Image: Merri C. Moken

Merri C. Moken

Of Counsel, Litigation Department

New York

Phone: 1(212) 318-6069
Fax: 1(212) 303-7069

Overview

Merri C. Moken, holding more than 18 years of intellectual property and commercial experience, is a member of the Intellectual Property and Litigation practice of Paul Hastings, based in the firm's New York office. Her broad-based litigation practice includes patent, trademark, and commercial litigation in the biotech, regenerative medicine, chemical, and pharmaceutical fields, as well as the mechanical and electrical arts. She has appeared before federal district and appellate courts, and the U.S. International Trade Commission (USITC). Ms. Moken also represents numerous high-profile clients in internal or third-party investigations, related contract negotiations, and media-related efforts.

 

Patent, Trademark, and Commercial Litigation. Ms. Moken has served as lead counsel in a number of patent and trademark infringement and commercial litigations and has successfully argued claim constructions and numerous motions, including for injunctive relief, summary judgment, and pretrial motions at the U.S. District Court level. Ms. Moken represents both plaintiffs and defendants concerning patent infringement, validity, and enforceability. She also represents internationally-based clients and has served as counsel in both domestic and foreign proceedings. Her litigation practice relies on her knowledge of diverse technologies, a thoughtful and consider-all-angles approach, and her command of the deposition room and courtroom.  She has been successful through both jury and bench trials. Ms. Moken's extensive experience in Abbreviated New Drug Application (ANDA) litigation has been particularly advantageous for her pharmaceutical clients. She has both enforced and defended against the assertion of patent rights with respect to a wide array of scientific disciplines. She also has litigated and counseled clients in the medical device arena, including with respect to drug-eluting stents, transdermal drug delivery systems, biologic and synthetic surgical meshes, and revolutionary hip and knee replacement technology. In addition, Ms. Moken has an extensive knowledge of engineering technologies, including in the communication device, automotive, digital surveillance, Internet, and cable industries.

Client Counseling Related to IP and Corporate Strategy. Ms. Moken’s practice includes client counseling, due diligence, licensing, trade secrets, unfair competition, dispute resolution, opinion work, contract-related matters and strategy for defining and achieving intellectual property and business goals. Her portfolio evaluations of M&A targets worldwide have included all forms of intellectual property, particularly in the chemical, biologics, and medical device spaces. Ms. Moken's licensing work also has largely focused in these spaces internationally, and has included chimeric antigen receptor and other antibody technologies, as well as the use of machine-learning solutions in the diagnosis and treatment of cancer. Prior to her legal career, Ms. Moken gained practical work experience at several pharmaceutical companies, providing her with a real-world perspective and a significant understanding of underlying technologies. This experience gives her valuable insight into managing both the business and intellectual property goals of her clients, as well as providing creative solutions to help them reach those goals. Ms. Moken also spent several years performing independent research, discovering that disinfectants induce the expression of the mar gene, conferring multiple antibiotic resistance in bacteria. As an undergraduate at Princeton University, her scientific research and thesis focused on metal-assisted assembly of multi-helix protein bundles.

Trademark and Copyright Strategies. Trademark strategies are a significant component of Ms. Moken’s intellectual property and commercial efforts.  She works to help clients build their brands, and most critically, protect those brands.  Ms. Moken manages portfolios comprising hundreds of trademarks, and further manages world-wide teams of trademark specialists in advising on and executing the strategies she devises for building those portfolios and enforcing those marks. Ms. Moken’s enforcement efforts also include opposition proceedings, federal litigation, inclusive of procuring ex-parte injunctive relief, and domain-related proceedings, such as UDRP arbitrations.

