Arthur M. Dresner

Of Counsel

  • Arthur M. Dresner
  • Phone: +1 212 692 1014

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  • Duane Morris LLP
    1540 Broadway
    New York, NY 10036-4086
    USA

Arthur M. Dresner practices in the area of intellectual property law. Mr. Dresner concentrates his practice on IP litigation and transactions and on counseling startup companies on new business formations and structure. He has represented clients at all levels of litigation and his clients range from emerging companies to leading generic pharmaceutical companies, medical device manufacturers, optical and laser technology companies; publishers and media companies; major universities; and information services and technology companies.

Mr. Dresner has represented his clients in complex litigation in the federal trial and appellate courts, in alternative dispute resolution forums and before the United States Patent and Trademark Office. He has resolved many disputes without the costly involvement of litigation and has settled many litigated matters to avoid protracted proceedings and related costs. Mr. Dresner has presented both legal and technical issues in a manner easily understood by the courts.

Mr. Dresner recently led a litigation team defending an international manufacturer of sophisticated optical systems used in the biomedical research and diagnostic fields against charges of patent infringement and resolved the matter, saving the client millions of dollars in legal expenses. Mr. Dresner also recently won a victory for a client defending a claim of patent infringement relating to email tracking systems and successfully defended that victory through the appeal process.

Mr. Dresner is a 1968 graduate of St. John's University School of Law and a graduate of Stevens Institute of Technology (B.E.). He also engaged in graduate courses in electrical engineering at Stevens Institute of Technology and graduate legal studies in trade regulation at New York University School of Law.

Representative Matters

  • Obtained a dismissal with prejudice in a patent infringement case in the U.S. District Court for the Eastern District of Texas on behalf of Epsilon Data Management, LLC, a subsidiary of Alliance Data Systems Corp., in which plaintiffs Rpost Holdings, Inc., Rpost Communications Ltd., and Rmail Ltd. asserted patents directed to verifying delivery and integrity of electronic messages; this case was consolidated with cases against defendants Experian Marketing Solutions, Inc. and Vocus, Inc.

  • Avanir Pharmaceuticals, Inc., et al. v. Wockhardt, Ltd., et al., 11-CV-704 (Consolidated) (LPS) (D. Del.). Obtained a settlement in a patent infringement action allowing Wockhardt to market a generic version of Avanir's PBA product Nuedexta®, the active ingredients of which are dextromethorphan hydrobromide and quinidine hydrobromide.
  • Wyeth v. Apotex Inc., and Apotex Corp., Case No. 08-022308 (S.D. Fla.). Patent infringement action regarding Apotex's ANDA to make a generic version of Wyeth's anti-depressant product EFFEXOR® XR, the active ingredient of which is venlafaxine hydrochloride.

  • Created a trademark enforcement program for a U.S. producer of novelty items based on U.S. customs and import controls, to prevent importation of counterfeit goods emanating from Asia.

  • Aventis Pharma S.A. and Sanofi-Aventis U.S. LLC v. Apotex Inc. and Apotex Corp., Case No. 08-496 (GMS) (D. Del. 2010). Patent infringement action regarding Apotex's ANDA to make a generic version of Sanofi-Aventis' anti-cancer product TAXOTERE®, the active ingredient of which is docetaxel. Following a two-week trial, obtained an order for Apotex striking down the patents-in-issue as invalid and unenforceable due to Sanofi-Adventis' inequitable conduct in procuring the patents.

  • Successfully enforced the trademarks of a publisher of electronic media against infringing publications.

  • Established a patent procurement program for a startup producer of acoustic systems and devices.

  • Established a noninfringement position for Time Warner Books when threatened with litigation.

  • Advised a VoIP telecommunications company through successful acquisition.

  • Led a team handling the arbitration of a medical related licensing dispute before the American Arbitration Association.

  • Acting for a design/developer of chemical processing filtration technology, launched a patent procurement program resulting in a successful licensing campaign.

