Overview

Merri C. Moken is a partner in Holland & Knight's New York office and a member of the firm's Intellectual Property Group. Her broad-based patent litigation practice includes the biotech, chemical and pharmaceutical fields, as well as the mechanical and electrical arts. She has appeared before federal district and appellate courts, and the U.S. International Trade Commission (USITC).

Ms. Moken represents both plaintiffs and defendants concerning patent infringement, invalidity and unenforceability, as well as trade secret misappropriation and other contract-related matters. She also represents internationally based clients and has served as counsel in both domestic and foreign proceedings. Her practice includes client counseling, due diligence, licensing, trade secrets, unfair competition, dispute resolution, opinion work and the management of prosecution matters.

Her portfolio evaluations of M&A targets worldwide have included all forms of intellectual property, particularly in the chemical, biologics and medical device spaces. Ms. Moken's licensing work also has largely focused in these spaces internationally, and has included chimeric antigen receptor and other antibody technologies, as well as the use of machine-learning solutions in the diagnosis and treatment of cancer.

Ms. Moken has served as lead counsel in a number of patent and trademark infringement litigations and has successfully argued claim constructions and numerous motions, including for injunctive relief and pretrial motions at the U.S. District Court level. Her litigation practice relies on her knowledge of diverse technologies, a thoughtful and consider-all-angles approach, and her command of the deposition room and courtroom.

Ms. Moken's extensive experience in Abbreviated New Drug Application (ANDA) litigation has been particularly advantageous for her pharmaceutical clients. She has both enforced and defended against the assertion of patent rights with respect to a wide array of scientific disciplines. She also has litigated and counseled clients in the medical device arena, including with respect to drug-eluting stents, transdermal drug delivery systems, biologic and synthetic surgical meshes, and revolutionary hip and knee replacement technology.

In addition, Ms. Moken has an extensive knowledge of engineering technologies, including in the communication device, automotive, digital surveillance, Internet and cable industries. Ms. Moken further advises Holland & Knight’s real estate clients with respect to contractual matters and IP strategy, rights and protection, in addition to representing them in both commercial and IP litigation.

Prior to her legal career, Ms. Moken gained practical work experience at several pharmaceutical companies, providing her with a real-world perspective and a significant understanding of underlying technologies. This experience gives her an insight into managing both the business and intellectual property goals of her clients, as well as providing creative solutions to help them reach those goals. Ms. Moken also spent several years performing independent research, discovering that disinfectants induce the expression of the mar gene, conferring multiple antibiotic resistance in bacteria. As an undergraduate at Princeton University, her scientific research and thesis focused on metal-assisted assembly of multi-helix protein bundles.

