As a preeminent boutique IP law firm, Green Griffith focuses on pharmaceuticals, chemistry and biotechnology — and specializes in litigation. Their attorneys share decades of experience partnering with both brand and generic companies to navigate the most complex IP and related FDA issues, including the Hatch-Waxman Act.
IP Litigation Specialists Acknowledged leaders in the field, Green Griffith helps clients build and execute targeted, timely and cost-effective IP strategies from project initiation through litigation, with an eye toward securing market position and overcoming obstacles to new product entry. Their range of services includes counseling regarding strategic formulation, portfolio and due diligence, as well as handling all stages of trial and appeals concerning IP and related FDA issues affecting 505(b)(1), 505(b)(2) and ANDA applications, as well as the BPCIA and biologics, and their related drug products and therapies.
Each of their attorneys have extensive scientific backgrounds — many with Ph.D.s — that permit exploration of technical solutions at a deep level. This expertise, coupled with their unparalleled experience litigating at the PTO and in the federal courts, positions them to craft and execute the best strategy to attain clients’ goals.
Their extensive experience, technical expertise, big picture vision and integrated strategy consistently produce favorable outcomes for companies developing, protecting and commercializing their products, processes and therapies.
Marshall, Gerstein & Borun LLP is at the forefront of intellectual property law. The Firm’s professionals understand the hard science behind clients’ innovations and how to devise, evaluate, and execute intellectual property strategies. Fortune 500 corporations, small to midsize companies, non-profits and start-ups turn to Marshall Gerstein for comprehensive intellectual property solutions tailored to their needs. With over 90 attorneys supported by a full team of patent agents, technical specialists and paralegals, the Firm assists clients with protection, enforcement, and transfer of intellectual property rights throughout the world.
Over 80% of the Firm’s attorneys and patent agents are admitted to practice before the United States Patent and Trademark Office
Nearly 90% of the Firm’s attorneys have science or engineering degrees
Over70% of the Firm’s patent agents and technical specialists have a Ph.D. or other advanced technical degrees
Marshall Gerstein represents clients by providing intellectual property law services across a full range of industries, including aerospace, agriculture, automotive, biotechnology, chemical, cleantech and renewables, consumer goods, e-commerce, electrical and software engineering, electronics, energy, engineering, entertainment, fashion and apparel, finance, food and beverage, furniture and home furnishings, government, health care, industrial operations, insurance, Internet and cyberlaw, life sciences, manufacturing, materials science, mechanical, media, medical devices, nanotechnology, non-profit technology transfer, pharmaceutical, retail, and software technology.
Main Areas of Practice: The breadth of the technical and legal training of the Firm’s professionals allows them to effectively serve clients’ intellectual property needs in virtually all intellectual property services and business sectors. The Firm’s practice areas include:
• Design Patents
• Intellectual Property Litigation
• Intellectual Property Transactions
• Patent Prosecution
• Post-Grant Patent Proceedings
• Trade Secrets
Biotechnology & Life Sciences and Pharmaceuticals Industries: Marshall Gerstein offers continuity and predictability along the challenging path to biotech success. The Firm’s professionals have advised start-ups on the road to initial public offerings and acquisitions, helped middle-market businesses crack the Fortune 500, and counseled multinational companies on how to protect key assets around the world. The Firm has vast experience helping biotech clients devise successful intellectual property strategies that build U.S. and foreign patent portfolios, protect commercial products and processes, maximize returns, and extend patent life cycles. Marshall Gerstein focuses on client goals first and foremost, while maintaining a laser focus on legal, scientific, and industry developments that could require strategic adjustments. Marshall Gerstein develops and deploys creative, forward-looking intellectual property strategies that align with rapidly changing technology in a variety of biotechnology industries:
• Biopharmaceuticals and immunotherapy
• Diagnostics and personalized medicine
• White biotech
• Agricultural biotech
Intellectual Property Litigation: Marshall Gerstein has earned a national reputation for patent and trademark litigation. The Firm has success fully represented clients in cases involving some of the most significant issues in intellectual property law during the last 60 years, many resulting in major victories and landmark decisions. Almost all of the Firm’s attorneys have technical degrees, with one-third holding advanced degrees in science or engineering. Because the Firm’s trial attorneys have deep technical knowledge, they are able to convey the substance and significance of technological innovations to judges and juries in a clear, persuasive manner.
