Paul J. Berman

Paul Berman leads Covington’s intellectual property practice.  His experience encompasses patent and trade secret litigation, complex technology transfers and patent prosecution, and strategic intellectual property counseling.  Mr. Berman currently focuses on information technologies for a wide range of enterprises including financial institutions, and Hatch-Waxman matters for life sciences enterprises.  He serves on the Committee for Intellectual Property of the Massachusetts Institute of Technology.

Representative Matters

• Represented JPMorgan Chase in patent litigations involving computerized marketing systems and electronic check processing.
• Represented Merck-Medco in patent litigation concerning pharmaceutical benefits processing systems.
• Represented OPNET Technologies in patent and trade secret litigation concerning graphical user interfaces for network analysis software.
• Represented Schering-Plough in Hatch-Waxman patent litigation concerning potassium chloride supplements.
• Represented Auxilium Pharmaceuticals in Hatch-Waxman patent litigation concerning testosterone gel products.
• Provided strategic guidance on patent and trade secret issues in litigations involving technologies such as pharmaceuticals, digital image processing, electrodeless lighting, mail processing systems, and digital subscriber line telecommunications.

Honors and Rankings

• Legal 500 US, Intellectual Property - Patent Prosecution (2012-2013)
• PLC Cross Border IP in Business Transactions Handbook (2008-2009)
• Recognized in PLC - Life Sciences, Which Lawyer? for Intellectual Property (2005-2010) and Patent Litigation (2011-2012)

Pro Bono

• Represented Mother Assisted Nutritive Aid and Children’s Investment Fund Foundation on issues pertaining to patents held by Nutriset directed to ready-to-use-food products used to treat malnutrition in children.

Publications and Speeches

• Patent Resources Group, Advanced Patent Prosecution, Lecturer (September 2006)
• Biotechnology Mergers and Acquisitions, Saw Seminars International, Lecturer (September 2006)
• Marcus Evans Advanced Software Law & Practice Conference, Sponsor and Seminar Leader (2005)
• Client Presentations, Business Method Patents (2004-2005)
• Client Presentations, Orange Book Best Practices (2003-2006)
• American Conference Institute, Pharmaceutical Patent Life Cycles (2004-2005)
  

• "Supreme Court Delivers Important Decision on Patent Eligibility," Covington E-Alert (3/23/2012), Co-Author
• "SanDisk Corporation v. STMicroElectronics, Inc.: The Federal Circuit Expands the Availability of Declaratory Judgment Actions in the Patent Licensing Context," Covington E-Alert (4/9/2007), Co-Author
• "Hatch-Waxman Provisions of the Medicare Prescription Drug, Improvement, and Modernization Act of 2003," Covington Report (12/8/2003)