Robert E. Counihan | White & Case LLP International Law Firm, Global Law Practice
Robert Counihan
Robert Counihan

Robert E. Counihan

Associate, New York

T +1 212 819 8255

E rcounihan@whitecase.com

Overview

Robert Counihan is an associate in the New York office. His practice focuses primarily on patent and antitrust litigation, but he also practices in transactional matters related to intellectual property rights and the evaluation of intellectual property portfolios. Robert has worked for clients in various healthcare and technology industries including Anthem, Google, Pfizer, Novartis, and UCB.

Robert dedicates his time to pro bono work, including assisting an international research foundation negotiate patent licenses and research grants, and representing children seeking appropriate special education services.

Prior to joining White & Case, Robert earned a Bachelor's Degree in Biomedical Engineering at the University of Michigan. Concurrently with law school at the University of Michigan, Robert earned a Master's Degree in Biomedical Engineering from the University of Michigan, where his graduate studies involved analysis of the role of mechanotransduction pathways in promoting bone healing and growth.

Bars and Courts

  • New York State Bar
  • US Patent and Trademark Office
  • US District Courts for the Southern and Eastern Districts of New York
  • US Court of Appeals for the Federal Circuit

Education

  • JD, University of Michigan Law School
  • MSE, University of Michigan, Biomedical Engineering
  • BSE, University of Michigan, Biomedical Engineering

Languages

  • English

Experience

Counsel to UCB in a declaratory judgment patent infringement action against Yeda Research and Development in the US District Court for the Eastern District of Virginia. Successfully obtained summary judgment of no infringement; a decision affirmed by the Court of Appeals for the Federal Circuit. The litigation involves UCB's product Cimzia®, a humanized antibody that targets the receptor TNF-alpha and is FDA-approved for the treatment of Crohn's disease and rheumatoid arthritis, among other indications.

Successful representation of Pfizer in a series of related Hatch-Waxman patent infringement cases in the US District Court for the District of Delaware. In all cases, Pfizer sued the generic manufacturer defendants for infringement of one or more patents that cover Lyrica®, a Pfizer drug indicated for treatment of certain types of seizure and pain.

Representation of Pfizer in a series of related Hatch-Waxman patent infringement cases in the US District Court for the District of Delaware. In all cases, Pfizer sued the generic manufacturer defendants for infringement of one or more patents that cover Lyrica®, a Pfizer drug indicated for treatment of certain types of seizure and pain.

Representation of UCB and Pfizer in a Hatch-Waxman litigation against 12 generic defendants for infringement of five patents covering the incontinence drug Toviaz®. Representation includes proceedings in the District of Delaware and the Northern District of West Virginia and defending each patent against inter partes review petitions.

Representation of Anthem in antitrust suit brought by the Department of Justice and various State Attorney Generals.  The action involved Anthem’s proposed acquisition of Cigna.

Representation of Pfizer in litigation involving breach of contract allegations related to a research and license agreement between NYU and Pfizer. The action involves Pfizer's drug Xalkori®.

Representation of Google in a patent infringement matter filed in the US District Court for the District of Delaware by British Telecommunications.

Speaking Engagements

"Uniformity in E-Discovery Obligations and Sanctions After Recent Amendments to the Federal Rules", May 19, 2016: American Intellectual Property Lawyers Association Spring Meeting. Minneapolis, MN. Presentation regarding recent rule changes to the Federal Rules of Civil Procedure pertaining to e-discovery obligations and the risks of spoliation.

"Teva: The Real Impact on Claim Construction Tactics in the PTAB & Federal Courts", July 29, 2015: CLE Webinar for the American Intellectual Property Lawyers Association, Presented on the effects of the Supreme Court decision in Teva v. Sandoz on claim construction strategy in the Federal courts.