Celebrating 50 Years of Innovation

For the past five decades, Lerner David has thrived as an intellectual property boutique dealing with all aspects of IP. IP is not just our specialty; it is our passion and purpose. We assist a diverse client base at the forefront of the Fourth Industrial Revolution (4IR), protecting groundbreaking technologies from AI to 3D printing; renewable energy to autonomous vehicles; FinTech to telecommunications; pharmaceuticals to life-saving medical therapies. We safeguard some of the world’s leading brands. And we fight for our clients’ rights before the courts and administrative tribunals of the world.

As the world enters 4IR and we embark on our next 50 years, Lerner David stands at the ready to help innovators protect and bring tomorrow’s emerging technologies to life today.

Practices

Helping Clients Succeed

Lerner David Achieves Favorable IPR Settlement Granting Amneal Pharmaceuticals Early Market Entry for Vivitrol®

With only a few hours until a scheduled hearing before the Patent Trial and Appeal Board, Lerner David client Amneal Pharmaceuticals LLC reached a settlement with Alkermes whereby both parties agreed to seek termination. Alkermes granted Amneal a license allowing it to market a generic version of VIVITROL® (naltrexone for extended release injectable suspension) in the U.S. beginning in 2028 or earlier under some circumstances in exchange for Amneal agreeing to drop its challenge to U.S. Patent No. 7,919,499 (“the ’499 Patent”), an Orange Book-listed patent for VIVITROL®. The ’499 Patent does...

Phytoceuticals, Inc. Prevails In Cancellation Proceeding Before The European Union Intellectual Property Office

On June 6, 2019, the European Union Intellectual Property Office issued a written decision determining that our client, Phytoceuticals, Inc.’s European Trademark Registration for the mark CELL SKIN LAB CLINICAL SKIN CARE was not invalid based upon prior use of the mark in Europe or the prior ownership of the mark as a result of an agreement between our client and the party seeking to cancel the registration. Likewise, the party seeking cancellation also failed on the grounds of bad faith. Based upon instructions and arguments prepared by our office and on actual evidence provided to our Euro...

Lerner David Defeats Motion for Summary Judgement in Trademark Case

On December 20, 2018, Judge Wolfson in the United States District Court, District of New Jersey, denied the opponent’s summary judgment motion on all grounds that our client’s trademark is invalid. In the opponent’s motion, it argued that our client’s mark is invalid because 1) it creates a likelihood of confusion with other, third-party marks; 2) our client never actually used the mark in commerce; 3) our client committed fraud on the PTO in attempting to obtain registration; and 4) the defense of laches bars our client from asserting a trademark infringement claim. The Court addressed each o...

Kashiv and Amneal Prevail in Fourth IPR, Invalidating All Challenged Claims of OxyContin® Patents

In a Final Written Decision issued in favor of Lerner David clients Kashiv Pharma, LLC and Amneal Pharmaceuticals, LLC, the Patent Trial and Appeal Board ("PTAB") held all challenged claims of U.S. Patent No. 9,034,376 invalid on both asserted grounds. The '376 Patent is directed to a sustained release formulation of oxycodone HCl, marketed by Purdue Pharma as OxyContin®, and is one of twenty patents that Purdue has asserted against Kashiv's ANDA directed to its own abuse-deterrent formulation of oxycodone. This marks the fourth IPR win for Kashiv against this family of patents. Collectively, ...

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Celebrating 50 Years of Innovation

Helping Clients Succeed

Lerner David Achieves Favorable IPR Settlement Granting Amneal Pharmaceuticals Early Market Entry for Vivitrol®

Phytoceuticals, Inc. Prevails In Cancellation Proceeding Before The European Union Intellectual Property Office

Lerner David Defeats Motion for Summary Judgement in Trademark Case

Kashiv and Amneal Prevail in Fourth IPR, Invalidating All Challenged Claims of OxyContin® Patents

Federal Circuit Holds Design Patents Cover Only Specifically Claimed Items

PTAB Holds Service of Deficient Infringement Claim May Start One-Year IPR Filing Period

As Of August 2019 U.S. Licensed Lawyers Required For Trademark Matters Before The USPTO

Supreme Court Paves The Way For Registration Of Offensive Trademarks