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Adam P. Samansky

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[email protected]

+1.617.348.1819

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Adam is an experienced IP litigator who primarily serves pharmaceutical, medical, high tech, and defense industry clients. He handles patent, trademark, and trade secret matters for innovators and investors. Adam has a strong record of success in multiparty, highly contested Hatch-Waxman litigation, in addition to other litigations involving advanced biochemistry, polymers, optics, manufacturing processes, and electronics. He has tried cases before multiple US district courts, briefed and argued cases before the US Court of Appeals for the Federal Circuit, and briefed bet-the-company issues before the US Supreme Court.

Adam’s practice focuses on intellectual property litigation. He handles patent, trademark, and trade secret matters on behalf of innovators and investors in a range of industries. His core practice includes patent and trade secret litigation involving complex technologies in the pharmaceutical, medical, high-tech, and defense industries. Adam has tried cases before multiple US District Courts, briefed and argued cases before the US Court of Appeals for the Federal Circuit, and has briefed bet-the-company issues before the US Supreme Court.

For pharmaceutical clients, Adam leverages his trial and appellate experience in litigation when advising on new product development, regulatory strategy, Orange Book listing, citizen petition practice, and the settlement of multiparty, highly contested Hatch-Waxman litigation. Adam regularly conducts due diligence on blockbuster pharmaceutical assets, including reviewing and assessing litigation, regulatory, and competitive strategies.

Prior to joining the firm, he was a partner in the Boston office of another international law firm.

Education

  • Suffolk University Law School (JD)
  • Brandeis University (BA)

Experience

  • Victory at CAFC: PTAB Decision Reversed and Remanded - Represented Straight Path IP in successfully appealing to the Court of Appeals of the Federal Circuit (CAFC) the adverse result of an inter partes review handled by another firm. The IPR decision canceled all challenged claims of Straight Path’s US Patent No. 6,108,704. In the Straight Path IP Group, Inc. v. Sipnet EU SRO appeal, the CAFC for the first time completely reversed an adverse IPR decision, remanding the matter for further proceedings under the correct construction advocated by Mintz and Straight Path.
  • MKS Instruments v. Emphysys, C.A. No. 12-1858-BLS (Ma. Super. Ct.) - Served as lead counsel, defending against claims of trade secret misappropriation related to advanced semiconductor manufacturing technology.
  • MeadWestvaco v. Rexam, Appeal No. 12-1518 (Fed. Cir.) - Served as principal appellate counsel, and subsequently represented the plaintiff-appellee on remand to the Eastern District of Virginia.
  • Kowa Pharmaceuticals America et al v. Amneal Pharmaceuticals, LLC, and related cases - Represented plaintiffs Kowa Company, Ltd., Kowa Pharmaceuticals America, Inc. and Nissan Chemical Industries, Ltd. in litigation which involved compound, formulation, and polymorph patents directed toward quinoline-type mevalonolactones (or, pitavastatin calcium) relating to the drug product Livalo®. Several of the cases successfully resolved pre-trial, and after a 10-day trial plaintiffs prevailed on all issues in two court decisions against the remaining defendants, Amneal and Apotex. Mintz Levin represents Kowa and Nissan in the appeal filed by Amneal and Apotex in the Federal Circuit. The team also defeated institution of three inter partes reviews filed by generic manufacturer defendants in these cases.
  • Successful Denial of IPR Petitions — Pharmaceuticals Mintz Levin prepared and filed Preliminary Patent Owner Responses to three inter partes review petitions filed by generic pharmaceutical manufacturers against our client Nissan Chemical. Based on those filings, the PTAB denied all three petitions. The petitioners are defendants in Hatch-Waxman litigation filed by Mintz Levin on behalf of Kowa and Nissan Chemical to protect their market position for Livalo®, an important pharmaceutical which reduces LDL cholesterol. IPR2015-01069, IPR2015-01647, IPR2015-01648
  • Dallakian v. IPG Photonics, 3:14-cv-11863-TSH (D. Mass.) - Served as lead counsel, successfully defending against claims for correction of inventorship and trade secret misappropriation.
  • Mitsubishi Chem. Co. v. Barr Labs., Inc., 718 F. Supp. 2d 382 (S.D.N.Y. 2010), aff’d, 435 Fed. Appx. 927 (Fed. Cir. Aug. 2, 2011) - Served as trial and appellate counsel to pioneer pharmaceutical company in a Hatch-Waxman patent infringement action.
  • Takeda Chem. Indus., Ltd. v. Mylan Labs. Inc., 417 F. Supp. 2d 341 (S.D.N.Y. 2006) - Served as trial and appellate counsel to pioneer pharmaceutical company in Hatch-Waxman patent infringement action.

