Robert Counihan

Office

New York

Practices

Industries

Education & Admissions

J.D., University of Michigan Law School

M.S.E., Biomedical Engineering, University of Michigan

B.S.E., Biomedical Engineering, University of Michigan

Admitted to practice in New York

Admitted to practice before the U.S. District Courts for the Southern and Eastern Districts of New York, and the U.S. Court of Appeals for the Federal Circuit

Registered to practice before the U.S. Patent and Trademark Office

An accomplished courtroom advocate, Robert helps life sciences companies of all sizes navigate business and IP conflicts. As a counselor to in-house counsel, management teams, and boards of directors, Robert’s clients ask for his guidance in litigation regarding patent infringement, trade secret misappropriation, collaboration failures, breaches of contract, and related issues facing life sciences companies.

Many litigators are narrowly focused on one thing: getting to trial. That’s not my style. I build relationships with my clients to understand their problems and help them reach the best resolution for their business interests."

Robert Counihan

Clients value Robert’s industry knowledge, legal experience, and advanced degrees in biomedical engineering, and his unique ability to help them find practical, cost-effective solutions to their problems. Robert counsels clients through disputes surrounding product launches, generic and biosimilar challenges, management hires, and broken deals.

Robert has led cross-border litigation strategies involving multiple U.S. and foreign jurisdictions and has litigated disputes in technologies across the life sciences industry, including small molecules, biologics, gene therapy, medical devices, and software. Clients trust him to handle their “bet the company” actions against commercial rivals, Hatch-Waxman and BPCIA actions against generic/biosimilar challengers, and disputes with investors and licensing partners, among others.

IAM Patent 1000 recently honored Robert for successfully resolving a contractual dispute for Avalyn Pharma, a longtime firm client that develops therapies for devastating lung disease. When Avalyn faced litigation alleging it failed to develop assets it received in an acquisition, Robert helped win significant pre-trial motions that paved the way for a favorable settlement on the eve of trial. In another example of Robert’s ability to quickly resolve a dispute and achieve his client’s long-term goals, he secured a favorable settlement for AnaptysBio in litigation against Tesaro and its parent, GlaxoSmithKline, over its development of a competing antibody. Robert won a motion to expedite the trial that put early pressure on Tesaro/GSK to settle.

Dedicated to pro bono service, Robert has negotiated IP licenses and research grants for an international research foundation and represented children seeking special education services. In his spare time, Robert is dedicated to his four children and serves on the Board of Directors for the Maritime Aquarium in Norwalk, CT.

Representing CSafe Global, a global cold chain shipping provider, in patent litigation in the Northern District of Georgia and before the U.S. Patent Trial and Appeal Board, whereby CSafe seeks to enforce its patents against its competitor, Envirotainer AB. These matters remain on-going.
Representing iRhythm in patent litigation disputes brought by Baxter subsidiaries Welch-Allyn and Bardy regarding alleged infringement by iRhythm’s Zio cardiac monitor in the District of Delaware and before the U.S. Patent Trial and Appeal Board. These matters remain on-going.
Representing Novo Nordisk in multiple Hatch-Waxman ANDA litigations involving generic challenges to patents related to Novo Nordisk’s blockbusters Victoza®, Ozempic®, and Saxenda® insulin products, including device patents related to injection pens. These matters remain on-going.
Represented UCB in Hatch-Waxman patent litigation in the U.S. District Court for the District of Delaware involving a product for treating Parkinson’s disease, Neupro®. He successfully obtained a trial verdict of infringement under the doctrine of equivalents, a decision upheld by the U.S. Court of Appeals for the Federal Circuit.

Representing CSafe Global, a global cold chain shipping provider, in patent litigation in the Northern District of Georgia and before the U.S. Patent Trial and Appeal Board, whereby CSafe seeks to enforce its patents against its competitor, Envirotainer AB. These matters remain on-going.
Representing iRhythm in patent litigation disputes brought by Baxter subsidiaries Welch-Allyn and Bardy regarding alleged infringement by iRhythm’s Zio cardiac monitor in the District of Delaware and before the U.S. Patent Trial and Appeal Board. These matters remain on-going.
Representing Novo Nordisk in multiple Hatch-Waxman ANDA litigations involving generic challenges to patents related to Novo Nordisk’s blockbusters Victoza®, Ozempic®, and Saxenda® insulin products, including device patents related to injection pens. These matters remain on-going.
Represented UCB in Hatch-Waxman patent litigation in the U.S. District Court for the District of Delaware involving a product for treating Parkinson’s disease, Neupro®. He successfully obtained a trial verdict of infringement under the doctrine of equivalents, a decision upheld by the U.S. Court of Appeals for the Federal Circuit.

