Robert J. Goldman

Retired Partner

  • 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
  • Lecturer in Law, Patents, and Patent Litigation, Stanford University (1997-2000)
  • Adjunct Associate Professor, Law, Patents, Fordham University (1995-1997)
  • Chambers Global: The World’s Leading Lawyers for Business (2006-2012)
  • Chambers USA: America’s Leading Lawyers for Business (2004-2009, 2011-2014)
  • Who's Who Legal (2016)
  • Litigation Star, Benchmark Litigation (2015)
  • 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 (2006-2017)
  • 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, 2011-2016)
  • IAM Patent 1000 - The World’s Leading Patent Professionals (2013-2015)
  • Managing IP – “IP Star” (2013-2014)

Robert J. Goldman

Retired Partner

Bob Goldman was a partner in the intellectual property litigation group until his retirement in 2015. Throughout his career, Bob Goldman’s centered his practice on trials and appeals in complex intellectual property matters. Bob tried patent, copyright, and trade secret cases in technologies ranging from pharmaceuticals to medical devices to computer hardware and software to Polaroid photography and electronic postage meters.

Bob is the author of Schwartz’s Patent Law & Practice, 8th Edition (Bloomberg/BNA 2015), a one-volume monograph on patent law that has been cited by over 100 courts, including the U.S. Supreme Court and the U.S. Court of Appeals for the Federal Circuit.

Bob has taught patent law and patent litigation in adjunct positions at Stanford Law School and Fordham University School of Law, and has spoken at numerous conferences, in the U.S. and abroad, on current issues in the field.

Experience

Cases Tried:

