JOSEPH M. MANAK
Greenberg Traurig LLP
Patents and Intellectual Property
685 West End Avenue, Apt. 2A
New York, NY 10025
(212) 865 7144(h)
(212) 801 2187 (o)
(917) 597 2667 (cell)
Web address: www.patattorney.com
Joseph Manak is a shareholder in the law firm of Greenberg Traurig LLP, and is located
in the firm’s New York Office. Greenberg Traurig is a U.S.-based, international full-
service business law firm with more than 1100 attorneys and lobbyists in 20 offices.
Prior to joining Greenberg as a shareholder in 1999, Joe had been a salaried partner in
the New York office of Graham & James since 1997. The Graham & James New York
office merged with Greenberg Traurig in the summer of 2001.
Joe is an intellectual property attorney, litigator, and trial lawyer who concentrates in
patent, trade secret and related antitrust litigation. He focuses his practice in
biotechnology, pharmaceutical, electronics, chemical and software patent law and
litigation, and also specializes in patent interference practice. Joe has represented
some of the largest health care companies in patent infringement actions, Hatch-
Waxman patent challenges, patent interferences, and has litigated patent and IP cases
concerning recombinant DNA technology, organic chemistry, drug delivery systems,
electrical devices, drug metabolism, high-strength fibers, aerospace and defense,
medical devices, contact lenses and food science.
Joe also supervises and prepares and prosecutes software, Internet, chemical and
pharmaceutical patent applications, practices trademark, trade dress, copyright and
related antitrust and unfair competition law, and has experience in securities and
insurance litigation and arbitration.
On the transactional side, Joe conducts IP-related M&A due diligence, and negotiates
and drafts a variety of software and technology-based licenses, patent and know-how
agreements, research and development agreements, distribution and re-seller
contracts, and similar transactions.
Some of the reported matters that Mr. Manak has handled include:
Abbot 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
Patent Interference No. 104,289 (U.S.P.T.O. 2001)
Represent Merck in patent interference related to discovery of Cox-2 gene and
Merck Frosst Canada v. Monsanto Company
Case No. 1:99 CV 02620 (Thomas Penfield Jackson)
Represent Merck in District Court action related to Cox-2 inhibitor VIOXX
Monsanto Corp. and G.D. Searle & Co. v. Merck Inc.
Interference Nos.103,873; 103845
Represented Merck in large scale patent interference involving
cycooxegenase II inhibitors, next generation anti-inflammatories
Novo Nordisk A/S et al v. Eli Lilly and Company and Genentech Inc.
Civ. Action No. 97-4848 (AET) (D. N.J.)
Represented Novo Nordisk in patent infringement litigation concerning
recombinant DNA production of Human Growth Hormone
Eli Lilly and Company v. Novo Nordisk A/S et al.
Civ. Action No. IP 97-1834 C (S.D. Indiana)
Represented Novo Nordisk in patent infringement and validity action involving
Human Growth Hormone formulation patent
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.
Represented Novo Nordisk in multiple patent infringement, validity and
antitrust actions in Southern District of New York and International Trade
Commission concerning recombinant DNA production of Insulin and Human
Emory University v. Glaxo Wellcome PLC and Biochem Pharma Inc.
Civ. Action No. 1-96-CV 1868-GET (N.D.Ga.)
Represent Glaxo Wellcome in patent infringement and validity action brought
by Emory involving enantiomeric compounds and chiral chemistry related to
AIDs drug Epivir.
Securities and Exchange Commission v. Femminella et al.
Civ. Action No. 96 Civ. 336 (S.D.N.Y.)
Represented defendant in SEC enforcement action for securities fraud
relating to bond trading.
Grumman Aerospace Corporation v. TechMatics et al.
95 Civ. 966 (Platt) E.D.NY.
Represented Northrop Grumman in trade secret and unfair competition claim
against former employees concerning aerospace and automotive technology.
Marion Merrell Dow Inc. et al. v. Baker Norton Pharmaceuticals, Inc.
94 Civ. 1245 (Moreno) S.D. Fla.
Represented Marion Merrell Dow Inc. (now Aventis) in action concerning the
antihistamine Seldane® against generic drug manufacturers under Hatch-
Alpex Computer Corp. v. Nintendo Company Ltd. et al.