Represented AnaptysBio in a licensing dispute in Delaware Chancery Court against GlaxoSmithKline. The dispute involved GSK’s alleged violation of “commercially reasonable efforts” obligations.
Represented Avalyn Pharma in a contract dispute in the U.S. District Court for the Southern District of California brought by a former shareholder. The shareholder alleged that Avalyn violated its obligations to use “commercially reasonable efforts” to develop a particular asset.
Represented an internationally renowned research institution in a confidential mediation against a multinational pharmaceutical company that resulted in a favorable settlement for Robert’s clients.
Represented a multinational vaccine manufacturer in a contract dispute in the U.S. District Court for the Southern District of New York and the Superior Court for the State of New York. The matter involved an alleged failure to make license payments associated with patent rights.
Represented a Taiwanese biotech company in a confidential arbitration proceeding in a contract dispute related to commercialization rights and obligations. He negotiated a settlement offering our client long-term commercial upside tied to the product.

Represented AnaptysBio in a licensing dispute in Delaware Chancery Court against GlaxoSmithKline. The dispute involved GSK’s alleged violation of “commercially reasonable efforts” obligations.
Represented Avalyn Pharma in a contract dispute in the U.S. District Court for the Southern District of California brought by a former shareholder. The shareholder alleged that Avalyn violated its obligations to use “commercially reasonable efforts” to develop a particular asset.
Represented an internationally renowned research institution in a confidential mediation against a multinational pharmaceutical company that resulted in a favorable settlement for Robert’s clients.
Represented a multinational vaccine manufacturer in a contract dispute in the U.S. District Court for the Southern District of New York and the Superior Court for the State of New York. The matter involved an alleged failure to make license payments associated with patent rights.
Represented a Taiwanese biotech company in a confidential arbitration proceeding in a contract dispute related to commercialization rights and obligations. He negotiated a settlement offering our client long-term commercial upside tied to the product.

Representing Amyndas Pharmaceuticals, a spinout of the University of Pennsylvania, in litigation in the U.S. District Court for the District of Massachusetts and in Denmark against Zealand Pharma and Alexion Pharmaceuticals, an AstraZeneca subsidiary, for misappropriation of trade secret information surrounding Amyndas’ next-generation complement therapeutics. This matter remains on-going.
Served as co-lead counsel for Loxo Oncology, an Eli Lilly company, in a trade secret misappropriation and contractual dispute action related to allegations that former Array employees stole trade secrets on Loxo’s behalf. Array’s preliminary injunction motion was denied in full. After an appeal in the U.S. Court of Appeals for the Tenth Circuit, Array agreed to dismiss its claims, allowing the employees to continue important research efforts.

Representing Amyndas Pharmaceuticals, a spinout of the University of Pennsylvania, in litigation in the U.S. District Court for the District of Massachusetts and in Denmark against Zealand Pharma and Alexion Pharmaceuticals, an AstraZeneca subsidiary, for misappropriation of trade secret information surrounding Amyndas’ next-generation complement therapeutics. This matter remains on-going.
Served as co-lead counsel for Loxo Oncology, an Eli Lilly company, in a trade secret misappropriation and contractual dispute action related to allegations that former Array employees stole trade secrets on Loxo’s behalf. Array’s preliminary injunction motion was denied in full. After an appeal in the U.S. Court of Appeals for the Tenth Circuit, Array agreed to dismiss its claims, allowing the employees to continue important research efforts.

“Successfully navigating ‘commercially reasonable effort’ obligations in IP agreements,” IAM, November 2022 (co-author)
“Timing for Patent Enforcement Against Pharmaceutical Product Launches,” Bloomberg Law, May 2022 (co-author)
“Patent Holder Remedies & Drug Product Launches,” Bloomberg Law, May 2022 (co-author)
"Professional Perspective: Preempting Patent Enforcement Prior to Product Launches," Bloomberg Law, May 2022 (co-author)
"Uniformity in E-Discovery Obligations and Sanctions After Recent Amendments to the Federal Rules," American Intellectual Property Lawyers Association, May 2016 (co-author)
Teva: The Real Impact on Claim Construction Tactics in the PTAB and Federal Courts," American Intellectual Property Law Association, July 2015 (co-author)
Mayo v. Prometheus: Another Guidepost on the Road to Determining Patentability in the Post-Industrial Age," Bio-science Law Review, November 2012 (co-author)

“Successfully navigating ‘commercially reasonable effort’ obligations in IP agreements,” IAM, November 2022 (co-author)
“Timing for Patent Enforcement Against Pharmaceutical Product Launches,” Bloomberg Law, May 2022 (co-author)
“Patent Holder Remedies & Drug Product Launches,” Bloomberg Law, May 2022 (co-author)
"Professional Perspective: Preempting Patent Enforcement Prior to Product Launches," Bloomberg Law, May 2022 (co-author)
"Uniformity in E-Discovery Obligations and Sanctions After Recent Amendments to the Federal Rules," American Intellectual Property Lawyers Association, May 2016 (co-author)
Teva: The Real Impact on Claim Construction Tactics in the PTAB and Federal Courts," American Intellectual Property Law Association, July 2015 (co-author)
Mayo v. Prometheus: Another Guidepost on the Road to Determining Patentability in the Post-Industrial Age," Bio-science Law Review, November 2012 (co-author)