  • Purdue Pharma L.P. v. Amneal Pharmaceuticals, LLC., ___ F. Supp. 2d ___, 2015 U.S. Dist. LEXIS 45967 (S.D.N.Y. April 8, 2015) (for Purdue) – Five-day bench trial on one patent relating to abuse-deterrent reformulation of Purdue’s OxyContin® tablets. Asserted claims found infringed but invalid. Currently on appeal.
  • Regeneron Pharmaceuticals, Inc. v. Ablexis, LLC., No. 14 Civ. 1651 (KBF) (S.D.N.Y. 2014)(for Ablexis) – One-day evidentiary hearing on claim construction of Regeneron patent relating to transgenic mice used for drug discovery. All asserted claims found invalid for indefiniteness. Plaintiff withdrew and dismissed claims for infringement, and released potential claims against Ablexis and its licensees.
  • Purdue Pharma L.P. v. Teva Pharms. USA, Inc., 994 F. Supp. 2d 367 (S.D.N.Y. 2014) (for Purdue) – Twelve-day bench trial on patents, three relating to abuse-deterrent reformulation of Purdue’s OxyContin® tablets, three relating to oxycodone hydrochloride active pharmaceutical ingredient having reduced levels of 14-hydroxycodeinone. Four patents found infringed but invalid, one patent found not infringed. Currently on appeal.
  • Purdue Pharma L.P. v. Ranbaxy Inc., Actavis Elizabeth LLC, and Mylan Pharmaceuticals, Inc., No. 10-civ.-3734 (SHS) (S.D.N.Y. 2012) (for Purdue) – Eight-day bench trial on three Purdue patents relating to oxycodone hydrochloride active pharmaceutical ingredient having reduced levels of 14-hydroxycodeinone. Action dismissed as moot, following related decision in Purdue’s favor by U.S. Food & Drug Administration.Purdue Pharma L.P. v. Ranbaxy Inc., Actavis Elizabeth LLC, and Mylan Pharmaceuticals, Inc., No. 10-civ.-3734 (SHS) (S.D.N.Y. 2012) – Eight-day bench trial on three Purdue patents relating to oxycodone hydrochloride active pharmaceutical ingredient having reduced levels of 14-hydroxycodeinone. Action dismissed as moot, following related decision in Purdue’s favor by U.S. Food & Drug Administration.
  • OPTi, Inc. v. Advanced Micro Devices, Inc., No. 2:06cv47 (CE) (E.D. Tex. 2010) (for AMD) — Five-day jury trial on OPTi patent relating to core-logic chipsets. Action settled during trial, before verdict.
  • Purdue Pharma Products, L.P. and Napp Pharm. Group, Ltd. v. Par Pharmaceutical, Inc., 642 F. Supp. 2d 329 (D.Del. 2009) (for Purdue and Napp) — Five-day bench trial on two Napp patents relating to once-daily controlled-release formulations of tramadol, an analgesic. Patents found infringed and enforceable, but invalid for obviousness. Affirmed 6/10.
  • In re OxyContin Antitrust Litigation, 530 F.Supp.2d 554 (S.D.N.Y.2008) (for Purdue Pharma, L.P.) — Bench trial adjudication that three Purdue patents in suit were not unenforceable due to alleged inequitable conduct.
  • AstraZeneca Pharmaceuticals, L.P. v. Mayne Pharma (USA), Inc., 2005 U.S. Dist. LEXIS 26196 (S.D.N.Y. November 2, 2005) (for AstraZeneca) — Ten-day bench trial on three patents relating to AstraZeneca’s DIPRIVAN® parenteral anesthetic formulation. Judgment for AstraZeneca.
  • A Major Korean Electronics Company v. Tessera Technologies, Inc., (N.D.Ca 2004) (for Tessera) — Seven-day jury trial on breach of contract and patent issues relating to five Tessera patents on chip packaging technology. Settled during trial before jury verdict. 
  • Purdue Pharma, L.P. v. Endo Pharmaceuticals, Inc., 70 USPQ2d 1185 (S.D.N.Y. 2004) (for Purdue) — Three week bench trial on three patents relating to Purdue’s controlled release oxycodone formulations. Judgment for Endo (patent unenforceable). Reversed and remanded for further proceedings, 438 F.3d. 1123 (Fed. Cir. 2006).
  • Purdue Pharma, L.P. v. Boehringer Ingelheim, GmbH, 98 F. Supp. 2d 362 (S.D.N.Y. 2000) (for Purdue) — Four-day bench trial on motion for preliminary injunction. Injunction granted.
  • Crystal Semiconductor v. OPTi, Inc., 44 USPQ2d 1497 (W.D. Tex. 1999) (for OPTi) — Two week jury trial on patents relating to integrated audio controller chips. Verdict for plaintiffs for $20 million, reduced on JMOL motion to $4 million.
  • Crystal Semiconductor v. OPTi, Inc., (W.D. Tex. 1998) (for OPTi) — Five-day Markman hearing on patents relating to integrated audio controller chips.
  • Xilinx, Inc. v. Altera Corp. and Altera Corp. v. Xilinx, Inc., (N.D. Cal. 1997) (for Altera) — Four-day Markman hearing on Xilinx and Altera patents relating to programmable logic devices.
  • Advanced Micro Devices, Inc. v. Altera Corp., (N.D. Cal. 1997) (for Altera) — Two-day bench trial on contract and licensing issues relating to programmable logic devices. Judgment for Altera (reversed on appeal on other grounds).
  • Compaq Computer Corp. v. Procom Technology, Inc., 908 F. Supp. 1409 (S.D. Tex 1995) (for Compaq) — Three-day bench trial on software copyright and trade dress infringement issues. Judgment for Compaq, including permanent injunction against further infringement.
  • BOC Health Care, Inc. v. Nellcor Inc., 892 F. Supp. 598 (D. Del. 1994) (for Nellcor) — 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., 16 USPQ2d 1481 (D. Mass 1990) (for Polaroid) — Ninety-six day bench trial on damages resulting from Kodak’s infringement of Polaroid patents relating to integral instant photography. Judgment for Polaroid of $873 million.
  • U.S. Surgical Corp. v. Hospital Products Int’l, 701 F. Supp. 314 (D. Conn. 1988) (for U.S. Surgical) — Forty-day patent bench trial on patent infringement relating to surgical stapling devices. Judgment for U.S. Surgical. 
  • Polaroid Corp. v. Eastman Kodak Co., 641 F. Supp. 828 (D. Mass 1985) (for Polaroid) — Seventy-five day bench trial on patent infringement relating to integral instant photography. Judgment for Polaroid. 

