Robert Counihan

Office

New York

Practices

Appellate

Industries

Education & Admissions

J.D., University of Michigan Law School

M.S.E., Biomedical Engineering, University of Michigan

B.S.E., Biomedical Engineering, University of Michigan

Admitted to practice in New York

Admitted to practice before 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

Registered to practice before the U.S. Patent and Trademark Office

An accomplished courtroom advocate and counselor to management teams and boards of directors, Robert helps life sciences companies of all sizes navigate business conflicts. His industry knowledge, legal experience, and education through a B.S.E. and M.S.E. in biomedical engineering enable Robert to guide companies through all manner of patent, trade secret and commercial disputes.

Before litigation begins, Robert counsels clients on litigation threats surrounding product launches, generic or biosimilar challenges, failed collaborations, contractual breaches, and trade secret misappropriation.

Robert’s courtroom experience crosses trial and appellate courts throughout the United States and the Patent Trial and Appeal Board. And, he has advised clients on cross-border litigation strategies involving multiple U.S. and foreign jurisdictions. He has litigated disputes in technologies across the life sciences industry, including small molecules, biologics, gene therapy, medical devices, and software. Such litigations include “bet the company” actions against commercial rivals, Hatch-Waxman and BPCIA actions against generic/biosimilar challengers, and disputes with investors and licensing partners, among others.

Robert’s clients and engagements span the spectrum of large multinationals, including UCB, Loxo Oncology (an Eli Lilly company), Pfizer, Novo Nordisk, Google and Abiomed, through emerging and startup companies, such as AnaptysBio, Avalyn Pharma, Melinta Therapeutics, Passage Bio, and Sutro Biopharma.

Dedicated to pro bono service, Robert has negotiated IP licenses and research grants on behalf of an international research foundation and represented children seeking special education services.

Regularly recognized for his accomplishments, Robert has been repeatedly recognized for his patent litigation practice by The Legal 500 and Super Lawyers. He was also previously named one of the nation’s top five life sciences lawyers under 40 by Law360.

Robert is a member of the Alumni Advisory Board for the College of Engineering for the University of Michigan, where he provides guidance and input on strategic initiatives for the College.

Lead counsel for CSafe Global, a global cold chain shipping provider, in patent litigation in the Northern District of Georgia and before the U.S. Patent Trial & Appeal Board, whereby CSafe seeks to enforce its patents against its competitor, Envirotainer AB. These matters remain on-going.
Counsel for Novo Nordisk in multiple Hatch-Waxman ANDA litigations involving generic challenges to patents related to Novo Nordisk’s blockbusters Victoza®, Ozempic®, and Saxenda® insulin products, including device patents related to injection pens. These matters remain on-going.
Lead counsel for UCB in Hatch-Waxman ANDA litigation, and related inter partes review proceedings before the U.S. Patent Trial & Appeal Board related to UCB’s Xyzal Allergy 24HR® allergy relief drug. Robert and the Fenwick team obtained a stipulation of infringement of Apotex, and then successfully defeated Apotex’s petition for inter partes review based on obviousness.
Trial counsel for UCB in Hatch-Waxman patent litigation in the U.S. District Court for the 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 U.S. Court of Appeals for the Federal Circuit.

Lead counsel for CSafe Global, a global cold chain shipping provider, in patent litigation in the Northern District of Georgia and before the U.S. Patent Trial & Appeal Board, whereby CSafe seeks to enforce its patents against its competitor, Envirotainer AB. These matters remain on-going.
Counsel for Novo Nordisk in multiple Hatch-Waxman ANDA litigations involving generic challenges to patents related to Novo Nordisk’s blockbusters Victoza®, Ozempic®, and Saxenda® insulin products, including device patents related to injection pens. These matters remain on-going.
Lead counsel for UCB in Hatch-Waxman ANDA litigation, and related inter partes review proceedings before the U.S. Patent Trial & Appeal Board related to UCB’s Xyzal Allergy 24HR® allergy relief drug. Robert and the Fenwick team obtained a stipulation of infringement of Apotex, and then successfully defeated Apotex’s petition for inter partes review based on obviousness.
Trial counsel for UCB in Hatch-Waxman patent litigation in the U.S. District Court for the 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 U.S. Court of Appeals for the Federal Circuit.

