JOSEPH M. MANAK Greenberg Traurig LLPShareholderPa.doc

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Dec 1, 2012 (4 years and 6 months ago)

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JOSEPH M. MANAK

Greenberg Traurig LLP


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Shareholder

Patents and Intellectual Property


685 West End Avenue, Apt. 2A

New York, NY 10025

(212) 865 7144(h)

(212) 801 2187 (o)

(917) 597 2667 (cell)

Email: manak@pipeline.com

Web address: www.patattorney.com

Joseph Manak is
a shareholder in the law firm of Greenberg Traurig LLP, and is located
in the firm’s New York Office. Greenberg Traurig is a U.S.
-
based, international full
-
service business law firm with more than 1100 attorneys and lobbyists in 20 offices.
Prior to join
ing Greenberg as a shareholder in 1999, Joe had been a salaried partner in
the New York office of Graham & James since 1997. The Graham & James New York
office merged with Greenberg Traurig in the summer of 2001.

Joe is an intellectual property attorney,

litigator, and trial lawyer who concentrates in
patent, trade secret and related antitrust litigation. He focuses his practice in
biotechnology, pharmaceutical, electronics, chemical and software patent law and
litigation, and also specializes in patent i
nterference practice. Joe has represented
some of the largest health care companies in patent infringement actions, Hatch
-
Waxman patent challenges, patent interferences, and has litigated patent and IP cases
concerning recombinant DNA technology, organic
chemistry, drug delivery systems,
electrical devices, drug metabolism, high
-
strength fibers, aerospace and defense,
medical devices, contact lenses and food science.

Joe also supervises and prepares and prosecutes software, Internet, chemical and
pharmaceu
tical patent applications, practices trademark, trade dress, copyright and
related antitrust and unfair competition law, and has experience in securities and
insurance litigation and arbitration.

On the transactional side, Joe conducts IP
-
related M&A due d
iligence, and negotiates
and drafts a variety of software and technology
-
based licenses, patent and know
-
how
agreements, research and development agreements, distribution and re
-
seller
contracts, and similar transactions.


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Some of the reported matters that
Mr. Manak has handled include:

Litigations
:


Abbot Laboratories v. Paddock/Par Pharmaceuticals


Hatch Waxman patent litigation


Leviton Manufacturing Co., Inc. v. Shanghai Meihao et al.

Mult
-
district electronics patent litigation


Novo Nordisk v. Teva Phar
maceuticals USA, Inc.

Civil Action No. 02
-
332
-
SLR

Patent Infringement action and district court appeal of USPTO interference

PE Corp. and Roche Molecular Systems v. MJ Research

Case No. 3
-
98
-
CV
-
1201

Patent infringement litigation involving polymerase chain

reaction

Leviton Manufacturing Co., Inc. v. Yatai USA LLC et al.

Multidistrict action involving ground fault circuit interrupters

University of Rochester v. Merck

Patent Interference No. 104,289 (U.S.P.T.O. 2001)

Represent Merck in patent interference re
lated to discovery of Cox
-
2 gene and
protein.

Merck Frosst Canada v. Monsanto Company

Case No. 1:99 CV 02620 (Thomas Penfield Jackson)

Represent Merck in District Court action related to Cox
-
2 inhibitor VIOXX

Monsanto Corp. and G.D. Searle & Co. v. Merck

Inc
.

Interference Nos.103,873; 103845

Represented Merck in large scale patent interference involving
cycooxegenase II inhibitors, next generation anti
-
inflammatories

Novo Nordisk A/S et al v. Eli Lilly and Company and Genentech Inc.

Civ. Action No. 97
-
48
48 (AET) (D. N.J.)

Represented Novo Nordisk in patent infringement litigation concerning
recombinant DNA production of Human Growth Hormone

Eli Lilly and Company v. Novo Nordisk A/S et al.

Civ. Action No. IP 97
-
1834 C (S.D. Indiana)

Represented Novo Nordis
k in patent infringement and validity action involving
Human Growth Hormone formulation patent

Genentech Inc. v. Novo Nordisk A/S and Biotechnology General

Civ. Action Nos. 95 Civ. 3474, 94 Civ. 8634, 95 Civ. 0110, 94 Civ. 1755


3

(S.D.N.Y.), and Intern. Trad
e Comm’n.

Represented Novo Nordisk in multiple patent infringement, validity and
antitrust actions in Southern District of New York and International Trade
Commission concerning recombinant DNA production of Insulin and Human
Growth Hormone.

Emory Univers
ity v. Glaxo Wellcome PLC and Biochem Pharma Inc.

Civ. Action No. 1
-
96
-
CV 1868
-
GET (N.D.Ga.)

Represent Glaxo Wellcome in patent infringement and validity action brought
by Emory involving enantiomeric compounds and chiral chemistry related to
AIDs drug Epi
vir.

Securities and Exchange Commission v. Femminella et al.

Civ. Action No. 96 Civ. 336 (S.D.N.Y.)

Represented defendant in SEC enforcement action for securities fraud
relating to bond trading.

Grumman Aerospace Corporation v. TechMatics et al
.

