachand, "Four New Rules at the ITC That Patent Litigators Need to Know," Knobbe Martens Litigation Blog (June 2018)

Sheila Swaroop and Kaitlin Heinen, "Recent Trends in ANDA Litigation," Pharmaphorum (December 2016).

"Intellectual Property Issues Under the Trans-Pacific Partnership," Orange County Business Journal (November 2015) and Biosimilar Development (December 2015).

"Boundaries of BPCIA Patent Exchange Get Tested in Court," The Recorder (May 2015).

Sheila Swaroop and Carol Pitzel Cruz, “Patent Licensing Considerations for Biologics under the BPCIA,” Journal of Commercial Biotechnology, Vol. 19, No. 3 (July 2013).

John Sganga and Sheila Swaroop, Intercompany Agreements: Don't Forget Your IP Rights and Obligations, Orange County Business Journal (June 2011).

Himanshu Singh and Sheila Swaroop, "Forest Group and Solo Cup: Recent Developments in Patent Marking Litigation," NASABA IP Newsletter, Vol. 2, Issue 1 (June 2010).

Milan Kapadia and Sheila Swaroop, "Accelerated Examination and the PTO: A New Avenue for Quicker Patent Grants," NASABA IP Newsletter, Vol. 2, Issue 1 (June 2010).

"Overcoming Infringement Claims for Off-Label Use Patents: Recent Guidance from the Federal Circuit," BNA Pharmaceutical Law & Industry Report, Vol. 1, No. 22 (June 13, 2003).

The Surprising Uses of Prior Settlement Negotiations Under FRE 408. Association of Business Trial Lawyers Report (May 2002).

Speeches & Seminars

Panelist, "Latest Business Initiatives and Their Legal Implications," ACI Women Leaders in Life Sciences Law, Boston, MA (July 2018).

Panelist, "Retaining Women in the Workplace," ACI Women Leaders in Life Sciences Law, Boston, MA (July 2017).

Panelist, "Examining the ITC as an Alternative Forum in an ANDA Challenge", ACI Paragraph IV Disputes, New York, NY (April 2017).

Panelist, "BPCIA Litigation: Latest Developments for 2015 and Beyond," The Knowledge Group Live Webcast (September 2015).

Panelist, "Incorporating Inter-Partes Review and New USPTO Procedures Into Branded and Biosimilar Litigation Strategies," ACI Biosimilars Conference, New York, NY (June 2015).

Panelist, "Preparing for Biosimilars: Key Points for Participating in the U.S. Regulatory Framework," Knobbe Martens Webinar Series (July 2013).

Panelist, "Exploring Opportunities to Strengthen Your Patent Portfolio Through Licensing," ACI Biosimilars Conference, New York, NY (June 2013).

Panelist, “Preparing Your Medical Device Portfolio For Litigation,” ACI Medical Device Conference, Chicago, IL (March 2013).

Panelist, "Timing is Everything: A Checklist to Ensure Preparedness for Litigation," ACI Biosimilars Conference (May 2012).

Sheila Swaroop and Carol Pitzel Cruz. Preparing for Litigation Under the Biosimilars Act. IP Impact - Seattle 2012: Innovative Intellectual Property Litigation Strategies. Seattle, WA (February 29, 2012).

Panelist at Berkeley Center for Law and Technology Conference on Improving the USPTO-District Court Interface (June 2011).

International Perspective on Trade Secrets. North American South Asian Bar Association National Conference. Los Angeles, CA (June 2011).

John Sganga, Jacqueline Collins, and Sheila Swaroop. The Impact of Corporate Structures on IP Enforcement. Seminar for California State Bar In-House IP Counsels Committee (March 2011).