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   3Robert F. GreenChicago(312) 883-8080rgreen@greengriffith.comrgreen@greengriffith.comGreen Griffith & Borg-Breen LLPwww.greengriffith.comwww.greengriffith.comgreenr.jpgIntellectual Property LawPatent LawPharmaceutical IP LitigationAppellate PracticeComplex ArbitrationDue Diligence ReviewsLicenses & Negotiations
Robert F. Greenrgreen@greengriffith.com
Green Griffith & Borg-Breen LLPhttp://www.greengriffith.com
455 N Cityfront Plaza Ste 3100
Chicago IL 60611
Ph.(312) 883-8080 Fx.(312) 883-8001Leading Lawyers Magazine story about this lawyer
Green_Business2010.pdf
Recommended by peers in:    Extensive Experience in:
Intellectual Property Law    Pharmaceutical IP Litigation
Patent Law    Appellate Practice
    Complex Arbitration
    Due Diligence Reviews
    Licenses & Negotiations
Advisory Board Member
County:  Cook
Practice Description:  
Mr. Green practices law exclusively in the field of intellectual property, concentrating in the areas of pharmaceutical, biochemical, and chemical litigation, and opinions, with emphasis in patent litigation and consultation arising under the Hatch-Waxman Act, Section 505(j) of the Federal Food, Drug and Cosmetic Act. He engages in practice before the International Trade Commission, licensing, patent prosecution, and litigation filed under the Plant Variety Protection Act. He also has considerable experience in inter partes trademark procedures and patent interferences, reexaminations, and international oppositions.

Mr. Green is serving and has served as lead trial counsel in numerous patent lawsuits, including bench and jury trials before the U.S. district courts and proceedings before the U.S. International Trade Commission. He has argued numerous appeals in front of the U.S. Court of Appeals for the Federal Circuit, related to pharmaceutical patents.

Mr. Green has extensive experience in formulating patent strategies and in managing patent portfolios, as well as in counseling and rendering opinions on patent validity, patent infringement, technology licensing, and the protection of trade secrets and other proprietary information. He specializes in developing patent strategies in the pharmaceutical field for both PhRMA and generic pharmaceutical companies.


Notable Cases and Results:  
Concluded Litigation
  • Wyeth v. Lupin Ltd. Mr Green was lead counsel in litigation involving Lupin's Abbreviated New Drug Application that is seeking approval to market a generic version of Effexor XR Capsules. Action No. 07-cv-632 (D.Md.) That matter was settled.

  • AstraZeneca v. Dexcel Mr. Green was lead counsel in litigation involving Dexcel's New Drug Application that was seeking approval to market a generic version of Prilosec OTC omeprazole tablets. The litigation was successfully settled and the litigation was dismissed with prejudice, 2007. Action Nos. 06-358 (D. Del.) and 06-634 (E.D.Va.). After the dismissal of the litigation, Mr. Green's client, Dexcel, became the first company to manufacture a generic omeprazole over-the-counter product for the U.S. market.

  • Pfizer Inc., et al. v. Mutual Pharmaceutical Company et al. Mr. Green was lead counsel in litigation involving Mutual's Abbreviated New Drug Application that was seeking approval to market generic versions of Neurontin gabapentin tablets. The district court granted summary judgment of noninfringement and the case was subsequently dismissed with prejudice (2008). Action No. 03-740 (E.D.P.A.)

  • Janssen v. Mylan Labs and Dr. Reddy's Mr. Green was lead counsel in litigation involving Mylan's Abbreviated New Drug Application that was seeking approval to market a generic version of Risperidal risperidone tablets. Janssen prevailed in the litigation which was based upon a molecule patent. Action No. 2:03-CV-06220 (D.N.J.)

  • Jones Pharma et.al. v. Mylan Pharmaceuticals, Inc. Mr. Green was lead counsel in litigation involving Mylan's Abbreviated New Drug Application that was seeking approval to market a generic version of Levoxyl levothyroxine tablets. The case was dismissed with prejudice, 2006. Action No. 1:03-CV-153 (N.D.W.VA.). As a result, Mylan was able to market its generic levothyroxine tablets.

  • AstraZeneca v. Mutual Pharmaceutical. Mr. Green was lead counsel in litigation involving the validity and alleged infringement of AstraZeneca's patent relating to felodipine (Plendil). A holding of non-infringement was issued by the U.S. Court of Appeals for the Federal Circuit, October 2004.

  • AstraZeneca AB, Aktiebolaget Hassle, KBI-E, Inc. v. Mutual Pharmaceutical Co., Inc., 384 F.3d 1333, 72 U.S.P.Q.2d 1726 (Fed. Cir. Sep 30, 2004) (NO. 04-1100). Mr. Green's client, Mutual Pharmaceutical, was then the first company to market a generic equivalent of Plendil and was granted 180-days of patent-challenge exclusivity.

