head_NortonPh.D.GerardP

Gerard  P. Norton , Ph.D.
Partner
Patent Attorney
gnorton@foxrothschild.com

Princeton, NJ
609.844.3020


Chair of the firm's Intellectual Property Department, co-chair of the Pharmaceutical & Biotechnology Group and a member of the Steering Committee of the Life Sciences Practice Group, Gerry has extensive experience litigating complex matters pertaining to patents, trademarks, copyrights, trade secrets and breach of contract.

He counsels clients regarding:

  • Validity and scope of intellectual property rights
  • Portfolio development
  • Strategic positioning of corporate assets, opinion work, and evaluating legal risk in the pharmaceutical and medical device industries
  • Evaluating third-party intellectual property rights related to chemistry and molecular biology, such as therapeutic compounds, biopharmaceuticals, formulations, manufacture, importation, methods of use, and related FDA issues
  • Representation of intellectual property matters and transactions relevant to corporate acquisitions and divestitures

Gerry also provides skilled knowledge to manufacturers and developers in the fields of pharmaceutical, biotechnology, chemical and medical device arts.

Gerry's clients include Fortune 100 companies as well as universities and other not-for-profit organizations.

Representative Matters (Federal Circuit Appeals)

  • Genentech, Inc. v. Novo Nordisk A/S, 108 F.3d 1361 (Fed. Cir. 1997);
  • Bio-Technology Gen. Corp. v. Genentech, 80 F. 3d 1553 (Fed. Cir. 1996);

Representative Matters (District Litigation)

  • Mr. Water Heater Enterprises, Inc. v 1-800-Hot Water Heater, LLC, 648 F. Supp. 2d 576 (S.D.N.Y., 2010);
  • Fifth Generation Computer Corp. v. IBM, 678 F. Supp. 2d 184 (S.D.N.Y. 2010);
  • Howmedica Osteonics Corp. v. Tranquil Prospects Ltd., WL 2750228 (N.D.I 2009); Howmedica Osteonics Corp. v. Tranquil Prospects Ltd., 482 F.Supp.2d 1045 (N.D.Ind.,2007);
  • Precimed, S.A. v. Orthogenesis, Inc., 2006 WL 6160497, 2006 Markman 6160497 (E.D.PA. 2006);
  • IMCOR Pharmaceutical Co. and Alliance Pharmaceutical Corp. v. Amersham Health, Inc., Amersham Health As and Amersham plc., 03-2853 (SRC) (D.N.J. January 10, 2005);
  • Greene, Tweed of Del., Inc. v. DuPont Dow Elastomers, L.L.C., 3002 U.S. Dist. LEXIS 21034 (E.D.P.A. 2003);
  • Howmedica Osteonics Corp. v. Tranquil Prospects, LTD., 288 F. Supp. 2d. 939 (N.D.I. 2003);
  • Greene, Tweed of Del., Inc. v. DuPont Dow Elastomers, L.L.C., 2003 U.S. Dist. LEXIS 15624 (E.D.P.A. 2003);
  • Greene, Tweed of Del., Inc. v. DuPont Dow Elastomers, L.L.C., 2002 U.S. Dist. LEXIS 23554 (E.D.P.A. 2002);
  • Greene, Tweed of Del., Inc. v. DuPont Dow Elastomers, L.L.C. 2002 U.S. Dist. LEXIS 25709 (E.D.P.A. 2002);
  • Greene, Tweed of Del., Inc. v. DuPont Dow Elastomers, L.L.C., 2002 U.S. Dist. LEXIS 11389 (E.D.P.A. 2002);
  • Greene, Tweed of Del., Inc.v. DuPont Dow Elastomers, L.L.C., 2002 U.S. Dist. LEXIS 11522 (E.D.P.A. 2002);
  • Greene, Tweed of Del., Inc. v. DuPont Dow Elastomers, L.C.C., 202 F.R.D. 426 (E.D.P.A. 2001);
  • Greene Tween of Del., Inc. v. DuPont Dow Elastomers, L.C.C., 202 F.R.D. 418 (E.D.P.A. 2001);
  • Genentech, Inc, v. Boehringer Mannheim GmbH, 47 F. Supp. 2d91 (D. Mass 1999);
  • Genentech, Inc. v. Boehringer Manheim GmbH, 989 F. Supp. 359 (D. Mass. 1997);
  • Genentech, Inc. v. Novo Nordisk A/S, 935 F. Supp. 260 (S.D.N.Y. 1995).

