Dorothy R. Auth Ph.D.

Phone212 504 6018

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Experience & Credentials

Practice Areas

  • Health Care
  • IP Due Diligence
  • ITC Litigation
  • Intellectual Property
  • Litigation
  • Patent & Trade Secret Litigation
  • Patent Preparation & Prosecution
  • Trademark & Copyright Protection
Contact InfoTelephone: 212 504 6018
Fax: 212 504 6666
University Rutgers University, B.A., 1985; Tufts University Ph.D.
Law SchoolSt. John's University School of Law, J.D., 1996
Admitted1996, New Jersey; 1997, New York; U.S. Court of Appeals for the Federal Circuit; U.S. Court of Appeals, 2nd Circuit; U.S. District Court, District of New Jersey; U.S. District Court, Eastern District of New York; U.S. District Court, Southern District of New York

Dr. Dorothy Auth has more than 20 years of experience in complex patent litigation, as well as licensing, patent procurement, and intellectual property counseling in the United States and abroad. Her experience spans diverse industries, including biotechnology, pharmaceutical, and medical devices, as well as consumer products, computers, and other mechanical devices.

Dorothy addresses intellectual property diligence issues surrounding mergers, acquisitions, and bankruptcies. Representative clients in transactional IP matters includes the U.S. Treasury, Pfizer; Elan Pharmaceutical, Healthcare Royalty Partners; Fountanbleu Hotel; Quart Rx Pharma; iShares; Towers Watson; Hess and Triarco. In the transactional area, Dorothy advises clients on the validity of target patents as well as performing clearance analysis on the patents of competitors to render freedom-to-operate opinions.

Dorothy also litigates in U.S. Federal Courts and in international arbitrations conducted under the WIPO rules. She conducts all aspects of litigation, including motion practice, expert preparation and all aspects of discovery practice. Representative litigation clients include Medinol, DuPont, Osteonics, and Kanzaki.

Dorothy also coordinates global patent procurement and enforcement strategies for her clients to maximize their patent-protected field. In this area, Dorothy's practice includes U.S. and international client counseling regarding IP matters. Her international experience includes coordinating patent infringement trials and hearings as between the U.S. and different European jurisdictions including trials seeking preliminary relief and cross-border injunctions, as well as nullity, cancellation, and oppositions proceedings on patent rights.

Among the clients Dorothy has counseled are Credit Suisse, Rhone-Poulenc Rohrer, Inc., BioRest Ltd., Oscillon Ltd., Digene Corporation, Hoffmann-La Roche, and the National Institutes of Health.

At the firm, Dorothy is the Partner Chair of the Women's Leadership Initiative. In addition, Dorothy is a member of the Technology Committee, the Healthcare Industry Team and the Advisory Counsel for the firm's Center for Career Advancement.

Dorothy is the President Elect of the New York Intellectual Property Law Association as well as the Board Liaison to the Strategic Planning Committee and the Women in IP Law Committee. She is also a member of the American Intellectual Property Association and the Intellectual Property Owner's Association.

Dorothy is a frequent speaker on a wide variety of topics including:

•Update in Reverse Payment Settlements after Actavis
•Post Grant Review and Inter Partes Proceedings
•Annual Update in Biotech/Pharama Patent Law - PLI
•Patent Eligibility under 101 for Biotechnology

Prior to joining Cadwalader, she was a partner with Morgan & Finnegan, an intellectual property specialty firm in New York.

Dorothy earned her J.D. from St. John's School of Law, a Ph.D. in biochemistry from Tufts Medical School, and her B.A. in biochemistry from Cook College of Rutgers University.

Dorothy is admitted to practice in New York and New Jersey and before the U.S. District Courts for the Southern and Eastern Districts of New York and the District of New Jersey, and the U.S. Courts of Appeals for the Second and Federal Circuits. She is also licensed to practice before the U.S. Patent and Trademark Office.

News Releases

• Cadwalader Advises Acorda Therapeutics on Merger Agreement to Acquire Civitas Therapeutics Sep 24, 2014

• Cadwalader Advises Forbes Media LLC on Majority Stake Sale to International Investors Jul 18, 2014

• Cadwalader Named to Winner's Circle at M&A Atlas Awards Feb 24, 2010

• Cadwalader Transaction Named IDD Deal of the Year Feb 12, 2010

• Cadwalader Attorneys Honored with Burton Award for Excellence in Legal Writing for Sixth Time Jun 02, 2009

Recent Press

• New Deals - Lawyers on Major Transactions Jan 29, 2009

• A Long Weekend for Cadwalader, Simpson and Wachtell Jan 26, 2009

Clients & Friends Memos

• New Decision Increases Calculation of Patent Term Jan 16, 2014

• Supreme Court Decision Compels Brand-Name and Generic Drug Manufacturers Alike to Rethink Hatch-Waxman Litigation Strategies Jun 18, 2013


