Anthony J. Viola has more than twenty years of experience in the area of complex and commercial litigation, with particular emphasis on intellectual property litigation, contract disputes, distribution arrangements, shareholder and investor lawsuits, antitrust, and business dissolutions. His experience encompasses a wide range of industries and issues. He has been lead trial counsel in state and federal courts, and in proceedings before the AAA. He also has extensive appellate experience.
Mr. Viola has been recognized by World Trademark Review as one of its WTR 1000 Leading Trademark Practitioners since the inception of that ranking in 2010. The WTR 1000 is a global ranking of leading practitioners based on in-depth interviews conducted by the editors at World Trademark Review.
Mr. Viola has also been recognized by BTI Consulting Group as one of its Client Service All-Stars for 2012, an elite group of attorneys nominated solely and exclusively by Corporate Counsel of Fortune 1000 and billion dollar organizations during confidential interviews. No one can self-nominate or pay to be a Client Service All-Star.
Mr. Viola was also featured in Law 360's Prominent Litigator Series published in IP Law 360 and New York Law 360 in June of 2011.
Notable Experience
· Repeatedly appeared as lead trial and/or appellate counsel in high-stakes Hatch-Waxman litigations, including two trials to decision. These cases involved products with sales in the billions of dollars and hundreds of millions of dollars, respectively. The litigated issues in these cases run the gamut from anticipation to obviousness to enablement to inequitable conduct. One of these cases resulted in an award of attorneys fees to Mr. Viola's client. It is believed to be the largest such award in an ANDA case to date.
· Successfully represented client charged with violating an injunction entered as part of a settlement in a Lanham Act case. The injunction was vacated both retroactively and prospectively. The decision was upheld on appeal.
· Represented defendant in Lanham Act repackaging case which made new law. Case was won on summary judgment, and through appeal.
· Defense of global electronics manufacturer in consolidated class action antitrust cases.
· Ongoing representation of $2 billion pharmaceutical/health and beauty aids distributor in a wide variety of matters including regulatory, Prescription Drug Marketing Act, trademark, contract, fraud and tort issues.
· Lead litigation counsel for industry leading hair-care wholesaler; implemented litigation strategy which resulted in winning or settling all major existing litigations, and which resulted in near elimination of marketing impediments.
· Represented major name-brand pharmaceutical manufacturer in Sherman and Robinson-Patman Act class actions.
· Represented a global computer manufacturer in a series of litigations designed to protect patents and copyrights in proprietary peripheral bus hardware and software.
· Defended surgical equipment manufacturer in several patent infringement cases involving medical devices, from surgical sutures to surgical staplers to trocars.
· Defended wholesale distributor of pharmaceuticals in several trademark cases involving various products where it was alleged that the products were rendered non-"genuine" for failure to adhere to manufacturer's quality control strictures, or for removal of batch and date codes.
· Represented plaintiff clothing manufacturer in suit alleging trademark infringement by another clothing manufacturer.
· Lead counsel at arbitration hearing in which board member and majority stockholder were sued by minority stockholders of company in which a "down round" transaction was effectuated. Claimants alleged breach of fiduciary duty, fraud, and breach of stockholders' agreement. Award for client.
· Defended accounting firm in first post-PSLRA §10(b)-5 action against accountants to go to verdict. Unanimous jury verdict for defense.
· Representation of major firms and individual brokers in §10(b)-5 actions and in NASD arbitrations. Achieved the extraordinary relief of having all references to an arbitration expunged from individual brokers' CRD.
· Representation of registered representatives in various NASD investigations regarding supervisory responsibilities, qualifications, etc.
· Represented income beneficiaries of $700 million trust in dispute with trustees over diversification and corporate control issues. The matter was litigated through trial and appeal.
· Represented northeastern railroad as plaintiff under Sherman Act §§ 1 and 2.
