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Troutman Sanders Adds Five New IP Attorneys, Creates Life Sciences Practice Team

July 21, 2009

NEW YORK – The law firm of Troutman Sanders LLP is pleased to announce the addition of five intellectual property lawyers who will join the firm’s newly created Life Sciences practice team.

The new attorneys – Albert L. Jacobs Jr., Gerard F. Diebner, Daniel A. Ladow, Magnus Essunger and Timothy M. Salmon – will be located in the firm’s New York office. Prior to joining Troutman Sanders, the five worked most recently for the boutique IP law firm of Albert Jacobs LLP in New York, where Jacobs was chairman and managing partner.

Their arrival, coupled with the recent hiring of intellectual property attorneys Diane Romza-Kutz and Robert Browne Jr. in Chicago, significantly bolsters Troutman Sanders’ national IP practice. The new attorneys add life sciences with patent litigation, federal regulatory and licensing expertise to the IP group.

"I’m thrilled to welcome this group of extremely talented IP lawyers to the firm," said Robert Webb Jr., chairman and managing partner of Troutman Sanders. "Their extensive IP experience will greatly enhance the firm’s IP practice and Life Sciences team and allow the firm to engage in federal regulatory work for the first time.”

The new attorneys in New York and Chicago will form the bulk of the firm’s new Life Sciences practice team, which will assist a broad range of clients within the life sciences and associated technology industry from embryonic beginning and development issues onward through clinical drug testing and regulatory approval to sales and marketing issues. Members also will provide clients legal assistance in corporate, finance, the full range of intellectual property services, including prosecution, opinions, federal court litigation, Hatch Waxman litigation, the ITC, CAFC appeals, as well as patent interferences, client counseling on patent portfolios, and due diligence. The team will also provide INN creation and approval, clinical development, federal regulatory pre- and post-approval, compliance, commercialization and risk management issues (including litigation).

“Coupling these five lawyers with Diane and Rob in Chicago gives Troutman Sanders the critical mass needed to launch a Life Sciences practice team,” said Doug Salyers, head of Troutman Sanders’ IP practice group. “This new team will greatly enhance the services we can provide to our many clients in this industry segment."

The new attorneys have extensive experience not only in Life Science, but in a broad range of technologies, including chemical and business methods.

Albert L. Jacobs’ practice will concentrate on the areas of life sciences, especially pharmaceutical and biotechnology, medical and health care, as well as chemical, business method intellectual property law and litigation.

He has extensive experience in obtaining original patents, as well as re-issue patents and those submitted for re-examination, and has been responsible for obtaining patents on commercially valuable products and systems. The majority of Jacobs’ practice over the past 20 years has been in litigation involving patents infringed by third parties and defending clients charged with infringement by patent owners. He also counsels clients on issues of infringement and validity and global patent portfolio management.

Additionally, Jacobs has extensive experience in Hatch Waxman cases and intellectual property cases before the International Trade Commission. He has successfully represented litigants in life sciences and business method patent litigation, both at the trial level and at the Court of Appeals for the Federal Circuit (CAFC) and has successfully reversed several Markman rulings for his clients.

He has regularly lectured on and advised clients on the nature and enforcement of intellectual property rights in the People’s Republic of China as well as explaining U.S. IPR enforcement to the Chinese government and to Chinese companies and law firms.

Jacobs’ practice also includes technology transfer, where he has been involved with a range of technologies from biotechnology, pharmaceutical and health care products to computer software and business methods, as well as due diligence and patent interferences. He has represented hundreds of patent applicants and patent Interference parties before the Patent and Trademark Office Board of Patent Appeals and Interferences.

Additionally, he has appeared before the CAFC, almost from its inception, representing both patentees and alleged infringers. He is the only attorney ever to have the CAFC invalidate a patent on an appeal he took from a District Court grant of a Preliminary Injunction against his client. He has also enjoyed success for patentees in having claim construction rulings of District Courts reversed.

Before coming to Troutman Sanders, Jacobs chaired the national IP departments of two international general practice firms and one national firm, and has also been the local managing partner of the New York office of three firms.

He is a member of the New York Intellectual Property Association, the International Association for the Protection of Industrial Property, Pharmaceutical Trademark Manufacturing Group, the Licensing Executive Society and the American Intellectual Property Law Association Far East Committee.

Currently, Jacobs is the treasurer of the International Bar Association IP and Entertainment Committee and co-chair of the American Bar Association Sub-Committee on Hatch/Waxman. From 2002 to 2005, he was appointed by the Secretary of Commerce to serve as a member of the Patent Public Advisory Committee of the U.S. Patent and Trademark Office.

