Skip to main content

Understanding Patent Law 2013


Speaker(s): Charles A. Weiss, Christopher M. Tobin, Eric Huang, Jane T. Gunnison, John M. Hintz, Marta E. Gross, Sarah Angela Solomon
Recorded on: Jun. 28, 2013
PLI Program #: 41875

Related Practices:  Intellectual Property  Licensing  Patent Litigation  Litigation and Dispute Resolution Pharmaceutical, Biotechnology and Medical Device Industries  Healthcare & Life Sciences

 

Charles A. Weiss is a partner in Holland & Knight's New York office and head of the New York Intellectual Property Group. He concentrates his practice on technology-driven litigation, counseling and transactions, primarily in the pharmaceutical, chemical and biotechnology areas. He also counsels clients on questions of patent validity and infringement, and provides a litigator's perspective on prosecution matters.

Mr. Weiss litigates patent, trade secret, license and false advertising cases in diverse technical areas. He has handled cases over the years involving expression of recombinant proteins and antibodies, controlled release pharmaceuticals, medical diagnostic agents, endocrine and hormone products, nutritional supplements, industrial control systems, food chemistry, nucleic acid diagnostic assays and commercial detergents. He also has extensive experience in the investigation of product counterfeiting and pursuit of those responsible.

In addition, Mr. Weiss has a diverse non-litigation practice focused on supporting transactions in which a substantial value is attributed to a party's patent position, such as its ability to exclude competitors or to bring its product to market free of meritorious infringement claims by others. He negotiates and drafts licenses and other agreements, including commercial collaboration, joint research and product acquisition agreements, and regularly advises financial professionals on the strength or vulnerability of a target company's patent positions.

Mr. Weiss also has experience in commercial matters, including corporate and securities transactions, contract litigation, insurance and banking disputes, construction litigation, accounting and attorney malpractice, and investigations of employee malfeasance and fraud. Mr. Weiss is an associate adjunct professor at Brooklyn Law School, where he designed and teaches a course on food and drug law.

Mr. Weiss has been recommended in Intellectual Asset Management (IAM) Patent 1000 since 2011. In 2015, it wrote: "Holland & Knight's Charles Weiss retains his silver-tier litigation ranking this year and also moves up the highly recommended level for patent transactions. 'Across all areas, he stands out consistently for his business-savvy approach, his ability to act as a part of your in-house team  and his tenacity and credibility. His technical knowledge is amazing, too – he frequently impresses scientists with a grasp of what they consider to be esoteric or little-known concepts and he          never seems to forget anything once he’s learned it. He has a very wide and deep pool of litigation experience that he brings to bear in recognizing pitfalls and providing thoughtful, battle- tested solutions.'"

Honors & Awards

  • The Best Lawyers in America guide, Patent Law, 2013-2017
  • IAM Patent 1000, the World’s Leading Patent Professionals - Litigation, International Asset Management magazine, 2011-2015; IAM Patent Transactions, 2015.
  • Tau Beta Pi
  • Eta Kappa Nu

Publications

  • State Supreme Court Protects Trade Secrets from Disclosure in Litigation, Holland & Knight Alert, May 31, 2016

Memberships

  • American Bar Association, Section of Litigation, Section of Intellectual Property Law, Business Law Section
  • New York State Bar Association, Intellectual Property Law Section, Commercial and Federal Litigation Section
  • New York Intellectual Property Law Association, Amicus Briefs Committee
  • Federal Circuit Bar Association
  • Institute of Electrical and Electronics Engineers

Education

  • Columbia University Law School, J.D.
  • Washington University in St. Louis, BSEE, Electrical Engineering, Physics minor, cum laude

Bar Admissions

  • New York
  • New Jersey

Court Admissions

  • U.S. Patent and Trademark Office
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. Court of Appeals for the Second Circuit
  • U.S. Court of Appeals for the Third Circuit
  • U.S. Supreme Court


Christopher Tobin is a partner in Michael Best’s Intellectual Property Practice Group. Mr. Tobin’s practice focuses on patent prosecution and counseling, with an emphasis on high technology intellectual property matters.