Intellectual Property Transactions, Licensing, and Technology Transfer: With seasoned licensing attorneys having experience as in-house general counsel, patent counsel, and technology transfer managers, the professionals at Marshall Gerstein understand intellectual property transactional issues and deliver practical solutions. The professionals craft comprehensive agreement structures that implement clients’ priorities, minimize unallocated risks, and allow for changing circumstances. The Firm’s transactions practice includes the full range of agreements relating to intellectual property assets, such as alliance and collaborations, in and out licenses, confidentiality, joint venture, material and technology transfer, research, clinical trial and testing, manufacturing, distribution and supply, consulting, trademark, trade secret, open-source, and other agreements. The Firm has significant experience with universities and other not-for-profit research institutions that enable the Firm to deal effectively with many of the issues these institutions commonly face, including invention evaluation, inventorship disputes, research collaboration and license agreements, deal maximization, and negotiating with inventors who have external priorities.
Patent Prosecution, Portfolio Management, and Counseling: Marshall Gerstein, with a team of over 60 patent prosecution attorneys and patent agents, has one of the largest patent prosecution practices in Chicago and has the advantage of broad and deep experience across every major technical field and industry in managing large and interrelated U.S. and foreign patent portfolios. The Firm helps clients evaluate inventions, perform patentability assessments, draft and prosecute patent applications, obtain and license patents throughout the world, and assist with inventorship disputes. The Firm’s prosecution professionals are experienced with inter partes and postgrant patent prosecution matters, including U.S. interference proceedings, U.S. reexamination and reissue proceedings, and assisting foreign counsel with opposition proceedings. The Firm also has substantial experience in preparing freedom-to-operate opinions that evaluate issues of validity, enforceability, and/or infringement. The Firm also performs due diligence intellectual property reviews in support of corporate transactions.
Trademarks & Copyrights: Marshall Gerstein provides seasoned advice on the risks and advantages of branding objectives and assists in clearing, registering and protecting clients’ trademarks. The Firm provides the full range of trademark-related services in the U.S. and abroad, including registering, enforcing, opposing and defending trademark rights. The Firm represents aggrieved brand owners and alleged infringers in the resolution of disputes involving trademark, design and trade dress infringement.
2019 LMG Life Sciences Stars:
Pamela L. Cox, Partner and Chair, Intellectual Property Transactions
Grüneberg and Myers turned the traditional law firm model on its head, to set a new standard for in-depth, personalized, cost-efficient patent counsel. Now in operation for over three years, the firm has grown into an all-star team, led by three partners with substantial experience in patent prosecution, appeals, litigation, post-grant proceedings, and counseling.
The firm is 100% women- and ethnic minority-owned, and includes diverse representation at all levels. Varied backgrounds strengthen the firm and provide wide-ranging perspectives.
Cost-Efficient High Quality
In an ever-changing market, Grüneberg and Myers offers cost savings for patent legal budgets. Because adaptations to modern business practices are difficult for traditional IP firms, Grüneberg and Myers started in 2017 to clean the slate and begin anew. With innovative office concepts and modern, high-tech law practice management systems, the firm reduced overhead, bringing prices to a very competitive level. Constantly-updated, state-of-the-art file and docket management software provide robust cybersecurity and increased efficiency, within a reasonable technology budget. A modern office concept encourages collaboration between team members.
The firm’s price-competitive and technically-savvy nature has enabled seamless adaptation and continued growth, even during the COVID-19 pandemic.