· Defense of Fortune 500 media company and individual directors in securities class action and derivative suits alleging breaches of fiduciary duties
Published Cases
1. Ethicon, Inc. v. FDA, 762 F.Supp. 382 (D. D.C. 1991);
2. In Re Tri-Star Pictures, Inc., 634 A.2d 319 (Del. Supr. 1993);
3. Republic of Croatia, et al. v. Trustee of the Marquess of Northampton 1987 Settlement, 203 A.D.2d 167, 610 N.Y.S.2d 263 (1994);
4. In Re Tri-Star Pictures, Inc., Fed. Sec. L. Rptr. (CCH) ¶98, 818 (Del. Ch. 1995), 1995 Del. Ch. Lexis 27;
5. Republic of Croatia, et al. v. Trustee of the Marquess of Northampton 1987 Settlement, 232 A.D.2d 616, 648 N.Y.S.2d 25 (1st Dep't 1996);
6. Lykes Pasco, Inc. v. Ahava Dairy Products, 1997-2 Trade Cases (CCH) ¶72, 011 (E.D.N.Y. 1997), 1997 U.S.Dist. Lexis 19248;
7. John Paul Mitchell Systems v. Quality King Distributors, et. al., 106 F.Supp.2d 462 (S.D.N.Y. 2000);
8. American Manufacturers Mutual Insurance Co. v. Quality King Distributors, Inc., 280 A.D.2d 501, 721 N.Y.S.2d 83 (2d Dep't 2001), rearg. granted, 287 A.D.2d 527, 731 N.Y.S.2d 234 (2d Dep't 2001);
9. Takeda Chemical Industries, Ltd., et al. v. Watson Pharmaceuticals, Ltd., et al., 329 F. Supp. 394, 71 US P.Q. 1739 (S.D.N.Y June 9, 2004);
10. Takeda Chemical Industries, Ltd., et al. v. Alphapharm Pty., Ltd., et al., 2004 WL 1872707 (S.D.N.Y. Aug. 19, 2004);
11. Takeda Chemical Industries, Ltd., et al. v. Mylan Laboratories, Inc., et al., 2005 WL 1457696 (S.D.N.Y. June 15, 2005);
12. Takeda Chemical Industries, Ltd., et al. v. Mylan Laboratories, Inc., et al., 2005 WL 1398602 (S.D.N.Y. June 15, 2005);
13. Takeda Chemical Industries, Ltd., et al. v. Alphapharm Pty., Ltd., et al., 2005 WL 1678001 (S.D.N.Y. July 19, 2005);
14. Takeda Chemical Industries, et al. Ltd. v. Mylan Laboratories, Inc., et al., 2005 WL 1812996 (S.D.N.Y. Aug. 3, 2005);
15. Takeda Chemical Industries, Ltd., et al. v. Mylan Laboratories, Inc., et al., 2005 WL 2092920 (S.D.N.Y. Aug. 31, 2005);
16. Takeda Chemical Industries, Ltd., et al. v. Mylan Laboratories, Inc., et al., 2006 WL 44053 (S.D.N.Y. Jan. 9, 2006);
17. Takeda Chemical Industries, Ltd., et al. v. Alphapharm Pty., Ltd., et al., 2006 WL 137374 (S.D.N.Y. Jan. 11, 2006);
18. Takeda Chemical Industries, Ltd., et al. v. Alphapharm Pty., et al., Ltd., 2006 WL 83366 (S.D.N.Y. Jan. 11, 2006);
19. Takeda Chemical Industries, Ltd., et al. v. Alphapharm Pty., Ltd., et al., 2006 WL 66480 (S.D.N.Y. Jan. 12, 2006);
20. Takeda Chemical Industries, Ltd., et al. v. Mylan Laboratories, Inc., et al., 2006 WL 83112 (S.D.N.Y. Jan. 12, 2006);
21. Sherman Gottlieb v. Carnival Corporation, 2006 WL 257103 (2d Cir. Feb. 3, 2006)
22. People v. Coad, 810 N.Y.S.2d 670 (2d Dep't 2006)
23. Takeda Chemical Industries, Ltd., et al. v. Mylan Laboratories, Inc., et al., 417 F. Supp. 341 (S.D.N.Y. 2006)
24. Farouk Systems, Inc. v. Target Corporation, Inc., 2006 WL 2583449 (S.D. Tex. Sept. 6, 2006), 81 U.S.P.Q.2d 1151;
25. Takeda Chemical Industries, Ltd., et al. v. Mylan Laboratories, Inc., et al., 2006 WL 2686779 (S.D.N.Y. Sept. 20, 2006).
