Simon Roberts

Simon Roberts

Partner
New York

Email [email protected]​hoganlovells.com

Phone +1 212 918 3781

Fax +1 212 918 3100

Practice groupIntellectual Property, Media, and Technology

With almost 30 years of experience practicing law in both Europe and the United States, there is little Simon Roberts hasn't seen. Simon focuses on patent litigation in the life sciences and biotechnology sectors where he leverages his background in chemistry to translate complex technical issues into relatable terms.

Known as a "go-to guy" for his clients, Simon is a top choice when it comes to patent disputes. He has deep experience and knowledge in the realm of Hatch-Waxman litigations as well as other pharma-related patent maters. Simon is proud of his record of successful outcomes in virtually every of the high-stakes litigation matters he has handled. In addition to his extensive litigation practice before the federal courts, Simon represents clients before the United States Patent and Trademark Office (USPTO) in contested proceedings including IPRs and PGRs. Simon orchestrated the first winning supplemental examination request to be filed with the USPTO that included disclosures unrelated to prior art leading to the significant strengthening of a patent portfolio protecting one of the world's most successful branded pharmaceutical products.

Simon also has the rare distinction of being permitted to present oral argument before the Patent Reexamination Board (PRB) of China's Intellectual Property Office (SIPO) in Beijing, resulting in the PRB upholding the patentability of the patent covering an active ingredient in the world's best-selling HIV medications.

Awards and recognitions

2020

Intellectual Property: Patents: Litigation (Full Coverage), Recommended
Legal 500 US

Education and admissions

Education

Law Degree, Inns of Court School of Law, London, 1991

B.A., University of Exeter Law School, with honors, 1990

B.Sc., University of Exeter Law School, with honors, 1989

Bar admissions and qualifications

New York

U.S. Patent and Trademark Office

Court admissions

U.S. Court of Appeals for the Federal Circuit

U.S. District Court, Southern District of New York

U.S. District Court, Eastern District of New York

Representative experience

Lead counsel for Astellas Pharma in patent infringement suit filed against 20+ generic companies involving the formulations found in their leading drug for the treatment of overactive bladder.

Lead counsel for Astellas Pharma in multiple district court cases against nine generic groups asserting infringement of patents that cover Astellas's Myrbetriq® product.

Lead counsel for a major seed manufacturer to successfully assure its major competitor respected its plant certificates covering the market-leading melons. 

Lead IP team for a major Japan-based pharmaceutical company in its multi-billion dollar acquisition of an Israeli pharmaceutical company (the largest ever acquisition of an Israeli company).*

Successful prevention of institution of IPR petition filed by generic drug company seeking to invalidate U.S. compound patent covering a global pharmaceutical company's crown jewel product.*

Successfully obtained summary judgement of validity and infringement of patents covering Astellas's and Boeringer Ingelheim's Flomax® product preventing generic entries prior to patent expiry.*

Led litigation team that successfully represented Gilead against several generic drug companies that had challenged patents covering Viread®, Truvada®, and a number of other leading HIV treatments.*

Successfully represented Gilead in an interference with Idenix at the U.S. Patent and Trademark Office concerning patents covering Hepatitis C treatments.*

Successfully represented Astra Zeneca in multiple district court cases involving many generics relating to patents covering Prilosec®.*

Successfully represented Novartis in multiple cases, including one jury trial, involving several generics relating to four patents covering the Famvir® and Penvir® products.*

Successfully defended SmithKline Beecham against patent infringement allegations made by Glaxo Welcome attempting to prevent the Famvir® from competing against Glaxo's acyclovir products in the U.S.*

Led litigation team in the successful representation of Astellas against several generic drug companies seeking to invalidate the compound and formulation patents covering Mycamine®.*

Successfully led litigation team for Astellas against several generics arguing non-infringement and invalidity of Astellas's patents directed to polymorphs that cover Celgene's Istodax® product.*

Successfully represented Astellas in patent infringement suits relating to patents covering Astellas's VesiCare® product (best-selling anti-muscarinic brand treatment of overactive bladder).*

Successfully represented BMS and Kyorin Pharmaceuticals in patent litigations in which several generic companies sought to invalidate Kyorin's patents covering BMS's Tequin® product.*

Successfully represented Eli Lilly against several generic drug companies seeking to invalidate Eli Lilly's patents covering the Prilosec® product.*

*Matter handled prior to joining Hogan Lovells.

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