Simon D. Roberts

Simon D. Roberts


Partner, New York

Twenty-five years of intellectual property law experience with preeminent law firms in both Europe and the United States has made Simon Roberts a skilled and well regarded patent litigator. Simon’s chemistry background and his innate ability to translate complex technical issues into understandable concepts easily understood by judges and juries alike has made Simon an ideal choice for trials and appeals of complex patent litigations in the chemical and pharmaceutical areas. Few patent litigators have Simon’s in depth knowledge and particular expertise in the realm of the Hatch-Waxman litigations. Simon has become a “go to guy” for his clients in the chemical and ethical pharmaceutical industry.

In addition to Simon’s extensive litigation practice before the Federal Courts, Simon regularly represents clients before the U.S. Patent & Trademark Office (“USPTO”) relating to contested and non-contested proceedings. Simon prepared the first successful supplemental examination request to be filed with the USPTO that included disclosures unrelated to prior art. Simon also has the rare distinction of being permitted to present oral argument before the Patent Reexamination Board of the Chinese Intellectual Property Office in Beijing resulting in the Board upholding the patentability of the patent covering the world’s best-selling HIV medication.

Simon’s particularly varied patent experience and his instinctive ability to understand client needs has made Simon an ideal choice for clients. As Simon recognizes, “the very best client representation involves more than an impeccable understanding of the law, it also involves a better understanding of the client’s needs.”

Case Highlight

Simon secured a victory before a jury in a Hatch-Waxman litigation for Novartis against generic drug manufacturer Teva. The jury found a patent covering the antiviral medication Famvir® to be valid and infringed.

Representative Matters
  • Gilead against Lupin and Cipla in ANDA litigations relating to Viread® and Truvada® products.
  • Gilead against Teva in an ANDA litigation relating to Viread®, Truvada® and Atripla® products (HIV and HBV therapies).
  • Astellas Pharma and Astellas Pharma US in Astellas v. Teva Pharmaceuticals USA and Teva Industries (compound to treat overactive bladder).
  • Astellas Pharma and Boehringer Ingelheim in Astellas and Boehringer Ingelheim v. Ranbaxy, Astellas and Boehringer Ingelheim v. Impax (compound to treat prostatic hypertrophy).
  • Novartis in Novartis v. Teva Pharmaceuticals USA, Novartis v. Roxane (antiviral pharmaceutical compound), Novartis v. Roxane (novel method of treatments using antiviral compound), Teva Pharmaceuticals USA v. Novartis (declaratory judgment action involving method of treatment claims).
  • Bristol-Myers Squibb and Kyorin in Bristol-Myers Squibb and Kyorin Pharmaceutical Co. v. Teva, Bristol-Myers Squibb and Kyorin Pharmaceutical Co. v. Apotex (antibacterial compound).
  • AstraZeneca in AstraZeneca v. Andrx, AstraZeneca v. Genpharm, AstraZeneca v. Dr. Reddy, AstraZeneca v. Schwartz Pharma, AstraZeneca v. Mylan, AstraZeneca v. Lek, AstraZeneca v. Apotex (proton pump inhibitor).
  • Astellas Pharma, Astellas US and Astellas Pharma US in Astellas v. Fresenius Kabi USA, Astellas v. Apotex  (injectable compound and formulation to treat fungal infections).
  • Astellas Pharma in Celgene and Astellas v. Fresenius Kabi USA, Celgene and Astellas v. InnoPharma, Celgene and Astellas v. Teva USA  (injectable compound to treat T-cell lymphomas).
  • Gilead Pharmasset in Idenix Pharmaceuticals v. Gilead Pharmasset (compound to treat HCV)