26. Takeda v. Mylan, Alphapharm, Civil Action No. 03-CV-8252, 04-CV-1966 (DLC), 2007 WL 840368 (S.D.N.Y.).
27. Takeda v. Alphapharm, 492 F.3d 1350, Fed. Cir. 2007.
28. Matrix Essentials v. Quality King Dists., Inc., et al., 522 F.Supp.2d 470 (E.D.N.Y., 2007).
29. Victory Int'l. Inc. v. Perry Ellis Int'l. Inc., et al., 2008 WL 65177 (D.N.J. January 2, 2008).
30. Farouk Sys. Inc. v. Target Corp., Inc., et al., 2008 WL 181130 (5th Cir. January 22, 2008).
31. Smart Science Labs, Inc. v. Promotional Marketing Svcs., Inc., 2008 WL 2790219 (M.D. Fla. Jul. 18, 2008).
32. People v. Besaha, No. 863 N.Y.S.2d 238 (2nd Dep't 2008).
33. Takeda Chem. Indus., Ltd. v. Mylan Laboratories, Inc., 549 F.3d 1381 (Fed. Cir. 2008) rehearing denied (2009).
34. People v. Singh, 875 N.Y.S.2d 553, 2009 (2nd Dep't 2009).
35. Matrix Essentials, Inc. v. Quality King Dists., Inc., 324 Fed Appx. 22, 2009 WL 1010029 (Second Cir., April 15, 2009).
36. Mitsubishi Chemical Corp. v. Barr Labs, Inc., --F.Supp.2d--, 2010 WL 2471741 (S.D.N.Y., June 16, 2010).
37. People v. McKinnon, 911 N.Y.S.2d 404 (2nd Dep't 2010).
38. People v. Barley, -- N.Y.S.2d --, No. 2009-03243 (2nd Dep't 2011).
Recent Speaking Engagements and Publications
· "Off Labels, Patents and Use Codes: The Significance and Possible Repercussions of Novo Nordisk v. Caraco to Hatch-Waxman Challenges," speaker, Annual ACI Paragraph IV Disputes Conference, New York, New York, April 24-25, 2012.
· "Fed. Circ. Sides With GSK, Others In Argatroban IP Row," mentioned, Law360, August 2, 2011.
· "Fractured Federal Circuit "Tightens" Its Inequitable Conduct Doctrine," co-author, Edwards Angell Palmer & Dodge Client Advisory, May 2011.
· "Recent Developments in the Law of Inequitable Conduct," speaker, Annual ACI Paragraph IV Disputes Conference, New York, New York, May 3 - 4, 2011.
· "Inequitable Conduct and Exceptional Cases - What Does Recent Case Law Tell Us?," speaker, and Master Class Workshop, leader, 2nd Annual Pharmaceutical Congress on Paragraph IV Disputes, Philadelphia, Pennsylvania, October 22 - 23, 2009.
· "Cruise Company Held Liable for Unwanted Faxes," an article published by the New York Law Journal on February 10, 2009, recognizes EAPD's successful representation in Gottlieb v. Carnival Corporation.
· "Tiffany v. eBay Has Application to Traditional Retailers," co-author, Chain Store Age, November 18, 2008.
· "Doing Deals and Litigating Them in a Downturn," speaker, Edwards Angell Palmer & Dodge and the Association of Corporate Counsel (ACC) Greater New York Chapter, New York, September 23, 2008.