Mr. Tobin has significant experience in patent preparation, prosecution, litigation and examination, as well as in post­grant procedures such as reexamination, Inter Partes Review and supplemental examination. He has also assisted clients with intellectual property portfolio management and assessment in relation to planned acquisition, due diligence related to portfolio acquisition and auditing of existing patent portfolios.

Mr. Tobin has experience with a wide variety of technologies related to the electrical and computer arts, including networks, display and imaging devices, electronic commerce, semiconductors, electrical circuitry and software.

Prior Work Experience

Mr. Tobin has previously worked as a patent examiner and senior patent counsel for a multinational corporation.

Professional Activities

  • Member, American Intellectual Property Law Association
  • Member, Institute of Electrical and Electronics Engineers

Honors and Recognitions

  • Named Client Service All­-Star by BTI Consulting Group, Inc. (2016)
  • IAM Patent 1000 (2014, 2015)
  • Community Involvement
  • Little League Baseball Coach (2003 - ­2009)
  • Youth Development League Basketball Coach (2004 - 2012)

EDUCATION

  • Villanova University School of Law, Juris Doctor (J.D.)
  • Villanova University, Bachelor of Science in Electrical Engineering (B.S.E.E.)

BAR ADMISSIONS

  • California
  • District of Columbia Pennsylvania
  • U.S. Patent and Trademark Office

RELATED LEGAL SERVICES


Eric Huang is a partner in Quinn Emanuel's New York office.  He represents both plaintiffs and defendants in intellectual property matters.  He specializes in building patent infringement cases on either side of the “v” in highly technical subject matter.  He has extensive experience litigating patent cases involving a wide range of technologies – smartphones, user interface software, touchscreen technology, circuits, semiconductor processing, spreading and modulation techniques used in wireless communication, various aspects of 3G and 4G cellular communications, error control coding including turbocodes and low density parity check codes, digital video compression, audio compression, pharmaceutical formulations, fiber optics, liquid crystal displays, mechanical measurement devices, electronic engine control, e-commerce, and computer systems.

His practice encompasses all aspects of case preparation, pre-trial discovery, expert preparation, trial preparation and trial in U.S. federal district courts and before the U.S. International Trade Commission.  He served as a trial counsel for respondent Samsung in ITC investigation 337-TA-796 initiated by Apple against Samsung's smartphones, tablets and media players.  The firm successfully defended against efforts to stop the importation of Samsung devices; to date, no Samsung device was excluded or seized as a result of any order from this investigation.  Eric recently helped secure a very favorable jury verdict for Marvell Semiconductor in a case brought by France Telecom in San Francisco federal district court alleging infringement by Marvell’s 3G baseband chips.  In addition to a favorable damages verdict of a fraction of the damages sought by plaintiff, the firm recently secured judgment for Marvell Semiconductor on post-trial motions in that case.  Eric also has experience prosecuting patents and is admitted to the U.S. Patent & Trademark Office.

Eric’s representative clients include BlackBerry, California Institute of Technology, Canon, Marvell Semiconductor, MediaTek, Monolithic Power Systems, Motorola, Reliant Pharmaceuticals, Rovi, Samsung, and Sony.

Prior to joining Quinn Emanuel, Eric was an associate with the law firm of Fish & Neave and served as a law clerk to the Honorable Eric Bruggink on the U.S. Court of Federal Claims (1997-1998).  He is a 1997 graduate of the George Washington University Law School, and has a materials science & engineering degree from the University of Michigan in Ann Arbor.  Prior to law school, Eric worked for National Semiconductor in California as an electronic packaging engineer.  He currently serves on the Board of Directors of the New York Lawyers for the Public Interest and the Board of Trustees for the Blue School, a private independent school in New York City.

 

* * *

 

Visit the Firm’s website for more information about our intellectual property litigation practice as well as our other areas of practice.  There is no firm like ours.  http://www.quinnemanuel.com/practice-areas/intellectual-property-litigation/


John Hintz is a Shareholder in Maynard Cooper’s New York office and a member of the firm’s Intellectual Property Litigation and Intellectual Property Protection practice groups. He has more than 27 years of experience handling intellectual property matters, and in particular, patent litigation. John has worked on all aspects of patent disputes and has litigated in  federal courts throughout the country and before the International Trade Commission.

