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| Selected by peers as a Leading Lawyer in: | Extensive Experience in: |
| Intellectual Property Law | Litigation |
| Opinions and Counseling | |
| Patent Interferences / Oppositions | |
| Patent Prosecution | |
| Advisory Board Member | |
| County: Cook | |
| Practice Description: Mr. Borun is Of Counsel at Marshall, Gerstein & Borun, after having been a partner in the firm for many years. Consistent with the development of experience in chemical, pharmaceutical and biotechnology intellectual property right issues, he has frequently been requested to provide validity and infringement opinions and expert testimony; provide comprehensive state-of-the-art analyses of various life sciences, consult with and advise foreign counsel in foreign patent opposition and litigation proceedings, and consult with business development personnel concerning potential joint ventures and public offerings of stock. Since joining the firm in 1969, Mr. Borun has represented clients in a wide variety of intellectual property matters, principally involving patent prosecution and litigation. He has extensive experience in domestic and foreign patent prosecution in biotechnology and chemical and pharmaceutical technologies, including appeals and interferences. Biotechnology matters which have been the subject of his patent prosecution efforts include:
Notable Cases and Results: Adams (Monsanto)* v. Leemans (Bayer CropSciences) U.S. Patent and Trademark Office Board of Patent Appeals and Interferences Case Type(s): Patent Interference Area(s) of practice: Biotechnology Amgen* v. Cetus U.S. District Court, Northern District of California Case Type(s): Patent Infringement Area(s) of practice: Pharmaceuticals Amgen* v. Chugai & Genetics Institute U.S. District Court, District of Massachusetts Case Type(s): Patent Infringement Area(s) of practice: Pharmaceuticals Amgen, Inc.* v. Hoechst Marion Roussel U.S. District Court, District of Massachusetts Case Type(s): Patent Infringement Area(s) of practice: Pharmaceuticals Armour* v. Swift U.S. District Court, Northern District of Illinois Case Type(s): Patent Infringement Barton v. Fischhoff* (Monsanto) v. Adang (Mycogen Plant Science) U.S. Patent Office Board of Patent Appeals and Interferences Case Type(s): Patent Interference Area(s) of practice: Biotechnology Boyle* v. Gorman U.S. Patent Office Board of Patent Appeals and Interferences Case Type(s): Patent Interference Area(s) of practice: Pharmaceuticals Conflict re: Kirin-Amgen, Inc.* Canadian Intellectual Property Office Case Type(s): Conflict Area(s) of practice: Pharmaceuticals Elsbach (Monsanto)* v. Scott U.S. Patent Office Board of Patent Appeals and Interferences Case Type(s): Patent Interference, Appeal Area(s) of practice: Pharmaceuticals, Biotechnology Fraley (Monsanto)* v. Zambryski v. Anderson U.S. Patent Office Board of Patent Appeals and Interferences Case Type(s): Patent Interference Area(s) of practice: Biotechnology Fraley* v. Comai U.S. Patent Office Board of Patent Appeals and Interference Case Type(s): Patent Interference Area(s) of practice: Biotechnology Fraley* v. Zambryski U.S. Patent Office Board of Patent Appeals and Interferences Case Type(s): Patent Interference Area(s) of practice: Biotechnology Fritsch v. Lin* U.S. Patent Office Board of Patent Appeals and Interferences Case Type(s): Patent Interference Area(s) of practice: Pharmaceuticals Genentech v. Abbott Laboratories* U.S. District Court, Northern District of California Case Type(s): Patent Infringement Area(s) of practice: Pharmaceuticals General Tire & Rubber Company* v. The Firestone Tire & Rubber Company U.S. District Court, Northern District of Ohio Case Type(s): Patent Infringement Area(s) of practice: Mechanical Arts Godiska* v. Birkenbach U.S. Patent Office Board of Patent Appeals and Interferences Case Type(s): Patent Interference