Paul Kochanski is a partner in the firm and practices all areas of intellectual property law, including significant involvement in patent, trademark, trade dress, copyright and pharmaceuticals litigation.
He is especially adept in technical litigation in the mechanical, orthopedic and chemical/biochemical arts. This experience includes leading actions with request to orthopedic products in the nature of implants and instruments, household products and personal care products. He has also led actions where chemical patents have been asserted on behalf of clients, and defending claims of patent infringement. In addition, Mr. Kochanski has directed and supervised Hatch-Waxman-based litigation for firm clients seeking to bring their pharmaceutical products to market. Similarly, he has litigated chemical issues related to flooring products, adhesive products and skin care products. Mr. Kochanski has been active in the areas of infringement and validity analysis with respect to both utility and design patents. He has also been active in the initial stages of client consultation concerning adoption and clearance of trademarks and the ex parte and inter parte prosecution and appeal of numerous trademark applications both in the United States and abroad.
Mr Kochanski's litigation practice is not limited to patent litigation, but also includes extensive experience in litigating trademark issues such as infringement, false advertising, trade disparagement claims, and trade dress in the nature of package similarity and copyright issues.
Mr. Kochanski is a cum laude graduate of Seton Hall University Law School, where he was a member of the Appellate Moot Court Board, and holds a bachelor’s degree in chemistry from the University of Miami. He has supplemented his education and professional experience with graduate courses in organometallic and polymer chemistry and biochemistry.
Copyrights & Computer Software
Trademark and Trade Dress Procurement
1980, New Jersey
1979, United States Patent & Trademark Office
United States Court of Appeals for Federal Circuit, Third Circuit, Ninth Circuit
J.D., cum laude, Seton Hall University Law School, 1980; Member, Appellate Moot Court Board
B.S., Chemistry, University of Miami, 1969
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 European associate, the European Union Intellectual Property Office specifically found that the filing for the trademark CELL SKIN LAB CLINICAL SKIN CARE was not unauthorized, and that our client, Phytoceuticals, Inc., had established prior rights in the mark in Europe. Further, the European Union Intellectual Property Office also found that the contract agreement entered into by our client with the party seeking cancellation, based upon principal/agent principals. Finally, the European Union Intellectual Property Office, based on evidence that our client provided, rejected all the accusations of the party seeking cancellation with respect to the fact that our client applied for the European Union Trademark in bad faith knowing that the party seeking cancellation had prior rights. Finally, based on these decision, the European Union Intellectual Property Office also awarded our client its reasonable fees and costs associated with this proceeding.
In a Rule 36 affirmance entered just two days after oral argument, the United States Court of Appeals for the Federal Circuit entered judgment upholding two decisions by the Patent Trial and Appeal Board finding invalid all claims of two Orange Book-listed patents directed to Eli Lilly’s blood thinner Effient® (prasugrel). Lerner David represented Dr. Reddy’s Laboratories in the two Inter Partes Reviews before the PTAB and in the consolidated appeals to the Federal Circuit. The appeals are Daiichi Sankyo Company, Ltd. et al. v. Accord Healthcare Inc., USA et al., Nos. 2017-1052, 2017-1053 (Dec. 12, 2017).
In a Decision issued in favor of Lerner David clients Luye Pharma Group Ltd., Luye Pharma (USA) Ltd., Shandong Luye Pharmaceutical Co., Ltd., and Nanjing Luye Pharmaceutical Co., Ltd. the Patent Trial and Appeal Board instituted Inter Partes Review of all challenged claims of U.S. Patent No. 6,667,061, listed in the Orange Book for Risperdal®CONSTA® (risperidone).
In two Final Written Decisions entered by the Patent Trial and Appeal Board, Lerner David attorneys prevailed in invalidating all challenged claims of two Orange Book-listed patents directed to Effient® (prasugrel). Lerner David was one of five firms representing a total of 20 named generic pharmaceutical Petitioners in two related Inter Partes Reviews. These decisions pave the way for the prevailing generics to launch their products as early as October 14, 2017.
