Troy A. Groetken

Troy has over 28 years of legal experience in the intellectual property field and more than 30 years of technical experience in the pharmaceutical, biotechnological, and chemical fields. He is recognized in IAM’s Strategy 300: The World’s Leading IP Strategists, Patent 1000: The World’s Leading Patent Professionals, and has been listed as one of the Best Lawyers in America since 2012.

A registered U.S. patent attorney, Troy is known globally as a “go-to” intellectual property attorney for Fortune 100 and 500 clients, assisting them on complex intellectual property matters and strategic global patent portfolio development, implementation, positioning, and enforcement. Troy also advises clients regarding the acquisition, divestiture, and licensing of core and non-core intellectual property assets. In addition, he is a thought leader with respect to patent portfolio due diligence analyses, global portfolio coordination (e.g., coordination of complex U.S. reexamination or reissue proceedings with European, Asian, and Australian appeals, cancellation, nullity, and/or opposition proceedings), and advanced U.S. Patent Office procedural issues (e.g., strategic use of inter partes review and post-grant review practice).

Troy counsels domestic and foreign clients on a broad range of technical disciplines in the chemical, pharmaceutical, and biotechnological arts. Areas include new drug entities (small-molecule, protein, recombinant, combinatorial technologies, assay, etc.), diagnostics, biological molecular technologies, API development and positioning, generic pharmaceuticals, biosimilars, pharmaceutical conjugates, vaccines, cancer therapeutics, CAR-T technologies, mRNA technologies, antibody technologies, surfactant technologies, biomechanical and membranous materials, food science technologies (human and animal), agricultural compositions, gellants, polyols, lubricants, coatings, elastomers, sealants, adhesives, construction products (interior and exterior), biocides, medical devices, drug delivery formulations and systems, drug storage and logistical systems, including RFID technologies, laundry and cleaning products, inorganic and organic synthesis products, pharmaceutical supplements, Big Data and artificial intelligence (within the pharmaceutical, life science, precision clinical therapy, and logistical intellectual property spaces), personal care and cosmetic formulations, oil and gas technologies, alternative fuels, fuel cells, and renewable energies, among others.

Prior to practicing patent law, Troy worked as a clinical consultant pharmacist, supervised drug research programs in coordination with the FDA, evaluated drug management protocols, and performed drug treatment trials on behalf of various hospitals, research institutions, and drug companies.

• WR Meadows, Inc. -Acquisition and Development of Trademark Portfolio for European Market for Precon and Mel-Roe Precon Products – 2025
• Preferred Law Firm IP Provider for Danaher Corporation and several operating companies thereof, 2024-2025
• Transition of IP Portfolio for KemPharm, to Zevra, Inc. with Rare Disease and Orphan Drug Focus, 2024-2025
• Strategic Intellectual Property Assistance, Orange Book Listing, PTE extension and FDA Approval Support for rare disease drug, Arimoclomol – FDA approved 2024
• WR Meadows, Inc. – Development of Innovation Program and new Innovation Center (2019 – present), Acquisition of Gemite^® products and IP portfolio – 2021
• BioNTech – Strategic IP U.S. positioning with respect to COVID-19 vaccines (2019 – present)
• Beckman Diagnostics, Inc. – Strategic IP positioning of COVID-19 diagnostics (2019- present)
• KemPharm, Inc. – Portfolio development, U.S. commercial launch, and global licensing program of Azstarys^®
• Chiesi Farmaceutici p.A. v. Mesoblast International Sari, Patent No. 2298863 (05/03/2016) Subject: Mesenchymal stem cells
• Desmond Mark Chapman v. Osiris Therapeutics, Case No. T 1147/15-3.3.08 (07/09/2015) Subject: Mesenchymal stem cells
• Fatigue Fracture Technology, LLC Navistar, Inc., Case No. 15-cv-5667, (06/25/2015) Subject: Fracturing technology
• Kavin Associates, P v. Duo-Gard Industries, Inc., Case No. 15-cv-2058, (03/09/2015) Subject: Roofing technology
• Polyguard Products, v. Meadows, Inc. (02/28/11 – 03/2012) Subject: Sealant-based product and process
• Strawman Limited v. Osiris Therapeutics, (European Opposition) (2012) Subject: Joint Repair Using Mesenchymal Stem Cells
• Shire LLC Travis C. Mickle, Ph.D. and KemPharm, Inc. (09/29/10- 05/12/12) Subject: Pharmaceutical conjugates
• Cognate Therapeutics; Harvey Vaughan John Adams v. Osiris Therapeutics, Inc. (European Opposition) (2008) Subject: Muscle regeneration using stem cells
• Akzo Nobel Stepan Company (European Opposition) (2006)