Recognitions

  • Named a Rising Star, New York Metro Super Lawyers magazine, 2014–2020
  • Named Most Trusted Pharmaceutical Litigation Specialist—New York, Global Health & Pharma magazine, 2017
  • Named Pharmaceutical Patent Litigator of the Year, Women in Health Awards, Global Health & Pharma magazine, 2017
  • Recipient of Acquisition International’s Global Excellence Award, Best for Healthcare Device Law - New Zealand, 2017
  • Named Worldwide Law Review's 2017 Healthcare, Life Sciences & Pharmaceutical Awards, Excellence in Medical Device Patent Litigation, 2017

Education

  • Boston University School of Law, J.D., 2004 (High honors in concentration of litigation and dispute resolution)
  • Princeton University, B.A. Chemistry, 2001

Representations

  • Representing an international biotechnology company, BioNTech, which filed the world's first FDA application for a Covid-19 vaccine and an mRNA drug product in patent litigation brought by Allele Biotechnology and Pharmaceuticals
  • Representing a large healthcare company in federal court re reproductive and women’s health technology. Seeking declaratory judgment of patent noninfringement and of plaintiff’s ownership of patents; asserting breach of contract, fraudulent inducement, negligent misrepresentation, breach of implied covenant of good faith and fair dealing
  • Successfully defended large healthcare company in federal court against claims of breach of contract, false association and false advertising in violation of the Lanham Act, infringement of personality rights, and unfair business practices in violation of WA Consumer Protection Act
  • Won summary judgment in federal litigation for defendants Curved Light Productions LLC d/b/a/ Startalk and astrophysicist Neil DeGrasse Tyson in copyright infringement , also comprising claims of contributory and vicarious infringement, removal of copyright management information, fraudulent concealment and breach of contract; Successfully negotiated additional favorable terms of resolution 
  • Representing international, renown clothing company in enforcing trademark, trade dress and copyright rights against infringers, counterfeiters, and cybersquatters, including through numerous UDRP arbitration proceedings
  • Represented Digital Smile Design, a company revolutionizing the dental industry, regarding assertions of trademark infringement and breach of contract, and asserted claims of trademark infringement, breach of contract and other commercial claims against several related entities operating in the area of cosmetic dentistry; Filed and coordinated trademark oppositions in various jurisdictions and assisted with trademark prosecution in Canada and the United States; Successfully settled the matter and negotiated favorable trademark-related terms.
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  • Represented FSA Store, the largest online marketplace for FSA-eligible products, against online retail infringer of the marketplace’s trademarks in a litigation filed in the Southern District of New York; The litigation included causes of action of trademark infringement, unfair competition, false advertising all under the Lanham Act, as well as deceptive practices and other causes of action under New York law; Successfully obtained ex-parte temporary restraining order, without bond, and negotiated settlement in favor of the online marketplace.
  • Successfully Represented Center for Vein Restoration a nationally recognized leader in the treatment of varicose and spider veins in federal litigation against trademark infringers, Apex Vascular Center and Dr. Anuj Shah, recently operating numerous offices in the New Jersey vicinity of CVR’s nationwide network; Causes of action include false designation of origin under the Lanham Act, unfair competition under N.J.S.A. §56.4-1, and trademark infringement, unfair competition, and tortious interference with prospective economic advantage under New Jersey common law; successfully procured ex-parte temporary restraining order, without bond. Negotiated settlement for CVR while restraints were extended by the Court, and procured right to review and veto any proposed rebranding by defendants
  • Representing a global multi-brand restaurant company with respect to trademark efforts, including in advertising
  • Representing a growing company in the apparel industry with respect to its global trademark portfolio, including prosecution and enforcement of trademarks
  • Representing a consumer goods company specializing in toys, furniture, clothing and other educational tools with respect to global trademark prosecution and enforcement and negotiations, including with regarding to counterfeiters and copy-catters, employment and IP-related agreements, corporate and marketing strategies, pre-litigation efforts, and data-privacy concerns
  • Representing a luxury street apparel brand founded by a renowned artist in connection with his one-of-a-kind designer apparel as well as protecting and enforcing the intellectual property related thereto
  • Representing a pharmaceutical company focused on the treatment of cancer, in connection with trademark efforts
  • Represented a world-renowned and highly-awarded, luxury boutique hotel in strategic trademark matters and efforts to enforce its trademark rights against infringing owner of the domain including through a UDRP arbitration to transfer the infringing domain; negotiated settlement and defendant’s abandonment of infringing mark and domain, and procured trademark registrations on principal as opposed to supplemental register
  • Represented the accused trademark-infringer-developers of the premium, ultra-luxury New York condominium and separate art gallery, in dispute with a renowned museum and trust concerning trademark use, and negotiated favorable settlement
  • Represented Avaya Inc., in BlackBerry’s assertion of infringement of eight patents, including with respect to encoding and decoding of audio and video data and patents purported to cover the industry standards, H.265 and G.722.2
  • Represented a major consumer finance company in multiple litigations in the South Carolina Court of Common Pleas 2012 asserting tortious interference, misappropriation of the finance company’s confidential and trade secret information, conversion and unjust enrichment, as well as a litigation asserting quid pro quo claims
  • Represented a French pharmaceutical company in enforcing patents concerning I.V. solutions of acetaminophen against a drug development CRO.
  • Defended a global chemical company against infringement claims relating to patented asphalt technology and chemical additives. Successfully argued claim construction and obtained favorable settlement prior to trial
  • Defended a multinational engineering and technology company in an ITC enforcement action in which an intelligent video software provider asserted infringement of six patents pertaining to video analytics and computer vision; obtained favorable settlement prior to issuance of initial determination
  • Represented plaintiff a global chemical company in federal court with regard to trade secret misappropriation by former employee, misappropriation of confidential information and breach of contract claims; successfully settled litigation prior to trial
  • Represented Hotwell U.S., LLC in matters before the Southern District of Texas, the District Court for Harris County, Texas, and a bankruptcy proceeding in Eisenstadt Regional Court, Austria; Successfully obtained ex parte TRO, and maintained TRO at full hearing, against accused trademark infringer Hotwell Logging SRL; Secured plaintiff’s ownership of the Hotwell marks, stymied use of the marks by other Hotwell entities worldwide, and favorably settled plaintiff’s claims as creditor in Texas state court and Austrian proceeding
  • Represented the largest international cargo airline against Aero Acquisitions concerning trademark dispute and infringement issues with the cargo airline, prompted by Aero’s unauthorized use in commerce of EIAC’s mark
  • Represented Canadian-based, high-end fashion designer with cease and desist letter and negotiations with U.S.-based distributor who was infringing designer’s trademarks after termination of the distribution relationship; resolved in favor of fashion designer