Appeals:

  • Purdue Pharma Products, L.P. and Napp Pharm. Group Ltd. v. Par Pharmaceutical Inc., Appeal Nos. 2009-1553, 1592 (for Purdue and Napp) — Appeal and cross-appeal from District Court judgment in ANDA-based action that two Napp patents relating to controlled-release tramadol were infringed, enforceable, but invalid for obviousness. Affirmed in all respects.
  • Safeway, Inc. and Rite Aid Corp. v. Purdue Pharma, L.P., Appeal Nos. 2007-1551 and -1574 (Fed. Cir. 2008) (for Purdue) — Appeal from judgment for Purdue dismissing declaratory judgment action by prospective resellers of patented pharmaceutical formulation. Appellants withdrew appeal after briefing, before oral argument.
  • Abraxis Bioscience, Inc. (formerly known as AstraZeneca Pharmaceuticals, L.P.) v. Mayne Pharma (USA), Inc., 467 F.3d 1370 (Fed. Cir. 2006) (for Abraxis/AstraZeneca) — Affirmed judgment of infringement.
  • Purdue Pharma, L.P. v. Endo Pharmaceuticals, Inc., 438 F.3d 1123 (Fed. Cir. 2006) (for Purdue) — Reversed and remanded judgment of unenforceability; affirmed judgment of infringement. Vacated and remanded for further proceedings.
  • Purdue Pharma, L.P. v. Boehringer Ingelheim, GmbH, 237 F.3d. 1359 (Fed. Cir. 2001) (for Purdue) — Affirmed grant of preliminary injunction.
  • Crystal Semiconductor v. OPTi, Inc., (Fed. Cir. 2000) (for OPTi) — Opposed Crystal’s appeal of trial Court grant of JMOL reducing damages; cross-appeal of claim construction. Settled before oral argument. (aff’d in part, rev’d in part, vacated in part, and remanded sub nom. Crystal Semiconductor Corp. v. Tritech Microelectronics Int’l, 246 F.3d 1336 (Fed. Cir. 2001)).
  • BOC Health Care, Inc. v. Nellcor Inc., 98 F.3d. 1357 (Fed. Cir. 1996) (for Nellcor) — Affirmed (without opinion) judgment of validity and infringement for Nellcor.
  • Polaroid Corp. v. Eastman Kodak Co., 833 F.2d 930 (Fed. Cir. 1986) (for Polaroid) — Denied Kodak’s motion for stay of permanent injunction pending appeal.
  • Polaroid Corp. v. Eastman Kodak Co., 789 F.2d 1556 (Fed. Cir. 1986) (for Polaroid) — Affirmed District Court judgment of validity and infringement of seven Polaroid patents. 
  • Application of Check, 795 F.2d 1019 (Fed. Cir. 1986) (for Pitney Bowes) — Appeal from rejection of claims relating to electronic postage meter technology. Rejections reversed in part.
  • Brenner v. United States, 773 F.2d 306 (Fed. Cir. 1985) (for third party defendant Pitney Bowes) — Affirmed summary judgment of noninfringement by Pitney Bowes relating to optical character recognition technology. 

Representative Other Cases:

  • Epitomics v. Cell Signaling Technology Inc., C-07-5257 MMC (N.D. Cal. 2009) (for Cell Signaling) — Trade secrets misappropriation action related to methods of isolating and processing B-cells from rabbit spleens, creating fusions and growing rabbit antibody-producing cells. Settled during discovery.
  • Compaq Computer Corp. v. eMachines, 2002 U.S. Dist. LEXIS 13265, and 2002 U.S. Dist. LEXIS 13259 (S.D. Tex. 2002) (for Compaq) — 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.
  • Texas Instruments Inc. v. Tessera, Inc., (N.D. Cal. 2001) (for Tessera) — Declaratory judgment action relating to breach of contract and patent infringement of Tessera’s chip packaging technology. Settled through mediation one week before trial.
  • Compaq Computer Corp. v. Packard Bell, (S.D. Tex. 1996) (for Compaq) — Patent infringement action relating to personal computer components and subsystems. Damages claim in excess of $150 million before trebeling. Settled within two weeks of trial.
  • Nellcor, Inc. v. BOC Health Care, Inc., (Superior Court, Alameda County, CA 1994) (for Nellcor) — Trade secret action relating to sensor design for pulse oximetry systems. Settled one week before trial with assignment of defendants’ patent to Nellcor.

Publications

  • Author, Schwartz’s Patent Law & Practice, 8th Edition (Bloomberg/BNA 2015)
  • 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
  • Co-author, “Litigating the Case for Lost Profits,” (Univ. of Houston Law Center 1994)
  • “Evolution of the Inequitable Conduct Defense in Patent Litigation,” 7 Harv. J. Law & Tech. 37 (1993)

Presentations

  • “Patent Best Practices” 12th Annual Stanford E-Commerce Best Practices Conference, Stanford Law School, June 2015
  • Teva v. Sandoz: Peace at Last?” 23rd Annual Conference on Intellectual Property Law & Policy, Cambridge, UK, April 2015
  • “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