Brian W. Nolan is a member of the Intellectual Property group at Mayer Brown. Brian focuses his practice on intellectual property litigation, counseling, and due diligence in the areas of patent, trade secret, unfair competition, antitrust, trademark, counterfeit goods and copyright law. LMG Life Sciences recognized Brian as a “Life Sciences Star” and according to IAM 1000 “[Brian] Nolan is a key asset to the firm, given his wealth of pharmaceutical and biotechnology litigation expertise and ability to cross over seamlessly into other fields such as semiconductors and information technology.”
Brian has acted as lead trial counsel and appellate counsel on numerous matters covering all aspects of intellectual property protection. Brian has participated in several district court trials, ITC investigations, USPTO Inter Partes Review and appellate proceedings relating to a wide range of technologies, including monoclonal antibodies, pharmaceuticals, receptor pharmacology, medical devices, biotechnology, medical imaging technology, crystal growth, semiconductors, laser diodes, building products, data capture systems and computer storage systems. Brian has experience counseling clients concerning their biological products, including working to develop strategies to allow for introduction of new biologics to the marketplace and seeking to protect existing biologics from potential biosimilars competition. Additionally, Brian has experience litigating cases brought under the Hatch-Waxman statute and counseling innovator pharmaceutical companies regarding their patent portfolios and potential generic competition prior to patent expiry.
Brian regularly counsels investment companies concerning acquisitions in which the buyer’s valuation is driven by IP assets. He works with public and private companies to develop patent strategies to enhance overall value. Brian often advises on M&A, capital markets and other corporate transactions, including joint ventures, private equity, venture capital and hedge fund transactions.
Brian has acted as an adjunct professor of law at Fordham University School of Law, where he taught a course on patent litigation for many years. Brian speaks and writes on intellectual property issues at many events and in various publications. News organizations often seek Brian's views on current intellectual property issues.
Representative District Court and Administrative Agency Experience
- Lead counsel in district court patent infringement action relating ULTOMIRIS® and a patent claiming methods of use for antibodies with specific binding profiles under different pH conditions. (Chugai Pharmaceutical Co. Ltd v. Alexion Pharmaceuticals, Inc., D. Del).
- Lead counsel in Inter Partes Review proceeding brought against patent owner in the hemostasis point-of-care device space. (HemoSonics LLC v. C.A. Casyso GmbH, USPTO)
- Lead counsel in Inter Partes Review proceedings brought by competitors against patents covering innovative hemostasis point of care devices. (Instrumentation Laboratory Co. v. HemoSonics LLC, USPTO)
- Trial counsel in a Hatch-Waxman patent infringement action relating to the HIV protease inhibitor Lexiva®. (ViiV Healthcare and Vertex Pharmaceuticals v. Mylan, D.Del.)
- Lead counsel in federal and state trade secret action related to conference management software. (eTouches, Inc. v. Swoogo LLC, D. Conn.)
- Lead counsel in Inter Partes Review proceeding brought by generic pharmaceutical companies challenging the patent that covers the HIV protease inhibitor Lexiva®. (Ranbaxy Laboratories Ltd. v. Vertex Pharmaceuticals, Inc., USPTO; Lupin Limited v. Vertex Pharmaceuticals, Inc., USPTO.)
- Trial counsel in various biotech patent disputes concerning the Cabilly patent family and the monoclonal antibodies Arzerra® and Benlysta®. (Glaxo Group Ltd., GlaxoSmithKline and Lonza Biologics v. Genentech and City of Hope, C.D. Cal.; Genentech Inc. v. Glaxo Group Ltd., GlaxoSmithKline and Human Genome Sciences, C.D. Cal.)
- Trial counsel in biotech patent infringement action alleging infringement by the use of the monoclonal antibody Arzerra® to treat chronic lymphocytic leukemia. (Biogen Idec, Inc. and Genentech v. GlaxoSmithKline et al., S.D. Cal.)
- Lead trial counsel in patent infringement dispute concerning drilling tools for oil wells. (Schoeller-Bleckmann Oilfield Equipment AG v. Churchill Drilling Tools, Ltd., S.D. Tx.)
