Prior to joining the Firm, he was Of Counsel at Locke Lord, LLP, handling litigation and patent prosecution. Previously he was Associate General Counsel at Hi-Tech Pharmacal Co. Inc. where he oversaw and participated in the company’s lawsuits and pre-suit investigations, including patent and trademark litigation, class action cases, and fraud and breach of contract litigation. Additionally, he was responsible for regulatory compliance. Mr. Roth has considerable trial experience, particularly in patent cases. Prior to law school, Mr. Roth was a software engineer in the Aerospace industry.
- Of Counsel, Locke Lord, LLP, New York (2014-2017)
- Associate General Counsel, Hi-Tech Pharmacal Co. Inc., Amityville, N.Y. (2008-2014)
- Counsel, Kaye Scholer, LLP New York (1990-2008)
- Software Engineer, Singer-Kearfott, New Jersey (1983-1987)
Representative Patent Litigation Experience
- Allergan, Inc. v. Apotex, Inc., et al. (Latisse®, bimatoprost 0.03%)
Represented defendant Hi-Tech Pharmacal at trial and appeal. Federal Circuit held that Allergan's method of treatment patents are invalid. 754 F.3d 952 (Fed. Cir. 2014)
- Allergan, Inc. v. Sandoz Inc., et al. (Lumigan®, bimatoprost 0.01%)
Represented defendant Hi-Tech Pharmacal. District court held that asserted formulation and method patents are valid and infringed. Affirmed on appeal to the Federal Circuit.
- Senju Pharmaceutical et al. v. Lupin et al. (Gatifloxacin, Zymar®/Zymaxid®)
Represented defendant Hi-Tech Pharmacal. Settled asserted polymorph patent; district court held asserted formulation patent invalid. Affirmed on appeal to the Federal Circuit.
- Pfizer Inc. v. Synthon (Norvasc®, amlodipine)
Represented Pfizer, Inc. District court held that salt patent valid and infringed. Federal Circuit reversed and held patent invalid.
- Omega Engineering v. Raytek Corp.
Represented Omega in jury trial, resulting in finding of infringement by Raytek and awarding $24 million to Omega in damages. (D. Con. 3:98 CV 733)
- Pfizer Inc. v. Andrx (Glucotrol® XL)
Represented Pfizer Inc. regarding osmotic sustained release patents. Case settled.
- Upjohn Co. v. Mova Pharm. (Glynase®)
Represented Upjohn Co. in formulation patent lawsuit. Federal Circuit held patent valid and enforceable, but not infringed. 225 F.3d 1306 (Fed. Cir. 2000).
- Pfizer, Inc. v. Zenith Goldline (Zoloft®, Sertraline)
Represented Pfizer, Inc. in lawsuit asserting polymorph and formulation patents. (D. N.J. CA 00CV408). Case settled.
- Bayer and Pfizer v. Mylan, Biovail and Martec (Procardia® XL, Adalat® CC, nifedipine)
Represented Pfizer in sustained release formulation and particle size patents against generics.
- Fed. Circ. Patent Rulings May Shift Use Of Motion To Dismiss, Law360 June 10, 2020
- INSIGHT: FDA Exclusivities Add Incentives to Covid-19 Drug Race, Bloomberg Law May 4, 2020
- The Long Odds Of Obtaining IPR Reversals On Issues Of Fact, Law360 February 11, 2020
- Locke Lord QuickStudy: Direct Infringement Prong of 35 U.S.C. § 271(b) in a Hatch-Waxman Case May Be Satisfied When the Prescribing Physician Directs or Controls Acts of Patients
Locke Lord Publications Locke Lord LLP January 25, 2017
- ‘ After Halo’ and ‘Octane Fitness’: Are Patent Opinions Again Necessary?
New York Law Journal October 6, 2016
- Objective Reasonableness Still Relevant Post-Halo
Law360 September 29, 2016
- Locke Lord Article: Effect of Amendments to Federal Rules or Civil Procedure In Patent Infringement Cases
Locke Lord Publications December 9, 2015