Michael R. Gottfried

Areas of Practice

• Commercial Litigation
• Intellectual Property Litigation

Representative Matters

• Patent Litigation: Defense of declaratory judgment action seeking declaration of non-infringement regarding COVID vaccine. Successfully moved for and won transfer Motion to ED Va.

• Patent Litigation: Patent infringement defense for Amgen’s blockbuster Evenity osteoporosis drug uses the plaintiff’s patented methods for inhibiting the protein sclerostin from causing bone resorption.

• Trade Secrets: PeriphaGen, Inc. v. Krystal Biotech, Inc., et al. (Western District of Pennsylvania, 2020-22) (HSV-1 gene therapy): Co-lead counsel for plaintiff PeriphaGen in complex trade secret litigation. Case settled during discovery with the defendant making an upfront payment of $25 million, plus potential future payments totaling an additional $50 million. Law 360 Report on the Settlement

• Commercial Litigation: Represented seller of commercial cleaning company in post-acquisition indemnification and purchase price litigation.

• Patent Litigation: Represented ImClone as co -councel in defending against a suit brought by MIT and its licensee, Repligen Corporation, in the District of Massachusetts, which alleged that ImClone’s cancer treatment drug Erbitux infringed MIT’s patent. The case was settled on the eve of trial.

• Patent Litigation: Represented, as co-counsel, MIT and its licensee, E8 Pharmaceuticals, against Affymetrix in a patent infringement suit concerning E8’s genotyping technology.

• Patent Litigation: Represented biopharmaceutical company Amgen in a patent dispute with TKT Therapeutics concerning Amgen’s drug EPO.

• Trade Secrets/Noncompetes: Represented a manufacturing company in a trade secret and false advertising lawsuit against a former employee they alleged departed to form a competing company, breached his noncompete agreement, misappropriated secret information about ingredients and product formulations, and falsely represented features of his competing products. Defeated the former employee’s motion to compel arbitration and his motion for summary judgment in which he argued the alleged secrets entered the public domain through a patent application.

• Commercial Litigation/Class Action Litigation: Represented a class of emergency medicine providers in Tennessee against a Managed Care Organization in challenging a reduction in reimbursement rates for emergency room services. Won a report and recommendation in favor of class certification on behalf of a class of emergency medicine providers and defeated defendants’ motion for summary judgment on the underlying merits.
• Banking and Class Action Defense - Counsel to a regional bank in multiple matters including defense of a class action and lender-liability claims and enforcement of loan agreements and recovery of collateral.
• Breach of Contract Litigation - Obtained summary judgment for clients Jeffrey Rubman and Bradd Rubman in the U.S. District Court for the District of Massachusetts in a real estate breach of contract suit which sought $1.25 million in damages.
• Class Action Defense - Represented a federally chartered savings bank and obtained a dismissal of claims in a putative class action in federal court in Boston when the court agreed that the state law purporting to limit the amount of insurance a bank can require is preempted by the Federal Homeowners Loan Act.
• Class Action Defense - Represented a national manufacturer of cleaning equipment in the settlement and approval by the U.S. District Court in Massachusetts of a TCPA class action.
• Copyright Litigation - Obtained on behalf of Brooks-Cole, a college textbook publisher, a ruling from the U.S. District Court for the District of Massachusetts that its use of a written psychological test borrowed from another publication was a "fair use."
• Environmental Litigation - Lead trial and appellate counsel that represented Louis Guyott, the seller of a $100 million business, against a $20 million indemnification claim brought by the buyer, Bardon-Trimount, for the cleanup of a Massachusetts Superfund site. At the case's conclusion, obtained a defense verdict and an award of $3.9 million in fees and costs after a 10-day trial in the Business Litigation Session of the Massachusetts Superior Court. Judgment was affirmed by the Massachusetts Appeals Court.
• Health Care Arbitration - Obtained a multimillion-dollar settlement for a network of healthcare providers during arbitration with third-party payor in dispute over claims.
• Licensing and Bankruptcy Litigation - As lead trial counsel, obtained an order from the Delaware bankruptcy court sustaining Multimodal Technologies' objection to the assignment and assumption of its license to Nuance Communications, a direct competitor. The order was issued after an evidentiary hearing.
• Licensing Litigation and ADR - Lead counsel at mediation for Fortune 250 biotech company in patent-license dispute with a research institution which was resolved after mediation.
• Minority Shareholder Litigation: Counsel to majority shareholders of a real estate development and management company in a minority shareholder suit.
• Minority Shareholder Litigation - Lead trial counsel in a minority shareholder in a closely held corporation in a breach of fiduciary duty/excessive compensation claim, obtaining a seven-figure judgment.
• Minority Shareholder Litigation - Lead appellate counsel for a minority shareholder in a closely held corporation in a breach of fiduciary duty/excessive compensation appeal affirming a seven-figure judgment.
• Patent and Employment Litigation - Represented an inventor on his claim of inventorship and wrongful termination, obtaining a lucrative settlement package for client after litigation in the U.S. District Court for the Northern District of Illinois.
• Patent Litigation - Represented Amgen Inc. at trial against rival F. Hoffmann-La Roche in its patent infringement battle over the anemia drug Epogen. Obtained a permanent injunction for Amgen that was upheld on appeal to the U.S. Court of Appeals for the Federal Circuit.
• Real Estate and M. G. L. c. 93A Litigation - Represented a seller of a commercial property on claims of fraud and breach of the unfair and deceptive trade practice suit in Massachusetts through summary judgment and appeal.
• Theft of Trade Secret and Trade Dress Litigation - Counsel to a Florida-based restaurant chain in resolving suit for trade-dress infringement and theft of trade secrets in the U.S. District Court for the Middle District of Florida without making any changes to its trade dress.
• Trade Secret and Patent Litigation - Represented a manufacturer of turn-key multilayer injection molding equipment in a series of patent infringement and theft of trade secrets cases litigated in the U.S. District Court for the District of Massachusetts, obtaining a settlement the client found favorable after mediation.
• Trade Secret Litigation: Counsel to a data technology and consulting firm seeking damages and injunctive relief in a case alleging that a competitor used their trade secrets to compete improperly and defame them.
• Trade Secret Litigation: Counsel to a public company in an employee theft of trade secret case involving plan nutrition products.
• Trade Secret Litigation: Led the Duane Morris trial team representing Dicerna Pharmaceuticals, Inc. against claims of trade secret misappropriation brought by Alnylam Pharmaceuticals, Inc, a competing pharmaceutical company. Dicerna alleged the lawsuit was brought for the ulterior purpose of interfering with their business and asserted counterclaims for abuse of process, tortious interference, and unfair trade practices. The counterclaims survived three rounds of dispositive motion practice. The case settled on the eve of trial.
• Trade Secret Litigation - As lead counsel after a ten day evidentiary hearing, obtained a default judgment and an award of attorney’s fees and costs in Middlesex County Massachusetts Superior Court on behalf of Pacific Packaging Products, Inc. in a misappropriation of trade secrets case concerning several former employees who left the company to form a competing venture. After a two week evidentiary hearing, Judge Bruce R. Henry found that the defendant salespeople had committed fraud on the court by falsely testifying that they had turned over all proprietary materials of the plaintiff, had spoliated evidence, and had disregarded an earlier preliminary injunction that barred them from selling products to a customer of the plaintiff.
• Trade Secret Litigation - Counsel to a national entertainment company in trying and sustaining an appeal claim of theft of trade secrets and obtaining attorneys' fees pursuant to the Massachusetts Unfair and Deceptive Trade Practice Statute.
• Trade Secret Litigation - As lead trial counsel, represented an independent packaging company in obtaining injunctive relief in connection with the theft of confidential and proprietary information by former employees after a two-week evidentiary hearing.
• Trade Secret Litigation - Led the Duane Morris team which, on the eve of trial, obtained a $65 million plus settlement on behalf of Tekmira Pharmaceuticals Corp. Tekmira had sued Alnylam Pharmaceuticals Inc. and AlCana Technologies, Inc. in the Business Litigation Session of the Massachusetts Superior Court alleging that Alnylam and AlCana had violated M. G. L. c. 93A and misappropriated Tekmira's trade secrets related to gene-silencing therapeutics. In addition to the payments, the settlement also assigns control to Tekmira over its leading systemic RNAi Therapeutics delivery technology, and brings clarity around the ownership of the intellectual property that protects its lipid nanoparticle (LNP) technology. Mr. Gottfried also represented Tekmira in a patent infringement case Alnylam brought in the United States District Court for the District of Massachusetts, which was dismissed as part of the settlement.