Recognition & Awards

  • Best Lawyers in America: Intellectual Property Litigation (2018 - 2020)
  • Included on the Massachusetts Super Lawyers: Rising Star - Intellectual Property Litigation list (2013 – 2018)

Involvement

  • Member, Boston Bar Association
  • Member, American Intellectual Property Law Association
  • Member, Boston Patent Law Association
  • Member, Federal Circuit Bar Association
  • Member, American Chemical Society

Viewpoints

Viewpoint General

Collateral estoppel does not attach to PTAB invalidity determination pending appeal

October 10, 2019 | Blog | By Adam Samansky, Peter Cuomo, Nana Liu

Recently, in Sanofi-Aventis v. Mylan, 2:17-cv-09105-SRC-CLW, Judge Stanley Chesler of the United States District Court, District of New Jersey, denied a motion by defendant Mylan for summary judgment of invalidity of asserted patent claims that were found to be obvious by the Patent Trial and Appeal Board (“PTAB”).
Viewpoint
On August 13, 2019, the United States District Court for the District of New Jersey, in Valeant Pharmaceuticals N. Am. LLC v. Mylan Pharmaceuticals Inc., No. 18-cv-14305, held that venue was not proper in New Jersey over Mylan in a patent infringement action arising from Mylan’s submission of an Abbreviated New Drug Application (“ANDA”) seeking approval to market a generic version of the drug, Jublia®.
Viewpoint
On August 9, 2019, the United States Court of Appeals for the Federal Circuit, in Eli Lilly & Co. v. Hospira, Inc., Nos. 2018-2126, 2127, 2128, reversed in-part and affirmed in-part a district court’s determination of infringement.  The Federal Circuit reversed the district court’s finding of literal infringement but ultimately affirmed judgments of infringement based on the doctrine of equivalents.
Viewpoint General
On April 17, 2019, Judge Gilstrap of the United States District Court for the Eastern District of Texas, in Apicore v. Beloteca, No. 19-cv-00077, held that while the court could exercise personal jurisdiction over a generic drug manufacturer in connection with the patentee’s action seeking a declaratory judgment of noninfringement, venue was not appropriate in the Eastern District of Texas under the applicable patent venue statute, 28 U.S.C. § 1400(b).
Viewpoint General

The FUCT Mark: Is the Prohibition on Scandalous Marks Unconstitutional?

March 14, 2019 | Blog | By Susan Neuberger Weller, Adam Samansky, Serge Subach

The constitutionality of yet another portion of Section 2(a) of the Lanham Act will soon be determined. Following in the footsteps of the blockbuster decision in Matal v. Tam, 137 S. Ct. 1744 (2017) (“Tam”), the U.S. Supreme Court granted certiorari to Iancu v. Brunetti on January 4, 2019. In Matal v. Tam, the Supreme Court held that the prohibition in Section 2(a) of the Lanham Act against registering disparaging trademarks at the U.S. Trademark Office (“USPTO”) was an unconstitutional restriction on free speech. However, Section 2(a) also prohibits the registration of other categories of marks, including marks that are immoral and scandalous. It is the constitutionality of this prohibition which is at issue in Brunetti.
Viewpoint General
On February 7, 2019, the United States Court of Appeals for the Federal Circuit, in Momenta Pharmaceuticals v. Bristol-Myers Squibb, No. 2017-1694, dismissed Momenta’s appeal of a Final Written Decision in an Inter Partes Review (“IPR”) because Momenta had terminated its potentially infringing drug development program. According to the panel, this left Momenta without a sufficiently concrete interest in the action to satisfy the standing requirements of Article III of the United States Constitution.
Viewpoint General

Judge Applies WesternGeco Principles to Direct Infringement Under 35 U.S.C.§ 271(a)

November 30, 2018 | Blog | By Adam Samansky, Alexander Roan

A federal district court judge recently applied the recent U.S. Supreme Court decision in WesternGeco LLC v. ION Geophysical Corporation, in which the Supreme Court held that lost profits damages could be awarded for infringement occurring under 35 U.S.C.§ 271(f), to cover damages for direct infringement occurring under 35 U.S.C.§ 271(a) (see our prior post here for an overview of the case and the issues before the Court, and here for an overview of the Court’s June opinion). 
Viewpoint General