• Final Patent Rules Quell Jitters Over Post-Grant Proceedings Oct 11, 2012

• Congressional Breakthrough On Patent Reform Likely This Fall Sep 14, 2011

• Federal Circuit Considers 'Inequitable Conduct' En Banc Aug 16, 2010

• Global Patent Strategy Oct 26, 2009


IP Insight

International Trade Commission

• ITC Proposed New Procedures for Electronic Filing Sep 26, 2011

• ITC Opinion Sets Standards for Analyzing Portfolio Licenses and the Domestic Industry Requirement Sep 26, 2011

• Electronic Discovery at the ITC: Current Challenges And Possible Improvements Sep 26, 2011

• ITC Chief Administrative Law Judge Paul J. Luckern Retires Sep 26, 2011

• ITC Delegating to ALJs Fact Finding Responsibilities on Public Interest May 09, 2011

• Federal Circuit Review of ITC Determinations: General Protecht Group, Inc. v. ITC and Vizio, Inc. v. ITC May 09, 2011

• Federal Circuit Decision in GE v. ITC re: Allocation of Argument Time in Favor of Intervenors Rather Than ITC May 09, 2011

• ITCTLA Trip to Beijing, Nanjing, Shanghai and Guangzhou, China on May 23-27, 2011 to Present a Program on Section 337 Proceedings Before The U.S. International Trade Commission May 09, 2011

• ITC Litigation & Enforcement Conference Held in New York on February 23-24, 2011 -- Summary of Judges' Panel on “The View from the Bench” May 09, 2011

• More Insight On ITC Claim Construction Procedures From The ITC Investigation of Certain Digital Set-Top Boxes And Components Thereof, Inv. No. 337-TA-712 Feb 14, 2011

• Federal Circuit Addresses Multiple Issues In Affirming The Commission's Final Determination In Spansion, Inc. v. International Trade Commission Feb 14, 2011

• ITC Publishes Study on Chinese Intellectual Property Infringement Feb 14, 2011

• ITC Proposes New Pleading Rules to Address Public Interest Issues Nov 22, 2010

• ITC Urges Federal Circuit to Refrain from Deciding Section 337 Appeals on Grounds “Not Presented” by the Parties Nov 22, 2010

• New ITC Procedure for Public Release of Final ITC Decisions on the Merits of Section 337 Cases Nov 22, 2010

• Review of SEB S.A. v. Montgomery Ward & Co. and Recent Section 337 Investigations Involving Inducement Nov 22, 2010

• Inaugural Quarterly Meeting with James Holbein, Supervisory Attorney-Advisor, and Lisa Barton, Attorney-Advisor, of ITC Docket Services, Office Of Information Technology Services Nov 22, 2010

• Important New Decision by United States International Trade Commission on the Procedure for Pretrial Claim Construction in Section 337 Investigations Nov 22, 2010

• ITC Investigations Not Subject To Bankruptcy Stays -- District Court Decisions Reverse Bankruptcy Court Stays Of ITC Investigations 648 And 685 Sep 24, 2010

• ITC Domestic Industry Requirement - ITC Opinion In Coaxial Cable Connectors Case Outlines Standard For Demonstrating A “Domestic Licensing Industry” By Non-Practicing Entities Sep 24, 2010

• ITC Judge E. James Gildea Joins The Ranks Of ITC Judges Holding Pre-Trial Markman Hearings Sep 24, 2010

• ITC's Mediation Program For Section 337 Investigations Gaining Momentum Sep 24, 2010

• ITC Reviews First Ever Markman Claim Construction Made By Summary Determination Sep 24, 2010

• IP Czar Aims At Enhancing Section 337 Enforcement Of IP Rights Sep 24, 2010

• ITC To Solicit Public Interest Comments Upon Receipt Of Complaint Sep 24, 2010

U.S. Federal Courts

• Supreme Court, in FTC v. Actavis, Rejects the “Scope of the Patent” Test, Holding that Antitrust Law's “Rule of Reason” Analysis Can Pierce the Shield of Patent Rights Jul 09, 2013

• Supreme Court Rules that a Naturally Occurring DNA Segment Is Not Patent Eligible, But cDNA May Be Patent Eligible Jul 09, 2013

• The Federal Circuit Has Jurisdiction over Appeals in Which Damages and Willfulness Remain Unresolved Jul 09, 2013

• Federal Circuit Clarifies Standards for a Clinical Trial to Be Public Use Jul 09, 2013

• Federal Circuit Rules on Patentability of Business Method Patent Jul 09, 2013

• Federal Circuit Opens Reissue Proceedings to Add New Claims to Hedge Against Patent Invalidity Sep 26, 2011

