Professional Experience
Mr. Carlin is active in all aspects of the firm's patent practice, focusing primarily on litigation, licensing and technology transfers, IP due diligence investigations and client counseling. He has litigated cases, handled deals and counseled clients on matters involving a broad range of technologies including computer software and hardware, semiconductor devices, telephony and signal processing, switching systems, network architecture and security, flat panel displays, medical devices, organ care and transport, polymer chemistry, and various pharmaceutical chemistries, formulations and manufacturing processes.
Professional Activities
Licensing Executives Society, American Bar Association, American Intellectual Property Law Association, New York Intellectual Property Law Association
Representative Matters
· Adams Respiratory against Mutual Pharmaceutical and Perrigo on patents relating to Adams' highly successful Mucinex® product.
· Warner Chilcott against Barr Laboratories and Watson Pharmaceuticals on patents relating to Warner Chilcott's Femcon Fe® chewable oral contraceptive.
· IBM against Fair Isaac on claims of patent infringement, trade secret misappropriation, breach of contract and copyright infringement in connection with IBM's launch of its next generation business process management software.
· IBM against Sky Technologies in settling a lawsuit charging IBM with patent infringement, trade secret misappropriation, breach of contract, conversion and unjust enrichment in connection with IBM's WebSphere Commerce software products.
· AstraZeneca against Andrx, Genpharm, Dr. Reddy and Schwartz Pharma on patents relating to omeprazole and its formulations.
· Combe against Brandwynne in connection with misappropriation of trade secrets, unfair competition, trademark infringement, false designation of origin, breach of express and implied contracts, and fraud.
· Mars against Hershey Foods in defending Mars from accusations of trade dress infringement and dilution concerning the color orange as used for candy packaging.
Decisions
Representative Cases
Otsuka Pharmaceutical Co., Ltd., v. Sandoz Inc., et al.
D.N.J. 2010
Adams Respiratory Therapeutics, Inc et al. v. Perrigo Company et al.
Fed Cir. 2010
Merck & Co., Inc. v. Apotex Inc., et al.
Fed. Cir. 2008
Adams Respiratory Operations, Inc. v. Mutual Pharmaceutical Co., et al.
E.D.Pa. 2007
Fair Isaac Corp. v. IBM Corp. / IBM Corp. v. Fair Isaac Corp.
D. Minn. 2006
Sky Technologies LLC v IBM Corporation
E.D. Tx. 2006
In re Omeprazole Patent Litigation
S.D.N.Y. 2002
Brandwynne v. Combe International
S.D.N.Y. 1999
Hershey Foods Corp. v. Mars, Incorporated
M.D.Pa 1998
Publications
US Supreme Court Confirms Patentability of Business Methods but Sets Stage for Continued Uncertainty
Financier Worldwide
October 2010
Patent exhaustion revitalized?
The National Law Journal
August 18, 2008
MedImmune: Changing the US Licensing Landscape
Intellectual Asset Management
Summer 2007
Hatch-Waxman Safe Harbor Construed in 'Merck v. Integra'
The New York Law Journal
July 8, 2005
The Patent Quality Assistance Act of 2004
The New York Law Journal
February 17, 2005
Events
19th Annual Forum on Biotech Patenting
C5
Partner John Carlin spoke at the 19th C5 Forum on Biotech Patenting Conference on October 6-7th.
October 6-7, 2010
Bioequivalence: What Lawyers Need to Know
American Conference Institute's FDA Boot Camp: Basic Training for Products Liability and Patent Lawyers
May 30, 2008
Preventing Adverse Findings From Terminating the Deal
Technology IP Due Diligence Conference
June 21, 2007
Waiver of Privilege: In Re Echostar Communications Corp.
NYIPLA 2006 CLE Fall One-Day Program
November 17, 2006