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Understanding Patent Law 2016

Speaker(s): Charles A. Weiss, Christopher M. Tobin, Eric Huang, John M. Hintz, Karen Mangasarian, Marta E. Gross, Sarah Angela Solomon
Recorded on: Jun. 28, 2016
PLI Program #: 145848

Charles A. Weiss is a partner in Holland & Knight's New York office and head of the New York Intellectual Property Group. He concentrates his practice on technology-driven litigation, counseling and transactions, primarily in the pharmaceutical, chemical and biotechnology areas. He also counsels clients on questions of patent validity and infringement, and provides a litigator's perspective on prosecution matters.

Mr. Weiss litigates patent, trade secret, license and false advertising cases in diverse technical areas. He has handled cases over the years involving expression of recombinant proteins and antibodies, controlled release pharmaceuticals, medical diagnostic agents, endocrine and hormone products, nutritional supplements, industrial control systems, food chemistry, nucleic acid diagnostic assays and commercial detergents. He also has extensive experience in the investigation of product counterfeiting and pursuit of those responsible.

Mr. Weiss also has a diverse non-litigation practice focused on supporting transactions in which a substantial value is attributed to a party's patent position, such as its ability to exclude competitors or to bring its product to market free of meritorious infringement claims by others. He negotiates and drafts licenses and other agreements, including commercial collaboration, joint research and product acquisition agreements, and regularly advises financial professionals on the strength or vulnerability of a target company's patent positions.

Mr. Weiss also has experience in commercial matters, including corporate and securities transactions, contract litigation, insurance and banking disputes, construction litigation, accounting and attorney malpractice, and investigations of employee malfeasance and fraud. Mr. Weiss is an associate adjunct professor at Brooklyn Law School, where he designed and teaches a course on food and drug law.

Eric Huang is a partner in Quinn Emanuel's New York office.  He represents both plaintiffs and defendants in intellectual property matters.  He specializes in building patent infringement cases on either side of the “v” in highly technical subject matter.  He has extensive experience litigating patent cases involving a wide range of technologies – smartphones, user interface software, touchscreen technology, circuits, semiconductor processing, spreading and modulation techniques used in wireless communication, various aspects of 3G and 4G cellular communications, error control coding including turbocodes and low density parity check codes, digital video compression, audio compression, pharmaceutical formulations, fiber optics, liquid crystal displays, mechanical measurement devices, electronic engine control, e-commerce, and computer systems. 

His practice encompasses all aspects of case preparation, pre-trial discovery, expert preparation, trial preparation and trial in U.S. federal district courts and before the U.S. International Trade Commission.  He served as a trial counsel for respondent Samsung in ITC investigation 337-TA-796 initiated by Apple against Samsung's smartphones, tablets and media players.  The firm successfully defended against efforts to stop the importation of Samsung devices; to date, no Samsung device was excluded or seized as a result of any order from this investigation.  Eric recently helped secure a very favorable jury verdict for Marvell Semiconductor in a case brought by France Telecom in San Francisco federal district court alleging infringement by Marvell’s 3G baseband chips.  In addition to a favorable damages verdict of a fraction of the damages sought by plaintiff, the firm recently secured judgment for Marvell Semiconductor on post-trial motions in that case.  Eric also has experience prosecuting patents and is admitted to the U.S. Patent & Trademark Office. 

Eric’s representative clients include BlackBerry, California Institute of Technology, Canon, Marvell Semiconductor, MediaTek, Monolithic Power Systems, Motorola, Reliant Pharmaceuticals, Rovi, Samsung, and Sony.

Prior to joining Quinn Emanuel, Eric was an associate with the law firm of Fish & Neave and served as a law clerk to the Honorable Eric Bruggink on the U.S. Court of Federal Claims (1997-1998).  He is a 1997 graduate of the George Washington University Law School, and has a materials science & engineering degree from the University of Michigan in Ann Arbor.  Prior to law school, Eric worked for National Semiconductor in California as an electronic packaging engineer.  He currently serves on the Board of Directors of the New York Lawyers for the Public Interest and the Board of Trustees for the Blue School, a private independent school in New York City.

John Hintz is a Shareholder in Maynard Cooper’s New York office and a member of the firm’s Intellectual Property Litigation and Intellectual Property Protection practice groups. He has more than 30 years of experience handling intellectual property matters, and in particular, patent litigation.