Jacobs is a widely published author and lecturer, and has frequently been cited as an expert on patent law by the media, including appearances on FOX and CNN’s Business Asia.

He earned a B.A. in 1961 from Harvard University and a J.D. in 1964 from Columbia University School of Law, where he was a Harlan Fiske Stone Scholar.

Gerard F. Diebner’s practice will focus on the areas of pharmaceuticals, biotechnology, chemistry, medical devices, cosmetics, agriculture, veterinary products, pollution control, clean energy and business methods. He has extensive trial experience both before the Federal District Courts and the International Trade Commission.

He also handles patent issues concerning mergers and acquisitions and due diligence searches, and provides general intellectual property corporate advice. Additionally, he drafts and prosecutes patent applications before the U.S. Patent and Trademark Office and has substantial experience with interference practice. He also works with individual inventors, start-up corporations in emerging growth industries and established multi-national companies.

Diebner was involved with one of the first biotechnology lawsuits ever brought and was successful in one of the longest biotechnology cases tried to a jury.

Diebner is a member of the American Intellectual Property Law Association and the Licensing Executives Society.

He has lectured extensively, particularly for the Practising Law Institute's Advanced Patent Prosecution Workshops, and has been published in Mass High Tech and Legislative Developments in Patent Law publications.

He earned a B.S. in pharmacy in 1978 and a J.D. in 1983 from St. John’s University College.

Daniel A. Ladow’s practice will focus 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. 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 complex biotechnology and pharmaceutical patent cases, Ladow has litigated a wide range of subject matters and technologies, including scientific instruments, semiconductors, electrical devices and computer disk technology, as well as technology and patent licenses. He also has substantial experience litigating business method patents in district courts and before the Federal Circuit, including and relating to securities, the Internet and dispute resolution.

Ladow also has assisted in-house counsel in coordinating U.S. and related foreign patent litigation and also advises on patent licensing and global patent portfolios.

Ladow is a member of the American Intellectual Property Law, New York Intellectual Property Law and Federal Circuit Bar associations. He is a frequent lecturer on patent law and litigation topics for numerous groups, which have included The National Forum on Preventing and Defending Pharmaceutical and Biotech Patent Litigation, and Corporate Counsel’s Intellectual Property Law.

He earned an A.B., magna cum laude, in 1982 from Brown University and a J.D., cum laude, in 1985 from the University of Michigan Law School.

Magnus Essunger will focus on the litigation and trial of complex patent cases before federal courts and the International Trade Commission. He has worked on all phases of such litigation, including particularly the development and analysis of key factual and legal issues, deposition and trial preparation, legal briefs, discovery and expert reports.

He has worked on several major pharmaceutical patent litigations (including ANDA litigation), business method patent litigation, and several semiconductor patent litigations.

Essunger is fluent in Swedish and reads other European languages. His Grundlagens bevisprövningsförbud. RF 2:6 i straffprocessen (The Constitutional Exclusionary Rule in Swedish Criminal Procedure) was published in Juristförlaget i Lund in 1994.

Essunger earned a J.D. in 1992 from Lund University, a M.F.A. in 1996 from Parsons School of Design and a LL.M in 2002 from New York University School of Law.

Timothy M. Salmon’s practice will focus on intellectual property matters with an emphasis in patent litigation in federal courts and before the International Trade Commission. He has represented both plaintiffs and defendants in patent cases across a broad range of technologies, including web applications, electro-mechanical devices, semiconductor fabrication, and business methods.

He has prepared and prosecuted patent applications directed toward a wide array of technologies, including medical devices, wireless systems, embedded systems, neural networks, web applications, financial and insurance products, and business methods.

Salmon is a member of the New York Intellectual Property Law Association, the Intellectual Property Law Section of the New York State Bar Association, and has been published in the St. John’s Journal of Legal Commentary.

He earned a B.S. in biomedical engineering in 2001 from the University of Rochester and a J.D. in 2004 form St. John’s University School of Law.

About Troutman Sanders:
Troutman Sanders LLP is an international law firm with over 700 lawyers and 15 offices in North America, Europe and Asia. Founded in 1897, the firm’s lawyers provide counsel and advice in practically every aspect of civil and commercial law related to the firm’s core practice areas: Corporate, Finance, Litigation, Public Law and Real Estate. Firm clients range from multinational corporations to individual entrepreneurs, federal and state agencies to foreign governments, and non-profit organizations to businesses representing nearly every sector and industry. See www.troutmansanders.com for more information.

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