  • Defended a German manufacturer of automated systems for use in microprocessor integrated chip production in a patent litigation and won a summary judgment determination of noninfringement.

  • Represented CUNO, Inc., a filtration manufacturing company and its parent, 3M Corporation, to a conclusion the client found favorable in federal court litigation.

  • Represents Epsilon Interactive LLC, a permission-based Internet marketing company, and its parent, Alliance Data Systems Corp., in a patent litigation matter involving an Internet-based business-method patent in the federal courts. Digital Impact, Inc. v. Bigfoot Interactive, Inc., Case No. 4:05-cv-636 (N.D. Cal.).

  • Pursued declaratory judgment patent litigation relating to laser scanning microscopy on behalf of a German optical manufacturer to a conclusion resulting in our client acquiring the patent owner.

  • Created a licensing program for a major Big Ten university in connection with a data mining software program.

  • Advising an optical company on numerous licensing transactions related to technology for laser-related ophthalmologic surgical procedures and systems.

  • Acted on behalf of a wire bending manufacturer to prosecute infringers of their wire bending patented technology.

  • Obtained a dismissal with prejudice of all asserted claims in a patent infringement case in the U.S. District Court for the Eastern District of Texas on behalf of Epsilon Data Management, LLC on the basis that all asserted claims had been invalidated.

Areas of Practice

  • Intellectual Property Law

Admissions

  • New York
  • U.S. Patent and Trademark Office (USPTO)
  • U.S. District Court for the District of New Jersey
  • U.S. District Court for the Southern District of New York
  • U.S. District Court for the Eastern District of New York
  • Supreme Court of the United States
  • U.S. Court of Appeals for the Federal Circuit

Education

  • St. John's University School of Law, J.D., 1968
  • Stevens Institute of Technology, B.E., 1963

Experience

  • Duane Morris LLP
    - Of Counsel, 2007-present
  • Reed Smith LLP
    - Partner, 2000-2007
  • McAulay, Nissen, Goldberg & Kiel LLP (combined with Reed Smith in 2000)
    - Counsel, 1998-2000
  • International Specialty Products, Inc. (a subsidiary of GAF Corporation)
    - Vice President, Licensing and Corporate Development, 1993-1997
    - President and General Manager, Advanced Materials and Filtration Business, 1986-1993
    - Director, Commercial Development and Real Estate, 1978-1986
    - Patent Counsel, GAF Corporation, 1974-1978
  • U.S. Philips Corporation (affiliate of N.V. Philips)
    - Attorney, 1970-1974

Professional Activities

  • American Bar Association
    - Intellectual Property Section
  • Stevens Institute of Technology
    - Associate Professor of Law

Honors and Awards

  • Honored by City Bar Justice Center with the 2016 Jeremy G. Epstein Award for Pro Bono Service

Board Memberships

  • Corporate Counsel Institute of the Georgetown Law Center
    - Advisory Board Member
  • Stevens Institute of Technology
    - Board Member, Howe School of Technology Management

Civic and Charitable Activities

  • El Museo del Barrio
    - Pro Bono General Counsel and member of the Board of Trustees

Selected Speaking Engagements

  • "Gain Insight on Biosimilars Legislation and What It Means for Industry," Center for Business Intelligence's 2nd Annual Pharmaceutical Congress on Paragraph IV Disputes and Settlements, 2009
  • "Copyright Issues at Institutions of Higher Education," sponsored by the Association of Higher Education, Pittsburgh, 2004
  • "Valuing Intellectual Property, Putting a Number on the Intangible," sponsored by The PIPEs Report, New York City, 2006
  • "The Patent Reform Act - H.R. 2795," sponsored by the Georgetown Corporate Counsel Institute, Washington, D.C., 2005
  • "Patent Litigation in the United States and How to Control Costs," sponsored by Reed Smith LLP, Munich, Germany, 2006