Joseph M Manak, patent attorney
Joseph M. Manak, Esq.

PATENTS AND INTELLECTUAL PROPERTY LAW

Biography
PORZIO BROMBERG & NEWMAN P.C.
156 WEST 56th St. NY, NY, 10019
firm (212) 265-6888
direct (646) 348-6745
fax (212) 957-3983
jmmanak@pbnlaw.com
www.pbnlaw.com





PORZIO BROMBERG & NEWMAN, P.C.
INTELLECTUAL PROPERTY PRACTICE DESCRIPTION
The protection of intellectual property rights is at the forefront of virtually every business today.

Joe Manak, counsel to the firm, is an intellectual property, U.S. Patent and Trademark Office registered patent attorney and trial lawyer who adds real value and provides the best business solutions to our clients’ patent and IP issues. For example, when representing a client with a patent matter, whether the client is the patent owner or potential infringer, Joe first seeks out and explores the client’s business goals, potential exposure and financial resources in an attempt to resolve the issue prior to litigation or early on in a case that has already been filed. If an early resolution cannot be reached and litigation commences, Joe first works very closely with the client to assess the merits of the case, develop a full case strategy, estimate the costs to be incurred and arrive at a budget that takes into account the size and complexity of the case and the client’s financial position. While companies have been greatly impressed by Joe’s skill and handling of their matters, they have been equally impressed by his personal and enthusiastic caring about the client, its business future and employees.

Joe’s intellectual property experience runs virtually the full spectrum of IP services, for example: providing advice and opinions on the full range of patent and IP issues; drafting patent and trademark applications and prosecuting them in the U.S. Patent Office and internationally; litigating and trying large and highly complex patent, trade secret and other IP cases in the federal courts, including drug and biotechnology cases; litigating and counseling pharmaceutical clients on Hatch-Waxman issues; instructing and advising counsel on foreign patent litigations involving his clients; conducting patent interference proceedings, in which he has a particular expertise; drafting and negotiating license, joint venture, joint research, acquisition, merger and other IP focused agreements; conducting IP due diligence in the full range of corporate transactions and handling antitrust and unfair competition issues involving the enforcement of patents, such as Walker Process, Noerr Pennington and Brulotte issues.