Experience

  • David Gamble v. Curved Light Productions LLC d/b/a/ Startalk and Neil DeGrasse Tyson, 17-cv-06635 (S.D.N.Y. 2017) Lead counsel representing defendants in copyright infringement litigation.
  • Polaris Engineering, Inc. v. Josh Broussard, 2018-1184-D, (14th Judicial District Court, Parish of Calcasieu, State of Louisiana  2018) Co-lead counsel representing defendant against allegations of breach of contract and misappropriation of confidential information.
  • Eli Lilly and Company v. Dr. Reddy’s Laboratories, 16-cv-00308 (S.D. Ind. 2016) Defending against claims of patent infringement as concerns defendant’s 505(b)(2) pemetrexed for injection; On Appeal.
  • BlackBerry Ltd. and BlackBerry Corporation v. Avaya Inc., 16-cv-02185 (N.D. Tex. 2016) Defended against BlackBerry’s assertion of infringement of eight patents, including with respect to encoding and decoding of audio and video data and patents purported to cover the industry standards, H.265 and G.722.2.
  • Hotwell U.S., LLC. v. Hotwell Logging, SRL, 17-cv-01285 (S.D. Tex. 2017); Hotwell HGmbH bankruptcy proceeding in Eisenstadt Regional Court, Austria (Court File Nr. 26 S 49/15F) (2015); Hotwell U.S. LLC v. Hotwell HGmbH Case No. 2016-74242, Dist. Ct. for Harris County, Texas, 190th Judicial District. Served as lead counsel and successfully obtained ex parteTRO, and maintained TRO at full hearing, against accused trademark infringer Hotwell Logging SRL; secured plaintiff’s ownership of the Hotwell marks, stymied use of the marks by other Hotwell entities worldwide, and favorably settled plaintiff’s claims as creditor in Texas state court and Austrian proceeding.
  • Emirates International Air Cargo LLC v. Aero Acquisitions LLC, 17-cv-04051 (S.D.N.Y. 2017) Successfully represented plaintiff with respect to trademark infringement counterclaims.
  • TMX Finance LLC et al. v. AutoMoney, Inc. et al., 10-7932 (S. Carolina Ct. Common Pleas 2012) Representing plaintiffs in litigation asserting tortious interference, misappropriation of confidential and trade secret information, conversion and unjust enrichment.
  • Seoul Viosys Co. Ltd. v. P3 International Corp., 16-cv-06276 (S.D.N.Y. 2016) Representing Seoul Viosys Co. in a patent infringement litigation against P3 concerning Seoul Viosys’s patented LED technology
  • Cadence Pharmaceuticals, Inc., SCR Pharmatop and Mallinckrodt, IP v. Innopharma Licensing LLC and Innopharma Inc., 14-cv-1225 (D. Del. 2014) Successfully enforced patents concerning I.V. solutions of acetaminophen.
  • Seoul Viosys Co. Ltd. v. Salon Supply Store LLC, No. 16-80431 (S.D. Fla. 2016) Successfully obtained consent judgment in favor of Seoul Viosys Co. for validity and patent infringement in litigation concerning LED technology
  • ALM Holding Co. et al. v. Akzo Nobel Surface Chemistry LLC, 13-cv-01069 (D. Del. 2013) Successfully defended against infringement claims relating to patented asphalt technology and chemical additives. Successfully argued claim construction and obtained favorable settlement prior to trial.
  • Akzo Nobel Surface Chemistry LLC v. Huntsman Petrochemical, 13-cv-00826 (S.D. Ohio 2013) Represented plaintiff with regard to trade secret misappropriation by former employee, misappropriation of confidential information and breach of contract claims; successfully settled litigation prior to trial.
  • In the Matter of Certain Video Analytics Software, Systems, Components Thereof, and Products Containing Same, Inv. No. 337-TA-795 (ITC, 2011)Defended against ObjectVideo’s ITC enforcement action, in which ObjectVideo asserted infringement of six patents pertaining to video analytics and computer vision; obtained favorable settlement prior to issuance of initial determination.
  • Pfizer Inc., et al. v. Teva Parenteral Medicines, Inc., et al. 10-cv-00037 (D. Del. 2010) Represented defendants as lead counsel in this patent litigation concerning its generic equivalent of the antibiotic Zyvox and obtained a highly favorable settlement immediately prior to trial.
  • Bristol-Myers Squibb Company, Novartis Corp. and Novartis Pharma AG v. Teva Pharm. USA, Inc., 09-cv-00919 (D. Del. 2009) Represented defendant in a patent infringement litigation re the HIV protease-inhibitor Reyataz.  Obtained a highly favorable settlement prior to completion of expert discovery.
  • Cephalon, Inc. and Cephalon France v. Teva Pharmaceuticals USA, Inc., 10-md-02200 (D. Del. 2009) Represented defendant concerning its generic equivalent of the wakefulness-promoter Nuvigil in this multi-district patent infringement case regarding three asserted patents, and obtained a dismissal of the case against Teva.
