Robert Schaffer is an intellectual property partner at Troutman Pepper. Bob brings 30-plus years of experience to IP counseling, licensing and dispute resolution. His particular strengths are practical focus, deep technical knowledge, persuasive writing and rapid response. Bob uses creative problem-solving to achieve compelling, effective results for his clients.
Bob advises pharmaceutical, biotech and software clients in high-stakes matters, including mission-critical patent procurement, transactional matters, due diligence, inter partes review, district court cases and Federal Circuit appeals. His work includes complex software patents and development agreements, patent portfolios for Orange Book drugs, ANDA litigations, biotech patent cases, and international disputes. A common thread throughout his work is integrity – in both senses: genuine sincerity and determined coherence.
Bob’s work in biotech and pharmaceuticals relates to small-molecule drugs, biologic therapies, vaccines and formulation design, particularly for pain management; neurological, autoimmune and cardiac disorders; antivirals; antibiotics; cancer; HIV; malaria; and diabetes. He has worked extensively in directed evolution of genes and proteins, combinatorial chemistry, rational drug design, nanotechnology, microfluidic devices, genomics and proteomics, genetically engineered antigens and antibodies, therapeutic and industrial enzymes, personalized medicine, and bioinformatics.
For software clients, Bob has advised with respect to financial transaction software, digital rights management, streaming and data compression technologies, content delivery, distributed networking, caching and memory management, security and encryption, network diagnostics, software certificates, digital watermarking, antivirus software, document management software, and graphical user interfaces.
The United States Court of Appeals for the Federal Circuit recently ruled on an appeal regarding a Pennsylvania district court’s decision to decline jurisdiction over a first filed declaratory judgment filed by Communications Test Design, Inc. (“CTDI”) in favor of a patent infringement suit filed six days later in a New York district court by Contec LLC (“Contec”). The Federal Circuit concluded that the Pennsylvania district court did not abuse its broad discretion under the Declaratory Judgment Act to departure from the typical first-to-file rule given the presence of equitable considerations.
The Court believed the time was now appropriate to address this issue through a writ of mandamus noting that several similar cases had now been heard in various district courts with conflicting results. The Court identified two issues that should be addressed: (1) whether a server rack, a shelf, or analogous space can be a “place of business,” and (2) whether a “regular and established place of business” requires the regular presence of an employee or agent of the defendant conducting business. Finding that a defendant must have regular, physical presence of an employee or other agent of the defendant conducting the defendant’s business at the alleged “place of business,” the Court concluded that the Eastern District of Texas was not a proper venue for this case because Google does not have an employee or agent regularly conducting its business within the District.
The Federal Circuit recently issued an opinion vacating the district court’s grant of summary judgment motions of non-infringement and remanding with instructions to enforce a settlement agreement between Serta Simmons Bedding, LLC and Dreamwell, Ltd. (collectively, “Serta Simmons”) and Casper Sleep Inc. (“Casper”). See Serta Simmons Bedding, LLC v. Casper Sleep Inc., No. 19-1098, 2020 U.S. App. LEXIS 4467 (Fed Cir.…
The Federal Circuit issued an opinion on July 29 affirming the District Court for the District of Delaware’s dismissal of Amgen Inc. and Amgen Manufacturing Ltd.’s (collectively, “Amgen”) complaint alleging infringement of U.S. Patent 8,273,707 (the “’707 Patent”) for failure to state a claim. The district court held that prosecution history estoppel barred Amgen from succeeding on its infringement claim under the doctrine of equivalents. Amgen Inc. v. Coherus BioSciences, Inc., No. 18-1993 (Fed Cir. July 29, 2019) (Before Reyna, Hughes, and Stoll, Circuit Judges) (Opinion for the Court, Stoll, Circuit Judge).