86 Civ. 1749 (KMW) S.D.N.Y.
Assisted Honorable Kimba M. Wood, U.S.D.J., and Special Master Thomas
L. Creel in trial on infringement of Alpex patent relating to computer video
Hoechst Celanese Corporation v. Allied-Signal Inc.
Civil Action No. 3:92CV66-MU, W.D.N.C.
Represented Allied-Signal in patent and antitrust action relating to industrial
The Pretesting Company v. The Arbitron Company
93 Civ. 6031 (CBM) S.D.N.Y.
Represented Arbitron Co. in defense of patent, unfair competition and false
advertising action concerning automated television audience survey system.
Wesley-Jessen Corporation v. Ciba Vision Corporation
Civil Action No. 90-SLR (SLR), D. Del.
Represented Ciba-Geigy in patent action and antitrust concerning color
Baxter Healthcare Corporation et al. v. Acufex Microsurgical, Inc., Civil Action
No. 88-408 JSL (RWRx), N.D. Cal./D. Mass.
Represented Acufex division of American Cyanamid Co. in patent action
concerning arthroscopic surgical equipment.
In re Nifedipine Capsule Patent Litigation,
MDL 774 M21-51 (JFK), Multi-district.
Represented Pfizer Inc. and Bayer AG in multiple actions concerning the
cardiovascular drug Procardia® against generic drug manufacturers under
American Cyanamid Co. v. Ethicon, Inc.
Civil Action No. 85-3053 (JCL), D.N.J.
Represented American Cyanamid Co. in action against Ethicon (J&J) under
35 USC § 146 concerning priority of surgical suture invention.
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.
Represented P&G in large-scale trade secret misappropriation, industrial
espionage, patent and unfair competition suit concerning P&G's invention of
storageable crispy/chewy cookies.
Foreign Exchange and Investment Ltd. v. Ideal Consolidators,
Civ. Nos. 91-2334 (MTB); 91-2335 (AJL) D.N.J.
Represented Hong Kong investment bank in action to enforce negotiable
instruments against warehouses and shippers for fraud and diversion of
goods shipped from Far East.
United States v. Marine Shale Processors.
Represented Marine Shale in action brought by the U.S. government (EPA)
under environmental laws regarding waste facility in Louisiana.
Sky Chefs, Inc. v. Delaware North Companies Inc.
Represented Sky Chefs in dispute arising out of leveraged-buyout relating to
the purchase of airline concession assets.
Indian Generic Pharma Cos.
Asset sales and stock transactions in acquisitions of U.S. generic cos.
Ziff-Davis Interchange®/Private Bidder
Represented European communication company in bid for MultiMedia
Eastman Kodak Company/Sterling Drug Co.
Represented international pharmaceutical company in bids to purchase
Kodak's Sterling Drug Co. and diagnostic business.
Representation of Venezuelan industrial company in various trade secret,
trademark, technology transfer and patent matters.
Engelhard Inc./Degussa Corporation and Degussa AG.
Represented Degussa in negotiations regarding proposed sale and licensing
of Engelhard's world-wide precious metals businesses.
IBM/Commodore International Ltd.
Represented Commodore in negotiations concerning IBM hardware and
software licenses relating to personal computer technology.
OTHER LEGAL EXPERIENCE:
1988 to KAYE, SCHOLER, FIERMAN, HAYS & HANDLER
1996 New York, New York
Associate - Litigation Dept. Technology--Patent Group
Litigation and Counseling:
Federal and State Court litigation and counseling in Intellectual Property,
Antitrust, Unfair Competition, False Advertising and Commercial matters.
Extensive experience in complex patent and technology litigation,
including responsibility for running day-to-day aspects of patent cases,
taking and defending of depositions, drafting briefs, arguing motions,
witness interviews and preparation, fact investigations, expert witness
selection and preparation, settlement negotiations and agreements, trial
and mini-trial preparation, advise and counseling, patent infringement and
Patent and Antitrust experience emphasized large-scale patent litigation
and counseling for Fortune 500 companies in various industries:
aerospace, pharmaceuticals and biotechnology, medical devices, fibers,
chemicals, computers and electronics. Provide numerous consultations
regarding marketing and licensing proprietary products and processes
under antitrust and misuse laws governing tie-ins, exclusive dealing and
Other Intellectual Property experience included patent and trademark
prosecution; litigation and counseling involving software copyrights and
patents, trade secrets, trademarks, service marks and false advertising
General practice litigation includes actions involving the Uniform
Commercial Code and related banking regulations, Shipping and
Admiralty, environmental laws, breach of representations and warranties
and breach of contract.
