Dan focuses his practice on handling patent litigation in various technologies in courts throughout the country for both plaintiffs and defendants, from pre-litigation strategy through discovery, dispositive motions, trial and appeal, including patent infringement litigation, preliminary injunction actions, Hatch-Waxman cases, Section 337 proceedings before the International Trade Commission, interference proceedings before the U.S. Patent and Trademark Office and appeals of interference decisions to district courts (§146 actions). He has extensive experience successfully handling patent appeals to the Court of Appeals for the Federal Circuit, including for patentees who had been unsuccessful in persuading the District Court of the correct construction of key claim terms.
With particularly extensive experience in litigating complex patent cases, Dan has litigated a wide range of subject matters and technologies, including biotechnology, pharmaceuticals, scientific instruments, graphics processing technology, LEDs, semiconductors, the internet, electrical devices and computer disk technology, as well as technology and patent licenses. Dan also has substantial experience litigating business method patents in district courts and before the Federal Circuit, including relating to securities, the internet and dispute resolution.
Dan also advises conducts due diligence-type analyses, including of pharmaceutical patent positions, particularly where patent litigation or adversary PTO proceedings are involved. He has assisted in-house counsel in coordinating U.S. and related foreign patent litigation and also advises on patent licensing and global patent portfolios.
Publications and Speaking Engagements
Dan has addressed both in-house audiences and industry conferences on patent law and litigation. He has, for example, spoken on the America Invents Act, addressed the implications of the Seagate decision at CLE presentations for in-house counsel, and was a featured speaker at The National Forum on Preventing and Defending Pharmaceutical and Biotech Patent Litigation in Washington, D.C, on "Navigating The Stormy Claim Construction Seas: The ‘Evolving’ Law, Litigation Strategy, Markman Hearings." He was also a speaker at "Managing Complex IP (Patent) Litigation," presented at the Intellectual Property Law Update for Corporate Counsel in San Francisco.
In re Androgel Antitrust Litigation (II) and FTC v. Watson (Actavis) (patent counsel to one of the defendants in these patent/antitrust actions involving so-called “pay for delay” allegations; in the former case alleging sham litigation, plaintiffs’ claims were dismissed on summary judgment, the latter case is now before the Supreme Court); Life Technologies v. Pacific Biosciences (§146 action relating to single molecule sequencing); Silicon Graphics v. ATI and Advanced Micro Devices (successful representation of plaintiff in infringement action relating to graphics processing technology); Schubert v. Cree, Osram, Philips (separate infringement cases on same patent relating to LED technology); Representation of Complainant Gertrude Neumark Rothschild in consolidated ITC section 337 proceedings captioned Certain Short-Wavelength Light Emitting Diodes, Laser Diodes and Products Containing Same and Certain Light Emitting Diode Chips, Laser Diode Chips and Products Containing Same, involving approximately 50 respondent companies, including leading LED, laser diode, electronics and cell phone companies; Gertrude Neumark Rothschild v. Cree, (settlement of semiconductor/LED patent infringement action after defeating defendant's motions for summary and winning partial summary judgment on certain issues); Cybersettle v. National Arbitration Forum (successfully represented plaintiff on a business method patent, including affirmance by Federal Circuit on key claim construction issues); Lava Trading v. royal blue plc and Sonic Trading (successful resolution of cases after having obtained reversal by the Federal Circuit of district court's claim construction of business method patent); Unimed Pharmaceuticals and Laboratories Besins v. Paddock Laboratories (Hatch-Waxman litigation); Novo Nordisk v. Teva and BTG (PTO interference proceeding, preliminary injunction and biotechnology patent infringement action); Abbott Laboratories and Fournier Pharma v. Par Pharmaceuticals (Hatch-Waxman litigation); Gauss v. Conair (based on post-trial motion arguments, obtained the Federal Circuit's overturning of verdict for plaintiff on electrical device patent); Interactive Gift Express (E-Data) v. Compuserve, et al (one of the first Internet-related business method patents before the Federal Circuit -- obtained reversal of district court's construction of multiple claim elements); Bertenshaw v. Ducharme (representation of Merck in a §146 appeal to the district court from a patent office interference proceeding relating to VIOXX®); Novo Nordisk v. Genentech, Lilly, Serono and Pharmacia (represented patentee in biotechnology patent infringement action); Emory University v. Glaxo Wellcome (represented Glaxo in patent infringement action, patent interference proceeding and §146 appeal to the district court relating to Epivir®, then the leading anti-AIDS drug in North America; Emory University v. Glaxo Wellcome (patent inventorship, state law and ownership issues relating to data generated under a technology license); Genentech v. Novo Nordisk (represented defendant in an ITC proceeding and two successive biotechnology patent infringement actions, including two favorable Federal Circuit decisions, the second of which held the asserted patent invalid in the context of an appeal from a preliminary injunction).
Selected to New York Super Lawyers 2010, 2011 - Metro
- University of Michigan, J.D., 1985
- Brown University, A.B., 1982
magna cum laude
U.S. Court of Appeals for the Federal Circuit
U.S. District Court for the Southern District of New York
U.S. District Court for the Eastern District of New York
- American Intellectual Property Law Association
- New York Intellectual Property Law Association
- Federal Circuit Bar Association