95 Civ. 96
6 (Platt) E.D.NY.

Represented Northrop Grumman in trade secret and unfair competition claim
against former employees concerning aerospace and automotive technology.

Marion Merrell Dow Inc. et al. v. Baker Norton Pharmaceuticals, Inc.


94 Civ. 1245 (Moren
o) S.D. Fla.

Represented Marion Merrell Dow Inc. (now Aventis) in action concerning the
antihistamine Seldane® against generic drug manufacturers under Hatch
-
Waxman Act.

Alpex Computer Corp. v. Nintendo Company Ltd. et al
.

86 Civ. 1749 (KMW) S.D.N.Y.

Assis
ted Honorable Kimba M. Wood, U.S.D.J.,


and Special Master Thomas
L. Creel in trial on infringement of Alpex patent relating to computer video
games.

Hoechst Celanese Corporation v. Allied
-
Signal Inc
.

Civil Action No. 3:92CV66
-
MU, W.D.N.C.

Represented Alli
ed
-
Signal in patent and antitrust action relating to industrial
fibers.

The Pretesting Company v. The Arbitron Company

93 Civ. 6031 (CBM) S.D.N.Y.

Represented Arbitron Co. in defense of patent, unfair competition and false
advertising action concerning au
tomated television audience survey system.

Wesley
-
Jessen Corporation v. Ciba Vision Corporation


Civil Action No. 90
-
SLR (SLR), D. Del.


4

Represented Ciba
-
Geigy in patent action and antitrust concerning color
contact lenses.

Baxter Healthcare Corporation
et al. v. Acufex Microsurgical, Inc
., Civil Action
No. 88
-
408 JSL (RWRx), N.D. Cal./D. Mass.

Represented Acufex division of American Cyanamid Co. in patent action
concerning arthroscopic surgical equipment.

In re Nifedipine Capsule Patent Litigation
,

MD
L 774 M21
-
51 (JFK), Multi
-
district.

Represented Pfizer Inc. and Bayer AG in multiple actions concerning the
cardiovascular drug Procardia® against generic drug manufacturers under
Hatch
-
Waxman Act.

American Cyanamid Co. v. Ethicon, Inc
.

Civil Action No.
85
-
3053 (JCL), D.N.J.

Represented American Cyanamid Co. in action against Ethicon (J&J) under
35 USC § 146 concerning priority of surgical suture invention.

Procter & Gamble Co. v. Nabisco Brands, Inc. et al
.

Civ. Action No. 84
-
333 LON, D. Del. 697 F. Su
pp. 1360 (D. Del. 1988). The
"Cookie Wars": see Wall Street Journal, Sept.

11, 1989 and U.S. News &
World Report, Sept. 25, 1989.

Represented P&G in large
-
scale trade secret misappropriation, industrial
espionage, patent and unfair competition suit conce
rning P&G's invention of
storageable crispy/chewy cookies.

Foreign Exchange and Investment Ltd. v. Ideal Consolidators,

Civ.

Nos. 91
-
2334 (MTB); 91
-
2335 (AJL) D.N.J.

Represented Hong Kong investment bank in action to enforce negotiable
instruments agai
nst warehouses and shippers for fraud and diversion of
goods shipped from Far East.

United States v. Marine Shale Processors
.

Represented Marine Shale in action brought by the U.S. government (EPA)
under environmental laws regarding waste facility in Lou
isiana.

Sky Chefs, Inc. v. Delaware North Companies Inc.

Represented Sky Chefs in dispute arising out of leveraged
-
buyout relating to
the purchase of airline concession assets.

Transactions
:


Indian Generic Pharma Cos
.


Asset sales and stock transactio
ns in acquisitions of U.S. generic cos.



5

Bentley Pharmaceuticals

IPO

Ziff
-
Davis Interchange®/Private Bidder

Represented European communication company in bid for MultiMedia
software business.

Eastman Kodak Company/Sterling Drug Co.

Represented internati
onal pharmaceutical company in bids to purchase
Kodak's Sterling Drug Co. and diagnostic business.

Sivensa S.A./FIOR

Representation of Venezuelan industrial company in various trade secret,
trademark, technology transfer and patent matters.

Engelhard I
nc./Degussa Corporation and Degussa AG.

Represented Degussa in negotiations regarding proposed sale and licensing
of Engelhard's world
-
wide precious metals businesses.

IBM/Commodore International Ltd
.

Represented Commodore in negotiations concerning IBM

hardware and
software licenses relating to personal computer technology.

OTHER LEGAL EXPERIEN
CE
:

1988 to

KAYE, SCHOLER, FIERMAN, HAYS & HANDLER

1996


New York, New York

Associate
-

Litigation Dept. Technology
--
Patent Group

Litigation and Counseling
:

Fe
deral and State Court litigation and counseling in Intellectual Property,
Antitrust, Unfair Competition, False Advertising and Commercial matters.

Extensive experience in complex patent and technology litigation,
including responsibility for running day
-
to
-
day aspects of patent cases,
taking and defending of depositions, drafting briefs, arguing motions,
witness interviews and preparation, fact investigations, expert witness
selection and preparation, settlement negotiations and agreements, trial
and mini
-
trial preparation, advise and counseling, patent infringement and
validity opinions.

