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Understanding Patent Law 2015

 
Author(s): Marta E. Gross
Practice Area: Intellectual Property
Published: Jul 2015
PLI Item #: 59334
CHB Spine #: G1237

Marta Gross, a senior partner in Goodwin Procter’s IP Litigation Group, is a member of its Patent Litigation and Life Sciences Practices. She also serves on the firm’s Executive Committee.

For more than 25 years, Ms. Gross has focused her practice on patent matters, including patent litigation, strategic counseling and opinions, and patent-related due diligence. She has been recognized as one of the country’s leading IP lawyers by a number of industry publications, including LMG Life Sciences, Managing Intellectual Property and Super Lawyers.

Work for Clients

Ms. Gross developed the strategic patent counseling practice to support Teva, the world’s largest generic pharmaceutical company. For more than 10 years she has led this practice team, which provides validity and infringement advice and opinions, as well as strategic counseling, to numerous life science clients.

Ms. Gross’s recent representative patent litigation engagements include:

  • Lead counsel for Roxane Laboratories (Roxane) in a patent infringement action filed by Prometheus under the Hatch-Waxman Act in response to Roxane’s filing of an abbreviated new drug application (ANDA) for the pharmaceutical drug alosetron. After a bench trial, the District Court found Prometheus’s patent invalid.
  • Lead counsel for Makhteshim Agan of North America (MANA) and Control Solutions (CSI) in a patent infringement action brought in North Carolina by BASF and Bayer on three patents relating to the pesticide fipronil. The district court granted MANA’s and CSI’s motion for summary judgment of no infringement, which was affirmed by the Federal Circuit. Ms. Gross’s clients were able to launch the first generic fipronil termiticide.
  • Lead counsel for Roxane in a patent infringement action filed by Genzyme under the Hatch-Waxman Act in response to Roxane’s filing of an ANDA for the pharmaceutical drug doxercalciferol. After trial and while on appeal, the case successfully settled and Roxane was permitted to launch its product prior to the expiration of the asserted patent.
  • Lead counsel for Roxane in a patent infringement action filed by Sepracor (now Sunovion) under the Hatch-Waxman Act in response to Roxane’s filing of an ANDA for the pharmaceutical drug eszopiclone. The case successfully settled.
  • Lead counsel for Roxane in a patent infringement action filed by Novartis under the Hatch-Waxman Act in response to Roxane’s filing of an ANDA for the pharmaceutical drug oxcarbazepine. Roxane launched its product prior to the expiration of the asserted patent and subsequently the case successfully settled.
  • Counsel for Cytec in an infringement action filed by Ciba in the District of Delaware on patents involving polymeric microbead technology. The case was resolved by summary judgment in favor of Cytec.

Ms. Gross has represented numerous additional clients in major patent litigations including:

  • Exxon in a high profile action brought by Dow on patents relating to polyolefin catalyst technology
  • Becton Dickinson in a patent litigation brought by Critikon on patents involving safety catheter technology
  • Hoechst Roussel in a patent litigation brought by Warner Lambert on a patent for a drug for treating Alzheimer’s disease
  • Dade-Behring in a patent litigation brought against Biosite on a patent involving methods and devices for performing immunoassays
  • AlliedSignal in a patent litigation brought by FilmTec on a patent involving reverse osmosis technology

Professional Activities

Ms. Gross is a member of the New York City Bar Association and served a three-year term as chair of its Patents Committee. She is also a member of the ABA, AIPLA and NYIPLA and has served on various committees of those organizations.

Thought Leadership

Ms. Gross has lectured on intellectual property law matters such as legal issues for startups, pharmaceutical patents and litigation and patent basics. She has participated in and chaired programs presented at organizations including MIT, Practising Law Institute and the University of Toronto.

Professional Experience

Ms. Gross worked as an engineer (including having major managerial responsibilities) for eight years after her graduation from MIT, during the latter portion of which she attended evening law school. She gained from her engineering experience real-world perspectives regarding the kinds of problems her corporate clients face and finding practical solutions to those problems.

Ms. Gross first worked at General Electric where she participated in GE’s Manufacturing Management Program. Thereafter, she worked at Millipore Corporation. At Millipore, She was the Manager of New Product Development. In that role, she managed the group responsible for bringing Millipore’s new chemical-related chromatography products from the research and development stage to full scale manufacture, in accordance with a schedule and a budget.

Recognition

In 2014, Ms. Gross was named a “Life Sciences Star” in the LMG Life Science Survey; was named an IP Star and one of Managing Intellectual Property magazine’s “Top 250 Women in IP”; and was named one of the leading attorneys in New York by the publication Super Lawyers. She has also been named to the 2014 Women in Business Law Expert Guide.

Education

  • J.D., Suffolk University School of Law, 1988 (Evening Division, cum laude)
  • Sc.B., Chemical Engineering, Massachusetts Institute of Technology, 1980

Bar and Court Admissions

Ms. Gross is admitted to practice in New York and Massachusetts, as well as before the U.S. Patent & Trademark Office and various federal courts.