Douglas A. Robinson

• On behalf of a pharmaceutical manufacturer, served as Lead Counsel in an appeal to the Federal Circuit over the USPTO’s denial of a patent application involving a new composition.
• Obtained dismissal of trademark infringement and false advertising claims at pleading stage.
• Lead counsel in trademark infringement lawsuit between competitors; negotiated favorable settlement terms for defendant.
• Ongoing defense of farm equipment manufacturer in patent infringement lawsuit between competitors.
• Ongoing representation of patentee in litigation between competitors involving infant and toddler products
• Provided local counsel services in patent infringement and unfair competition claims between competitors.
• Representation of defendants in patent litigation regarding pest remediation; obtained favorable summary judgment ruling of non-infringement and successful Daubert challenge of patentee’s expect.
• Representation of defendant in patent infringement lawsuit concerning spray tanning booths. The case ended with a favorable settlement following institution of Inter Partes Review and successful motion to transfer venue from the Eastern District of Texas to the defendant’s home forum.
• Representation of defendant in patent infringement case involving stationary bicycle; obtained favorable summary judgment rulings of non-infringement and patent invalidity.
• Lead counsel representation for defendant in patent infringement litigation concerning tattoo and permanent make-up devices. The case ended with a favorable settlement following institution of an Inter Partes Review proceeding on petition drafted for the defendant.
• Lead counsel representation for defendant in patent infringement litigation concerning tattoo and permanent make-up devices. The case ended with a favorable settlement following claim construction briefing.
• Representation of plaintiff regarding infringement patent covering an enclosed conveyor belt system. Representation also included successful defense of two ex parte patent reexaminations proceeding instituted by defendant. Case ended in favorable settlement.
• Representation of defendant and patent company in patent infringement litigation concerning antenna-testing technology; obtained favorable summary judgment ruling of non-infringement.
• Representation of petitioner in multiple Inter Partes Review proceedings concerning heat dissipation technology. All challenged claims were found unpatentable by the PTAB, and were later affirmed by the Federal Circuit.
• Successful defense of patent-in-issue in an Inter Partes Review proceeding, which was the first Inter Partes Review decision where a patent claim survived a final written decision.
• Representation of complainant in ITC proceeding involving kitchen appliances; case ended in favorable settlement.
• Representation of defendant against patent infringement lawsuit regarding a virtual music reality system. After a two-day Markman hearing, a claim construction ruling construed four terms in the defendant’s favor, prompting the plaintiff to file a notice of dismissal.
• Representation of defendant in patent infringement lawsuit concerning soil erosion prevention fabrics; successfully defeated motion for preliminary injunction, then obtained favorable claim construction order, prompting plaintiff to dismiss litigation with prejudice.
• Representation of respondent in arbitration proceeding; developed defenses and, following a day-long meeting between the parties, complainant withdrew its allegations with prejudice.
• Representation of respondent in false advertising complaint filed with the BBB’s National Advertising Division; collaborated with FDA counsel to obtain medical device clearance for product from the FDA, which negated the arguments presented by the complainant.
• Representation of complainant in patent arbitration regarding balancer technology. Following a weeklong trial, the arbitrator awarded seven figure compensation based on an above industry average 7% royalty rate, and further ordered respondent to pay attorneys’ fees and all arbitration costs.
• Obtained partial grant of summary judgment in a false advertising case regarding mouthwash; the ruling prompted the plaintiff to settle on favorable terms.

In the News

• Pharma Industry Using Creative IP Agreements to Boost Profits, says Doug Robinson in Bloomberg Law Interview
• Doug Robinson Interviewed by Bloomberg Law about Changing Trends for Generics Makers at the PTAB
• Doug Robinson Discusses Arthrex and the Fate of IPRs for Generics Makers with Bloomberg Law
• Doug Robinson Quoted in Bloomberg Law on VirtnetX Federal Circuit Decision Involving Reexams
• Doug Robinson Interviewed by Bloomberg Law about New PTAB Evidence Precedent
• Doug Robinson Comments on Arthrex v. Smith & Nephew in Bloomberg Law Article
• Doug Robinson Discusses PTAB Trends for Medical Device Makers with Medical Design Briefs
• PTAB Litigator Doug Robinson is Quoted in Bloomberg Law over Precedential Time-Bar Decision
• Patent Litigator Doug Robinson Comments on Swiss University’s Failure to Revive Canine Gene Patent Claims
• PTAB Litigator Doug Robinson Discusses Patent Appeals Standing with Law360
• Doug Robinson Interviewed by Bloomberg Law on Apriso Obviousness Ruling
• Patent Litigator Doug Robinson Quoted in Law360 On Redundancy and Estoppel at the PTAB
• Doug Robinson Talks to Bloomberg Law about Google's Failed Motion to Transfer Patent Suit Venues
• Doug Robinson Comments on PTAB Forum Clause in Law360 Article
• Doug Robinson Interviewed by Law360 on Recent Precedential Decisions from the PTAB
• Doug Robinson Quoted in Law360 on Slowing PTAB Trend
• Robinson Quote Is Featured in Law360 Article About Unusual Patent Cases
• Patent Litigator Doug Robinson Discusses Blocking Patents with Law360
• Doug Robinson Sheds Additional Light on Parties-in-Interest at the PTAB in Law360 Article
• Doug Robinson Parses Out Drug Patent Invalidation Rates with Law360
• Doug Robinson Discusses Importance of Real Parties-in-Interest with Law360
• Harness IP Patent Litigator Doug Robinson Talks Patent "Shootouts" with Law360
• "Fed. Circ. Highlights Peril Of Using ‘Common Sense’ At PTAB," Law360, August 15, 2016
• Harness IP Elects Six New Principals, January 8, 2013

