Mark Boland Partner

Mr. Boland has successfully represented a variety of companies in the U.S., Asia and Europe as lead counsel in numerous patent litigations before federal district courts and the U.S. InternationaI Trade Commission.  His experience includes both jury trials, bench trials and appeals before the Federal Circuit.  He has also successfully represented clients in patent interferences before the U.S.P.T.O., and district court § 146 interference appeals.  Mr. Boland also regularly engages in patent infringement and validity opinion practice and counseling, freedom-to-operate, due diligence and product clearance work, licensing and contract matters including joint ventures and co-development situations, patent application preparation and prosecution, and counseling clients in devising global intellectual property strategies.  Mr. Boland advises companies involved in a variety of technologies, particularly pharmaceutical, chemical and biologically-oriented technology, as well as the mechanical arts.  Mr. Boland is a member of the firm’s Management Committee.

Pennsylvania, District of Columbia
District of Columbia Court of Appeals
Pennsylvania Supreme Court
U.S. Court of Appeals - Federal Circuit
U.S. District Court - District of Columbia, Middle District of Pennsylvania
U.S. Patent and Trademark Office

Catholic University of America, Columbus School of Law (J.D. American Jurisprudence Award in Federal Income Taxation 1984; Distinguished Achievement Award for Oral and Written Advocacy 1983 1985)
College of the Holy Cross (B.A. Biology, 1982; minor concentration Chemistry)

CNH America v. Kinze Mfg., C.A. No. 08-945 (D. Del.) - lead counsel for CNH America in patent infringement case on agricultural equipment (jury trial 2011).

AstraZeneca v. Hanmi Pharmaceutical, C.A. No. 3:11-CV-00760 (D. NJ) - trial counsel for Hanmi in pending litigation involving strontium esomeprazole.

Sidel v. XL Engineering, C.A. No. 5:09-CV-2619 (E.D. PA) - lead counsel for Sidel in patent infringement suit. Permanent injunction entered by court for Sidel in 2010.

Eli Lilly vs. Wockhardt et al. (S.D. Ind.) - lead counsel for Wockhardt in Hatch-Waxman case involving duloxetine/Cymbalta (settled 2011).

Sanofi-aventis v. Wockhardt, C.A. No. 08-021 (D. Del.) - lead counsel for Wockhardt in ANDA litigation regarding alfuzosin hydrochloride (settled 2009).

Merck v. Ranbaxy, Civil Action No. 07-229 (D. Del.) - lead counsel for Ranbaxy in pending ANDA litigation based on Merck’s Primaxin antibiotic. Favorable settlement 2008. 

Mars vs. Natraceutical, S.A., Civil Action No. 02:07-CV-01574 (D. NJ) - lead counsel for Natraceutical in seven-patent infringement case relating to polyphenol-enriched chocolate products, cocoa powders and extracts.  Defeated Mars’ request for preliminary injunction.  Favorable settlement 2009.

Forest Labs. vs. Wockhardt et al, Civil Action No. 08-021 (D. Del) - trial counsel for Wockhardt defendants in pending ANDA litigation involving use of memantine hydrochloride in the treatment of Alzheimer’s disease. Favorable settlement 2009.

In the Matter of Certain Buffer Systems and Components Thereof Used in Container Processing Lines, 337-TA-609 - lead counsel for Sidel Complainants in pending ITC investigation.  Favorable settlement 2008.

CNH America, LLC vs. Clarke Machine, Civil Action No. 07-4183 (D. S.Dakota) - lead counsel for Case New Holland in pending patent infirngement action involving headers for combines.  Settled in agreed injunction 2008.

Sidel v. B&G Products, LLC, Civil Action No. 1:06-CV-256 (E.D. Tenn) - lead counsel for Sidel in pending action for patent and trademark infringement and unfair competition.  Obtained preliminary injunction based on patent infringement and trademark infringement. Settled with agreed injunction 2008.

Metzger v. CNH America LLC, Civil Action No. 3:04-cv-50466 (N.D. Ill) - lead counsel for CNH America LLC in pending patent infringement action.

B&H Manufacturing vs. Sidel Inc., Civil Action No. 07-CV-02208 (ED CA) - lead counsel for Sidel Inc. in pending patent infringement case involving labeling machinery.  Settled favorably 2010. 

Wei v. Pickett Patent Interference No. 105,404 - lead counsel for Avery Dennison Corp. in interference vs. General Electric.  Settled 2006.

Ortho McNeil Pharmaceutical, Inc. and Daiichi Phamaceutical Co., Ltd. v. Lupin Ltd., et al., Civil Action No. 3:06-cv-4999 (D. NJ) - lead counsel for Plaintiff-patentee Daiichi in pending Hatch-Waxman based challenge to patent term extension for Daiichi's levofloxacin patent. Victory by summary judgment, affirmed by Federal Circuit 2010.

