Josh Reisberg focuses his practice on intellectual property and high-stakes commercial litigation with broad experience in life sciences. Josh has a degree in Molecular Biology and has employed his science background in patent litigation matters related to diverse technologies, such as polymer materials, pharmaceuticals, semiconductor materials, medical devices, and agricultural genetics. Josh's experience extends into copyright/trademark and design patent disputes in the fashion and art industries.
Josh has practiced in state and federal courts throughout the country, as well as in cases pending before the American Arbitration Association. He has participated in all aspects of the liability and damages-related aspects of patent and commercial litigation, including pre-suit investigation, fact and expert discovery, motion practice and depositions, as well as trial.
Experience
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Defended Par Pharmaceutical, Inc. in a Hatch-Waxman patent litigation action against Alcon Pharmaceuticals and others in the District of New Jersey involving otic antibiotic ear drops marketed as Ciprodex®. Case settled favorably prior to expert discovery. In re Ciprodex, C.A. No. 15-5756-PGS-DEA (consolidated) (D.N.J.).
- Defended Alvogen Pine Brook LLC in a Hatch-Waxman patent litigation action against Purdue Pharmaceuticals and Grünenthal GmbH in the District of Delaware involving abuse-deterrent hydrocodone bitartrate extended-release tablets marketed as Hysingla® ER. Case settled favorably on the eve of trial. Purdue Pharma L.P. et al. v. Alvogen Pine Brook LLC, C.A. No. 15-0687-TBD (consolidated) (D. Del.).
- Defended MSN Laboratories Private Limited in a Hatch-Waxman patent litigation action against AstraZeneca in the District of New Jersey involving roflumilast tablets marketed as Daliresp®. Case settled favorably following expert discovery. AstraZeneca AB et al. v. MSN Labs. Private Ltd., C.A. No. 15-3375-FLW-DEA (consolidated) (D.N.J.).
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Represented Everlight Electronics Co. through fact and expert discovery in patent infringement actions involving phosphor-based LED technology. Everlight Electronics Co., Ltd. et al. v. Nichia Corp. et al., C.A. No. 12-cv-11758-GAD-MKM (E.D. Mich.)
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Defended Pfizer, Inc. in a trade secret misappropriation litigation brought in California state court involving Pfizer’s development of a COX-II pain medication, Bextra®, for use in a surgical setting. Lead attorney working with expert to rebut opinions directed to Pfizer’s alleged use of trade secret information in clinical trials relating to Bextra®.
- Represented The Dow Chemical Company in a patent infringement action brought against Nova Chemicals Corporation and Nova Chemicals Inc. in the District of Delaware involving Dow’s patented film-grade polyethylene technology marketed as ELITE®. Played integral role in securing wins following a 2010 jury trial and 2012 bench trial on supplemental damages. The Dow Chemical Co. v. Nova Chemicals Corp. et al., C.A. No. 05-737-JJF, C.A. No. 05-737-LPS (D. Del.)
- Represented The Dow Chemical Company in litigation involving Canadian patents directed to Dow’s ELITE mLLDPE polyethylene technology. Assisted Dow’s Canadian team in securing a judgment for patent damages totaling over CAN $645 million (USD $500 million), which amounts to the largest reported patent damages award in Canadian history. More coverage: http://www.smart-biggar.ca/en/articles_detail.cfm?news_id=1283
Honors
Super Lawyers, New York Metro Rising Stars (2013 - 2017)
News
Thought Leadership
- SCOTUS Reverses Second Circuit Ruling in Lucky Brand, Intellectual Property Magazine, May 15, 2020
- SCOTUS Tosses Second Circuit’s Blanket TM Defence Rule, World IP Review, May 15, 2020
- ‘Defense Preclusion’ Did Not Bar Apparel Maker’s Release Defense in Long-Standing Trademark Dispute, Wolters Kluwer IP Law Daily, May 14, 2020
- How to Combat IP-Facilitated Digital Fraud During Pandemic, Law360, April 20, 2020
- Navigating Uncertainty in Digital Health Patent Eligibility, Law360, March 2, 2020
- High Court Rebuff of PTO’s Attorney Free Bid Affects Trademark Law, Attorneys Say, Westlaw Intellectual Property Journal, December 18, 2019
- PTO Clarifies January Guidance, but Conflict with Case Law Still Continues, BioWorld MedTech, October 28, 2019
- 4 Takeaways From the USPTO's Patent Eligibility Update, Law360, October 23, 2019
- USPTO Updates Revised Patent Eligibility Guidance, Intellectual Property Magazine, October 21, 2019
- SCOTUS Ruling Will Drive Copyright Registrations, Say Lawyers, World Intellectual Property Review, March 6, 2019
- Axinn IP Update: U.S. Supreme Court Holds That Copyright Office Must Grant Copyright Registration Before Infringement Suit Can Be Filed, Axinn Update, March 5, 2019
- Lawyers Weigh in on SCOTUS Copyright Ruling, Managing Intellectual Property, March 5, 2019
- No (Legal) Worries for Disney in 'Hakuna Matata' Trademark Row, Bloomberg IP Law, January 7, 2019
- Attorney; SCOTUS Avoided Clarity Over "Abstract" in Alice Case, BioWorld MedTech, October 25, 2018
- 3 Takeaways in Ruling on PTAB Standing and Burden-Shifting, Law360, September 26, 2018
- Beyond the Merits: Generic Company Defense Strategies, Pharmaceutical Executive, June 29, 2018
- What We Know About Patent Venue Post-TC Heartland, Law360, May 23, 2018
- Using Digital Tools in Litigation, Today's General Counsel, October 2017
- KitKat Can’t Catch a Break with Trademark Dispute, Inside Counsel, September 19, 2017
- What’s In Your Garage? KITT, the Bluesmobile and a Shaggin’ Wagon, The Wall Street Journal, September 8, 2017
- These Lawyers Turn to Nature to Nurture Their Bodies and Souls, ABA Journal, July 2016
Events
Education
- JD – magna cum laude, Brooklyn Law School (2006)
- BA – Colgate University (2002)
Admissions
- New York
- US District Court Southern District of New York
- US District Court Eastern District of Michigan