Patent Medical

GERARD DIEBNER

*** **** **** ******, *** *H, New York, New York 10075 H: 212-***-**** C: 917-***-****

adb7gg@r.postjobfree.com

PROFESSIONAL SUMMARY

Skilled patent attorney with over 35 years experience in patent litigation, prosecution, licensing, opinions anddue diligence reviews. Represents large corporations and start-ups mainly in the fields of chemistry,pharmaceuticals, biotechnology, medical devices, cosmetics, agriculture, veterinary products, pollution controland clean energy. Brings a litigator's view to prosecution and a prosecutor's view to litigation.

SKILLS

Experienced Patent Attorney with over 35 years Patent Litigationexperience

ITC Proceedings

Arts-chemical, pharmaceutical,biotechnological,medical devices, cosmetics, Licensing, opinions and due diligence reviewsagriculture, veterinary products, pollution controland clean energy

Patent Prosecution

WORK HISTORY

Counsel, 01/2010 to CurrentTannenbaum Helpern Syracuse & Hirschtritt LLP – New York, NY

Partner, 01/2007 to 12/2009Troutman Sanders LLP – New York, NY

Partner, 07/2006 to 12/2006Dreier LLP – New York, New York

Partner/Shareholder, 08/1994 to 07/2006

Graham & James/Greenberg Traurig – New York, New York

Of Counsel, 08/2003 to 08/2004Rosenman & Colin – New York, New York

Associate, 08/1988 to 07/1993Kaye Scholer LLP – New York, New York

Associate, 10/1984 to 07/1988Hopgood Calimafde Kalil Blaustein & Judlowe – New York, New York

EDUCATION

J.D.: Law, 1983Saint John's University School of Law - Jamaica, New York

Bachelor of Science: Pharmacy, 1978Saint John's University College of Pharmacy - Jamaica, New York

SIGNIFICANT MATTERS

Ortho v. Becton Dickenson Co., -heralded as "the first cannon shot of the biotechnology era". Settledfavorably for client Ortho.

In re Nifedipine- defended Pfizer's nifedipine patent against numerous generic drug companies.

Xoma v. Centocor-One of the longest biotechnology patent cases tried to a jury. Verdict of patentinfringement and validity on favor of client Xoma after 6 month trial.Genentech v. Novo Nordisk- successfully defended Novo Nordisk against infringement suit by Genentechfor recombinant human growth hormone. In this case, for the first (and only) time, the Federal Circuit notonly vacated a preliminary injunction, it declared the underlying patent invalid.Merck v. Searle- successfully defended Merck in an interference and subsiquent litigation where Searlecontended it was the first to invent VIOXX.Proveris v. Innovasystems- first chair for a one week jury trial before the Federal District Court in Boston,where the jury returned an infringement verdict in favor of our client Proveris. Case established that the useof a patented laboratory instrument used to obtain FDA approval for a drug product did not fall within thesafe harbor provisions of 35 U.S.C. 271 (e)(1).In re Laminated Packaging- ITC case, was the first case to hold a bifurcated proceeding where the first part

of the case was to determine if the Petitioner could satisfy the domestic market requirement. ITC held it didnot.Due diligence review of patent portfolio of a target company for a major U.S pharmaceutical company.Due Diligence review of a patent portfolio for a foreign (India) pharmaceutical company seeking topurchase a U.S. pharmaceutical company.

PUBLICATIONS

Post Grant Review Under The America Invents Act/ PLI Advanced Patent Prosecution Workshop 2013.Leahy-Smith America Invents Act/PLI Advanced Patent Prosecution Workshop 2012.Recent Changes To US Patent Law/ 30 Insider Newsletter/Fall 2012.Legislative Developments In Patent Law/PLI 2011.Legislative Developments In Patent Law/ PLI 2008.Legislative Developments In Patent Law/PLI 2007.Legislative Developments In Patent Law/PLI 2006.Your Patent Rights As A Co-Inventor/Mass High Tech/July 2, 2002.Untangling Genomics Technologies In Patent Law/Mass High Tech/July 2, 2001.

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