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 healthcare and life sciences industries including UCB, Loxo (an Eli Lilly company), Pfizer and Abiomed, as well as providing confidential counseling to numerous emerging and startup life sciences companies.
Robert routinely advises clients on litigation threats surrounding product launches, generic or biosimilar challenges, and failed collaborations, as well as navigating contractual breaches and trade secret issues related to the life sciences industries. 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 2019 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 education services.
Robert’s research, in connection with his M.S.E., involved laboratory work focused on the role of mechanotransduction pathways in promoting bone 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.
- Represented Loxo Oncology, an Eli Lilly company, in a trade secret misappropriation action related to allegations that former Array employees stole trade secrets on Loxo’s behalf. Array’s preliminary injunction motion was denied in full. After an appeal in the 10th circuit, Array agreed to dismiss its claims.
- 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.
Prior Firm Experience:
- 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 Pfizer 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 the blockbuster pharmaceutical Lyrica®, 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.
- Counsel to Abiomed 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 Pfizer 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.
Education & Admissions
J.D., University of Michigan Law School
M.S.E., Biomedical Engineering, University of Michigan
B.S.E., Biomedical Engineering, Unviersity of Michigan
Member of the State Bar of New York
Admitted to practice before the U.S. Patent and Trademark Office, the U.S. District Courts for the Southern and Eastern Districts of New York and the U.S. Court of Appeals for the Federal Circuit