Before Fox Rothschild

Gerry was named partner of an intellectual property law firm in New Jersey, and was an attorney for 10 years at Rogers & Wells and at Clifford Chance in New York. He held a post-doctoral fellowship with Merck, Inc.

Client Resources

New Jersey and New York Intellectual Property Litigation Blog
The U.S. District Courts for the District of New Jersey and Southern District of New York have continually provided pivotal guidance and issued key case decisions on hot topics in the field of intellectual property law.  Join our team of intellectual property attorneys in New York and New Jersey as they monitor the cases heard before these courts while offering strategic insight on intellectual property issues, including patent, copyright, trademark, trade dress and trade secret matters.
View Blog

Technology is No. 1 Priority for U.S. Copyright Office
On October 25, 2011, the U.S. Copyright Office released a paper outlining 17 policy priorities for the next two years. In this podcast, Gerry discusses the highlights of the Office’s plans, including its intention to study and develop an alternative process for resolving small copyright infringement claims, conduct a preliminary analysis of the issues surrounding mass book digitization, and provide analysis and support to Congress in its effort to address a number of issues.
Listen to the Podcast

Honors and Awards

  • Selected as a "Life Sciences Star" for his outstanding patent work within the inaugural edition of LMG Life Sciences 2012.


News

Quoted: "Lawyers Weigh In On Supreme Court’s Monsanto Ruling," Law360 (May 13, 2013)
Quoted: "Genetics Case has Huge Implications for N.J. Biotech Industry ," NJBiz (April 16, 2013)
Featured : "Will the New Patent Process Bring Hard Days for Inventors?," New Jersey Law Journal (March 19, 2013)
Featured : "Q&A With Fox Rothschild’s Gerry Norton ," Law360 (March 19, 2013 )
Gerard P. Norton, Ph.D. : Featured : "Quick Takes From IP Practitioners ," The National Law Journal (February 4, 2013)
Featured: "Ruling Offers a Challenge for Generics," NJBiz (September 17, 2012)
Featured: "Court Victory Helps Biotechs Better Define Patents ," NJ Biz (September 3, 2012)
Featured: "FDA Denies Watson Exclusivity on Diabetes Drug, Prompting Lawsuit," NJ Biz (August 16, 2012)
"Fox Rothschild Named a Top Patent and Trademark Law Firm by IP Today ," (May 7, 2012)
Featured: "U.S. Supreme Court Ruling Could Impact Diagnostics Firms," NJ Biz (March 21, 2012)
Featured: "Sequenom: Breadth of '540 Patent Creates Vulnerability to Validity Challenge Despite Strength of Claims," BioPharm Insight (March 2, 2012)
Quoted: "A Noteworthy DNA Patent Case for N.J. Biotechs," NJ Biz (September 19, 2011)
Quoted: "A Unique Approach to Repair Heart Muscle After Attack," NJ Biz (August 2011)
Featured: "Patent Reform Pending," NJBiz Spotlight (June 13, 2011)
Quoted: "Mascot Marketing," Pizza Today (March 1, 2011)
"Fox Rothschild Listed Among Top Trademark Firms Nationwide," (May 10, 2010)
Mentioned: "Law360 IP Editorial Advisory Board," Law360 (January 13, 2010)
Interviewed: "Patent Practice: A Shifting Landscape," Regional General Counsel, 197 N.J.L.J. 934 (September 29, 2009)
Quoted: "Michael Lewis and Gerry Norton of Fox Rothschild Quoted in InfoWord," InfoWorld (August 27, 2007)
Quoted: "Fox Rothschild’s Intellectual Property Group Provides Critical Services for Start-Ups in Delaware," (June 26, 2007)
Quoted: "Flu Conference Coverage," Center for Infectious Disease Research & Policy - University of Minnesota (June 19, 2007)
Quoted: "Norton of Fox Rothschild Offers Biotech Building Guidance," U.S. 1 Newspaper (March 14, 2007)