· "The FCPA & Doing Business Internationally: Compliant or Complaint," speaker, Edwards Angell Palmer & Dodge and the Association of Corporate Counsel (ACC) Greater New York Chapter, New York, June 26, 2008.
· "Mark Owner's Ability to Stop Repackaging of Authentic Goods Remains Limited," an article published by World Trademark Report on March 14, 2008, summarizes Farouk Systems Inc. v. Target Corporation Inc. EAPD successfully represented Pro's Choice Beauty Care, Inc and Target Corporation in this significant case.
· "Disclaimer on Repackaged Goods Sufficed to Avoid Consumer Confusion," an article published by BNA's Patent, Trademark & Copyright Journal on February 1, 2008, recognizes EAPD's successful representation of Pro's Choice Beauty Care, Inc and Target Corporation in Farouk Systems Inc. v. Target Corporation Inc.
· "Hair Care Makers Attempt To Use Lanham Act To Control Downstream Distribution ," authored by Anthony Viola, Andre Cizmarik and Paul Dans, IP Law 360, October 19, 2006.
· "The 'First Sale' Doctrine and Resale of Genuine, Branded Products," authored by Andre Cizmarik, Anthony Viola and Paul Dans, Andrews Intellectual Property Litigation Reporter, October 10, 2006.
· "Federal Judge Says Repackaging of Goods Not Infringement," an article published by Andrews Intellectual Property Litigation Reporter on September 26, 2006, recognizes Anthony Viola and Andre Cizmarik's successful representation of Target Corporation in Farouk Systems Inc. v. Target Corp. Inc, et al.
· "Blast Faxing: Federal Courts Come Full Circle And Now Agree That They Have Jurisdiction To Entertain Telephone Consumer Protection Act," co-author, Mealey's Litigation Report: Class Actions, Vol. 6, #3, April 6, 2006.
· "Judge Rebuffs Challenge to Diabetes Drug Patent," an article published by Andrews Intellectual Property Litigation Reporter on March 29, 2006, recognizes Anthony Viola and the team of EAPD lawyers' successful representation of Takeda Chemical Industries Ltd. in Takeda Chem. Indus. v. Mylan Labs .
· Amendments to New York Law Work Fundamental Changes in Trustees' Responsibilities, Estate Planner's Alert
· ABA Antitrust Section Monograph on Market Power, Contributor
News & Publications
May 1, 2012, Edwards Wildman Team Beats Back Felon's Attempt to Overturn Conviction
March 20, 2012, Edwards Wildman Featured in World Trademark Review 1000 'Top 25'
February 14, 2012, Two Edwards Wildman Attorneys Named BTI Client Service All-Stars
June 21, 2011, Anthony Viola Profiled in Law360 Q&A
May 2011, Client Advisory - Fractured Federal Circuit "Tightens" Its Inequitable Conduct Doctrine
May 25, 2011, EAPD Team Beats Back Felon's Attempt to Overturn Conviction
March 22, 2011, EAPD Team Thwarts Attempts to Overturn Conviction for Illegal Possession of Handgun
February 22, 2011, EAPD Launches Retail Industry and Consumer Products Practice Group
New practice group combines resources to offer full range of legal services to retail industry clients
November 29, 2010, EAPD Attorneys Repel Armed Robber's Attempts to Overturn Conviction
December 11, 2009, On Behalf of Nassau County District Attorneys Office, EAPD Attorneys Defeat Felon's Attempts to Overturn His Attempted Murder Conviction
November 20, 2009, EAPD Obtains Rare Remedy of Retroactive Vacatur of Consent Decree
March 23, 2009, EAPD Attorneys Victorious in Pro Bono Appeal for Nassau County District Attorney's Office
August 13, 2008, On Behalf of Nassau County District Attorneys Office, Edwards Angell Palmer & Dodge Attorneys Defeat Criminal Defendant's Attempts to Overturn His Second Degree Murder Conviction