Some examples of matters that Joe has handled include litigating a massive and highly complex case involving a key patent for a major pharmaceutical company that originated in the U.S. Patent Office and evolved into a federal court litigation as well as litigations and other arcane proceedings in about 12 different countries around the world. After many years of litigation, Joe helped the client achieve a very favorable settlement which included the upholding of the client’s patent. Joe has also litigated and tried pharmaceutical and biotechnology patent cases, including under the Hatch-Waxman Act, on behalf of branded pharmaceutical companies. Joe has also tried a highly complex case involving a revolutionary biotechnology process that is used all over the world. Recently, Joe tried and won a trade secret case resulting in an award to the client of both compensatory and punitive damages. In addition to his pharmaceutical and biotech expertise, Joe has litigated patent, trade secret, trademark, trade dress and copyright cases involving electronics, software, high strength fibers, medical devices, contact lenses, circuit interrupters, food science, product designs and books.
Some of the reported matters that Mr. Manak has handled include:
Litigations:
Human Genome Sciences, Inc.v. Advanced Life Science Institute, Inc.
Patent Interference 105,501 (RES)
U.S.P.T.O. patent interference concerning DNA encoding S100 proteins
  Paz Systems, Inc. v. The Dakota Group Corp., et al.
Civil Action No.: 05-CV-4763
Trade secret and unfair competition case
Lead trial counsel
  Abbott Laboratories v. Paddock/Par Pharmaceuticals
Hatch Waxman patent litigation
  Leviton Manufacturing Co., Inc. v. Shanghai Meihao, et al
Mult-district electronics patent litigation
  Novo Nordisk v. Teva Pharmaceuticals USA, Inc.
Civil Action No. 02-332-SLR
Patent Infringement action and district court appeal of USPTO interference
  PE Corp. and Roche Molecular Systems v. MJ Research
Case No. 3-98-CV-1201
Patent infringement litigation involving polymerase chain reaction
  Leviton Manufacturing Co., Inc. v. Yatai USA, LLC, et al.
Multidistrict action involving ground fault circuit interrupters
  University of Rochester v. Merck & Co, Inc.
Patent Interference No. 104,289 (U.S.P.T.O. 2001)
  Merck Frosst Canada v. Monsanto Company
Case No. 1:99 CV 02620 (Thomas Penfield Jackson)
  Monsanto Corp. and G.D. Searle & Co. v. Merck & Co., Inc.
Interference Nos.103,873; 103845
  Novo Nordisk, A/S et al v. Eli Lilly and Company and Genentech, Inc.
Civ. Action No. 97-4848 (AET) (D. N.J.)
  Eli Lilly and Company v. Novo Nordisk A/S, et al.
Civ. Action No. IP 97-1834 C (S.D. Indiana)
  Genentech Inc. v. Novo Nordisk A/S and Biotechnology General
Civ. Action Nos. 95 Civ. 3474, 94 Civ. 8634, 95 Civ. 0110, 94 Civ. 1755
(S.D.N.Y.), and Intern. Trade Comm’n.
  Emory University v. Glaxo Wellcome PLC and Biochem Pharma, Inc.
Civ. Action No. 1-96-CV 1868-GET (N.D.Ga.)
  Securities and Exchange Commission v. Femminella, et al.
Civ. Action No. 96 Civ. 336 (S.D.N.Y.)
  Grumman Aerospace Corporation v. TechMatics, et al.
95 Civ. 966 (Platt) E.D.NY.
  Aventis v. Baker Norton Pharmaceuticals, Inc.
94 Civ. 1245 (Moreno) S.D. Fla.
  Alpex Computer Corp. v. Nintendo Company Ltd. et al.
86 Civ. 1749 (KMW) S.D.N.Y.
  Hoechst Celanese Corporation v. Allied-Signal Inc.
Civil Action No. 3:92CV66-MU, W.D.N.C.
  The Pretesting Company v. The Arbitron Company
93 Civ. 6031 (CBM) S.D.N.Y.
  Wesley-Jessen Corporation v. Ciba Vision Corporation
Civil Action No. 90-SLR (SLR), D. Del.
  Baxter Healthcare Corporation et al. v. Acufex Microsurgical, Inc.
Civil Action No. 88-408 JSL (RWRx), N.D. Cal./D. Mass.
  In re Nifedipine Capsule Patent Litigation
MDL 774 M21-51 (JFK), Multi-district.
  American Cyanamid Co. v. Ethicon, Inc.
Civil Action No. 85-3053 (JCL), D.N.J.
  Procter & Gamble Co. v. Nabisco Brands, Inc., et al.
Civ. Action No. 84-333 LON, D. Del. 697 F. Supp. 1360 (D. Del. 1988).
The "Cookie Wars": see Wall Street Journal, Sept. 11, 1989 and U.S. News & World Report, Sept. 25, 1989.
  Foreign Exchange and Investment Ltd. v. Ideal Consolidators
Civ. Nos. 91-2334 (MTB); 91-2335 (AJL) D.N.J.
  United States v. Marine Shale Processors
  Sky Chefs, Inc. v. Delaware North Companies, Inc.
Transactions:
Indian Pharma Cos.
Asset sales and stock transactions in acquisitions of U.S. drug companies.
  Bentley Pharmaceuticals
IPO
  Ziff-Davis Interchange® / Private Bidder
  Eastman Kodak Company / Sterling Drug Co.
  Sivensa S.A./ FIOR
  Engelhard Inc./Degussa Corporation and Degussa AG.
  IBM / Commodore International Ltd.
 
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