Litigation

Practices

"When we need someone to really dig in and fight a good fight, we typically turn to Lerner David."  This comment by the in‑house counsel for a Fortune 100 company reflects our firm's attention to detail in litigation and our firm's aim to achieve the business goals which gave rise to litigation in as efficient a manner as possible.  We do not believe in fighting litigation battles merely because the battles can be won.  Rather, our goal is to achieve victory on the business issue that gave rise to the litigation.  In so doing, we relentlessly pursue the facts and the law needed to establish our winning position, free of distraction from issues that do not bear on ultimate victory.  This approach, combined with our litigation strategy deeply rooted in our clients' business objections, has often enabled us to achieve our clients’ litigation goals without trial.

However, when trial is appropriate, we have an admirable winning record.  Because of our understanding of technology and our experience in intellectual property procurement, we are able to explain the most technically and legally sophisticated matters in a common sense way that allows the issues to be understood and our clients' positions embraced by a judge or jury.  Our specific skills in the various areas of intellectual property litigation are explained below.

Thus, we were pleased - but not surprised - when, in June 2015, the editorial staff of the New Jersey Law Journal presented Lerner David with an award as the top intellectual property practice in New Jersey.

Patent Litigation in the Courts

Our expertise and experience in patent litigation before U.S. District Courts and the U.S. Court of Appeals for the Federal Circuit is unsurpassed.  We have successfully represented the largest corporations in the world in assertion of their patent portfolios and in defense of claims filed by competitors and other patent owners.  Indeed, our firm was lead counsel for one of the parties in one of the largest patent infringement actions ever brought in the United States.  However, our expertise is not limited to representing large corporations.  We are also known for representing small corporations and individual inventors in patent litigation.

In all these cases, we bring an efficient and goal‑oriented approach to litigation.  Through our depth of technological understanding and our experience with trial and appellate courtroom practice, we effectively achieve our clients' goals.  Because we are intimately familiar with every nuance of obtaining patents in the United States and abroad, we are able to bring this expertise to bear on effective assertion of and defense against patent claims.

Hatch-Waxman Litigation

Our patent litigation practice under the Hatch‑Waxman Act, involving both Abbreviated New Drug Applications (“ANDAs”) and “paper” NDAs, is varied and complex. Lerner David can help in planning for Hatch‑Waxman challenges, so our clients are ready to deal with such challenges by providing prosecution advice, opinions, notice letters, and integrated litigation strategies employing both district court and Patent and Trademark Office proceedings.

In ANDA cases, our team members include skilled courtroom advocates and crafty IP strategists, and we bring to bear our backgrounds and advanced degrees in chemical engineering, chemistry, organic chemistry, biochemistry, biology, biotechnology, materials science, genetics, and bacteriology, among others.  With nearly 70 lawyers and many other professionals devoted to IP law, we have the bench strength to handle any complex Hatch-Waxman matter.

Over the past 30 years, Lerner David attorneys have represented clients in numerous pharma litigation matters before the courts and the PTAB involving drugs from A to Z:

Generic Product  Branded Product
Alogliptin Nesina®, Kasano®, Oseni ®
Apixaban Eliquis®
Calcium acetate Phoslo®
Canagliflozin/Metformin Invokamet®
Carbamazepine Carbatrol®
Cefaclor Ceclor®
Cefadroxil Duricef®
Dipyridamole/ Aggrenox®
acetylsalicylic acid
Doxycycline Oracea®
Doxycycline hyclate Periostat®
Dronedarone Multaq®
Dutasteride Avodart®
Esomeprazole Nexium®
Felodipine Plendil®
Fluocinonide cream Vanos®
Gabapentin Neurontin®
Ketorolac tromethamine Sprix®
Lansoprazole Prevacid®/Prevacid® Solutab
Lenalidomide Revlimid®
Lidocaine patch Lidoderm®
Linagliptin Tradjenta®/Jentadueto®
Loratadine Claritin®
Metformin Fortamet®
Mirtazipine Remeron®
Ondansetron Zofran®
Oxycarbazapine Trileptal®
Oxycodone OxyContin®
Paclitaxel Taxol®
Palonosetron Aloxi®
Paroxetine Paxil®
Prasugrel Effient®
Propofol Dipravan®
Quetiapine Seroquel XR®
Ranitidine Zantac®
Risperidone Risperdal Consta®
Rivastigmine Exelon®
Sertraline Zoloft®
Sodium oxabate Xyrem®
Terazosin Hytrin®
Terfenadine Seldane®
Testosterone gel AndroGel®
Venlafaxine Effexor XR®

Patent Litigation before the Patent Trial and Appeal Board

Since the enactment of the America Invents Act (“AIA”), contested proceedings before the PTO’s Patent Trial and Appeal Board (“PTAB”) have assumed an integral - and often dispositive - role in patent disputes. Today, the possibilities of such PTAB proceedings must be considered in all patent disputes. Lerner David’s post‑grant practice has always been active. In the early 1980s, we succeeded in ex parte reexaminations involving patents on basic laser technology that dominated an entire industry. Later, when inter partes reexamination became available, we quickly developed expertise in those proceedings as well.

