Brian R. Pollack

Articles & Presentations

• “The USPTO and the Future of Patent Reform and Remedies (… or The Future is Now)” – Co-Author, 2011
• Keep it SaaSy: Protecting Key Innovations in the Software as a Medical Device World – Panelist, 2021
• What BioPharma Companies Need to Know About the “America Invents Act” – Co-Presenter, 2012
• The Changing Patent Landscape of Spinal Implant Technology – Speaker, 2006

Awards & Recognitions

• The Best Lawyers® in America – Patent Law (since 2023)
• Super Lawyers ® – Intellectual Property Law (since 2016)
• Magnetic Fusion Engineering Technology (MFET) Fellowship - Department of Energy (D.O.E.)
• Tau Beta Pi Engineering Honor Society
• Pi Tau Sigma Mechanical Engineering Honor Society
• Department of Energy (D.O.E.) Science and Engineering Research Semester (SERS) Fellow

Notable Representations

Patent Law and Prosecution

• Developed domestic and international patent portfolio for company pioneering new approaches in laparoscopic surgical ports acquired in 2016 for $265,000,000
• Vastly expanded domestic and international patent portfolio for medical device company pioneering advances in laparoscopic suturing devices to block Fortune 50 competitor that later stopped selling competing product
• Performed extensive patent due diligence and freedom to operate analyses in the field of spinal implants for Global Healthcare Company in support of acquisitions of spinal implant companies for $170,000,000 and $60,000,000
• Secured patents for client’s revolutionary tamper evident packaging product that became foundation of client’s multimillion dollar annual revenue stream; patents successfully asserted in multiple litigations to exclude competitors from market
• Developed domestic and international patent strategy for client in nanocomposite electroplating technologies; successfully provoked patent Interference in the United States Patent and Trademark Office on behalf of the client against aerospace giant, resulting in lucrative settlement for client
• Developed University patent portfolios in various green energy technologies
• Counseled and developed strategic patent portfolio for well-known engine valve-train manufacturer in support of multimillion dollar patent monetization program
• Developing and expanding domestic and international patent portfolio for engine company pioneering advances in rotary engines
• Executing domestic and international patent portfolio strategy for client pioneering advances in MR Imaging
• Represented social media companies in various stages of development in intellectual property matters relating to patent landscaping, patent preparation and prosecution, and trademark and copyright counseling
• Developed and expanded domestic and international patent and trademark portfolio for company pioneering advances in extremity MRI systems, later acquired by General Electric

   