Licensing and Acquisitions:
Numerous acquisition, licensing and technology transfer matters in
complex transactions and straight licensing arrangements.
• Assisted in negotiating and structuring numerous technology,
intellectual property and non-compete transactions.
• Experienced in drafting numerous technology and IP contracts,
including acquisition agreements, software agreements; patent,
know-how, copyright and trademark licenses.
• Conducted due diligence and advised intellectual
property/licensing aspects of deal for potential buyer of on-line
• Due diligence and negotiations for potential buyer/licensor of
worldwide technology assets of precious metals business.
1986-88 MORGAN & FINNEGAN
345 Park Avenue, New York, New York
Litigation Associate, 1986-1988
(Summer Associate, 1985)
Litigation and counseling in intellectual property (copyright, patent,
trade secret, biotechnology, trademark, gray-market and counterfeiting)
and unfair competition cases. Drafted briefs, legal memoranda and
opinion letters, interrogatories, assisted in depositions, document
productions and trial preparation.
• Representation of Procter and Gamble in P & G v.
Nabisco et al., a large-scale industrial espionage, trade secret
and patent infringement litigation that resulted in a $125 MM
settlement award to P&G in 1989.
• Prosecution of biotechnology and chemical patent
applications; trademark applications.
NEW YORK LAW SCHOOL
New York, New York
Juris Doctor, cum laude, June, 1986
Class Rank: Top 15%
Honors: Journal of International and Comparative Law
Riverdale, New York
Bachelor of Science, 1983
Honors: Dean's List, 1981 and 1982; American Chemical
Society Certification; New York State Regent's Scholarship
LECTURES AND PUBLICATIONS
"The Law of Written Description in Pharmaceutical and Biotechnology
Patents," 23 Biotechnology Law Report 30, Number 1 (February 2004).
“Toward Consistency and Clarity in Patent Claim Construction: Markman,
Hilton Davis, Southwall, and Vitronics” Amer. Bar Ass’n IPL Newsletter, Vol.
15, No. 2 Winter 1997.
“Decisions Key to Safe Licensing,” Les Nouvelles, J.Lic. Exec. Soc. Vol. XXXI
No. 1, March 1996.
“Confusion in the Law of Patent Infringement: The Federal Circuit’s Decisions
in Markman and Hilton Davis,” BIOTECH Patent News, vol. 9 No. 10, October
"Federal Circuit Telectronics and Chartex Decisions Clarify Infringement
Exemption For FDA Uses," BIOTECH Patent News, vol. 7, no. 9, September
Licensing Executives Society
1992 Annual Meeting -- Boca Raton, Florida
Workshop Leader: Licensing and the Law of Tie-ins
Columbia University School of Law
1989-1990 Korean Legal Studies Program In International Trade
Lecturer: weekly lectures on licensing, copyright and trademark law given to
Korean lawyers and government officials.
New York State, March 1987
United States District Courts:
Southern District of New York
Eastern District of New York
United States Patent and Trademark Office, June 1988 (Registration No.
Association of the Bar of the City of New York
1993-present Computer Law Committee
1994 Software Protection Subcommittee
Controlled Release Society
1998 to present
Licensing Executives Society
1991 Work Shop Committee
1990 Legal Affairs Committee
2004 Membership Committee
New York Intellectual Property Law Association
1994 Judge's Dinner Committee
1993 Antitrust and Misuse Committee
1990 Alternative Dispute Resolution Committee
Programming: courses in JAVA, FORTRAN, BASIC, COBOL and PASCAL.
Applications: Word-Perfect, Microsoft Word, Access, Quicken, Lotus 1-2-3,
Harvard Graphics, Netscape, Corel Draw, LEXIS-NEXIS, and WESTLAW.