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    Lessons Learned from Big Pharma: Minimizing Risk at Each Stage of a Therapeutic Product’s Life Cycle
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Martin J. Black, co-chair of Dechert’s intellectual property group and a nationally recognized trial lawyer, represents pharmaceutical, electronics, and financial services companies in patent, trademark, copyright, trade secret and software disputes. He also helps clients monetize their patent portfolios and advises on complex matters at the interface of antitrust and intellectual property law.

Mr. Black has handled a wide range of litigation and strategic patent matters for a diverse array of companies, including Hitachi, Endo Pharmaceuticals, GlaxoSmithKline, Pfizer, Comcast, Cablevision, Citigroup, TD Banknorth and others. He regularly handles Markman hearings and trials and has been first chair in several dozen patent cases, winning several multimillion awards at trial. He has developed special expertise in computer-related litigation and in representing branded companies in Hatch Waxman disputes. Multinational companies have frequently turned to him for assistance in monetizing their patent portfolios. In one matter relating to computer monitor technology, he led an international team that generated US$125 million in revenue, culminating in a trial in the District of Delaware, at which he won a US$9 million award, including willfulness damages. In a trade secret and patent case relating to computer avionics, he tried a four-week trial to a jury in the Western District of Tennessee, resulting in a US$23 million award, including willfulness damages and attorneys fees.

The patent cases he has handled around the country involve technologies as diverse as floor wax compounds, molecular genetics, pharmaceuticals, electronic games, mobile computers, optical devices, septic systems, automated call processing technology and chip technology. He has also led litigation teams in UK High Court patent litigation and managed patent litigation matters in Germany, the European Patent Office, Asia and South Africa.

In addition to his extensive patent litigation experience, Mr. Black has served as lead trial counsel in numerous trademark, copyright, software and trade secret disputes. These include Richards v. CNN International, (E.D. Pa.), which he tried for CNN International in relation to its World Beat music news show, and QVC v. Home Shopping Network, (TTAB), relating to the rights in the phrase “home shopping.” He prevailed in the Third Circuit in Scharle v. NASCAR and The Franklin Mint, obtaining the dismissal of a copyright claim brought in relation to the creation of the NASCAR Nextel Cup Trophy. He has also tried trade secret cases relating to packaging machinery, satellite antennae, and advertising materials.

Mr. Black’s litigation prowess has been recognized by Chambers USA, which ranks him as one of the country’s preeminent patent litigators. Furthermore, when Benchmark Litigation 2009 selected its “litigation stars” in Pennsylvania, Mr. Black was the only IP litigator named to the list. He is also recognized as a preeminent intellectual property lawyer by Best Lawyers in America.

