Overview
Noah Frank is an intellectual property partner who focuses on patent infringement litigation and post-grant proceedings before the Patent Trial and Appeal Board (PTAB). As a former patent examiner at the U.S. Patent and Trademark Office and a clerk for Judge Richard G. Andrews of the U.S. District Court for the District of Delaware, Noah brings a comprehensive understanding of both the technical and legal aspects of intellectual property disputes and has represented clients in litigation involving all forms of intellectual property, including patents, copyrights, trade secrets and false advertising. His experience spans a wide range of technologies, including small and large molecule pharmaceuticals, medical devices, software emulators and Wi-Fi.
Central to Noah's approach is a deep commitment to understanding his clients’ businesses and strategic objectives. He works closely with clients to align litigation strategies with their broader business goals, ensuring that legal actions not only protect intellectual property but also enhance overall business outcomes. Noah also has significant experience with damages, often guiding clients through the valuation of intellectual property and working closely with economic experts to quantify commercial impact. His strategic insights into damages play a critical role in both litigation and settlement negotiations. Noah’s ability to bridge the gap between complex technical issues, litigation strategy and business objectives makes him a trusted advisor to clients navigating critical IP disputes.
Experience
Representative Matters
AMO v. Alcon (D. Del. & PTAB): Represented Alcon in patent and copyright case related to Alcon’s LenSx cataract surgery device in district court, PTAB and foreign jurisdictions. Won summary judgment significantly reducing potential exposure. Oversaw drafting of 16 IPR petitions against AMO patents and successfully argued at PTAB in defense of Alcon patent. Case favorably settled on eve of trial.
IBM v. LzLabs (W.D. Tex.): Representing IBM in trade secrets case related to LzLabs’ reverse-engineering of the IBM mainframe.
Janssen v. Celltrion (D. Mass.): Represented Hospira and Celltrion in litigation in federal district court and the Federal Circuit related to biosimilar version of Janssen’s multibillion-dollar drug Remicade®. The case involved the first biosimilar monoclonal antibody to be approved by the FDA and is one of the first cases filed under the Biologics Price Competition and Innovation Act (BPCIA). Obtained summary judgment in client’s favor which was affirmed on appeal.
Abbott v. Grifols (N.D. Ill.): Represented Abbott in declaratory judgment action seeking to invalidate Grifols’ patent related to replication of HIV. Won summary judgment significantly reducing potential exposure. Case favorably settled in advance of trial.
Arkema v. Honeywell (PTAB & Fed. Cir.); Mexichem v. Honeywell (PTAB): Represented Honeywell in Post-Grant Review and inter partes reexaminations of patents related to next generation automobile refrigerants. Successfully obtained two separate Federal Circuit decisions vacating and remanding case after PTAB had found patents invalid.
Samsung Bioepis v. Janssen (PTAB): Drafted IPR petition against patent related to Janssen’s STELARA® biologic. Case favorably settled shortly after filing IPR petition.
SherryWear v. Nike (D. Mass. & PTAB): Represented Nike in defense of patent infringement suit related to sports bras with pockets. Argued Markman, after which court found in favor of Nike on all disputed claim terms. After filing IPR petitions against all asserted patents successfully moved district court to stay proceeding pending PTAB decisions. Case settled after IPR institutions.
Clerk & Government Experience
Law ClerkHonorable Richard G. AndrewsUnited States District Court for the District of Delaware2013–2014
Prior Experience
Kirkland & Ellis LLP, Summer Associate, 2012
Banner & Witcoff, Ltd., Summer Associate, 2011
Patent Examiner, U.S. Patent and Trademark Office, 2007–2010
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Credentials
Admissions & Qualifications
- 2022, Massachusetts
- 2014, District of Columbia
- 2013, Virginia (inactive)
- Registered to practice before the United States Patent and Trademark Office
Courts
- United States Court of Appeals for the Federal Circuit
- United States District Court for the Eastern District of Virginia
Education
- University of Virginia School of LawJ.D.2013Article Review Board, Virginia Journal of Law and Technology
- University of PennsylvaniaM.S., Chemistry2007
- University of PennsylvaniaB.A., Chemistry2007