John also has significant transactional, licensing, and counseling experience, including advising clients on the IP aspects of IPOs, mergers and acquisitions, and the transfer and licensing of IP assets. His clients span a broad range of industries covering diverse technologies, including search engines, financial services, semiconductors, barcode scanning, Internet-related businesses and technologies, telecommunications, computer simulations, commodity chemicals, polymers, process control instruments, medical devices, and life sciences.

John served as Samsung's expert witness on U.S. law related to patents and patent licensing in disputes between Samsung and Apple in the Netherlands, France, Italy, Japan and Australia.

John began his IP career and became a partner at the preeminent IP litigation law firm Fish & Neave which later merged with Ropes & Gray.

Awards

  • The Best Lawyers in America © for Litigation - Patent
  • Best Lawyers ® 2013 “Lawyer of the Year” for Patent Litigation
  • New York Super Lawyers for Intellectual Property Litigation (2006-present)
  • IAM Patent 1000, The World’s Leading Practitioners, 2014-present
  • Who’s Who in Legal for Patents, 2014-present
  • AV Preeminent® rating in Martindale-Hubbell

Practices

Intellectual Property Protection Intellectual Property Litigation Intellectual Property

Bar Admissions

  • State Bar: New York
  • U.S. Supreme Court
  • U.S. Court of Appeals: Federal Circuit
  • U.S. District Court: Colorado, New York (Eastern, Southern, Western), Texas (Eastern, Western), Wisconsin (Eastern, Western
  • U.S. Patent & Trademark Office

Education

The George Washington University Law School (J.D. (with honors), Law Review)

Miami University (Ohio) (B.S.)


Marta Gross, a senior partner in Goodwin Procter’s IP Litigation Group, is a member of its Patent Litigation and Life Sciences Practices. She also serves on the firm’s Executive Committee.

For more than 25 years, Ms. Gross has focused her practice on patent matters, including patent litigation, strategic counseling and opinions, and patent-related due diligence. She has been recognized as one of the country’s leading IP lawyers by a number of industry publications, including LMG Life Sciences, Managing Intellectual Property and Super Lawyers.

Work for Clients

Ms. Gross developed the strategic patent counseling practice to support Teva, the world’s largest generic pharmaceutical company. For more than 10 years she has led this practice team, which provides validity and infringement advice and opinions, as well as strategic counseling, to numerous life science clients.

Ms. Gross’s recent representative patent litigation engagements include:

  • Lead counsel for Roxane Laboratories (Roxane) in a patent infringement action filed by Prometheus under the Hatch-Waxman Act in response to Roxane’s filing of an abbreviated new drug application (ANDA) for the pharmaceutical drug alosetron. After a bench trial, the District Court found Prometheus’s patent invalid.
  • Lead counsel for Makhteshim Agan of North America (MANA) and Control Solutions (CSI) in a patent infringement action brought in North Carolina by BASF and Bayer on three patents relating to the pesticide fipronil. The district court granted MANA’s and CSI’s motion for summary judgment of no infringement, which was affirmed by the Federal Circuit. Ms. Gross’s clients were able to launch the first generic fipronil termiticide.
  • Lead counsel for Roxane in a patent infringement action filed by Genzyme under the Hatch-Waxman Act in response to Roxane’s filing of an ANDA for the pharmaceutical drug doxercalciferol. After trial and while on appeal, the case successfully settled and Roxane was permitted to launch its product prior to the expiration of the asserted patent.
  • Lead counsel for Roxane in a patent infringement action filed by Sepracor (now Sunovion) under the Hatch-Waxman Act in response to Roxane’s filing of an ANDA for the pharmaceutical drug eszopiclone. The case successfully settled.
  • Lead counsel for Roxane in a patent infringement action filed by Novartis under the Hatch-Waxman Act in response to Roxane’s filing of an ANDA for the pharmaceutical drug oxcarbazepine. Roxane launched its product prior to the expiration of the asserted patent and subsequently the case successfully settled.
  • Counsel for Cytec in an infringement action filed by Ciba in the District of Delaware on patents involving polymeric microbead technology. The case was resolved by summary judgment in favor of Cytec.