  • Glaxo v. Novopharm. The litigation involved the alleged infringement of Glaxo's patent on Form 2 ranitidine hydrochloride, the active ingredient in Zantac. The U.S. Court of Appeals for the Federal Circuit affirmed a holding of noninfringement, 42 USPQ2d 1257 (Fed. Cir. 1997). Mr. Green was lead trial counsel and argued the case on appeal. As a result of the litigation, Mr. Green's client, Novopharm, was the first to market a generic equivalent of prescription Zantac and also was the first to market a generic equivalent to the over-the-counter product Zantac 75 (for which Novopharm was granted 180-days of patent-challenge exclusivity).

  • Abbott v. Novopharm. Mr. Green represented Novopharm in litigation successfully challenging the expiration date of Abbott's basic patent on terazosin, the active ingredient in Hytrin. 41 USPQ2d 1535 (Fed. Cir. 1997), 38 USPQ2d 1309 (N.D. IL 1996). Mr. Green was lead trial counsel and argued the case on appeal.

  • Glaxo v. Novopharm. Mr. Green represented Novopharm in litigation involving the validity of Glaxo's patent on Form 2 ranitidine hydrochloride, the active ingredient in Zantac. Mr. Green was lead trial counsel and argued the case on appeal. 34 USPQ2d 1565 (Fed. Cir. 1995), 29 USPQ2d 1126 (E.D. N.C. 1993). The lower court ruling of validity was affirmed in a 2-1 ruling. Novopharm subsequently prevailed in related litigation regarding the issue of infringement.

  • Burroughs-Wellcome v. Novopharm. Mr. Green represented Novopharm in litigation involving the validity of BW's patent on AZT- 32 USPQ2d 1915 (Fed. Cir. 1994), 29 USPQ2d 1126 (E.D.N.C. 1993). He was lead trial counsel and argued the case on appeal. The lower court ruling of validity was reversed in part, remanded, and settled.

  • Torpharm v. Novopharm. Mr. Green represented Novopharm in litigation involving the validity of Torpharm's patent on Form 1 ranitidine hydrochloride. (Unpublished) He was lead trial and appellate counsel. The patent was held invalid and the ruling was affirmed on appeal.

  • Torpharm v. Shalala et al. Mr. Green represented Novopharm in litigation filed by Torpharm to challenge the FDA's grant of 180-day patent-challenge exclusivity to Novopharm for generic Zantac 75. (Unpublished) He was lead trial and appellate counsel. The lower court ruling in Novopharm's favor was granted summary affirmance on appeal without argument.

  • Pharmacia & Upjohn v. Novopharm. Mr. Green represented Novopharm in litigation involving the validity of P&U's patent covering the formulation used in Glynase. The lower court found the patent to be invalid and no appeal was taken. Mr. Green was lead counsel.

  • Sloan-Kettering v. Fujisawa. Mr. Green represented Fujisawa in litigation involving the validity of SK's patent alleged to cover Fujisawa's Nebupent aerosolized pentamidine. (Settled) He was lead trial counsel.

  • Bristol-Myers Squibb v. American Pharmaceutical Partners. Mr. Green represented APP in litigation involving the validity of BMS's patent on Platinol cisplatin. The lower court judgment of invalidity was affirmed on appeal, unpublished. He was lead trial counsel and argued the case on appeal. As a result of the successful litigation APP was the first company to market a generic equivalent of Platinol with 180 days of patent-challenge exclusivity.

  • Novartis v. American Pharmaceutical Partners.Mr. Green represented American Pharmaceutical Partners in litigation involving the validity and alleged infringement of Novartis patent relating to pamidronate (Aredia). A consent order of noninfringement was entered allowing APP to market its generic equivalent product. Mr. Green was lead trial counsel.


  • Other Matters
  • Mr. Green has been involved in FDA Citizen Petitions and litigation relating to 180-day patent challenge exclusivity for ranitidine hydrochloride OTC (Zantac 75) and cisplatin (Platinol).


  • Pending Litigation
  • Ortho-McNeil v. Lupin. Mr. Green is lead counsel in litigation involving Lupin's Abbreviated New Drug Application that is seeking approval to market a generic version of Levaquin levofloxacin tablets. Action No. 06-4999 (D.N.J.)

  • Shire v. Natco Pharma. Mr. Green is lead counsel in litigation relating to Natco's Abbreviated New Drug Application that is seeking approval to market a generic equivalent to Shire's Fosrenol lanthanum carbonate product. Action No. 09-CV-3165 (S.D.N.Y.)

  • Pfizer v. Lupin. Mr. Green is lead counsel in litigation related to Lupin's Abbreviated New Drug Application that is seeking approval to market a generic equivalent to Pfizer's Lyrica pregabalin product. Action No. 09-CV-309 (D.Del.)

  • Eli Lilly v. APP Pharmaceuticals. Mr. Green is lead counsel in litigation related to APP Pharmaceutical's Abbreviated New Drug Application that is seeking approval to market a generic equivalent to Eli Lilly's Alimta pemetrexed product. Action No. 08-CV-335 (D.Del.)