- Trial counsel in patent infringement, antitrust and trade secret dispute concerning bulk acoustic wave filter devices used in cellular devices. (TriQuint Semiconductor v. Avago Technology, D. Ariz.)
- Lead counsel in trademark matter concerning the design of fragrance bottles. (Jivago, Inc. v. Perfume Network, Inc. et al., S.D.N.Y.)
- Trial counsel in patent dispute related to software encryption technology. (Digital Reg of Texas, LLC, v. LFP Internet Group, LLC, E.D.Tx.)
- Trial counsel in ITC patent infringement proceeding concerning data capture technology. (In the matter of Certain Bar Code Scanners and Scan Engines, Components Thereof and Products Containing the Same, USITC)
- Counsel on various ITC matters relating to blue laser technology. (In the matter of Certain Short-Wavelength Light Emitting Diodes, Laser Diodes and Products Containing Same; In the matter of Certain Short Wavelength Semiconductor Lasers and Products Containing the Same, USITC)
- Trial team member on various Hatch-Waxman cases related to the blockbuster anti-emetic drug Zofran®. (Glaxo Group Limited and SmithKline Beecham Corp. v. Teva Pharmaceuticals, Inc., D. Del.; Glaxo Group Limited and SmithKline Beecham Corp. v. Dr. Reddy’s Laboratories, Inc., D. N.J.; Glaxo Group Limited and SmithKline Beecham Corp. v. Kali Laboratories, D. N.J.; Glaxo Group Limited and SmithKline Beecham Corp. v. Pliva, D. N.J.; Glaxo Group Limited and SmithKline Beecham Corp. v. Sandoz, D. N.J.)
- Trial team member for Hatch-Waxman patent litigation involving the antibiotic Ceftin®. (Glaxo Group Limited v. Apotex, Inc., N.D. Ill.)
Representative Appellate Experience
- Schoeller‐Blckmann Oilfield Equipment AG v. Churchill Drilling Tools US, Inc., Appeal No. 17‐2137 (Fed. Cir.)
- Biogen Idec, Inc. v. GlaxoSmithKline, LLC, 713 F.3d 1090 (Fed. Cir. 2013)
- Glaxo Group Limited et al. v. Kali Laboratories, Inc., Appeal No. 06-1026 (Fed. Cir.)
- Glaxo Group Limited et al. v Apotex, Inc., 376 F.3d 1339 (Fed. Cir. 2004)
- Pacific International Tool and Shear v. CertainTeed Corp., Appeal No. 04-1121 (Fed. Cir.)
- Glaxo Group Limited et al. v. Ranbaxy Pharmaceuticals Inc., 262 F.3d 1333 (Fed. Cir. 2001)
- II VI Incorporated v. Saint-Gobain Industrial Ceramics, Inc., Appeal No. 04-2389 (3rd Cir.)
Representative Transactional Experience
- Represented Bristol-Myers Squibb Co. by providing intellectual property counseling in its $74 billion acquisition of Celgene Corp.
- Represented innovator pharmaceutical company with IP tasks associated with a $345 million Nasdaq offering.
- Represented innovator pharmaceutical company by conducting IP and FDA due diligence in acquisition valued at over $500 million of a drug candidate for treatment of diabetes.
- Represented innovator pharmaceutical company by conducting IP and FDA due diligence in acquisition of global rights for PA101 from Patara.
- Represented investment company in potential Series D investment in virtual reality and augmented reality technology.
- Represented investment company in Series B investment in company developing smart headphone technology.
- Represented medical device company in acquisition of point-of-care hemostasis device company.
- Represented foreign technology company in acquisition of patent portfolio related to semiconductor manufacturing deposition technology.
- Represented foreign technology company in acquisition of chemical vapor deposition assets.
- Represented investment company in Series B investment in company developing an ambulatory ventilation system.
- Represented investment company in Series E investment in company investigating deuterated versions of existing medicinal compounds to improve pharmacokinetic profiles.
- Represented investment company in Series B investment in company developing CAR-T technology.
Lehigh University, B.S.C.E.
Fordham University School of Law, JD
- New York
- New Jersey
- US Patent and Trademark Office
- US Court of Appeals for the Federal Circuit
- US District Court for the District of New Jersey
- US District Court for the Southern District of New York
- US District Court for the Eastern District of New York