Publications

• Featured in “How Can Firms Avoid Falling Into GSK-Teva ‘Skinny Label’ Trap?” Generics Bulletin, 6, 2021.
• Quoted in “Arthrex Ruling Leaves Attys Eyeing USPTO for Guidance,” Law360, June 21,2021.
• A Conversation with Troy Groetken and Outsourced Pharma about “What Happens When IP is Redistributed? CDMOs Without Borders,” May 24, 2021.
• Quoted in “Did You Vote to Give Your IP Away?” Outsourced Pharma, May 19, 2021.
• Featured in “Why focusing on the quantity of pharma innovation is misleading,” Drug Discovery & Development, 23, 2021.
• Featured in “Why Big Tech is offering Biden help with COVID-19 vaccination,” Pharmaceutical Processing World, 17, 2021.
• “Three cases that changed the patent disclosure landscape of proteins,” Drug Discovery & Development, 15, 2020.
• “The Critical Importance of Patent Protection for Diagnostics in the COVID-19 Era,” MODI, 19, 2020.
• “Rethinking the Way We Patent Diagnostics,” IP Watchdog, 13, 2020.
• Thought Leader: “Troy Groetken on Patents,” lawyer-monthly.com, LM77-16, 87, Oct. 4, 2016.
• “Inter Partes Review, Development and Procedures,” Today’s General Counsel, 12, No. 1, Feb/Mar 2015.
• “An alternative litigation strategy: ADR + IPR,” InsideCounsel.com, March 26, 2014.
• “Should the Supreme Court address claim construction in patent cases?” InsideCounsel.com, March 12, 2014.
• “Sufficiency of disclosure and the great divide between the S. and Europe,” InsideCounsel.com, Feb. 26, 2014.
• “The perfect storm that led to the rise of design patents,” InsideCounsel.com, Feb. 12, 2014.
• “Can personalized medicine survive Prometheus?” InsideCounsel.com, 29, 2014.
• “Is Patent Reform, Round II a bad idea?” InsideCounsel.com, Jan. 15, 2014.
• “Using Patents as a Business Asset in Today’s Economy,” Life Science Leader, July 2011.

Presentations

• Speaker and Program Creator, “Modern Ethics for In-house Counsel,” Tesla Corporation, Virtual Webinar to Company Legal In-house Membership, March 17, 2025.
• Moderator and Program Creator, “Ethical Considerations for In-house Counsel,” Consero’s Life Sciences Forum, Boston, MA, March 13, 2025.
• Speaker and Program Creator, “Intellectual Property Basics,” International Food Technologies, Virtual Webinar to Membership, Jan. 14, 2025.
• Speaker and Program Creator, “Understanding the Impact of the FTC Non-Compete Rule,” Presented to Corning Legal Membership, Corning, Incorporated, Corning, NY, December 10, 2024.
• Moderator and Program Co-creator, “Mind the Gap: Between the US and UK Advocacy,” Richard Linn Inn of Court, Chicago, Nov. 14, 2024.
• Speaker, “Artificial Intelligence and Precision Healthcare,” BIO International Convention 2022, San Diego, CA, June 15, 2022.
• Moderator, “Out of Monumental Challenges Come Substantial IP Opportunities,” Consero’s IP Virtual Forum for Life Sciences, Dec. 7, 2021.
• Moderator, “Trade Secret Programs: From Setup to Enforcement,” Consero’s IP Virtual Forum for Life Sciences, Dec. 5, 2021.
• Panel Leader, “Navigating the Life Sciences IP Landscape,” IPBC Connect Life Sciences Panel, Sept. 29, 2021.
• Presenter, “Inflection Point: IP Innovation, Collaboration, and Enforcement at this Stage of the Pandemic,” Association of Medical Diagnostic Manufacturers (AMDM) Quarterly IVD Diagnostics Sector, June 22, 2021.
• Moderator, “Lessons from COVID on Innovation, Collaboration & Enforcement,” BIO Digital 2021, June 15, 2021.
• Moderator, “Discussing the Regulatory Climate in Light of the Pandemic,” Consero’s IP Virtual Forum for Life Sciences, June 7, 2021.
• Event Founder/Director, Sixth Annual Symposium on IP, “Critical Updates Into The Ever-Changing Landscape of Patentability and Patent Enforcement,” McAndrews, Held & Malloy, Ltd, Sept. 29, 2016.
• Moderator, “Practical Insights Regarding IPR and PGR Practice” and “Best Practices: PGR Procedures, U.S. and Foreign Venues” – 2016.
• Event Founder/Director, Fifth Annual Symposium on IP, “Practical Insights Into The Ever-Changing Landscape of Patentability and Patent Enforcement,” McAndrews, Held & Malloy, Ltd, June 11, 2015.
• “Strategic U. Patent Portfolio Development,” IP Management Seminar, ZSP Patentanwalte PartG mbB, Munich, Germany, March 19, 2015.
• “Best Practices Regarding Patent Prosecution Under 35 U.C. § 101,”S. and Foreign Venues – 2015.
• “Best Practices: IPR Procedures, ”S. and Foreign Venues – 2015.
• “ITC litigation in the USA,” 2014 Global IP & Innovation Summit, Shanghai, China, Sept. 3, 2014.
• Event Founder/Director, Fourth Annual Symposium on IP, “Critical Updates Into The Ever-Changing Landscape of Patentability and Patent Enforcement,” McAndrews, Held & Malloy, Ltd., July 24, 2014.
• “Best Practices With Respect to U.C. § 112,”S. and Foreign Venues- 2014.
• Event Founder/Director, Third Annual Symposium on IP, “Strategic and Practical Approaches to Intellectual Property: Where Law and Business Intersect,” McAndrews, Held & Malloy, Ltd, October 17, 2013.
• Panelist, “AIA: To Litigate at the Patent Office or Not,” and “Best Practices: Controlling Litigation Costs,” S. and Foreign Venues – 2013.
• Event Founder/Director, Second Annual Symposium on IP, “Developments In US and EP Intellectual Property Practice and Law,” McAndrews, Held & Malloy, Ltd, July 26, 2012.
• “U.S. Patent Reform: A Major Update,” Numerous U.S. and European venues- October-November 2011 and May 2012.
• “KSR – Practical Approaches,” American Intellectual Property Law Association (AIPLA) Roadshow, June 23, 2011.
• “Biosimilars Legislation in the U.,” S. and EPO Patent Law Update Symposium, Chicago, May 19, 2011.
• “Biosimilars Legislation in the U.S.,” U.S. and EPO Patent Law Update Symposium, Munich, May 3, 2011.