Area(s) of practice: Biotechnology Hooykaas v. Shewmaker (Monsanto)* U.S. Patent Office Board of Patent Appeals and Interferences Case Type(s): Patent Interference Area(s) of practice: Biotechnology Hybritech v. Abbott Laboratories* U.S. District Court, Central District of California Case Type(s): Patent Infringement Area(s) of practice: Biotechnology Hybritech v. Abbott Laboratories* U.S. Court of Appeals, Federal Circuit Case Type(s): Patent Infringement, Appeal Area(s) of practice: Biotechnology ICI v. Henkel* U.S. District Court, Southern District of Delaware Case Type(s): Patent Infringement Area(s) of practice: Chemistry/Chemical Engineering Kishore (Monsanto)* v. Burrell U.S. Patent Office Board of Patent Appeals and Interferences Case Type(s): Patent Interference Area(s) of practice: Biotechnology Koehring* v. Manitowoc U.S. District Court, Eastern District of Wisconsin Case Type(s): Patent Infringement Area(s) of practice: Mechanical Arts Koehring* v. TripleF U.S. District Court, District of Iowa Case Type(s): Patent Infringement Area(s) of practice: Mechanical Arts Li (Human Genome Sciences) v. Godiska (ICOS Corp.)* U.S. Patent and Trademark Office Board of Patent Appeals and Interferences Case Type(s): Patent Interference Area(s) of practice: Pharmaceuticals Masinovsky* v. Newman v. Rice U.S. Patent Office Board of Patent Appeals and Interferences Case Type(s): Patent Interference Area(s) of practice: Biotechnology Miller v. Peter Hand Brewery* U.S. District Court, Eastern District of Wisconsin Case Type(s): Trademark Infringement Area(s) of practice: Trademarks Novo Nordisk v. Pharmacia & Upjohn Co.* U.S. District Court, District of New Jersey Case Type(s): Patent Infringement Area(s) of practice: Pharmaceuticals Opposition and Appeal re: Amgen Inc.* Boards of Appeal of the European Patent Office Case Type(s): Opposition, Appeal Area(s) of practice: Biotechnology Opposition and Appeal re: Amgen Inc.* Boards of Appeal of the European Patent Office Case Type(s): Opposition, Appeal Area(s) of practice: Pharmaceuticals Opposition and Appeal re: Amgen Inc.* Boards of Appeal of the European Patent Office Case Type(s): Opposition, Appeal Area(s) of practice: Pharmaceuticals Opposition and Appeal re: Genentech, Inc.* Boards of Appeal of the European Patent Office Case Type(s): Opposition, Appeal Area(s) of practice: Pharmaceuticals Opposition and Appeal re: Genetics Institute, Inc.* Boards of Appeal of the European Patent Office Case Type(s): Opposition, Appeal Area(s) of practice: Pharmaceuticals Opposition and Appeal re: Kirin-Amgen, Inc.* Boards of Appeal of the European Patent Office Case Type(s): Opposition, Appeal Area(s) of practice: Pharmaceuticals Opposition and Appeal re: New York University* Boards of Appeal of the European Patent Office Case Type(s): Opposition, Appeal Area(s) of practice: Pharmaceuticals Opposition and Appeal re: Pfizer Limited Boards of Appeal of the European Patent Office Case Type(s): Opposition, Appeal Area(s) of practice: Pharmaceuticals Opposition and Federal Court Appeal re: Kirin-Amgen, Inc.* Australian Patent Office Case Type(s): Opposition, Appeal Area(s) of practice: Pharmaceuticals Opposition re: Amgen Inc.* Boards of Appeal of the European Patent Office Case Type(s): Opposition Area(s) of practice: Pharmaceuticals Opposition re: Amgen Inc.* Boards of Appeal of the European Patent Office Case Type(s): Opposition Area(s) of practice: Pharmaceuticals Opposition re: Chiron Corporation* Boards of Appeal of the European Patent Office Case Type(s): Opposition Area(s) of practice: Biotechnology Opposition re: Ciba-Geigy AG Opposition Division of the European Patent Office Case Type(s): Opposition Area(s) of practice: Biotechnology Opposition re: Genetics Institute, Inc. Australian Patent Office Case Type(s): Opposition Area(s) of practice: Pharmaceuticals, Biotechnology Revocation Proceedings re: Kirin-Amgen, Inc.