  Intellectual Property Litigation

• Union Oil Co. of California v. Atlantic Richfield Co. et. al. (C.D. Cal.) Represented defendants in patent infringement action involving reformulated gasoline overturning $365 M judgment
• Medrad, Inc. v. MRI Devices Corporation (W.D. Pa.) Represented defendant in patent infringement action involving transmit/receive phased array radio frequency imaging coils
• ScanMed of Medic, Inc. v. General Electric Medical Systems (D. Nebr.) Represented defendant in patent infringement action involving phased array radio frequency imaging coils
• MCW Research Foundation, Inc. v. MRI Devices Corporation (E.D. Wisc.) Represented defendant in patent infringement action involving functional MRI (“fMRI”) imaging technology
• FP International v. Pactiv Corporation et al., (D. Del.) Represented defendants in patent infringement action involving inflatable packaging cushion technology
• General Hospital Supply Corp. v. Velmed, Inc. (W.D.N.C.) Represented plaintiff in patent infringement action involving protective inserts for sterilization wraps for surgical instrument trays
• General Hospital Supply Corp. v. Aspen Surgical Prods., Inc. (W.D.N.C.) Represented plaintiff in patent infringement action involving protective inserts for sterilization wraps for surgical instrument trays
• Velmed, Inc. v. General Hospital Supply Corp. (W.D.N.C.) Represented defendant in patent infringement action involving protective inserts for sterilization wraps for surgical instrument trays
• Wellman, Inc. v. Eastman Chem. Co. (D. Del.) Represented plaintiff in patent infringement action involving polyethylene terephthalate (“PET”) formulations, including characterization of thermal, optical and colorimetric properties.  Obtained reversal of patent invalidation before Federal Circuit to leverage settlement agreement
• General Hospital Supply Corp. v. Cygnus Medical, et al. (D. Conn) Represented plaintiff in patent infringement action involving sterilization tray liners for surgical instruments
• S.O.I. Tec Silicon on Insulator Technologies S.A. et al v. MEMC Electronic Materials Inc. (D. Del.) Represented defendant in patent infringement action involving silicon ingot manufacturing
• E.I. Du Pont De Nemours et al. v. Macdermid, Inc. et al. (D. Del.) Represented plaintiff in patent infringement action involving flexographic printing plate technology
• Accuscan, Inc. v. Xerox Corp. (S.D.N.Y.), Represented plaintiff in patent infringement action involving circuitry for implementing grayscale reproduction on photocopiers
• Yamaha Hatsudoki Kabushiki Kaisha et al. v. Bombardier, Inc., et al. (C.D. Cal) Represented defendants in patent infringement action involving personal watercraft
•  Kelly v. W.L. Gore Assocs., et al. (D. Colo.) Represented defendant in misappropriation case involving artificial vascular grafts employing expanded PolyTetraFluoroEthylene (“ePTFE”)
• Plasma Physics Corp, et al v. Fujitsu Limited, et al.(E.D.N.Y.) Represented defendants in patent infringement action involving display screens manufactured using plasma enhanced chemical vapor deposition
• Tama Plastic Industry v. Karatzi Industrial and Hotel Enterprises, S.A. et al. (C.D. Cal) Represented plaintiff in patent infringement action involving plastic pallet netting.
• Automated Packaging Technologies, LLC v. Tama Plastic Industry et al. (M.D. Fla.) Represented defendant in patent infringement action involving plastic pallet netting
• Rockwell Automation, Inc. et al. v. Wago Corp. et al. (W.D. Wis) Represented plaintiffs in patent infringement action involving software and hardware for automated manufacturing
• Stafford et al. v. Edwards et al. (Interference No. 105,321) Represented senior party in patent interference involving polymers having inorganic fillers for making stretch blow-molded containers with reduced coefficient of friction.  Resulted in favorable settlement for client
• Provost v. Goulait et al. (Interference No. 103,718) Represented senior party in patent interference involving fastening hook and loop fasteners using non-woven fabrics.  Resulted in favorable settlement for client
• Nardi et al. v. Datta et al. (Interference No. 105,889) Represented junior party in patent interference involving electroplated nanocrystalline coatings.  Resulted in favorable settlement for client
• Ex Parte Reexamination of U.S. Patent No. 6,325,380, entitled “Face Seal Assembly,” assigned to Burgmann Industries GmbH & Co.  Ex Parte Reexamination 90/007,875 filed on January 17, 2006, reexamination certificate issued on November 20, 2007 (claims amended during reexamination).  Reexamination pursued on behalf of patent holder
• Ex Parte Reexamination of U.S. Patent No. 5,288,393, entitled “Gasoline Fuel” assigned to Union Oil Co. of California, Ex Parte Reexamination No. 90/005,924, filed February 6, 2001 and Reexamination No. 90/006,295, filed May 20, 2002, patent dedicated to the public on August 11, 2005; benefit of outcome of reexamination proceedings accorded to defendants in Union Oil Co. of California v. Atlantic Richfield Co. et. al. (C.D. Cal.) on May 16, 2002.  Reexaminations filed on behalf of defendant litigants
• IPR2016-00071 – Institution denied against client’s patent
• IPR2015-01234 – Institution denied against client’s patent
• IPR2015-01337 – Institution denied against client’s patent
• IPR2015-01370 – Petition Dismissed pursuant to joint motion
• IPR2015-01338 – Petition Dismissed pursuant to joint motion
• IPR2015-01229 – Petition Dismissed pursuant to joint motion
• IPR2015-01336 – Petition Dismissed pursuant to joint motion

Service Area Subspecialties

• Patent Prosecution and Counseling
• Patent Litigation
• Trademark Prosecution and Counseling