Brian Tomkins is a partner in the firm. His practice concerns all aspects of IP including worldwide procurement, due diligence and clearance, litigation, and acquisition and licensing, particularly in the biomedical device, biotechnology, pharmaceutical, and chemical industries.
In counseling clients, Mr. Tomkins draws on his broad range of experience to develop pragmatic strategies consistent with a client's business goals. Mr. Tomkins routinely counsels clients in connection with the acquisition or development of new technologies and product lines to ensure maximum protection, while in parallel gauging risk relative to third party IP. Mr. Tomkins also assists clients in formulating strategies to manage risk, including clearance opinions, challenges to third party intellectual property, and license and settlement agreements.
Mr. Tomkins also has experience in litigating various patent, trademark, copyright and trade secret issues, as well as pharmaceutical patent litigation brought under the Hatch-Waxman Act.
Mr. Tomkins has been named a Rising Star by Super Lawyers, in the area of intellectual property, in each of its 2014-2018 New Jersey editions. He is a member of the state bars of New Jersey and New York and is registered to practice before the United States Patent & Trademark Office.
Due Diligence, Mergers and Acquisitions
IP Asset Management
2006, New Jersey
2007, New York
2006, United States Patent & Trademark Office
J.D., Rutgers University School of Law - Camden, 2006
B.S., Chemical Engineering, Tufts University, 2002
B.S., Biomedical Engineering, Tufts University, 2002
The Patent Trial and Appeal Board (“PTAB”) issued a Final Written Decision in favor of our client, LifeScan Global Corporation, denying Patent Owner’s Motion to Amend and invalidating US. Patent No. 9,976,125. The ‘125 Patent is directed towards a biosensor for blood sugar monitoring, common in diabetes management, that uses flavin adenine dinucleotide conjugated glucose dehydrogenase (FAD-GDH) to determine the presence of glucose by a pH change. After the Petition requesting post grant review of claims 1-10 was filed and before institution, the Patent Owner disclaimed claims 1-7, 9 and 10. Patent Owner then attempted to amend the patent by cancelling claim 8, the only remaining claim, and proposing substitute claim 11. In the Final Written Decision, the Board found Patent Owner’s proposed substitute claim 11 obvious over the cited art, invalidating the ‘125 Patent. The case is LifeScan Global Corporation v. Ikeda Food Research, Ltd. et al., Case No. PGR2019-00032, Paper No. 38 (August 12, 2020).
Our client TriGen Laboratories was sued by USPC for alleged false advertising and unfair competition in its marketing of prenatal vitamin products in competition with USPC's products. USPC moved for a preliminary injunction. The United District Court for the Northern District of Georgia heard argument, directed the taking of discovery from organizations that list pharmaceutical products, and considered full submissions from all parties. In a comprehensive opinion issued on January 27, 2011, the Court denied an injunction against TriGen. The Court held that USPC had not established a likelihood of success on its claim that TriGen had falsely advertised or misrepresented its prenatal vitamins. In upholding the labeling of TriGen's products, the Court considered carefully the manner in which these prenatal vitamins are listed with drug databanks and made available to pharmacists for dispensing. This comprehensive decision should be applicable to numerous other such actions which have been filed by companies challenging the marketing of products in competition with prescription drug products or pharmaceuticals.
Lerner David Partners Presenting at Upcoming ACI's Hatch Waxman Series: Paragraph IV Disputes Conference
“GATT Patent Term? A Look Back at the Implementation and Ramifications of GATT” by William Di Bianca and Brian Tomkins published in NYIPLA Bulletin on April/May 2015
Super Lawyers Rising Star - 2014 - 2018
Lerner David Named a Top Patent Firm in TC 3700
Super Lawyers Recognizes Lerner David
Lerner David's 2014 Super Lawyers
American Bar Association
American Intellectual Property Law Association
New Jersey Intellectual Property Law Association