Lead counsel for AnaptysBio in a commercial dispute related to its relationship with Tesaro, and its parent GlaxoSmithKline, wherein AnaptysBio alleged that Tesaro/GSK had breached exclusivity obligations to AnaptysBio by pursuing development of a competing antibody. Robert and the Fenwick team won a Motion to Expedite trial to put early pressure on Tesaro/GSK and secure a favorable settlement.
Lead counsel in confidential arbitration proceeding on behalf of a Taiwanese biotech company in contract dispute related to commercialization rights and obligations. Negotiated settlement offering our client long-term commercial upside tied to the product.
Lead defense counsel in contract dispute in the Southern District of New York for Vida Health. Robert and the Fenwick team used a Motion to Dismiss to negotiate a successful settlement for our client.

Lead counsel for AnaptysBio in a commercial dispute related to its relationship with Tesaro, and its parent GlaxoSmithKline, wherein AnaptysBio alleged that Tesaro/GSK had breached exclusivity obligations to AnaptysBio by pursuing development of a competing antibody. Robert and the Fenwick team won a Motion to Expedite trial to put early pressure on Tesaro/GSK and secure a favorable settlement.
Lead counsel in confidential arbitration proceeding on behalf of a Taiwanese biotech company in contract dispute related to commercialization rights and obligations. Negotiated settlement offering our client long-term commercial upside tied to the product.
Lead defense counsel in contract dispute in the Southern District of New York for Vida Health. Robert and the Fenwick team used a Motion to Dismiss to negotiate a successful settlement for our client.

Co-lead counsel for Amyndas Pharmaceuticals, a spin-out of the University of Pennsylvania, in litigation in the District of Massachusetts and Denmark, against Zealand Pharma and Alexion Pharmaceuticals, an AstraZeneca subsidiary, for misappropriation of trade secret information surrounding Amyndas’ next-generation complement therapeutics. These matters remain on-going.
Co-lead counsel for Loxo Oncology, an Eli Lilly company, in a trade secret misappropriation and contractual dispute 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 U.S. Court of Appeals for the Tenth Circuit, Array agreed to dismiss its claims.

Co-lead counsel for Amyndas Pharmaceuticals, a spin-out of the University of Pennsylvania, in litigation in the District of Massachusetts and Denmark, against Zealand Pharma and Alexion Pharmaceuticals, an AstraZeneca subsidiary, for misappropriation of trade secret information surrounding Amyndas’ next-generation complement therapeutics. These matters remain on-going.
Co-lead counsel for Loxo Oncology, an Eli Lilly company, in a trade secret misappropriation and contractual dispute 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 U.S. Court of Appeals for the Tenth Circuit, Array agreed to dismiss its claims.

“Timing for Patent Enforcement Against Pharmaceutical Product Launches,” Bloomberg Law, May 2022 (co-author)
“Patent Holder Remedies & Drug Product Launches,” Bloomberg Law, May 2022 (co-author)
"Professional Perspective: Preempting Patent Enforcement Prior to Product Launches," Bloomberg Law, May 2022 (co-author)
"Uniformity in E-Discovery Obligations and Sanctions After Recent Amendments to the Federal Rules," American Intellectual Property Lawyers Association, May 2016 (co-author)
Teva: The Real Impact on Claim Construction Tactics in the PTAB and Federal Courts," American Intellectual Property Law Association, July 2015 (co-author)
Mayo v. Prometheus: Another Guidepost on the Road to Determining Patentability in the Post-Industrial Age," Bio-science Law Review, November 2012 (co-author)

“Timing for Patent Enforcement Against Pharmaceutical Product Launches,” Bloomberg Law, May 2022 (co-author)
“Patent Holder Remedies & Drug Product Launches,” Bloomberg Law, May 2022 (co-author)
"Professional Perspective: Preempting Patent Enforcement Prior to Product Launches," Bloomberg Law, May 2022 (co-author)
"Uniformity in E-Discovery Obligations and Sanctions After Recent Amendments to the Federal Rules," American Intellectual Property Lawyers Association, May 2016 (co-author)
Teva: The Real Impact on Claim Construction Tactics in the PTAB and Federal Courts," American Intellectual Property Law Association, July 2015 (co-author)
Mayo v. Prometheus: Another Guidepost on the Road to Determining Patentability in the Post-Industrial Age," Bio-science Law Review, November 2012 (co-author)