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Robert Counihan

Partner, Litigation  

New York 212.430.2748

Overview

Robert Counihan focuses his practice on patent litigation and commercial disputes, as well as transactional matters related to intellectual property rights and IP portfolio analysis. He has worked for multinational companies in the technology, healthcare and life sciences industries including UCB, Google, Pfizer and Abiomed.

In patent litigation matters, Robert advises multinational pharmaceutical and biotech companies on litigation strategies in advance of product launch and in anticipation of generic challenges. He acts as counsel in litigations involving small molecule and biologic products in numerous district courts throughout the United States and before the Patent Trial and Appeal Board (PTAB). He counsels technology and medical device companies in “bet the company” litigations involving patent portfolios asserted by commercial rivals.

Robert has been honored as a Life Sciences Rising Star in Law360 ’s list of top attorneys under 40. He has also been highlighted for his work in patent litigation by The Legal 500.

Robert is dedicated to pro bono service. He has negotiated IP licenses and research grants on behalf of an international research foundation, and he has represented children seeking appropriate special ed services.

Robert’s research, in connection with his M.S.E., involved laboratory work focused on the role of mechanotransduction pathways in promoting b​one healing and growth.

Prior to joining Fenwick & West, Robert worked at a leading international law firm where he was a partner in the litigation group.

Presentations:

  • “Uniformity in E-Discovery Obligations and Sanctions After Recent Amendments to the Federal Rules,” American Intellectual Property Lawyers Association, May 19, 2016
  • "Teva: The Real Impact on Claim Construction Tactics in the PTAB & Federal Courts," American Intellectual Property Lawyers Association, July 29, 2015 (webinar)

Prior Firm Experience:

  • Trial counsel for UCB in Hatch-Waxman patent litigation in the U.S. District of Delaware involving a product for the treatment of Parkinson’s disease, Neupro®. Successfully obtained a trial verdict of infringement under the doctrine of equivalents, a decision upheld by the Federal Circuit Court of Appeals.
  • Counsel to UCB in a declaratory judgment patent infringement action against a technology transfer company in the U.S. District Court for the Eastern District of Virginia. The litigation involved UCB’s biologic Cimzia®, an antibody approved for the treatment of Crohn's disease and rheumatoid arthritis, among other indications. Successfully obtained summary judgment of no infringement; a decision affirmed by the U.S. Court of Appeals for the Federal Circuit.
  • Successful representation of a pharmaceutical conglomerate in a series of Hatch-Waxman patent infringement cases in the U.S. District Court for the District of Delaware against eight generic manufacturers. The actions involved a blockbuster pharmaceutical drug indicated for treatment of seizures and pain. Trial wins on all asserted patents have been upheld by the U.S. Court of Appeals for the Federal Circuit, and have guided enforcement strategies in other jurisdictions around the world.
  • Trial and IPR victories on behalf of two pharmaceutical companies in Hatch-Waxman litigation against 12 generic defendants for infringement of five patents. Representation included proceedings in the District of Delaware and the U.S. District Court for the Northern District of West Virginia and defending each patent against inter partes review petitions.
  • Counsel to a medical device manufacturer in patent infringement actions in the U.S. District Court for the District of Massachusetts involving seven patents asserted by a commercial competitor against the client’s sole product line.
  • Representation of a pharmaceutical conglomerate in litigation involving breach of contract allegations related to a research and license agreement between a university and the client involving one of the client’s drug products.
  • Representation of Google in a patent infringement matter filed in the District of Delaware by a multinational telecommunications company. The action involved six patents allegedly related to location-based services.
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