At the same time, the firm maintained high quality by recruiting experienced attorneys and staff. The firm itself was listed as a recommended patent prosecution firm in the Washington, DC area in IAM Patent 1000 after just a few years in business. Publications have also ranked some of the firm’s individual attorneys in LMG Life Sciences’ Life Sciences Stars, the IAM Strategy 300, the IAM Patent 1000, Managing IP’s IP Stars, and Thomson Reuters’s Super Lawyers. The team includes graduates from prestigious universities such as Cornell, Duke, Penn State, Johns Hopkins, George Mason University, and George Washington University, as well as a Lynen fellow of the Alexander von Humboldt Foundation. Team members have previously worked at the International Trade Commission, the Court of Appeals for the Federal Circuit, the U.S. Patent and Trademark Office, in-house positions, large general-practice firms, and IP boutiques.
The professionals include native German, Japanese and Korean speakers.
Experienced staff support the firm’s attorneys. While the firm itself started in 2017, the firm’s staff leadership has worked in managerial and supervisory roles in larger, high-volume patent prosecution firms and in-house at large companies, thus carrying forward decades of institutional knowledge in an innovative, efficient environment.
Life Sciences IP Strategy
Global pharmaceutical and life sciences companies trust Grüneberg and Myers with high-value, strategically-important intellectual property decisions. The firm has guided clients to optimal outcomes with Hatch-Waxman exclusivity, Patent Term Extension, Orange Book listings, Biologics Price Competition and Innovation Act strategy, and patent subject matter eligibility for diagnostics. Life sciences and pharmaceutical companies have relied on the firm’s life sciences expertise to provide counsel on licensing and post-grant matters with hundreds of millions of dollars or more at stake.
The attorneys at Grüneberg and Myers prepare and prosecute U.S. and international patent applications with skill and experience. Using the full menu of options available at the USPTO, including Examiner interviews, pilot programs, and accelerated examination, Grüneberg and Myers pursues optimized, strong patent protection for its clients. The firm prides itself on detailed analysis of office actions and other requirements with fast turnaround, avoiding the need for extensions and facilitating greater familiarity with cases, both for applicants and Examiners.
The firm also coordinates global patent prosecution and portfolio management. Often traveling and maintaining relationships with patent procurement firms globally, the attorneys at Grüneberg and Myers consolidate patent strategies and take the work off of in-house counsel.
With its low-overhead model, Grüneberg and Myers can prosecute applications within competitive alternative fee structures.
Post-Grant Proceedings, PTAB Appeals, Counseling, and Freedom-to-Operate
The attorneys at Grüneberg and Myers have years of experience with counseling, freedom-to-operate, PTAB appeals, and post-grant matters. In addition, the attorneys at Grüneberg and Myers have performed large product IP-clearance projects, and have helped clients to navigate complex strategies in patent subject matter eligibility. The attorneys of the firm have also achieved substantial positive outcomes for clients in reexamination and in inter partes review.
When in-house counsel needs to operate on a budget, the firm can provide predictable costs.
Large, global corporations, including Fortune 50 companies and Fortune Global 200 companies trust Grüneberg and Myers with important roles in building and maintaining patent portfolios and in operating in competitive IP environments. The firm serves major companies in Europe, Asia, and the Americas, supporting in-house counsel in biotechnology, chemical, pharmaceutical, medical devices, AI and machine learning, electronics, and tools and machinery industries.
Clients have expressed a high level of satisfaction with the firm’s procedural and substantive handling of their patent matters, as well as with the firm’s flexibility to offer competitive pricing.
Morgan Lewis has purposefully developed our capabilities to serve the complete life sciences product life cycle and all aspects of the healthcare and life sciences industry. We understand and work creatively to solve the business, transactional, regulatory, intellectual property (IP), litigation, and related issues that our clients face along the product life cycle, from innovation protection and emerging business issues, through regulatory development and approval, to reimbursement, marketing, and distribution. Our lawyers handle litigation in all relevant areas (including government enforcement, fraud and abuse, product liability and IP), labor, employment, and benefits, and antitrust, and work closely with clients on mergers and acquisitions, collaborations and licensing agreements, and outsourcing.