• Federal Circuit Holds Isolated DNA Is Statutory Subject Matter Under s101 Sep 26, 2011

• Prometheus Redux Sep 26, 2011

• In Section 145 Civil Actions, Patent Applicants Are Not Limited To The PTO Record and May Introduce New Evidence Jul 14, 2011

• En Banc Federal Circuit Overhauls Inequitable Conduct Law Jul 14, 2011

• Supreme Court Rules that Clear and Convincing Evidence Is Required to Establish the Invalidity of a Patent Jul 14, 2011

• En Banc Federal Circuit To Review Joint (Divided) Infringement Jul 14, 2011

• Supreme Court Rules that Induced Infringement Under Section 271(b) Requires Knowledge or 'Willful Blindness' that the Induced Acts Constitute Patent Infringement Jul 14, 2011

• Rule 9(b) Applies To The False Marking Statute May 09, 2011

• Largest Patent Infringement Verdict Ever Affirmed On Appeal Feb 14, 2011

• Supreme Court To Review The 27 Year Old Clear and Convincing Evidence Requirement for Invalidity Feb 14, 2011

• Federal Circuit Applies Bilski And Reaffirms Decision That Methods Of Optimizing Drug Dosages Are Patentable Under 35 U.S.C. 101 Feb 14, 2011

• Federal Circuit Requires Principal/Agent Relationship or Contractual Obligation for Joint Infringement Feb 14, 2011

• Federal Circuit Reverses Judgment that Insurance Companies Infringed Patent on Computerized Method for Administering Variable Annuities Nov 22, 2010

• Federal Circuit Approves Use Of Industry Standards To Prove Infringement Nov 22, 2010

• The Supreme Court Grants Certiorari to Determine the Intent Required for Inducement of Infringement - Its Tenth Patent Case Since 2005 Nov 22, 2010

• Supreme Court To Review Rights to Inventions Arising From Federally-Funded Research Nov 22, 2010

• En Banc Decision by Federal Circuit Addresses Scope of Patent Misuse Doctrine Nov 22, 2010

• Federal Circuit Addresses Definiteness Requirement For Means-Plus-Function Claims Nov 22, 2010

• The Federal Circuit Sets Forth Standards for Protective Orders Containing a Patent Prosecution Bar Sep 24, 2010

• Preserve Your Claims, or Else - The Federal Circuit Warns - You Will Not Get “A Second Bite” At The Apple Sep 24, 2010

• Plaintiffs in “Myriad Genetics” Case Move for Recusal of Chief Judge Rader Sep 24, 2010

• District Court Dismisses False Marking Actions Based On Plaintiff's Failure To Meet Heightened Pleading Standard of Federal Rule of Civil Procedure 9(b) Sep 24, 2010

• Federal Circuit Rejects Accused Infringer's “Divided Infringement” and Standing Defenses; Holds Claims Cover Patent-Eligible Subject Matter Sep 24, 2010

• “Plain Errors” In Jury Instructions, Verdict Form, Require New Trial On Individual Liability For Corporation's Infringement; Damage Award Vacated As Product Of “Speculation Or Guesswork” Sep 24, 2010

• Recent Federal Circuit Decision May Affect Inequitable Conduct Determinations Jul 13, 2010

• Applying Inwood to Online Market Place, Second Circuit Finds Generalized Knowledge of Counterfeiting Insufficient for Contributory Trademark Infringement Jul 13, 2010

• District Court Rules That Isolated Genes Are Unpatentable Products Of Nature Jul 13, 2010

• Without Affirmative Act By Patentee, Federal Circuit Rejects Declaratory Judgment Suit By Potential Infringer Jul 13, 2010

• Patent Held Unenforceable On Grounds Of Equitable Estoppel Jul 13, 2010

• Federal Circuit Affirms En Banc a Separate Written Description Requirement under 35 U.S.C. 112, Paragraph 1 Jul 13, 2010

• Implied Assertion of Rights by Patent Licensing Company Supports Declaratory Judgment Jurisdiction Jul 13, 2010


• VS.: Interview with FBI Anti-trafficking Unit Dec 11, 2012


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New Decision Increases Calculation of Patent Term
Dorothy R. Auth,Andrew C. Chien, January 22, 2014
Yesterday, in Novartis AG v. Lee, 2013-1160 (Fed. Cir., Jan. 15, 2014), the Federal Circuit determined that the USPTO has been incorrectly calculating patent term adjustments, potentially shortening the terms of thousands of U.S. patents. Recently issued U.S. patents should be reviewed as soon as...
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Dorothy R. Auth Ph.D.

New YorkNY 10281-0006


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