Mitchell Epner

Epner-Mitchell

Mitchell Epner

Counsel

New York | Three Bryant Park, 1095 Avenue of the Americas, New York, NY, United States of America 10036-6797
+1 212 698 3537 | +1 212 698 3599

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Mitchell Epner is a highly experienced trial counsel, focused on intellectual property and criminal defense. Mr. Epner has been trial counsel for global Fortune 100 pharmaceutical firms, the former Chairman of Hudson News, a Fortune 100 brewery and several financial services executives in white collar litigation.

From 2001-2004, Mr. Epner was an Assistant United States Attorney for the District of New Jersey, where he was lead counsel on over 100 cases, including jury and bench trials. In addition, he was a law clerk to Judge Conrad K. Cyr of the United States Court of Appeals for the First Circuit and Judge Herbert N. Maletz of the United States District Court for the District of Maryland.

Experience
  • Cepheid v. Roche Molecular Systems Inc. (U.S. District Court, Northern District of California). Represented claimant in international arbitration concerning polymerase chain reaction (PCR) technology; defeated parallel declaratory judgment action commenced by the respondent.
  • Gilead Sciences Inc. v. Merck & Co. Inc. (U.S. District Court, Northern District of California). Represented patent-owners and counterclaimants in a declaratory judgment action concerning pharmaceutical for treatment of Hepatitis C Virus (HCV) infection.
  • In re Hoffmann-La Roche Inc. (Court of Appeals for the Federal Circuit). Represented defendant in patent infringement action concerning a pharmaceutical for treatment of HIV infection; obtained writ of mandamus directing transfer from the Eastern District of Texas.
  • Carnegie Mellon University v. Hoffmann-La Roche Inc. (U.S. District Court, Northern District of California, Court of Appeals for the Federal Circuit). Represented defendants/appellees in patent infringement actions concerning plasmids for expressing recombinant DNA polymerase enzymes; obtained summary judgment that all 72 asserted claims were not infringed or invalid for lack of written description, which was affirmed on appeal by the Federal Circuit. 
  • 454 Life Sciences Corp. v. Ion Torrent Systems, Inc. et al. (U.S. District Court, District of Delaware).  Represented patent-owner in action for infringement of patents directed to technology for Next-Generation Sequencing by emulsion PCR. 
  • Institut Pasteur et al. v. Abbott Laboratories (U.S. District Court, Northern District of Illinois). Represented patentee in action for infringement of patent claiming methods of detecting infection with HIV-2.
  • Roche Molecular Systems, Inc. v. Cepheid (Court of Appeals for the Federal Circuit). Represented plaintiff in action for infringement of patent claiming primers and PCR methods of detecting Mycobacterium tuberculosis (MTB) infection and antibiotic resistance.
  • Lead counsel for individuals in white collar cases pending in the District of New Jersey and the Eastern District of New York.
  • Lead counsel of an individual named in a confidential complaint to the Federal Election Commission regarding purported contributions to the campaign of a federal office-holder.
  • KSR International Co. in its 9-0 victory before the United States Supreme Court in KSR International Co. v. Teleflex Inc., 590 U.S. 338 (2007), widely hailed as the important Supreme Court case on the standard for “obviousness” under the Patent Act. 

Includes matters handled at Dechert or prior to joining the firm.

Education
  • Dartmouth College, A.B., 1991, summa cum laude, Phi Beta Kappa, Presidential Scholar
  • Harvard Law School, J.D., 1994, cum laude
Admissions
  • New York
  • Supreme Court of the United States
  • United States Court of Appeals for the Second Circuit
  • United States Court of Appeals for the Fourth Circuit
  • United States Court of Appeals for the Ninth Circuit
  • United States Court of Appeals for the Federal Circuit
  • United States District Court for the Eastern District of New York
  • United States District Court for the Southern District of New York
Clerkships
  • United States Court of Appeals for the First Circuit, Honorable Conrad K. Cyr
  • United States District Court for the District of Maryland, Honorable Herbert N. Maletz
Memberships
  • John C. Lifland Inn of Court, Master
  • New York Intellectual Property Association, Co-Chair of the Patent Litigation Committee
  • Dartmouth College Alumni Council