Robert J. Goldman

Partner

goldman-robert-j
  • JD, Columbia University School of Law, 1977
  • BS (Operations Research, Software Applications), Columbia University, 1977

Qualifications

  • California
  • New York

Court Admissions

  • Supreme Court of the United States
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. District Court for the Northern District of California
  • U.S. District Court for the Central District of California
  • U.S. District Court for the Southern District of New York
  • U.S. District Court for the Eastern District of New York
  • Association of the Bar of the City of New York
  • New York Intellectual Property Law Association
  • Lecturer in Law, Patents, and Patent Litigation, Stanford University (1997-2000)
  • Adjunct Associate Professor, Law, Patents, Fordham University (1995-1997)

Robert J. Goldman

Partner

Bob Goldman’s practice centers on trials and appeals in complex intellectual property matters. Bob has tried patent, copyright, and trade secret cases in technologies ranging from Polaroid photography to medical devices to computer hardware and software to pharmaceuticals. In the life sciences field, his clients have included Purdue Pharma, L.P., and AstraZeneca, for whom he has successfully asserted patents in the District Court and the Federal Circuit. In the electronics and mechanical areas, he represented Polaroid Corporation in its landmark litigation with Eastman Kodak and has also represented clients such as Compaq/HP, Nellcor Puritan Bennett, and Advanced Micro Devices.

Experience

  • OPTi, Inc. v. Advanced Micro Devices, Inc.: Five-day jury trial on OPTi patent relating to core-logic chipsets. Action settled during trial, before verdict. 
  • Purdue Pharma, L.P. v. Endo Pharmaceuticals, Inc.: Three week bench trial on three patents relating to Purdue’s controlled release oxycodone formulations. Patents found infringed but unenforceable. Judgment of unenforceability reversed on appeal and remanded for further proceedings. 
  • In re OxyContin Antitrust Litigation, (for Purdue Pharma, L.P.): Bench trial adjudication that three Purdue patents in suit were not unenforceable due to alleged inequitable conduct. 
  • Compaq Computer Corp. v. eMachines: Obtained summary judgment of infringement of nine patents relating to personal computer subsystems. Obtained permanent injunction before trial against further infringement of two patents. Damages claim in excess of $200 million before trebling. Settled through mediation two weeks before trial. 
  • Purdue Pharma, L.P. v. Boehringer Ingelheim, GmbH: Four-day bench trial on motion for preliminary injunction. Injunction granted and affirmed on appeal. 
  • BOC Health Care, Inc. v. Nellcor Inc.: Five-day bench trial on declaratory judgment action challenging four patents relating to pulse oximetry monitors and sensors. Judgment for Nellcor. 
  • Polaroid Corp. v. Eastman Kodak Co.: Seventy-five day bench trial on patent infringement relating to integral instant photography. Judgment for Polaroid, followed by entry of permanent injunction against further infringement. Ninety-six day bench trial on damages. Judgment for Polaroid of $873 million.

Awards

  • The International Who's Who of Patent Lawyers (2011, 2013)
  • The International Who's Who of Life Sciences Lawyers (2013-2014)
  • The Best Lawyers in America (2006-2014)
  • Chambers Global: The World’s Leading Lawyers for Business (2006-2012)
  • Chambers USA: America’s Leading Lawyers for Business (2004-2009, 2011-2014)
  • Intellectual Asset Management (IAM) 250; Life Sciences (2010)
  • The Daily Journal’s “Top 75 IP Litigators in California” (2011)
  • The Daily Journal’s “Top 75 IP Litigators in California” (2010)
  • The Daily Journal’s “Top 50 IP Litigators in California” (2008-2009)
  • Northern California Super Lawyers (2009, 2011-2014)
  • IAM Patent 1000 - The World’s Leading Patent Professionals (2013-2014)
  • Managing IP – “IP Star” (2013-2014)

Insights

Publications

  • Quoted in, “Actavis Tells Judge Purdue's Oxy Patents Rely On Minor Tweak,” Law360 (November 2012)
  • Quoted in, “Supreme Court’s Caraco Ruling Signals Need for FDA Fix,” Managing Intellectual Property (April 2012)
  • Quoted in, “Generics’ High Court Win Opens New Battleground With Pharmas,” Law360 (April 2012)
  • Co-author, Patent Law & Practice, 6th & 7th Editions (BNA 2008; 2011). Patent Law & Practice is a frequently cited treatise originally prepared as a monograph for federal judges under the auspices of the Federal Judicial Center

Presentations

  • “Competition Law: Recent Developments,” 22nd Annual Conference on Intellectual Property Law & Policy, Fordham University, NY, April 2014
  • "Obviousness: The Rise, Fall and Return of Objective Evidence," 14th Annual Advanced Patent Law Institute, Four Seasons Hotel Silicon Valley, December 2013
  • "Current Software Patent Issues," Stanford Law School 10th Annual E-Commerce Best Practices Conference, Stanford Law School, June 2013
  • "Remedies: Including the Current State of Injunctions," 21st Annual Conference on Intellectual Property Law & Policy, Fordham University, NY, April 2013
  • "Inequitable Conduct after Therasense: All Clear?," 13th Annual Advanced Patent Law Institute, Four Seasons Hotel Silicon Valley, December 2012
  • "Paragraph IV Disputes and Litigation: Federal Court, PTO Proceedings & ITC Actions," presented at ACI: 3rd Annual Hatch-Waxman Boot Camp, San Diego, CA, June 2012
  • "U.S. Patent Damages after Uniloc: Problems of Proof, Persuasion and Procedure," presented at the 20th Annual Conference on Intellectual Property Law & Policy, Fordham University, NY, April 2012
  • "Patent Law 2011 in Review: Charting the Shifting Currents," Ropes & Gray CLE Seminar, January 2012
  • "Inequitable Conduct after Therasense:  Dead or Alive?," 12th Annual Advanced Patent Law Institute, Stanford University, December 2011
  • "Patent Damages: New Rules, New Tools," Ropes & Gray CLE Seminar, September 2011
  • "Patent and IP Overview for Drugs and Biologics: Hatch-Waxman, Trade Dress, and More," presented at ACI Hatch-Waxman Boot Camp, San Diego, CA, July 2011 (panelist)
  • "Damages in U.S. Patent Litigation: The Changing Battlefield, As Seen From The Trenches," presented at the 19th Annual Conference on Intellectual Property Law & Policy, Fordham University, NY, April 2011
  • "Teaching Complex Ideas in the Courtroom," Berkeley Law School, BCLT lunchtime speaker series, March 2011
  • "New Takes on Obviousness: A Litigator’s Perspective," presented at ACI Paragraph IV Disputes, San Francisco, December 2010
  • "Inequitable Conduct 2010: Landscaping the Minefield?" presented at University of Texas/Berkeley/Stanford Advanced Patent Law Institute, Palo Alto, December 2010
  • "Patent Validity in America: An Insider’s Primer," presented at IBC Conferences, IP Summer School, Cambridge, UK, August 2010