In John Hopkins University v. Datascope Corp., 543 F. 3d 1342 (Fed. Cir. 2008), Lerner David successfully overturned on appeal a jury verdict of infringement in a case involving fragmentation catheters.
In a dispute over hip implant patents, a federal appellate court has affirmed a district court decision finding of noninfringement for a subsidiary of orthopedics company Stryker Corp., potentially killing rival Tranquil Prospects Ltd.'s infringement counterclaim. On Jan. 10, the U.S. Court of Appeals for the Federal Circuit issued a per curiam decision upholding the district court's summary judgment for the subsidiary, Howmedica Osteonics Corp. Oral argument in the case had been held the day before, on Jan. 9, according one attorney. The case began in May 2002, when Howmedica filed suit seeking a declaratory judgment of noninfringement and invalidity with respect to two patents owned by British Virgin Island-based Tranquil Prospects. Tranquil countersued for infringement. George C. Summerfield of Stadheim & Grear Ltd., which is representing Tranquil, said Monday that his client was contemplating a request for a rehearing. “I was very pleased with the ruling, because in my view it's the last nail in the coffin of this case, which we've always maintained had no basis,” said William L. Mentlik of Lerner, David, Littenberg, Krumholz & Mentlik LLP, which is representing Howmedica. He added, “Although Tranquil has the right to petition for rehearing and/or rehearing en banc, in the case of a per curiam affirmance, the likelihood of a successful petition is virtually nonexistent.” In March 2007, a judge in the U.S. District Court for the Northern District of Indiana found that Tranquil’s assertions of infringement, which were backed by an unsworn expert declaration and “virtual surgery” geared toward demonstrating that implanting Howmedica’s stem implants would infringe on Tranquil’s patented methods, weren’t up to snuff. At issue in the suit are two patents, both of which are entitled “Implantation of Articulating Joint Prosthesis.” Tranquil contended that a variety of Howmedica’s “hip stems,” which connect the femur to the hip socket, encroached on its intellectual property. “We were surprised. We understood the Howmedica attorney to have conceded at oral argument that the judge's claim construction on the medullary canal was incorrect, one of the main issues of the appeal,” Summerfield said Monday. But Mentlik, who represented Howmedica at oral argument, disputed this. “I did not concede anything of the sort,” he said. “What I said was that as a matter of anatomy, the medullary canal doesn't extend the entire length of a longbone. In the context of this particular patent, the judge was justified in construing the limitation as he did.” “Under any construction, they had to lose,” he added. The case stretched on as long as it did in part because of an appeal by Tranquil, which followed the district court’s January 2004 finding that the asserted claims of disputed patents were invalid. The Federal Circuit Court breathed new life into the case in 2005, reversing the lower court’s ruling that the Tranquil’s patent claims were indefinite and invalid, vacating the lower court’s ruling that one patent was not infringed because that ruling was based on an “erroneous claim construction,” and remanding the case back to district court. The patents in dispute are U.S. Patent Numbers 4,636,214 and 5,222,985. Tranquil is represented in this matter by Stadheim & Grear Ltd. and Hunt Suedhoff Kalamaros LLP. Howmedica is represented by Lerner, David, Littenberg, Krumholz & Mentlik LLP. The case is Howmedica Osteonics Corp. v. Tranquil Prospects Ltd., case number 2007-1358,in the U.S. Court of Appeals for the Federal Circuit. --Additional reporting by Ben James
Lerner David Represented at INTA's 2015 Annual Meeting
Lerner David Represented at INTA's Annual Meeting
Lerner David Signs Agreement with Guangzhou's Knowledge City
New Jersey Super Lawyers - Intellectual Property Litigation (2011)
Lerner David Named Top IP Litigation Firm in New Jersey
American Bar Association
American Intellectual Property Law Association
American Chemical Society
New Jersey Intellectual Property Law Association
John C. Lifland American Inn of Court (Director) (Master, Intellectual Property Law)
International Trademark Association