Significant Representations

  • Elonex v. Packard Bell NEC, et al; Elonex v. Compaq Computer, et al. Licensing and litigation campaign in relation to Elonex’s monitor power management technology. Brought patent infringement claims in the U.S. against more than 30 companies, pursued litigation in the UK, German, and Taiwanese national courts, and defended against opposition proceedings in the European and Japanese Patent Offices. The litigation and licensing campaign resulted in Elonex receiving over US$125 million in royalties, settlements, and damages, including a US$9 million judgment after trial in the District of Delaware, which the Federal Circuit affirmed
  • Endo Pharmaceuticals v. Impax Laboratories, Actavis, Barr and Sandoz (U.S. District Court, Districts of Delaware and New Jersey). Lead counsel for Endo in relation to four ANDAs filed against Endo’s branded oxymorphone extended release tablet, OPANA ER®
  • Lectec v. Endo Pharmaceuticals, et al. (U.S. District Court, Eastern District of Texas). Lead counsel for Endo in defense of infringement claim relating to Endo’s US$750 million a year Lidoderm® analgesic patch
  • Hitachi, Ltd. Multiple representations of Hitachi in international patent enforcement efforts, in relation to computer, monitor and television technology, including digital television standards
  • Mondis v. LG Electronics, Innolux, Hon Hai Precision, Top Victory, et al. (U.S. District Court, Eastern District of Texas; German infringement court, Dusseldorf). Leading infringement actions in Texas and Germany in relation to Hitachi patents covering the plug and play interface between computers and monitors
  • High Point v. Sprint Nextel (U.S. District Court, District of Kansas); High Point v. KPN (Netherlands infringement and validity courts); High Point v. E-Plus (German infringement court). Representation of High Point in litigation in the U.S. and the Netherlands in relation to patents developed at Bell Labs which cover fundamental elements of CDMA networks and related infrastructure equipment
  • Ronald A. Katz Licensing v. TD Banknorth et. al (U.S. District Court, District of Delaware). Represent TD Banknorth in multiple-defendant patent dispute relating to automated call center technology
  • Ronald A. Katz Licensing and MCI v. AT&T and Universal Card Services, a Citigroup Company (U.S. District Court, Eastern District of Pennsylvania). Represented Citicorp subsidiary, Universal Card Services Corp., the issuer of the AT&T Universal Card (a combined credit, cash, and calling card), in a patent infringement case brought against AT&T and UCS by Ronald A. Katz Technology Licensing, and licensee, MCI WorldCom. Plaintiffs alleged that UCS operated its call centers in a manner that infringed the Katz’s interactive phone service technology patents. The case settled favorably to UCS, after litigation and an extensive Markman hearing
  • RCN Corporation v. IBM Corporation (U.S. Bankruptcy Court, Southern District of New York). Represented RCN Corporation against IBM in a patent infringement claim against RCN in relation to its portfolio of Internet patents. Litigated the infringement claim in the unusual forum of a United States Bankruptcy Court, obtaining a highly favorable settlement and license to IBM’s portfolio in the field
  • Inpro Licensing v. Research in Motion (D. Del., N.D. Tex, UK High Court, and German courts). Lead counsel to Inpro Licensing in U.S. patent litigation over PDA technology; specially admitted to act as solicitor in UK litigation over European patent relating to use of proxy servers in mobile computer networks. Pending
  • Arachnid v. Merit Industries (N.D. Ill.). Represented Merit Industries in a patent infringement case relating to system design and communication protocol used in distributed electronic games. Settled favorably after Markman hearing
  • Leviton Manufacturing Co. Inc. v. Interline Brands, Inc. (U.S. District Court, Middle District of Florida). Represent Interline Brands in patent dispute relating to circuit interrupting devices
  • Infiltrator Systems v. Zoeller (U.S. District Court, Western District of Kentucky). Represent Infiltrator, a pioneer in septic system technology, in a patent infringement action in Louisville, Kentucky relating to septic systems sold throughout the United States. Pending
  • Interspiro USA v. Figgie International (U.S. District Court, District of Delaware). Represented Interspiro USA, leading manufacturer of firefighting equipment, in obtaining multi-million judgment, which was upheld by the Federal Circuit, including US$1 million fee award for breach of patent settlement agreement
  • Pfizer, Inc. Represented Pfizer, a pharmaceutical company, in a variety of intellectual property and patent-antitrust matters, including litigation over patent interference settlement and patent matters relating to Pfizer’s animal health business, one of the largest in the world
  • Innovative Solutions and Support v. Kollsman, Inc., et al. (U.S. District Court, Western District of Tennessee). Successfully represented plaintiff Innovative Solutions in trade secret and patent litigation relating to the company’s proprietary air data avionic computers. After a four week jury trial in Memphis, Tennessee, the jury returned a verdict of almost US$7 million in favor of ISS. The court awarded willfulness damages and fees, increasing the award to US$23 million
  • Richards v. CNN (U.S. District Court, Eastern District of Pennsylvania). Represented CNN when record company sought a preliminary injunction to shut down CNN International’s “World Beat” music news program. Successfully defeated the claim at trial
  • NASCAR v. Franklin Mint and Scharle (U.S. District Court, Eastern District of Pennsylvania). Represented the Franklin Mint, which designed a new trophy for the NASCAR Nextel Cup, in connection with claims relating to the copyright ownership of the design and attribution of authorship. Summary judgment granted for the Franklin Mint; successfully argued 3rd Circuit appeal
  • BNP CooperNeff v. Morgan Stanley (Chester County Court of Common Pleas, Philadelphia). Represented BNP CooperNeff, the program trading arm of Banc Nationale de Paris, in a trade secret dispute implicating mathematical models and algorithms for trading baskets of stocks and derivatives in automated trading systems. Settled favorably
  • QVC v. Home Shopping Network (Trademark Trial and Appeals Board). Represented QVC against the Home Shopping Network in a hard-fought battle before the Trademark Trial and Appeals Board, after which the Board adopted QVC’s position that Home Shopping Network had no rights in the words “home shopping”

Education

University of Pennsylvania, B.S.E., 1985, cum laude, Benjamin Franklin Scholar
The University of Chicago Law School, J.D., 1988, cum laude

Court Admissions

United States Court of Appeals for the Federal Circuit
United States Bankruptcy Court, Eastern District of Pennsylvania
United States Court of Appeals for the Third Circuit
United States District Court for the Eastern District of Pennsylvania
Supreme Court of New Jersey

Bar Admissions/Qualifications

Pennsylvania
New Jersey

Clerkships

Honorable Edward N. Cahn, United States District Court for the Eastern District of Pennsylvania

Memberships

Mr. Black has lectured in various venues on issues of intellectual property protection, Internet law, trade secret law, electronic discovery, and the international enforcement of intellectual property rights.