Brian W. Nolan

Brian has acted as lead trial counsel and appellate counsel on numerous matters covering all aspects of intellectual property protection. He has participated in several district court trials, ITC investigations, and USPTO Post Grant proceedings and appellate matters relating to a wide range of technologies, including monoclonal antibodies, pharmaceuticals, receptor pharmacology, medical devices, biotechnology, semiconductors, OLED displays, laser diodes, computer storage systems, error detection and correction, data capture systems, medical imaging technology, crystal growth, and building products. 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. Brian has experience litigating cases brought under the Hatch-Waxman Act and counseling innovator pharmaceutical companies regarding their patent portfolios and potential generic competition prior to patent expiry.

Brian regularly assists clients with business transactions in which IP assets and artificial intelligence form a key component. Brian advises on M&A, capital markets, and other corporate transactions, including joint ventures, collaborations, licensing, private equity, venture capital, and hedge fund transactions. Brian 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 is in demand as a speaker and writer on intellectual property issues. News organizations often seek Brian's views on current intellectual property issues. His articles and commentaries have provided keen insight into the interplay between AI and IP issues. 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.

• Inter Partes Review proceedings brought by competitors against patents covering innovative hemostasis point of care devices (Instrumentation Laboratory Co. v. HemoSonics LLC, USPTO)
• Federal and state trade secret action related to conference management software (eTouches, Inc. v. Swoogo LLC, D. Conn.)
• 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)
• Patent infringement dispute concerning drilling tools for oil wells (Schoeller-Bleckmann Oilfield Equipment AG v. Churchill Drilling Tools, Ltd., S.D. Tex.)
• Trademark matter concerning the design of fragrance bottles (Jivago, Inc. v. Perfume Network, Inc. et al., S.D.N.Y.)

Trial counsel:

• ITC trade secret misappropriation proceeding concerning organic light-emitting diode (OLED) displays for smartphone, virtual reality, and augmented reality displays (In the Matter of Certain Organic Light-Emitting Diode Display Modules and Components Thereof, USITC)
• Hatch-Waxman patent infringement action relating to the HIV protease inhibitor Lexiva® (ViiV Healthcare and Vertex Pharmaceuticals v. Mylan, D. Del.)
• 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.)
• 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.)
• Patent infringement, antitrust and trade secret dispute concerning bulk acoustic wave filter devices used in cellular devices (TriQuint Semiconductor v. Avago Technology, D. Ariz.)
• Patent dispute related to software encryption technology (Digital Reg of Texas, LLC, v. LFP Internet Group, LLC, E.D. Tex.)
• 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)

Trial team member:

• Hatch-Waxman patent litigation involving the antibiotic Ceftin® (Glaxo Group Limited v. Apotex, Inc., N.D. Ill.)
• 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.)
• 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)

Representative Appellate Experience

• C. A. Casyso GmbH v. HemoSonics LLC, Appeal No. 20-1444 (Fed. Cir.)
• Schoeller‐Bleckmann 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

• Roivant Sciences as IP counsel in its licensing of PF-06480605 (now RVT-3101) and the creation of a new Vant for the development of RVT-3101 as a treatment for inflammatory bowel disease and its subsequent sale of Telavant to Roche for $7.1 billion.
• Roivant Sciences as IP counsel in its licensing of brepocitinib and the creation of Priovant Therapeutics for the development of brepocitinib as a treatment for autoimmune diseases.
• Bristol-Myers Squibb Co. by providing intellectual property counseling in its $74 billion acquisition of Celgene Corp.
• Roivant Sciences, Inc. in a transaction with Oncopia Therapeutics and related licensing from the University of Michigan for a target protein degradation platform with a subsequent $200 million investment by SK Holdings.
• Roivant Sciences, Inc. in an acquisition of an anti-GM-CSF antibody under development for the treatment of autoimmune diseases.
• Innovator pharmaceutical company with IP tasks associated with a $345 million Nasdaq offering.
• Roivant Sciences, Inc. by conducting IP and FDA due diligence in acquisition valued at over $500 million of a drug candidate for treatment of diabetes.
• Roivant Sciences, Inc. by conducting IP and FDA due diligence in acquisition of global rights for PA101 from Patara.
• Investment company in potential Series D investment in virtual reality and augmented reality technology.
• Investment company in Series B investment in company developing smart headphone technology.
• Medical device company in acquisition of point-of-care hemostasis device company.
• Foreign technology company in acquisition of patent portfolio related to semiconductor manufacturing deposition technology.
• Foreign technology company in acquisition of chemical vapor deposition assets.
• Investment company in Series B investment in company developing an ambulatory ventilation system.
• Investment company in Series E investment in company investigating deuterated versions of existing medicinal compounds to improve pharmacokinetic profiles.
• Investment company in Series B investment in company developing CAR-T technology.