Ms. Gross has represented numerous additional clients in major patent litigations including:

  • Exxon in a high profile action brought by Dow on patents relating to polyolefin catalyst technology
  • Becton Dickinson in a patent litigation brought by Critikon on patents involving safety catheter technology
  • Hoechst Roussel in a patent litigation brought by Warner Lambert on a patent for a drug for treating Alzheimer’s disease
  • Dade-Behring in a patent litigation brought against Biosite on a patent involving methods and devices for performing immunoassays
  • AlliedSignal in a patent litigation brought by FilmTec on a patent involving reverse osmosis technology

Professional Activities

Ms. Gross is a member of the New York City Bar Association and served a three-year term as chair of its Patents Committee. She is also a member of the ABA, AIPLA and NYIPLA and has served on various committees of those organizations.

Thought Leadership

Ms. Gross has lectured on intellectual property law matters such as legal issues for startups, pharmaceutical patents and litigation and patent basics. She has participated in and chaired programs presented at organizations including MIT, Practising Law Institute and the University of Toronto.

Professional Experience

Ms. Gross worked as an engineer (including having major managerial responsibilities) for eight years after her graduation from MIT, during the latter portion of which she attended evening law school. She gained from her engineering experience real-world perspectives regarding the kinds of problems her corporate clients face and finding practical solutions to those problems.

Ms. Gross first worked at General Electric where she participated in GE’s Manufacturing Management Program. Thereafter, she worked at Millipore Corporation. At Millipore, She was the Manager of New Product Development. In that role, she managed the group responsible for bringing Millipore’s new chemical-related chromatography products from the research and development stage to full scale manufacture, in accordance with a schedule and a budget.

Recognition

In 2014, Ms. Gross was named a “Life Sciences Star” in the LMG Life Science Survey; was named an IP Star and one of Managing Intellectual Property magazine’s “Top 250 Women in IP”; and was named one of the leading attorneys in New York by the publication Super Lawyers. She has also been named to the 2014 Women in Business Law Expert Guide.

Education

  • J.D., Suffolk University School of Law, 1988 (Evening Division, cum laude)
  • Sc.B., Chemical Engineering, Massachusetts Institute of Technology, 1980

Bar and Court Admissions

Ms. Gross is admitted to practice in New York and Massachusetts, as well as before the U.S. Patent & Trademark Office and various federal courts.


Sarah A. Solomon is a partner in the firm’s Technology & Life Sciences Group.

Ms. Solomon represents biotechnology, pharmaceutical, medical device, diagnostic and other life sciences companies in connection with their intellectual property, commercial and M&A transactions. She regularly advises private and public companies on complex strategic collaboration and partnering transactions (such as co-development, joint research and development agreements, patent licenses, strategic alliances and joint ventures); research, development and commercial relationships (such as manufacturing, distribution, supply, clinical trial, university licenses and services arrangements); and mergers and acquisitions (such as product acquisitions, spin-outs and patent portfolio acquisitions). Ms. Solomon also counsels clients in connection with international transactions and relationships in North America, South America, Europe and Asia.

Education

  • J.D., University of California Hastings College Law, 2001
  • B.S., Biology, University of California, San Diego, 1996

Bar and Court Admissions

Ms. Solomon is admitted to practice in California.


Jane works with a wide range of biotechnology and pharmaceutical clients on strategic portfolio development and management, world-wide patent prosecution, opinions, search-based analyses including freedom to operate advice, USPTO interferences, foreign oppositions and IP diligence.

Jane provides advanced strategic advice to her clients, on patent matters in technologies including genomics, vaccines, transgenic animals, assays and high throughput genomics and proteomics systems, discovery genetics, diagnostics, personalized medicine, gene silencing and diverse biologics.
Jane has over 15 years of experience obtaining world-wide protection for antibodies.