Events

• St. Louis Patent Attorneys to Present at Petfood Forum
• Harness IP Principals to Present on “IP for a Competitive Advantage” at the AgChem Summit
• St. Louis Attorney to Host an Online Session on the Fundamentals of Intellectual Property Rights
• Doug Robinson to Co-lead “IPR Update” CLE
• Doug Robinson to Lead CLE Presentation on New Issues in Inter Partes Reviews

Doug is regularly asked to comment on pending Hatch-Waxman litigation for industry publications. Articles in which Doug has been quoted include the following:

• Otuska/BMS’s Abilify: Strong inequitable conduct challenge presented by generics at trial faces uphill battle
• Somaxon’s patents for newly launched insomnia drug Silenor seen as unlikely to survive potential generic ANDA challenge
• Shire’s Patents for ADD drug Intuniv may be vulnerable to generic design-around in ongoing ANDA litigations
• Roche/Genentech seen as likely to prevail in proving that Herceptin does not infringe GSK’s patents in ongoing litigation

Articles

• Patent Litigator Doug Robinson Discusses the Enbrel Decision in an Article for Biosimilar Development
• Doug Robinson Authors Article on Amgen v. Sandoz for Biosimilar Development
• Doug Robinson Authors Article on Secondary Considerations & Pharmaceutical Patents for IAM Magazine
• Harness IP Attorneys Pen New Article about the Impact of USPTO Guidance Revisions on Biosimilars
• Doug Robinson Shares 10 Reasons to Patent Your Start-up’s Invention
• Doug Robinson Publishes Article on Patent Eligibility Laws & How They Affect the Pharma Industry
• Patent Litigator Doug Robinson Discusses Pharma Distribution After Lexmark Case
• "Deposition In Inter Partes Review Is A Different Animal," Law360, December 15, 2014

Blogs

• Proper IP Management Gives Pet Food Manufacturers a Competitive Edge
• At Risk Launch: A Hypothetical Case Study
• District Court Orders Petitioner to Seek Termination of IPR based on Forum Selection Clause
• The Ever-Shrinking IPR Estoppel
• Federal Circuit Reverses PTAB for Refusing to Allow Supplementation of Record to Add Later Inconsistent Deposition Testimony from an Expert
• News Alert: Precedential Patent and Trademark Order by the Federal Circuit
• Supreme Court to Decide Constitutionality of AIA Reviews
• Supreme Court Affirms Strength of First Sale Doctrine
• Supreme Court to Hear Another IPR Case — SAS Institute v. Lee
• Patentee’s Teaching Away Argument Fails to Overcome Substantial Evidence of Unpatentability
• Federal Circuit Broadly Affirms PTAB’s Determinations on Analogous Art, Motivation to Combine References and Obviousness of Claims
• Federal Circuit Rejects Patentee’s Effort to Narrow Claim Scope
• Federal Circuit Demonstrates Willingness to Rein in PTAB’s Onerous Idle Free Rules Regarding Claim Amendments
• “Substantial Evidence” Hurdle is Substantially Difficult to Overcome
• PTAB Reversed–Common Sense Improperly Used to Supply Missing Limitation in Obviousness Inquiry
• PTAB Grants IPR Motion to Exclude – Knocks Out Exhibits As Untimely
• Board Explains the Process for Evidentiary Objections—and Illustrates the Severe Penalty for Not Following It

Doug is dedicated to understanding his client’s broader objectives. Doug’s clients appreciate that he knows the law, inside and out, and as a result, is able to deliver immediate and understandable answers. His attention to detail and responsiveness is the result of more than a decade of practical experience. He consistently maintains perspective on how the law fits into the larger commercial strategy.

Doug’s technological experience is broad, and includes pharmaceuticals, chemicals, biologics, satellite communications equipment, exercise equipment, medical devices, pest and mold remediation technology, automated meter reading systems, injection molding machines, vehicle parts refurbishing, spray tanning booths, heatsinks for electronics, and antenna testing equipment.

When Doug is not in the office, he spends much of his time coaching or cheering for his children’s sports teams. He also enjoys hiking, fishing, and participating in other outdoor activities with his family.

Prior to joining Harness IP, Doug worked in the Chicago office of a large IP firm.

Awards & Distinctions

• Best Lawyers, Litigation – Patent, 2017-2022
• Best Lawyers, Litigation – Intellectual Property, 2019-2022
• Missouri Lawyers Weekly, “Up and Coming Lawyer,” 2013
• Kansas Super Lawyers “Rising Star,” 2013
• Missouri Super Lawyers “Rising Star,” 2013-2014
• Order of the Coif, Washington University School of Law, awarded to Top 10% of graduating class
• Washington University Law Quarterly (now Washington University Law Review), Executive Articles Editor
• Mary Collier Hitchcock Prize for best Note in Washington University Law Quarterly, 2004
• Awards for Excellence in Intellectual Property Law, Insurance and American Legal History