Bar Admissions:  
Illinois, 1974
U.S. Supreme Court
Illinois Supreme Court
U.S. Court of Appeals for the Federal Circuit
U.S. Court of Appeals for the Fourth Circuit
U.S. Court of Appeals for the District of Columbia
U.S. District Court for the Northern District of Illinois
U.S. Patent and Trademark Office.


Year of Birth:  1949

Law School:  The John Marshall School of Law, J.D., 1974

Undergraduate School:  University of Illinois, B.S., chemistry, 1971

Representative Clients:  
Mr. Green represents a broad range of clients, including Astellas Pharma USA, Inc. and Astellas Pharma Inc. (formerly Fujisawa), Alberto Culver, Lupin Ltd., and Dexcel Pharma.


Employment History:  
Prior to practicing intellectual property law for a Chicago firm in 1985, Mr. Green served as patent counsel for both the chemical division and the membrane division of Akzo, involving industrial, chemical, and pharmaceutical technology and licensing; bio-medical applications of microporous membranes; and controlled release of bioactive compounds. He also served as the patent counsel for Celanese Chemical Company, which was principally involved with chemical and pharmaceutical processing technology.


Bar/Professional Association Involvement:  
The Lawyers Club of Chicago
Intellectual Property Owners Association (IPO)
The John Marshall Law School
  Adjunct professor in the Center for Intellectual Property
  Intellectual Property Advisory Board

Awards; Honors; Distinctions:
AV rated, Martindale-Hubbell
Illinois Super Lawyer, intellectual property litigation, 2009
Leading Lawyer in intellectual property law
Chicago Lawyer, among the top lawyers in Illinois in intellectual property law


Legal Lectures:  
  • Moderated the IP track titled, "The Impact of KSR, Seagate, Quanta, and Bilski on Business Decisions," 2009 Inside Counsel SuperConference, Chicago, May 5, 2009

  • "Non-Patent Exclusivity," presented at the FDA Boot Camp-Chicago Edition, Chicago, 2007

  • "Non-Patent Exclusivity," presented at the FDA Boot Camp-Chicago Edition, Chicago, 2006

  • "Innovation and its Discontents," presented at the John Marshall Law School, Chicago, 2005

  • "Shared Exclusivity Past, Present and Future," presented at the Generic Pharmaceutical Association (GPhA), Legal Symposium, Boca Raton, FL, 2004

  • "Patent Litigation Issues," presented at the Generic Pharmaceutical Association (GPhA), Industry Legal Symposium, Washington, D.C., 2003

  • "Patentable Inventions or Invented Patents?" Regulatory Affairs Focus, October 2002

  • "Poly(patent)morphs, Inducement and More," presented at the Generic Pharmaceutical Association (GPhA) Annual Meeting, Coral Gables, 2002

  • "Patent FDA Strategies," presented at the National Association of Pharmaceutical Manufacturers (NAPM) Bulk Workshop Program, New York, 2001

  • "Patent Extension Issues," presented at National Association of Pharmaceutical Manufacturers (NAPM) Annual Meeting (2001), Puerto Rico, 2001

  • "Patent-FDA Strategies," Keynote Speaker, presented at UBS Warburg Global Specialty Pharmaceuticals Conference, New York, 2000

  • "Recently Enacted Changes to Patent Trademark Laws: How They Affect Your Practice, presented at Center for Intellectual Property Law, The John Marshall Law School, Chicago, 2000

  • "Patent Extension Issues," presented at the National Association of Pharmaceutical Manufacturers (NAPM) Annual Meeting, Puerto Rico, 2000

  • "Generic Versus Pharmaceutical Patent Strategies and Challenges-What's the Score?" presented at Rx and Biotech Generics, International Business Communications, Washington, 1999

  • "Gaming the System," presented at National Association of Pharmaceutical Manufacturers (NAPM) Annual Meeting, Puerto Rico, 1999

  • "Generic Versus Pharmaceutical Patent Strategies and Challenges-What's the Score?" presented at Chicagoland Pharmaceutical Discussion Group, Chicago, 1999


Firm Description:  
Green, Griffith & Borg-Breen, LLP balances experience, vision and strategy to deliver results. We are an intellectual property law firm that leverages extensive experience, big picture vision and integrated strategy to produce favorable outcomes for our clients. Technical knowledge is part of our firm?s DNA, and our IP law expertise runs deep. We have decades of experience assisting both generics and brand companies navigate the Hatch-Waxman Act. Our background serving both sides of the courtroom makes us unique in the IP law space.

Our team possesses a diverse skill set, enabling us to view your matter from every angle. Our depth allows us to resolve your issues efficiently and effectively -- from the minor to the complex. We are committed to our clients and their success. We work as an extension of your team, making sure your needs are met. We partner with you to gain an understanding of your strategy, and then we help you execute it. We value the trust and confidence you place in us. In return we promise honesty and quality service. Our advice is grounded in truth, so there are no surprises when it comes to litigation outcomes.


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