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Brian Prew is a registered patent attorney and shareholder in the Intellectual Property & Technology Practice of the firm’s New York office. He has wide-ranging experience litigating intellectual property matters in various industries including pharmaceuticals, computer software, biotechnology, and financial services. Brian has experience in all stages of litigation, including pre-litigation diligence, overseeing day-to-day case management (including electronic discovery), fact and expert discovery, motion practice, through summary judgement, trial, and appeal as well as in inter partes review proceedings before the Patent Trial and Appeal Board.

In addition, Brian has wide-ranging experience in preparing freedom to operate opinions and providing clients with counseling on patentability, infringement, and validity issues.

Concentrations

  • Patent, trademark, and trade secret litigation
  • ANDA Hatch-Waxman litigation
  • International Trade Commission – Section 337 Litigation
  • General IP counseling, due diligence, opinions, and inter partes review proceedings
  • Biologics Price Competition and Innovation Act (BPCI Act) counseling

Capabilities

Experience

  • Neurocrine Biosciences Inc. v. Teva Pharmaceuticals USA, Inc.: Representing Teva in its Paragraph IV challenge to Neurocrine’s patents in the District of Delaware relating to a generic version of Ingrezza®.
  • Certain Nicotine Pouches and Components Thereof and Methods of Making the Same; Inv. No. 337-TA-1192: Represented several foreign manufacturers and U.S. distributors in an ITC investigation involving alleged patent infringement of popular nicotine cessation products. Positioned the case for early summary determination, resulting in Complainant moving to withdraw the complaint just three months after institution and on the eve of claim construction.
  • Swedish Match North America LLC, et al. Kretek International, Inc. et al. (C.D.Ca.): Represented several foreign manufacturers and U.S. distributors in the Central District of California involving alleged patent infringement of popular nicotine cessation products. Successfully moved to dismiss the foreign manufacturers for lack of jurisdiction and obtained a dispositive claim construction, resulting in a judgment of non-infringement. This case is pending appeal at the Federal Circuit.
  • Certain Filament Light-Emitting Diodes and Products Containing Same (II); Inv. No. 337-TA-1220: Representing Satco in the defense of a suit brought at the International Trade Commission by complainant, the Regents of the University of California at Santa Barbara, over four patents relating to LEDs. The trial was conducted from Aug. 30-Sept. 3, 2021. Also serving as counsel in parallel district court litigations on the same patents which have been stayed pending the resolution of the ITC investigation.
  • Satco Products, Inc. v. The Regents of the University of California: Representing petitioner Satco in four inter partes review proceedings before the PTAB against The Regents of the University of California at Santa Barbara (UCSB) relating to LEDs. Invalidated all claims of four patents which had been asserted by UCSB.
  • Certain Strontium-Rubidium Radioisotope Infusion Systems, and Components thereof Including Generators, ITC Inv. No. 337-TA-1110: Representing client in on-going Section 337 Investigation.
  • Chiesi U.S.A., Inc. et al. v. Teva Pharmaceuticals USA, Inc. (D. Del.): Represented Teva in the Paragraph IV ANDA challenge of patents relating to Bethkis® (tobramycin inhalation solution) indicated for the management of cystic fibrosis patients with Pseudomonas aeruginosa.
  • Sanofi-Aventis U.S. LLC et al. v. Fresenius Kabi USA, LLC et al. (D.N.J.): Represented Fresenius Kabi and Actavis in a patent litigation involving Sanofi’s branded cancer drug Jevtana® (cabazitaxel).°
  • Hospira, Inc., et al. v. West-Ward Pharmaceuticals Corp., et al. (D. Del.): Represented West-Ward in ANDA case concerning the administration of Hospira’s Precedex® (dexmedetomidine hydrochloride).°
  • Eli Lilly and Co., et al. v. Teva Parenteral Medicines, Inc., et al. (S.D. Ind.): Represented Teva and Fresenius in ANDA case concerning the administration of Eli Lilly’s Alimta® (pemetrexed disodium).°
  • Teva Branded Pharmaceutical Products R&D Inc., et al. v. Perrigo Pharmaceuticals Co., et al. (D. Del.): Represented Teva in a case concerning ProAir® HFA (albuterol sulfate inhalation aerosol).°
  • Apotex Inc., et al. v. Teva Pharmaceutical Industries Ltd. et al. (S.D. Fl.): Represented Teva in case concerning the process for manufacturing quinapril hydrochloride.°
  • comScore, Inc. v. DoubleVerify Inc. (E.D. Va.): Represented DoubleVerify in a case concerning technology for tracking the display of internet content.°
  • Research Affiliates, LLC v. WisdomTree Investments, Inc., et al. (C.D. Cal.): Represented WisdomTree in patent case concerning exchange traded funds (ETFs).°
  • Pfizer Inc., et al. v. Teva Pharmaceuticals USA, Inc., (E.D. Va.): Represented Teva in an ANDA case concerning Pfizer’s drug Viagra® (sildenafil citrate tablets).°
  • Chicago Board Options Exchange v. International Securities Exchange, (N.D. Ill.). Represented International Securities Exchange in a patent infringement case involving a system for trading financial instruments.°
  • Pronova Biopharma Norge AS v. Teva Pharmaceuticals USA, Inc., (D. Del.): Represented Teva in an ANDA case concerning Pronova’s drug Lovaza® (omega-3 acid ethyl ester capsules).°
  • Teva Pharmaceuticals USA, Inc. v. Amgen Inc., (E.D. Pa.): Represented Teva in an action against Amgen concerning Amgen’s product, Neupogen® (human granulocyte colony-stimulating factor).°

°The above representations were handled by Mr. Prew prior to his joining Greenberg Traurig, LLP.

  • Naval Sea Systems Command (NAVSEA)
    • Chemical Engineer, Energy Conversion R&D, 2000-2008
  • Judicial Intern to the Honorable Joseph H. Rodriguez, U.S. District Court for the District of New Jersey, 2006-2007

Recognition & Leadership

  • Listed, Super Lawyers magazine, New York Metro Rising Stars, 2016-2018
  • Member, New York Intellectual Property Law Association (NYIPLA)
    • Co-Chair, Inventor of the Year (IOTY) Committee, 2017-2021

Credentials

Education
  • J.D., magna cum laude, Rutgers Law School, 2008
    • Notes Editor, Rutgers Journal of Law and Public Policy
    • Participant, Hunter Moot Court
  • B.S., Chemical Engineering, Lehigh University, 2000
Admissions
  • New York
  • New Jersey
  • Pennsylvania
  • U.S. Patent and Trademark Office
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. District Court for the Eastern District of New York
  • U.S. District Court for the Southern District of New York