110 North Wacker Drive//Chicago, IL 60606-1511//United States
Zachary D. Miller focuses his practice on intellectual property litigation and has experience practicing in federal district courts, before the International Trade Commission, and before the US Court of Appeals for the Federal Circuit. Zach utilizes his chemical engineering background to provide litigation advice in a wide range of technologies, with an emphasis in pharmaceutical, biologic, and medical device matters. Zach distills these complicated technologies into simple concepts for easy comprehension by judges and juries.
Zach also conducts patent and trademark opinion work, counseling, and prosecution in a wide range of technologies, including pharmaceuticals, medical devices, high-tech, consumer products, and household fixtures, among others. He has experience in all phases of litigation—from pre-filing investigations and discovery through trial and appeal. He has been involved in patent, trade mark, trade secret, and copyright trials in multiple jurisdictions.
Zach uses his litigation experience to counsel clients and prepare opinions regarding patentability of inventions, validity of patents, and freedom-to-operate, as well as performing due diligence assessments to support mergers and acquisitions. He also counsels clients regarding requirements for marking products and product packaging under a variety of federal regulations—including the Fair Packaging and Labeling Act.
Additionally, Zach has cultivated a pro bono practice focused assisting authors, artists, musicians, and nonprofit companies obtain and protect their intellectual property rights.
Before joining Morgan Lewis, Zach was an associate in the intellectual property practice group of another global law firm. Prior to attending law school, Zach researched high temperature materials, including high-performance polymers and ceramics for use in aerospace and defense technologies.
A medical device respondent at the International Trade Commission in an unfair import (Section 337) dispute related to claims of trade secret misappropriation. After a five-day hearing, obtained an initial determination in favor of the client finding no violation of Section 337. After review, the commission entered a final determination of no violation
A pharmaceutical client at district court and the Federal Circuit in defense of allegations that its brand name prostate cancer treatment infringed three patents. Obtained early granting of a motion to dismiss two of the three patents. Achieved favorable claim construction rulings that resulted in the plaintiff stipulating to non-infringement of all remaining claims. Successfully achieved dismissal of the plaintiff’s appeal to the Federal Circuit
Defendant in pharmaceutical litigation related to heartburn medication. After an eight-day jury trial, secured judgment as a matter of law that client’s generic heartburn medication did not infringe the asserted patent. Successfully obtained affirmance of the non-infringement judgment at the Federal Circuit
Plaintiff in the District of Delaware related to a pharmaceutical cream for the treatment of bacterial infections. Secured favorable settlement for the client prior to trial
Pharmaceutical defendants in Hatch-Waxman litigation allowing entry of generic products into the market
Plaintiff in a breach of contract dispute involving medical research funding agreements relating to the development of gene therapy technology; obtained favorable settlement terms
Pro bono copyright plaintiff in the Northern District of Illinois. On appeal, client was awarded damages for copyright infringement and attorney fees
Pro bono copyright plaintiff in obtaining statutory damages and attorney fees on the basis of a pre-trial motion in the Norther District of Illinois
Conducted due diligence analysis of intellectual property assets in corporate life science acquisitions, including evaluation of assets in the midst of litigation and post-grant challenges
Awards and Affiliations
Member, Practice Group of the Year, Intellectual Property, Law360 (2019)
Member, Litigation Department of the Year–Intellectual Property, The American Lawyer (2019)
Member, Intellectual Property Law Association of Chicago
Member, American Institute of Chemical Engineers
Duke Forum for Law & Social Change, Senior Executive Editor (2013–2014)
Duke Law & Technology Review (2012–2014)
Member, Tau Beta Pi, Engineering Honor Society
US Court of Appeals for the Federal Circuit
US District Court for the Northern District of Illinois
Duke University, 2014, J.D.
University of Notre Dame, 2011, B.S., Chemical Engineering, magna cum laude