Robert M. Gould, Ph.D.
Partner
Duane Morris LLP
Suite 3700
190 South LaSalle Street
Chicago, IL 60603-3433
USA

Phone: +1 312 499 6706
Fax: +1 312 277 9439
Email: rmgould@duanemorris.com

Robert M. Gould, Ph.D. is a registered Patent Attorney practicing in the area of intellectual property law, concentrating on litigation, prosecution and due diligence in the pharmaceutical, food science and biotechnology industries. Dr. Gould has substantial experience in the prosecution of inter-partes reexamination proceedings and the strategic use of reexamination proceedings in conjunction with patent infringement litigation. He also counsels clients in ANDA and follow-on biologics issues, particularly with regard to patent validity and infringement and strategy.

Prior to attending law school, Dr. Gould gained direct industry experience as a research scientist and managed the quality control group at Houston Biotechnology, Inc., working on the biochemical characterization of the corporation's flagship ophthalmologic immunotoxin product designed to prevent secondary cataracts. More recently, he served as Vice President of Intellectual Property for Integrated DNA Technologies, Inc., a company that manufactures oligonucleotides for use in DNA-based technologies.

Dr. Gould is a 1996 graduate of the University of Houston Law Center and a graduate of the University of Iowa (Ph.D., Biochemistry) and the University of Illinois (B.S., Chemistry).

Areas of Practice

• Patent Litigation
• Patent Prosecution
• Inter-Partes Reexamination Proceedings
• Patent Due Diligence Analysis
• ANDA Practice
• Follow-on Biologics

Representative Matters

• 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.
• Alcon Research, Ltd. et al. v. Sandoz Inc., Case No. 09-0103 (RLY-JMS) (S.D. Ind). Patent infringement action regarding Sandoz's ANDA to make a generic version of Alcon's eye allergy product Patanol®, the active ingredient of which is olopatadine hydrochloride.
• Allergan, Inc. v. Sandoz Inc., Case No. 09-097 (E.D. Tex.) Patent infringement action regarding Sandoz's ANDA to make a generic version of Allergan's eye pressure drops COMBIGAN® (brimonidine tartrate/timolol maleat).
• In re Gabapentin Patent Litigation, MDL Docket No. 1384, Master Docket No. 00-CV-2931 (FSH) (PS)(D. N.J.); Patent infringement action regarding Sandoz's ANDA and launch of a generic version of Pfizer's Neurontin® product.
• Medicis Pharmaceutical Corp. v. Sandoz, Inc., et al., Case No. 09-033 (JJF) (D Del.). Patent infringement action regarding Sandoz's ANDA to make a generic version of Medicis's acne product SOLODYN® (minocycline hydrochloride).
• The Procter & Gamble Company, et al. v. Apotex Inc. and Apotex Corp., Case No. 09-0143 (JJF) (D. Del.) Patent infringement action regarding Apotex's ANDA to make a generic version of Procter's osteoporosis product ACTONEL® (risedronate).
• 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® (venlafaxine hydrochloride).

Professional Activities

• Intellectual Property Law Association of Chicago
• American Intellectual Property Law Association

Admissions

• Illinois
• Texas
• U.S. Patent and Trademark Office
• U.S. Court of Appeals for the Federal Circuit

Education

• University of Houston Law Center, J.D., 1996
• University of Iowa, Ph.D., 1988
• University of Illinois, B.S., 1981

Honors and Awards

• Listed in Illinois Leading Lawyers, 2009

Selected Publications

• Quoted in "Prescription for a 'recession-proof' practice," Chicago Lawyer, August 2008
• Quoted in "Game Changer," Inside Counsel, July 10, 2010 regarding the District Court ruling on the validity of patent claims to DNA sequences in Association for Molecular Pathology v. United States Patent and Trademark Office
• Quoted in Biopharm Insight, July 27, 2010, regarding Eli Lilly Alimta Hatch Waxman Litigation
• Quoted in Biopharm Insight, July 13, 2010, regarding impact of Preserve Access to Affordable Generics Act Legislation
• Quoted in Biopharm Insight, February 4, 2011, regarding Cubicin Hatch Waxman Litigation
• Quoted in Biopharm Insight, February 4, 2011, regarding Avodart Hatch Waxman Litigation
• Quoted in Biopharm Insight, December 15, 2010, regarding Intuniv Hatch Waxman Litigation
• Quoted in Biopharm Insight, December 14, 2010, regarding Silenor Hatch Waxman Litigation
• Quoted in Biopharm Insight, November 24, 2010 regarding Revlimid Hatch Waxman Litigation

Selected Speaking Engagements

• "Emerging Technologies and the Innovation of Competitive Advantage," Biotechnology Panel at the Wharton Healthcare Conference, Philadelphia, February 22, 2008
• "Pre-Litigation Strategy, Analysis and Preparation for PIV Disputes," ACI Conference on Paragraph IV Disputes, San Francisco, December 2010
• "Patent and Non-Patent Exclusivity," ACI's 5th Anniversary Edition Paragraph IV Disputes, New York, May 2, 2011
• "Exploring Post-Issuance PTO Procedures in the Era of the Patent Cliff: Focus on Reexam and Reissue Proceedings," ACI's 12th Annual Maximizing Pharmaceutical Patent Life Cycles, New York, October 4-5, 2011