Our post‑grant practice expanded almost immediately with the passage of the AIA.  For one major medical device manufacturer, Lerner David filed some of the last inter partes reexaminations just before AIA implementation in September 2012; and then, less than two months later, we filed one of the first inter partes reviews (“IPRs”) to go to hearing. That IPR, where the challenged claims were ultimately found invalid, was drafted in part by flashlight and filed just a week after Super Storm Sandy battered New Jersey.  Since then, Lerner David has been involved in over 50 IPRs on behalf of both Petioners and Patent Owners.  On the Petitioner side, we have successfully represented pharmaceutical and medical device clients, among others, while representing patent owners in the food supplement, battery, and multinational media content delivery service industries in defending against IPRs.  On behalf of Petitioners, our institution rate exceeds the PTAB averages, and we have prevailed in every final written decision rendered.  On behalf of Patent Owners, through the strategic use of preliminary responses, Lerner David has been able to negotiate favorable settlements, often before any institution decision.

Lerner David has also represented a major consumer electronic and computer company and a multinational pharmaceutical company in more than a dozen IPRs.  Many of those have also led to favorable settlements, or have been instrumental in obtaining a stay in parallel district court litigations, or both.  One such IPR was filed a year after litigation began and resulted in a settlement within weeks, saving millions of dollars in continued litigation costs.  Lerner David is also one of the few firms to have filed a “derivation proceeding” (which, under the AIA, replaced certain “interferences”) and has prepared several Post‑Grant Review petitions, which can be used to attack the validity of a patent on far more grounds than in an IPR.

Lerner David, with its experience in both patent acquisition and enforcement, possesses a unique skill set tailor made for these new PTAB proceedings which are neither litigations nor examination, and cannot be merely treated as either.  Because our ability to assimilate the intricacies of the technology, and our knowledge of the PTAB and its unique procedures, Lerner David is able to present its clients’ positions in a way that gets results.

Trademark, Trade Dress and Domain Name Litigation

Trademark and trade dress litigations are often won or lost at the very beginning of the litigation process.  Emergency motions and hearings for temporary restraining orders and preliminary injunctions are commonplace.  These proceedings are quite different from trials, but are often determinative of whether or not a case can be resolved favorably for our clients.  We have extensive experience in courts around the country representing our clients both in assertion of our clients' rights and the defense of our clients against assertions by others. 

We also have considerable experience representing both intellectual property rights holders and accused infringers in the field of “grey market” goods and counterfeit products.  In this regard, we have assisted our clients in effective use of anti-counterfeiting laws through the use of emergency court actions and seizure procedures in association with U.S. Marshals to stop counterfeiters and seize counterfeit goods.  In the area of domain name litigation, we have effectively employed and defended against the type of emergency motion and hearing procedures we have previously described and used the Uniform Dispute Resolution Proceeding process for our clients' benefit.  In all these instances, understanding the dynamics of emergency motion practice and the unique rules that apply to same are a critical advantage that our firm routinely uses to achieve success.

False Advertising, Unfair Trade Practices, and Trade Secret Litigation

Our comprehensive knowledge of intellectual property laws enables us to pursue the best tactical avenue for our clients' success.  We are in a unique position to achieve success because we know what can - and cannot - be properly protected by intellectual property rights.  We leverage this knowledge effectively by conveying in a courtroom whether or not a particular intellectual property asset has been wrongfully appropriated and whether a client's or a client's competitor's actions are unlawful.  As always, we take the business realities of our clients into account, and our depth of technological understanding allows us to comprehend subtleties that escape many other firms.

Licensing Litigation

Licensing disputes are resolved commonly by arbitration as well as by litigation.  In either venue, our firm's extensive experience brings to bear practical business considerations in advocating our client's position.  The consequence is that our client's position is understood not only based on its legal position, but also from a common sense business perspective that crystallizes our clients' positions to judge, jury, or arbitrator.  We have consistently found that our clients enormously benefit from this approach as evidenced by our successes. 

Copyright Litigation

Copyright litigation, like trademark litigation, is often marked by emergency motions brought by intellectual property rights holders.  We have extensive experience in representing copyright holders and those accused of copyright infringement in such emergency proceedings.  Unlike trademarks, the dynamics of copyright litigation are often marked by the possibility of statutory damages that a copyright registrant may obtain and by the general rule, unlike other forms of intellectual property protection in the U.S., that the prevailing party in a copyright case is often entitled to compensation for its attorney fees. We bring a full understanding of the synergism that these issues present in copyrights cases, with the result that we are able to achieve considerable success.

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