Patent and Antitrust experience emphasized large
-
scale patent litigation
and counseling for Fortune 500 companies in various industries:
aerospace, pharmaceuticals and bi
otechnology, medical devices, fibers,
chemicals, computers and electronics. Provide numerous consultations
regarding marketing and licensing proprietary products and processes

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under antitrust and misuse laws governing tie
-
ins, exclusive dealing and
royalt
y terms.

Other Intellectual Property experience included patent and trademark
prosecution; litigation and counseling involving software copyrights and
patents, trade secrets, trademarks, service marks and false advertising
claims.

General practice litigati
on includes actions involving the Uniform
Commercial Code and related banking regulations, Shipping and
Admiralty, environmental laws, breach of representations and warranties
and breach of contract.

Licensing and Acquisitions
:

Numerous acquisition, licens
ing and technology transfer matters in
complex transactions and straight licensing arrangements.



Assisted in negotiating and structuring numerous technology,
intellectual property and non
-
compete transactions.



Experienced in drafting numerous technol
ogy and IP contracts,
including acquisition agreements, software agreements; patent,
know
-
how, copyright and trademark licenses.



Conducted due diligence and advised intellectual
property/licensing aspects of deal for potential buyer of on
-
line
MultiMedia

business.



Due diligence and negotiations for potential buyer/licensor of
worldwide technology assets of precious metals business.

1986
-
88

MORGAN & FINNEGAN

345 Park Avenue, New York, New York

Litigation Associate, 1986
-
1988

(Summer

Associate, 1985)

Lit
igation and counseling in intellectual property (copyright, patent,
trade secret, biotechnology, trademark, gray
-
market and counterfeiting)
and unfair competition cases. Drafted briefs, legal memoranda and
opinion letters, interrogatories, assisted in dep
ositions, document
productions and trial preparation.



Representation of Procter and Gamble in
P

& G v.
Nabisco et al
., a large
-
scale industrial espionage, trade secret
and patent infringement litigation that resulted in a $125 MM
settlement award to P&G
in 1989.


7



Prosecution of biotechnology and chemical patent
applications; trademark applications.

EDUCATION


NEW YORK LAW SCHOOL

New York, New York

Juris Doctor,
cum

laude
, June, 1986

Class Rank
: Top 15%

G.P.A.:

3.25

Honors
:
Journal of International and

Comparative Law

MANHATTAN COLLEGE

Riverdale, New York

Bachelor of Science, 1983

Major
: Chemistry

G.P.A.:

3.2

Honors
: Dean's List, 1981 and 1982; American Chemical

Society Certification; New York State Regent's Scholarship

LECTURES AND PUBLICA
TIONS

"The

Law of Written Description in Pharmaceutical and Biotechnology
Patents," 23 Biotechnology Law Report 30, Number 1 (February 2004).

“Toward Consistency and Clarity in Patent Claim Construction:
Markman,
Hilton Davis, Southwall, and Vitronics

Amer. Bar Ass
’n IPL Newsletter
, Vol.
15, No. 2 Winter 1997.

“Decisions Key to Safe Licensing,”
Les Nouvelles
, J.Lic. Exec. Soc. Vol. XXXI
No. 1, March 1996.

“Confusion in the Law of Patent Infringement: The Federal Circuit’s Decisions
in Markman and Hilton Davis,” BIOT
ECH Patent News, vol. 9 No. 10, October
1995.

"Federal Circuit
Telectronics

and
Chartex

Decisions Clarify Infringement
Exemption For FDA Uses," BIOTECH Patent News, vol. 7, no. 9, September
1993.

Licensing Executives Society

1992 Annual Meeting
--

Boca Rat
on, Florida

Workshop Leader: Licensing and the Law of Tie
-
ins

Columbia University School of Law

1989
-
1990 Korean Legal Studies Program In International Trade


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Lecturer: weekly lectures on licensing, copyright and trademark law given to
Korean lawyers and
government officials.

BAR

ADMISSIONS


New York State, March 1987

United States District Courts:


Southern District of New York


Eastern District of New York

United States Patent and Trademark Office, June 1988 (Registration No.
33,013)

BAR ASSOCIATIO
NS

AIPPI

1998

Association of the Bar of the City of New York

1993
-
present Computer Law Committee

1994 Software Protection Subcommittee

Controlled Release Society

1998 to present

Licensing Executives Society

1991 Work Shop Committee

1990 Legal Affairs Comm
ittee

2004 Membership Committee

New York Intellectual Property Law Association

1994 Judge's Dinner Committee

1993 Antitrust and Misuse Committee

1990 Alternative Dispute Resolution Committee

LANGUAGES

French

COMPUTER SKILLS

Programming: courses in JAVA,

FORTRAN, BASIC, COBOL and PASCAL.

Applications: Word
-
Perfect, Microsoft Word, Access, Quicken, Lotus 1
-
2
-
3,
Harvard Graphics, Netscape, Corel Draw, LEXIS
-
NEXIS, and WESTLAW.



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