Ortho McNeil Pharmaceutical, Inc. and Daiichi Phamaceutical Co., Ltd. v. Mylan Laboratories, Inc., et al., Civil Action No. 1:02CV32 (N.D. W.VA) - lead counsel for Plaintiff-patentee Daiichi in Hatch-Waxman based challenge to Daiichi's levofloxacin patent.  U.S. levofloxacin market exceeds $ 1 billion annually.  Judgment for Daiichi after 8-week bench trial (348 F.Supp.2d 713, N.D. W.VA 2004).  Affirmed by Federal Circuit (December 2005).

Ortho McNeil Pharmaceutical, Inc. and Daiichi Phamaceutical Co., Ltd. v. Ben Venue Laboratories, Inc. and Bedford Laboratories, et al., Civil Action No. 03-1269 (D. NJ) - lead counsel for Plaintiff-patentee Daiichi in Hatch-Waxman based challenge to Daiichi's levofloxacin patent.  Consent judgment entered for Plaintiffs (2005).

Consolidated New Jersey Levofloxacin ANDA Litigations - lead counsel for Plaintiff-patentee Daiichi in Hatch-Waxman based challenges to Daiichi's levofloxacin patent.  Won on summary judgment (March 2006); appeal dismissed.  Five consolidated civil actions [Ortho McNeil Pharmaceutical, Inc. and Daiichi Pharmaceutical Co., Ltd. v. Teva Pharmaceuticals USA, Civil Action No. 02-2794 (D. NJ); Ortho McNeil Pharmaceutical, Inc. and Daiichi Pharmaceutical Co., Ltd. v. Sicor Pharmaceuticals, Inc. and Sicor, Inc., Civil Action No. 03-5932 (D. NJ); Daiichi Pharmaceutical Co., Ltd. v. Hi-Tech Pharmacal Co., Inc., Civil Action No. 03-6006 (D. NJ); Ortho McNeil Pharmaceutical, Inc. and Daiichi Pharmaceutical Co., Ltd. v. American Pharmaceutical Partners, Inc., Civil Action No. 03-6046 (D. NJ); Ortho McNeil Pharmaceutical, Inc. and Daiichi Pharmaceutical Co., Ltd. v. Sicor Pharmaceuticals, Inc. and Sicor, Inc., Civil Action No. 04-6270 (D. NJ)].

Kinzenbaw v. Case Corp., Civil Action No. C01-133-LRR (N.D. Iowa) - lead counsel for defendant Case Corporation.  Obtained favorable jury verdict of no infringement after multi-week trial (Dec. 2004).  Lead counsel in Federal Circuit appeal; affirmed (February 2006).

In the Matter of Certain Agricultural Tractors, Lawn Tractors, Riding Lawnmowers and Components Thereof - lead counsel for complainant New Holland North America, Inc. in U.S. I.T.C. investigation of infringing Chinese tractors.  Obtained limited exclusion order blocking importation (2003).

In the Matter of Certain Plastic Molding Machines with Control Systems Having Programmable Operator Interfaces Incorporating General Purpose Computers, and Components Thereof - lead counsel for respondents Sidel (France) and Sidel, Inc. (Atlanta) in U.S. I.T.C. investigation of allegedly infringing control systems on plastic blow molding machinery.  Lead counsel for Sidel and Sidel Inc. in related district court infrigement action in E.D. Mich.  Obtained favorable settlement (2002).

Hay & Forage Industries, et al. v. New Holland, 60 F.Supp.2d. 1099 (D. Kan. 1998) - successfully defended patent infringement suit on agricultural equipment as lead trial counsel in three week trial; handled Federal Circuit appeal (settled, June 2000).

New Holland, et al. v. Case Corporation, et al., Civil Action No. 1: CV-97-727 (M.D. PA) - lead counsel in infringement suit for plaintiff (settled June 2000).

Young, et al. (Sepracor, Inc.) v. Cotrel, et al. (Rhone-Poulenc), Patent Interference 104,423 - lead counsel for Sepracor, Inc. in pharmaceutical interference (settled Apr 2000).

Matsumoto v. Schaap (Lumigen, Inc.), Patent Interference 104,478 - lead counsel for Lumigen, Inc. in interference relating to dioxetane chemiluminescence (settled Sep 2000).

Hoover v. Graham Packaging v. SIDEL, Case No. CV-95-3331 (S.D. Cal) - lead counsel for third party defendant in patent and trade secret case relating to blow molding of plastic containers; obtained successful dismissal (Apr 1998).

Associations
Federal Circuit Bar Association
American Bar Association - Intellectual Property Section
District of Columbia Bar Association
Pennsylvania Bar Association
International Trade Commission - Trial Lawyers Association

Comprehensive Patent Interference Practice, co-editor (1994 Ed.) (treatise)

• “Discovery After Seagate Under the New Rules,” Mock Deposition and Trial Presentation, AIPPI  Japan Fall Meeting, Tokyo, Japan, November 7, 2007
• Panelist -  “Discovery in U.S. Litigation: Compulsion and Compliance,” Invited Lecture, Mock Trial Seminar before Patentwaltkammer, European Patent Office, Munich, Germany, March 27, 2007
• Panelist - “Electronic Discovery in US Litigation” presented at Brussels IP 2006, The PanEuropean Intellectual Property Summit, Brussels (Belgium), December 7, 2006