John has worked on all aspects of patent disputes and has litigated in federal courts throughout the country, at the Court of Appeals for the Federal Circuit, and at the International Trade Commission.  John also has significant transactional, licensing, and counseling experience, including advising clients on the IP aspects of IPOs, mergers and acquisitions, and the transfer and licensing of IP assets.

His clients span a broad range of industries covering diverse technologies including search engines, financial services, semiconductors, barcode scanning, Internet-related businesses and technologies, telecommunications, LED and other lighting devices, computer simulations, commodity chemicals, polymers, process control instruments, medical devices, and life sciences.

John served as Samsung’s expert witness on U.S. law related to patents and patent licensing in disputes between Samsung and Apple in the Netherlands, France, Italy, Japan and Australia.

John began his IP career and became a partner at the preeminent IP litigation law firm Fish & Neave.

Karen Mangasarian is a partner and intellectual property lawyer with Foley & Lardner LLP. She counsels biotechnology, pharmaceutical, and other life sciences clients on all aspects of intellectual property, including procurement and management of worldwide patent rights, patent life cycle management, development of competitive patent strategies, licensing, IP due diligence, and validity, patentability, non-infringement, and freedom-to-operate analyses. She also has extensive experience in contentious patent matters, including interferences, re-examinations, oppositions, and litigation. Dr. Mangasarian has successfully worked with clients across a wide range of technology areas in life sciences including small molecule pharmaceuticals, pharmaceutical formulations, antibodies, protein therapeutics, CRISPR and diagnostic and therapeutic methods in molecular and cellular biology, immunology, microbiology, biochemistry, genomics, and computational biology. She is a member of the firm’s Chemical, Biotech & Pharmaceutical Practice. Prior to joining Foley, Dr. Mangasarian was a partner at a major New York City-based law firm.

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.


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.


  • 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.

Sarah A. Solomon is a partner in the firm’s Technology & Life Sciences Group.

Ms. Solomon represents biotechnology, pharmaceutical, medical device, diagnostic and other life sciences companies in connection with their intellectual property, commercial and M&A transactions. She regularly advises private and public companies on complex strategic collaboration and partnering transactions (such as co-development, joint research and development agreements, patent licenses, strategic alliances and joint ventures); research, development and commercial relationships (such as manufacturing, distribution, supply, clinical trial, university licenses and services arrangements); and mergers and acquisitions (such as product acquisitions, spin-outs and patent portfolio acquisitions). Ms. Solomon also counsels clients in connection with international transactions and relationships in North America, South America, Europe and Asia.


  • J.D., University of California Hastings College Law, 2001
  • B.S., Biology, University of California, San Diego, 1996

Bar and Court Admissions

Ms. Solomon is admitted to practice in California.

Clients look to Chris for his extensive background in patent prosecution and counseling, including the development and management of patent portfolios of various sizes.  He has a proven record of success in various settings and technology areas. 

Chris has substantial experience with a variety of electrical and computer technologies, including display, image sensor, communications, memory and semiconductor.  He also has significant experience with business method patents, including those related to financial services and computer applications.  His experience is most extensively in prosecution, but also includes opinion counseling and litigation support.   

Chris has over twenty five years of experience.  In addition to his significant law firm experience, he started his career as a patent examiner, and also worked as senior counsel for a multinational corporation.  He lectures and writes regularly on patent issues for the Practicing Law Institute, where he also mentors lawyers on advanced patent prosecution. 

Chris’ breadth and depth of experience allow him to successfully navigate through a wide variety of issues in the procurement and enforcement of patent rights.   He is also adept at efficiently managing large scale projects and teams, particularly with respect to prosecuting patent portfolios.   

Honors & Recognitions

  • Named Client Service All-Star by BTI Consulting Group, Inc., 2016, 2019
  • IAM Patent 1000, 2014, 2015, 2016

Professional Activities

  • Member, American Intellectual Property Law Association
  • Member, Institute of Electrical and Electronics Engineers


  • Villanova University School of Law, Juris Doctor (J.D.)
  • Villanova University, Bachelor of Science in Electrical Engineering (B.S.E.E.)


  • California
  • District of Columbia
  • Pennsylvania
  • United States Patent and Trademark Office

Community Involvement

  • Little League Baseball Coach (2003-2009)
  • Youth Development League Basketball Coach (2004-2012)