* The Court of the Commissioner of Patents for the Republic of South Africa Area(s) of practice: Pharmaceuticals Revocation Proceedings re: Lilly ICOS LLC* v. Pfizer Limited U.K. High Court of Justice and Supreme Court of the Judicature Court of Appeal Area(s) of practice: Pharmaceuticals Schilperoort v. Rogers (Monsanto)* v. Barton v. Zambryski U.S. Patent Office Board of Patent Appeals and Interferences Case Type(s): Patent Interference Area(s) of practice: Biotechnology Souza* v. Ono v. Welte U.S. Patent Office Board of Patent Appeals and Interferences Case Type(s): Patent Interference Area(s) of practice: Biotechnology Stalker v. Kishore (Monsanto)* U.S. Patent Office Board of Patent Appeals and Interferences Case Type(s): Patent Interference Area(s) of practice: Biotechnology Sytkowski v. Egrie* U.S. Patent Office Board of Patent Appeals and Interferences Case Type(s): Patent Interference Area(s) of practice: Biotechnology Westwood v. Dow Corning* U.S. District Court, Eastern District of Michigan Case Type(s): Patent Infringement Area(s) of practice: Chemistry/Chemical Engineering *Party Represented Bar Admissions: The State of Illinois The United States Patent and Trademark Office The United States Supreme Court Retainer: Varies by case Date of Birth: 1942 Law School: Loyola University Chicago School of Law,J.D., 1970 Undergraduate School: The University of Chicago, B.S. Biological Sciences, 1964 Technical Focus: Development and use of transgenic animals; gene synthesis; host/vector expression systems; gene therapy; recombinant production of procaryotic and eucaryotic gene products including hematopoietic factors, steroid and protein receptors, DNA binding proteins, neurotrophic factors, colony stimulating factors, cellular adhesion molecules, integrins, phosphodiesterases, bactericidal proteins, immunocontraceptive proteins, protein kinases and phosphatases, chemokines, ion channel proteins, signal transduction proteins, growth factors, and growth hormones; recombinant product fermentation and purification; protein sequencing; nucleic acid amplification methodologies; recombinant and affinity chromatographic production of viral proteins for diagnostic and vaccine uses; hybridoma technology including the production of monoclonal, humanized and anti-idiotype antibodies for diagnostic and therapeutic uses; binding protein, enzyme analog and small molecule screening methodologies; multi-gene pathways for selective microbial degradation of organic chemical substrates; selective microbial synthesis of amino acids; phytoremediation; recombinant HIV, HSV, HBV and other viral protein products and assay systems; genomics; phage display; and pluripotent germ cells. Firm Description: Marshall, Gerstein & Borun LLP was founded more than 50 years ago and provides a full range of intellectual property legal services for domestic and international clients. The firm specializes in the clearance, registration, protection and enforcement of patents, trademarks, copyrights, trade secrets, and other forms of intellectual property, and in the acquisition and licensing of intellectual property. Firm attorneys have extensive litigation experience in United States courts, and before the United States and foreign Patent and Trademark Offices, the International Trade Commission, and arbitration tribunals. The Firm also assists clients in obtaining patent and trademark protection, and litigating intellectual property matters on behalf of plaintiffs and defendants in more than 100 countries on six continents. Marshall, Gerstein & Borun's patent prosecution and litigation services encompass all areas of technology, including the electronic, mechanical, chemical and biological sciences, e.g., protein chemistry, molecular biology, immunology, pharmaceuticals, and all recombinant technologies. 1002007 | |
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