Litigation and Dispute Resolution Our compliance and government investigations team includes lawyers with litigation and regulatory backgrounds to assist clients with a range of criminal and civil healthcare fraud investigations and related litigation, including some of the most significant recent pharmaceutical industry–related matters in the United States. We advise clients at every stage of government enforcement activity, including responding to federal and state grand jury subpoenas and all federal government civil investigative demands and administrative subpoenas (e.g., those issued by the OIG of the US Department of Health and Human Services (HHS) and other agencies). This includes representing clients through the document production and investigation phase, settlement discussions, Corporate Integrity Agreement (CIA) negotiations, pretrial proceedings, trial, and appeal.
We routinely handle parallel criminal, civil, and administrative proceedings that occur simultaneously in multiple jurisdictions involving claims under the Anti-Kickback Statute, Healthcare Fraud Statute, HHS-OIG exclusion authorities, Civil Monetary Penalties Law, Responsible Corporate Officer Doctrine, federal and state false claims acts, and suspension and debarment authorities. Likewise, we routinely deal with state Medicaid Fraud Control Units (that are usually components of the state attorneys general) and multijurisdictional Medicaid Fraud Task Forces organized by the National Association of Medicaid Fraud Control Units.
Additionally, we regularly advise clients on all aspects of the design, negotiation, and implementation of government-mandated compliance agreements, such as CIAs, Deferred Prosecution Agreements, and state consent decrees. Morgan Lewis lawyers have negotiated and assisted dozens of large and small life sciences and healthcare companies with their most important CIA matters and have extensive knowledge of best practice compliance controls within the life sciences sector.
White Collar Litigation Our white collar litigators regularly represent life sciences companies in Foreign Corrupt Practices Act (FCPA), UK Bribery Act (and all other forms of UK investigations and prosecutions), and other anticorruption matters, as well as US grand jury and civil investigations and criminal trial defense, state attorneys general investigations and litigation, civil False Claims Act litigation, third-party payor class action litigation, civil antitrust class action litigation, and state Bureaus of Consumer Protection actions.
Commercial Litigation We regularly represent pharmaceutical clients in the full range of business disputes, including trade secrets and noncompete litigation, supplier/purchaser and post acquisition disputes, and consumer class actions and other consumer-related litigation. Whether they are plaintiffs or defendants in such matters, our clients benefit from our experience in these types of cases. Our work in this area has not gone unnoticed – Morgan Lewis was named a "Class Action Practice Group of the Year" by Law360 for 2013 and 2014. This accolade is in addition to two consecutive years on BTI Consulting Group's 2014 and 2015 Litigation Outlook, which ranked us as one of four "powerhouse" firms for class actions and mass torts.
Product Liability Litigation We routinely represent our clients in medical device industry litigation, including product liability, fraud and abuse, and commercial litigation. Our long-standing, well-recognized product liability practice includes more than 50 lawyers across our US offices. For decades, we have successfully represented clients in class actions, individual lawsuits, multidistrict matters, and mass and toxic tort litigation.
When enforcement concerns have arisen, we have assisted in some of the largest and most complex government investigations and settlements of the last decade. As the FDA, Department of Justice (DOJ), Health Care Financing Administration, and HHS-OIG continue to take an aggressive enforcement stance, we regularly assist clients in responding to civil and criminal enforcement and compliance actions, including FDA Form 483 and Warning Letter responses, Import Alerts, consent decree issues, FDA's integrity policy, OIG suspension and exclusion authority, and debarment penalties from government contracting agencies.
Our deep bench of seasoned trial lawyers is capable of trying the most high-risk cases against the most aggressive adversaries, and frequently serves as US national coordinating and trial counsel to medical device companies in large-scale serial litigation. This experience consists of cases involving pacemakers, cardioverter defibrillators, neurostimulators, drug pumps, insulin pumps, therapeutic blood derivatives, breast implants, femoral knee components, and many other devices.