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Gerard
F.
Diebner
Partner
New York
Business Phone:
212.704.6118
Business Fax:
212.704.5928
gerard.diebner@troutmansanders.com
vCard
Gerard F. Diebner has 25 years of experience in the field of patent law. His practice concentrates in the areas of pharmaceuticals, biotechnology, chemistry, medical devices, cosmetics, agriculture, veterinary products, pollution control, clean energy and business methods.
Mr. Diebner has extensive trial experience both before the Federal District Courts and the ITC. He also handles patent issues concerning mergers and acquisitions and due diligence searches, and provides general intellectual property corporate advice. He drafts and prosecutes patent applications before the U.S. Patent and Trademark Office and has substantial experience with interference practice. Mr. Diebner works with individual inventors, start-up corporations in emerging growth industries and established multi-national companies.
Mr. 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. Mr. Diebner was also involved with Novo Nordisk’s successful litigation against Genentech concerning human growth hormone and with representing Merck against Searle in a patent interference, where it was held that Merck, not Searle, was the first to invent VIOXX. Mr. Diebner was lead trial counsel for Proveris Scientific Corp. in Proveris v. Innovasystems, which established that the use of a patent laboratory instrument for the purpose of obtaining FDA approval for a drug product did not fall within the sale harbor provision of 35 U.S.C. §271(e)(1).
Publications and Speaking Engagements
Lecturer- Advanced Patent Prosecution Workshop 2006, 2007, 2008, PLI
Legislative Developments in Patent Law- 2008, PLI
Legislative Developments in Patent Law- 2007, PLI
Legislative Developments in Patent Law- 2006, PLI
Your Patent Rights as a Co-Inventor, Mass High Tech- July 2, 2002
Untangling Genomics Technologies in Patent Law, Mass High Tech- July 2, 2001
Representative Experience
Ortho v. Becton, Dickenson Co. - heralded as “the first cannon shot of the biotechnology era”. Settled favorably for client Ortho.
In re Nifedipine - defended Pfizer’s nifedipine patent against numerous generic drug companies.
Xoma v. Centacor - one of the longest biotechnology patent cases tried to a jury, verdict of patent validity and infringement returned for client Xoma after six months of trial.
Genentech v. Novo Nordisk - successfully defended Novo Nordisk against infringement suit by Genentech for recombinant human growth hormone. In this case, for the first (and only) time, the Federal Circuit not only vacated a preliminary injunction, it declared the underlying patent invalid.
Merck v. Searle - successfully defended Merck’s patent covering VIOXX in an Interference proceeding and subsequent litigation where Searle contended it was the first inventor.
Proveris v. Innovasystems - first chair for a one week jury trial before the Federal District Court in Boston, where the jury returned a verdict in favor of our client Proveris. Case established that the use of a patented laboratory instrument used to obtain FDA approval for a drug product did not fall within the safe harbor provision of 35 U.S.C.
Due diligence review of patent portfolio of target company on behalf of a major U.S. pharmaceutical company.
Due diligence review of patent portfolio for foreign (India) generic pharmaceutical companies seeking to purchase U.S. pharmaceutical companies.
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Education
- St. John's University, J.D., 1983
- St. John’s University College Pharmacy, B.S., 1978
Pharmacy
Bar Admissions
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New York
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U.S. Patent and Trademark Office
Court Admissions
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U.S. District Court for the Southern District of New York
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U.S. District Court for the Eastern District of New York
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U.S. Court of Appeals for the Federal Circuit
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Registered Patent Attorney
Memberships
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