Admissions

• Massachusetts
• District of Columbia
• Supreme Court of the United States
• U.S. Court of Appeals for the Federal Circuit
• U.S. Court of Appeals for the First Circuit
• U.S. Court of Appeals for the Third Circuit
• U.S. Court of Appeals for the Seventh Circuit
• U.S. Court of Appeals for the Ninth Circuit
• U.S. Court of Appeals for the Tenth Circuit
• U.S. Court of Appeals for the District of Columbia Circuit
• U.S. District Court for the District of Massachusetts
• U.S. District Court for the District of Columbia

Education

• The George Washington University Law School, J.D., with honors, 1983

Experience

• Duane Morris LLP
  -Managing Partner, Boston Office 2012-present
  -Partner, 1999-present
• Burns & Levinson LLP, Boston, Massachusetts
  - Partner, 1990-1999
  -- Chairman, Business Litigation Department
  - Associate, 1985-1990
• Thompson, Hine and Flory, Washington, D.C.
  - Associate, 1983-1985
  
  

Professional Activities

• Boston Bar Association
• Massachusetts Bar Association
• International Trademark Association
  - Alternative Dispute Resolution Committee
  -- Education and Information Subcommittee, 2002-2003

Honors and Awards

• Listed in Best Lawyers (New England) for Commercial Litigation, 2023
• Listed in The Best Lawyers in America, 2022-2024

• Listed in Massachusetts Super Lawyers

• Listed in New England's Top Rated Lawyers, The National Law Journal, 2019

• Listed as a Top Rated Lawyer in Healthcare by American Lawyer Media and Martindale-Hubbell™, 2013
• Listed in Chambers USA: America's Leading Lawyers for Business, 2009, 2010 and 2011
• AV Preeminent® Peer Review Rated by Martindale-Hubbell®

Civic and Charitable Activities

• Mock Trial Advisor Phillips Academy-Andover, 2008-2011
• Cub Master, Pack 89, Boy Scouts of America, North Andover, MA, 1994-2000

Selected Publications

• Quoted in "Defendants Hit With $1.1M Sanction for 'Fraud on Court'," Massachusetts Lawyers Weekly, August 14, 2017
• Featured in "Default Judgment for Company in Trade Secret Case," Massachusetts Lawyers Weekly, April 14, 2014

Selected Speaking Engagements

• Speaker, "Negotiating and Enforcing Protective Orders in Trade Secret Cases," Boston Bar Association, June 9, 2016
• Speaker, "Trade Secret Law 2015," 18th Annual New England Conference Intellectual Property Law 2015, MCLE, June 15, 2015