  • Eli Lilly & Co. v. SICOR Pharmaceuticals, Inc. et al., 08-cv-1302 (S.D. Ind. 2008) Represented defendant re its generic equivalent of the cancer drug Gemzar. Lilly's patent was found to be invalid after trial, and the decision was affirmed on appeal. 
  • Pfizer Inc. v. Teva Pharmaceuticals USA, Inc. et al., 06-cv-00089 (D. Del. 2006); Teva Pharmaceuticals USA, Inc. et al. v. Pfizer Inc., 06-cv-1134 (S.D.N.Y. 2006) Represented defendant concerning its generic equivalent of Pfizer's antibiotic Zithromax and the sequihydrate pseudomorph of azithromycin, and obtained favorable settlement prior to trial. 
  • Teva Pharmaceuticals USA, Inc. v. Pfizer Inc., 03-cv-7423; 04-cv-04979, (S.D.N.Y. 2003, 2004) Represented plaintiff re its generic equivalent of Pfizer's antibiotic Zithromax, and pseudomorphs of azithromycin, and obtained highly favorable settlement prior to trial. 
  • Shire Laboratories v. Impax Laboratories, Inc., 03-cv-1164 (D. Del. 2003)Defended against infringement claims re modified-release formulations of the ADHD medication Adderall. Favorably settled prior to trial. 
  • Aventis v. Impax Laboratories, Inc., 2:02-cv-01322; 2:04-cv-01076 (D.N.J. 2002, 2004) Represented defendant re its generic version of antihistamine/decongestant combination Allegra-D, with respect to several polymorph and formulation patents; favorably settled in 2011. 
  • Aventis and AMR, Inc. v. Teva Pharm. USA, Inc. and Amino Chem., 04-1078 (D.N.J. 2004) Represented defendant re its generic version of then-multibillion-dollar antihistamine Allegra in a series of litigations brought by Aventis. In early 2006, Aventis' PI motion was denied, allowing the generic to stay on the market before the parties reached settlement in 2008. 
  • Teva Pharmaceutical Industries Ltd. et al. v. Torrent Pharmaceuticals Inc. and Torrent Pharma Inc., D. Del.; Teva Pharmaceutical Industries Ltd. et al. v. Pliva, Inc., D.N.J.  Represented plaintiffs in patent enforcement actions against numerous generic pharmaceutical companies concerning various polymorphic forms of sertraline hydrochloride and protecting plaintiffs’ period of exclusivity for their generic equivalent of Pfizer's then-multibillion-dollar antidepressant Zoloft; obtained favorable settlements prior to trial. 
  • Aventis Pharmaceuticals Inc. and Sanofi-Aventis SA v. Teva Pharmaceutical Industries Ltd., Tel Aviv District Court - Served as United States counsel for defendant concerning its generic version of the antihistamine Allegra, focusing on expert discovery and preparation for trial and assisting during trial in Tel-Aviv, Israel; the parties reached a settlement after trial. 
  • Li [Pfizer] v. Singer [Teva], Board of Patent Appeals and Interferences.Represented the junior party in a patent interference concerning polymorphs of azithromycin.
  • In addition to the above, Ms. Moken has represented plaintiff technology and telecommunications companies in litigations in Federal District Courts.  In these patent enforcement litigations, the technology has included methods and systems for effective use of bandwidth in provision of phone, internet and television/streaming services.  In litigation in the Eastern District of Texas pertaining more specifically to and methods and systems for dynamic channel management, Ms. Moken obtained a favorable settlement with all defendant cable companies on the eve of trial. 

Credentials

Education
  • Boston University School of Law, J.D., Litigation and Dispute Resolution, with high honors
  • Princeton University, A.B., Chemistry
Bar Admissions/Licenses
  • Massachusetts
  • New York
Court Admissions
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. District Court for the Southern District of New York
  • U.S. District Court for the Eastern District of New York
Memberships
  • Metropolitan Opera Guild, Board of Directors
  • American Bar Association
  • Massachusetts Bar Association
  • New York State Bar Association
  • New York Intellectual Property Law Association
  • Licensing Executives Society
Honors & Awards
  • Most Trusted Pharmaceutical Litigation Specialist – New York, Global Health & Pharma magazine, 2017
  • Pharmaceutical Patent Litigator of the Year, Women in Health Awards, Global Health & Pharma magazine, 2017
  • Acquisition International Global Excellence Award, Best for Healthcare Device Law - New Zealand, 2017
  • Worldwide Law Review 2017 Healthcare, Life Sciences & Pharmaceutical Awards, Excellence in Medical Device Patent Litigation, 2017
  • America's Top Lawyers, American Law Society
  • Rising Star, New York Metro Super Lawyers magazine, 2014-2018

Publications

Speaking Engagements

News