District of Delaware Dismisses ANDA Applicant for Lack of Venue under TC Heartland

October 24, 2018 | Blog | By Adam Samansky, Peter Cuomo, Joe Rutkowski

On October 18, 2018, the United States District Court for the District of Delaware, in Bristol-Myers Squibb v. Mylan Pharmaceuticals Inc., No. 17-00379, held that venue was not proper in Delaware over Mylan Pharmaceuticals Inc. (“MPI”) in connection with a claim for patent infringement arising from Mylan’s submission of an Abbreviated New Drug Application (“ANDA”) seeking approval to market a generic version of the drug, apixaban.

Federal Circuit Provides Guidance for Stereochemistry Claim Construction

April 25, 2018 | Blog | By Adam Samansky, Joe Rutkowski

On April 16, 2018 in a precedential opinion, the United States Court of Appeals for the Federal Circuit, Sumitomo Dainippon Pharma v. Emcure Pharms., Nos. 2017-1798, -1799, -1800, affirmed the United States District Court for the District of New Jersey by construing the claimed chemical structure diagram to encompass at least the specific enantiomer depicted, refusing to limit the claim to only cover a racemic mixture of the (+) and (–) enantiomers, absent clear indication that the depicted enantiomer should be excluded from the claim.

WesternGeco v. ION Geophysical Corp. and Lost Profit Damages under § 271(f)

April 5, 2018 | Blog | By Adam Samansky, Alexander Roan

Section 271 of Title 35 of the United States Code is the statute that codifies unlawful acts of patent infringement.  The most commonly asserted provisions are § 271(a) (direct infringement), § 271(b) (induced infringement), and § 271(c) (contributory infringement).

News & Press

In this article published by Law360, Mintz Members Adam Samansky and Peter Cuomo commented on lingering questions related to the America Invents Act's estoppel provision, which prevents challengers from arguing in court that a patent is invalid on grounds that were raised — or reasonably could have been raised — during inter partes review at the Patent Trial and Appeal Board.
Mintz has secured a string of substantial victories in Hatch-Waxman litigation for innovative drug manufacturers Kowa Pharmaceutical Co., Ltd., Kowa Pharmaceuticals America, Inc., and Nissan Chemical Industries Ltd.
Best Lawyers named 85 Mintz attorneys to its 2018 list of The Best Lawyers in America. In addition, Mintz attorneys Matthew J. Gardella and Samuel M. Tony Starr were named “Lawyer of the Year” in their respective practice areas.
Mintz announced a pair of victories before the Patent Trial and Appeal Board on behalf of SL Corporation and Hyundai Motor America, Inc. against Adaptive Headlamp Technologies, Inc.
Fifty-three Mintz attorneys have been named Massachusetts Super Lawyers for 2016 and thirty-one have been named Massachusetts Rising Stars. The findings will be published in the November 2016 issue of Boston Magazine and in a stand-alone magazine, New England Super Lawyers. 

Events

Panelist
Apr
7
2019

BPIP 7th Annual Conference

Best Practices in Intellectual Property

Sheraton Tel Aviv Tel Aviv, Israel

Moderator
Jun
28
2018

Data Protection at the Intersection of Trade Secrets and Cybersecurity

Boston Patent Law Association

Mintz Levin One Financial Center Boston, MA

Speaker
Apr
30
2018

AIPPI-Israel’s 3rd Annual International Convention on the Economy of Innovation

AIPPI-Israel

David Intercontinental Hotel 12, Kaufman Street Tel Aviv, Israel

Speaker
Mar
11
2018

BPIP 6th Annual Conference

Best Practices in Intellectual Property

Sheraton Tel Aviv Tel Aviv, Israel

Mar
26
2017

Life Sciences Breakfast

GKH Law Offices

Tel Aviv

Speaker
Speaker
Sep
9
2015

2015 U.S. Supreme Court and Federal Circuit Year in Review

Gross, Kleinhendler, Hodak, Halevy, Greenberg & Co.

One Azrieli Center, Round Building, Tel Aviv, Israel

Speaker
May
11
2015

IP Best Practices Conference 2015

Intellectual Property Resources

Tel Aviv, Israel