Representative Clients and Matters

  • Jane represented Amgen (and previously we represented Abgenix) on a patent portfolio relating to the XENOMOUSE® technology, one of the most significant developments in the last quarter century in making available therapeutic antibodies for human therapy
  • Jane represents Eisai in intellectual property matters, including opinions, counseling, search-based analyses and patent prosecution


Honors & Awards


PLC Which Lawyer (2010-2011)

Memberships & Affiliations

  • American Bar Association
  • American Intellectual Property Law Association
  • New York State Bar Association

Presentations & Speeches

  • "Securing Patents for Antibodies Against a Backdrop of Heightened Patentability Requirements," 18th Forum On Biotech Patenting, Munich (March 2010)
  • "Securing Patents for Antibodies Against a Backdrop of Heightened Patentability Requirements," 17th Forum On Biotech Patenting, London (October 2009)
  • "Maximizing Patent Term Under 35 U.S.C. § 154," 7th Annual MAXIMIZING PHARMACEUTICAL PATENT LIFE CYCLES, Brand Name Master Class, New York (October 2009)
  • "Breaking Through the Challenges Associated with Antibody Patent Prosecution," 11th Advanced Forum On Biotech Patents, Boston (October 2009)
  • "The Narrowing Scope of Biotech Patent Claims: What Does It Mean for the Industry?" BIO International Conference, Atlanta (May 2009)
  • "Issues in Biotechnology Patenting: Are Prosecutors and Litigators on the Same Page and Can They Get There?" New York Biotechnology Association 18th Annual Meeting (April 2009)
  • "Maximizing Patent Term Under 35 U.S.C. § 154," 7th Annual MAXIMIZING PHARMACEUTICAL PATENT LIFE CYCLES, Brand Name Master Class, New York (October 2007)
  • "Maximizing Patent Term Under 35 U.S.C. § 154," 7th Annual MAXIMIZING PHARMACEUTICAL PATENT LIFE CYCLES, Brand Name Master Class, San Francisco (June 2007)
  • "Antibody Patentability," Advanced Forum On Biotech Patents, C5 Conference, Munich (April 2007)
  • "Patent Portfolio Management," Pharmaceutical/Biotech Industry Forum, New York (February 2007)
  • "Maximizing Patent Term Under 35 U.S.C. § 154," 7th Annual MAXIMIZING PHARMACEUTICAL PATENT LIFE CYCLES, Brand Name Master Class, New York (October 2006)
  • "Antibody Patentability," Advanced Forum On Biotech Patents, C5 Conference, London (September 2006)
  • "Maximizing Patent Term Under 35 U.S.C. § 154," 6th Annual MAXIMIZING PHARMACEUTICAL PATENT LIFE CYCLES, Brand Name Master Class, New York (October 2005)
  • "Antibody Patentability," 5th Advanced Forum on Biotech Patents, American Conference Institute, New York (September 2005)
  • "Integra v. Merck Safe Harbor Provisions," Advanced Forum On Biotech Patents, American Conference Institute, New York (January 2005)
  • "Patent Prosecution Basics," Patent Basics for the Non-Specialist, Practicing Law Institute (2005-present)
  • "Antibody Patentability," 4th Advanced Forum on Biotech Patents, American Conference Institute (December 2004)
  • "A Tactical And Practical Guide To FREEDOM TO OPERATE," American Conference Institute, New York (November 2003)
  • "PTO GUIDELINES FOR EXAMINATION UNDER § 102(e) IN VIEW OF AMERICAN INVENTORS PROTECTION ACT," Joint Patent Practice Seminar Connecticut, New Jersey, New York and Philadelphia Intellectual Property Law Associations, New York (May 2003)
  • "FOCUS ON RESEARCH TOOLS/METHOD PATENTS," Advanced Forum On Biotech Patents, American Conference Institute, New York and San Francisco (April and October 2003) (April 2004)
  • "CAN A PATENT APPLICATION HAVE TOO MUCH DISCLOSURE?" New York Biotechnology Association (February 2003)
  • "How to Protect Your Databases of Genomic and Proteomic Data: The US Perspective," EuroLegal Conference: Patenting your Genomic and Proteomic Inventions, London (July 2002)
Education
  • JD, Columbia University School of Law, Harlan Fiske Stone Scholar
  • MS (Biology), New York University
  • BA (Cell Biology), Smith College, with Honors

Bar Admissions

New York
U.S. Patent and Trademark Office

Courts

Supreme Court of the United States, 2005
U.S. Court of Appeals for the Federal Circuit, 2001
U.S. District Court for the Southern District of New York, 1994
U.S. District Court for the Eastern District of New York, 1994