LAWYER
Brian M. Goldberg
Counsel | Philadelphia
Brian M. Goldberg

Brian M. Goldberg focuses his practice on intellectual property with an emphasis on patent litigation. His practice spans a diverse range of industries and technologies, with a particular focus on life sciences. In addition to his intellectual-property work, Mr. Goldberg maintains an active pro bono practice in a variety of areas.

Mr. Goldberg has successfully litigated patent cases through bench and jury trials, as well as parallel Patent Trial and Appeal Board (PTAB) proceedings in multiple fields, including pharmaceuticals, medical devices, telecommunications, and video signal technology. He has extensive experience litigating Hatch-Waxman Act ANDA infringement actions. Mr. Goldberg’s neuroscience background and deep understanding of the statutory and regulatory framework of the Hatch-Waxman Act provides him invaluable insight in litigating cases to achieve successful outcomes for his clients. Mr. Goldberg has handled all phases of litigation from pre-suit investigation, fact and expert discovery, Markman, trial, and appeal. Since joining Dechert, Mr. Goldberg has played an integral role in litigation teams for a significant number of patent litigations in federal courts throughout the United States for various branded pharmaceutical companies including Endo Pharmaceuticals and Baxter. In addition to his life sciences patent litigation, he has played integral roles litigating technology patent disputes and trademark disputes in district courts, the PTAB, and Trademark Trial and Appeal Board. As a member of many trial teams, Mr. Goldberg is trusted to take on critical aspects of the trial including, preparation of the pretrial order, drafting pretrial motions, arguing Daubert motions and motions in limine, examining witnesses, preparing witnesses for trial, and drafting post-trial briefs.

Prior to joining Dechert, Mr. Goldberg was an associate at a large law firm where he gained valuable experience in general litigation, intellectual property and patent litigation including the representation of multinational manufactures of generic pharmaceuticals in Hatch-Waxman Act ANDA infringement actions.

As an undergraduate, Mr. Goldberg’s laboratory research investigated the causes of HIV associated dementia focusing on the cystine/glutamate antiporter (xCT) in astrocytes as a potential source of excitotoxicity.

  • Genzyme Corp. et al. v. Novartis Gene Therapies et al. USA Inc. et al. (D. Del.). Representing Sanofi and Genzyme in a patent infringement suit involving multiple patents relating to rAAV vectors. Case is ongoing.

  • Par Pharmaceutical, Inc. et al. v. Zydus. et al. (D.Del. & E.D. Tex.). Representing Par Pharmaceutical, Inc. in Hatch-Waxman case filed against generic companies involving Par’s varenicline tartrate smoking cessation product. Case is ongoing.

  • Par Pharmaceutical, Inc. et al. v. Cipla Ltd. et al. (D.N.J.). Represented Par Pharmaceutical, Inc. in Hatch-Waxman case filed against generic company involving Par’s ready-to-use VASOSTRICT® (vasopressin) product. Case settled.

  • IPCom Gmbh & Co. KG v. AT&T Inc. et al. (E.D. Tex. and PTAB). Represented IPCom in multiple patent infringement suits involving patents relating to 3G, 4G, and 5G telecommunications systems. Successfully responded to inter partes review challenge of patent in parallel proceeding with the PTAB denying the petition to institute inter partes review. Cases settled favorably.

  • In re Opana ER Antitrust Litigation (N.D. Ill.). Represented Endo Pharmaceuticals defending against antitrust claims. Jury found for Endo that settlement at issue was not anti-competitive.

  • Boston Scientific Corportation et al. v. Micro-Tech Endoscopy USA Inc. et al. (D. Del.). Represented Boston Scientific in patent infringement suit involving multiple patents relating to endoscopic hemostasis clips. Matter settled favorably.

  • Mondis Technology Ltd. v. LG Electronics, Inc. (D.N.J.). Represented Mondis in case against LG’s digital televisions that implement HDMI and VESA plug-and-play technology. Obtained US$14.3M jury verdict. Matter pending.

  • Stiefel Laboratories v. Taro Pharmaceutical Industries, Ltd. (S.D.N.Y.): Represented GlaxoSmithKline in an ANDA case relating to EVOCLIN® (clindamycin phosphate) Foam. Case settled.

  • Endo Pharmaceuticals v. Teva, et al. (D. Del.). Represented Endo Pharmaceuticals in numerous Hatch-Waxman patent infringement cases regarding Endo’s OPANA® ER (oxymorphone ER) controlled-release oxymorphone product against seven generic pharmaceutical manufacturers. Obtained verdict of infringement and validity, which were affirmed by the Federal Circuit.

  • Endo Pharmaceuticals v. Teva, et al. (S.D.N.Y.). Trial counsel for Endo Pharmaceuticals in Hatch- Waxman Act case filed against a dozen ANDA filers involving Endo's OPANA® ER (oxymorphone ER) product. Following a five-week trial, the court ruled in Endo's favor, finding its patents valid and infringed. Dechert later secured Federal Circuit affirmance of its hard-fought patent trial victory while the case was on appeal, enjoining all generics through 2023.

  • Member of litigation team representing multinational manufacturers of generic pharmaceuticals in Hatch-Waxman patent litigation and appeals.

  • Member of litigation team representing seller of a midtown Manhattan office building prosecuting claims for breach of Purchase and Sale Agreement by ostensible purchaser, winning a motion for summary judgment allowing seller to retain a US $38.5 million deposit on the sale, plus interest.

  • Member of trial team representing a large financial institution in an eight-day bench trial in the Southern District of New York. After a defense verdict for the financial institution at trial the case settled favorably on appeal.

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

Federal Circuit Court of Appeals Tailors Its Decision on Skinny Labels - Intellectual Property & Technology Law Journal (November 2, 2021)

Services
    • University of Pennsylvania, B.A., Neuroscience, 2008
    • Fordham University School of Law, J.D., 2011, Ruth Whitehead Daly Scholar; Associate Editor, Fordham Intellectual Property, Media and Entertainment Law Journal
    • New Jersey
    • New York
    • Pennsylvania
    • United States District Court for the District of New Jersey
    • United States District Court for the Eastern District of New York
    • United States District Court for the Southern District of New York
    • United States Court of Appeals for the Federal Circuit

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