May 7, 2008, Edwards Angell Palmer & Dodge Litigators Successfully Oppose Criminal Appeal on Behalf of the Nassau County District Attorneys Office
February 1, 2008, Disclaimer on Repackaged Goods Sufficed to Avoid Consumer Confusion
BNA's Patent, Trademark & Copyright Journal, Volume 75, No. 1853
December 4, 2007, Edwards Angell Palmer & Dodge Litigation Team Obtains Trial Victory for Pro's Choice Beauty Care
February 9, 2007, On Behalf of Nassau County District Attorneys Office, Edwards Angell Palmer & Dodge Attorneys Defeat Criminal Defendant's Attempts to Overturn His Conviction and Reduce His Sentence For Armed Robbery, Attempted Armed Robbery and Criminal Menacing
December 21, 2006, Intellectual Property Bulletin - Fall/Winter 2006
Edwards Angell Palmer & Dodge LLP
October 19, 2006, Hair Care Makers Attempt To Use Lanham Act To Control Downstream Distribution
IP Law 360
October 10, 2006, The "First Sale" Doctrine and Resale of Genuine, Branded Products
Andrews Intellectual Property Litigation Reporter
September 26, 2006, Federal Judge Says Repackaging of Goods Not Infringement
Andrews Intellectual Property Litigation Reporter
September 20, 2006, Attorney's Fees Granted in Takeda Pharmaceutical's Patent Case on ACTOS®
Edwards Angell Palmer & Dodge LLP
September 12, 2006, EAPD Secures Federal Court Dismissal of Trademark Infringement and Dilution Claims Against National Retailer and Independent Distributor of Hair Care Products
Edwards Angell Palmer & Dodge LLP
April 6, 2006, Blast Faxing: Federal Courts Come Full Circle And Now Agree That They Have Jurisdiction To Entertain Telephone Consumer Protection Act Cases
Mealey's Litigation Report: Class Actions - Vol. 6, #3
March 29, 2006, Judge Rebuffs Challenge to Diabetes Drug Patent
Andrews Intellectual Property Litigation Reporter
March 23, 2006, On Behalf of Nassau County District Attorneys Office, Edwards Angell Palmer & Dodge Attorneys Defeat Criminal Defendant's Attempts to Overturn His Conviction For Possession and Sale of Crack Cocaine
February 22, 2006, Edwards Angell Palmer & Dodge Successfully Defends Takeda Pharmaceutical's Patent On ACTOS®
February 21, 2006, Federal Courts Have Diversity Jurisdiction In TCPA Suits
Andrews Privacy Litigation Reporter
February 13, 2006, Edwards Angell Palmer & Dodge Convinces Federal Appellate Court in Unanimous Decision That Federal Jurisdiction Exists Under the Telephone Consumer Protection Act of 1991
Edwards Angell Palmer & Dodge LLP
February 7, 2006, Unsolicited Faxes Found Basis for Suits
New York Law Journal
February 2002, Amendments To New York Law Work Fundamental Changes in Trustees' Responsibilities
Thompson RIA
Before Edwards Wildman
Mr. Viola joined the Firm in 1997 after ten years of private practice at Dewey Ballantine, LLP.
Events
April 24-25, 2012, New York City, NY, ACI's 6th Annual Paragraph IV Disputes Conference
May 2 - 4, 2011, New York, NY, Paragraph IV Disputes
Expert Insights on Hatch-Waxman Litigation Strategies for Brand Names and Generics
October 22-23, 2009, Philadelphia, PA, 2nd Annual Pharmaceutical Congress on Paragraph IV Disputes
September 23, 2008, Doing Deals and Litigating Them in a Downturn
June 26, 2008, New York, NY, The FCPA & Doing Business Internationally: Compliant or Complaint
Industries
· Life Sciences
· Manufacturing
· Retail Industry & Consumer Products
· Memberships
· International Association of Defense Counsel ("IADC")
· American Intellectual Property Law Association ("AIPLA")
· Federal Circuit Bar Counsel