Publications

Co-author: "An Old Trap in the New "First-to-File" Era ,"
New Jersey Law Journal (January 2, 2013)
By: "U.S. House of Representatives Passes Patent Law Treaties Implementation Act,"
Intellectual Property Alert (December 2012)
By: "Federal Circuit Breathes Fire Into Biotechnology Patents and Holds Claims to Isolated DNA Molecules Patentable ,"
Intellectual Property Alert (August 2012)
 "Complying With New Conflict-Of-Interest Policy Regs,"
Law360 (June 19, 2012)
Author: "New Regulations for Conflict of Interest Policies: Are You Compliant?,"
Intellectual Property Alert (June 2012)
Co-author: "Technology is No. 1 Priority for U.S. Copyright Office,"
Intellectual Property Department Alert (October 2011)
Co-author: "When an Assignment Is Not an Assignment and Other Issues in Patent Due Diligence,"
Bloomberg Law Reports (August 24, 2011)
Co-author: "False Marking Statute Continues to Gain Ground in the Federal Circuit,"
Intellectual Property Department Alert (September 2010)
Co-author: "Time is Money,"
Corporate Counsel (May 1, 2009)
Co-author: "A Clear Patent Term Extension Provision: A Must in Any Biosimilars Legislation,"
New Jersey Law Journal (April 13, 2009)
Author: "CPU Maker Seeks Injunction Against Acer,"
Technology Law360 (July 11, 2008)
Co-author: "'KSR': Battle Between 2 Giant Forces In Focus,"
The National Law Journal (January 22, 2007)
Co-author: "Navigating Between Scylla and Charybdis of the Patent World,"
New Jersey Law Journal (December 27, 2006)
Co-author: "Tipping the Balance Back Toward Patent Owners,"
New Jersey Law Journal (March 2006)


Speaking Engagements/Events


(Speaker )
Presented by: Fox Rothschild
Princeton, NJ
December 6, 2012
AIA and the Changing Scope of Tech Transfer and Patentable Subject Matter
(Presenter)
Presented by: NJCCA’s 10th Annual Full Day CLE Conference
Whippany, NJ
September 21, 2012
Accelerating Pharmaceutical Growth through Open Innovation and Global Collaborations
(Presenter)
Presented by: Sino‐American Pharmaceutical Professionals Association
August 3-4, 2012
Maximizing the Value of Corporate Intellectual Property Assets Following Enactment of the America Invents Act
(Speaker)
Presented by: LES 2012 Spring Meeting
Boston, Mass.
May 16, 2012
Mayo v. Prometheus: Bringing "Fire" to Medical Diagnostics or Extinguishing It?
(Speaker)
Presented by: Fox Rothschild LLP
Webinar
May 11, 2012
INTA 134th Annual Meeting
(Host)
Presented by: Fox Rothschild LLP
Washington, DC
May 6, 2012
The Impact of Patent Reform on Technology Transfer
(Speaker)
Presented by: Licensing Executives Society Chapter Meeting
New York, NY
March 1, 2012
Nonprofit Research Institutions and the America Invents Act – What You Need To Know
(Speaker)
Presented by: Fox Rothschild LLP
Webinar
February 22, 2012
Maximizing the Value of Corporate Intellectual Property Assets Following Enactment of the "America Invents Act"
(Speaker)
Webinar
January 20, 2012
FashInvest Capital Conference
(Presenter)
New York, NY
December 7, 2011
What Every Faculty Member Needs To Know About Recent Changes In US Patent Law
(Presenter)
Presented by: University of Medicine & Dentistry of New Jersey
Newark, NJ
October 27, 2011
Lessons learned from the M&A patch
(Panelist)
Presented by: Greater Philadelphia Senior Executive Group - Subgroup Meeting
Malvern, PA
January 7, 2009
Funding Early-Stage Bioscience Companies: Do You Have What It Takes?
(Speaker)
Presented by: Biotech 2007
Philadelphia, PA
October 8-9, 2007
Barriers to Entry: The U.S. Patent Landscape for Foreign Businesses
(Co-presenter)
Presented by: National Tsing Hua University
Hsinchu, Taiwan
September 11, 2007