Engagement & Publications

  • Co-chaired and served as moderator for the first ever Licensing Executives Society International Younger Members Congress Mini-Conference on April 21, 2022 which focused on in-house an tech transfer perspectives in licensing in the healthcare industry. The panel included speakers from GE Licensing and Howard Hughes Medical Institute.
  • Organized and led Roundtables at the 2021 Annual Meeting of the Licensing Executives Society
  • Led Roundtable entitled, "Trade Secrets in a Work-from-Home World" at the 2020 Annual Meeting of the Licensing Executives Society - October 20, 2020
  • Trade Secrets presentation at the Paul Hastings HealthTech Conference during the 2020 JP Morgan Healthcare Conference in San Francisco, CA – January 16, 2020
  • Led Roundtable entitled, "Trade Secret Protection, Valuation and Licensing Challenges" at the 2019 Annual Meeting of the Licensing Executives Society - October 22, 2019
  • Led Panel with colleagues from ASM International, Hewlett Packard Enterprise, USC Steven Center for Innovation, and Pellegrino and Associates LLC, entitled, "Leveling the Playing Field in Your Favor: Using Patent Analytics in Licensing" at the 2019 Annual Meeting of the Licensing Executives Society - October 23, 2019
  • Presented on "Core Principles in Successful Trade Secrets Strategy"
    THE IP STRATEGY SUMMIT SERIES: NEW YORK, CENTERFORCE / NOVEMBER 13, 2018
  • Presented, "A Primer on and Interesting Developments in U.S. Intellectual Property Law"
    SPONSORED BY THE AMERICAN INTERNATIONAL EDUCATION AND EXCHANGE CENTER / August 29, 2017
  • Presented a live class, "Understanding the Defend Trade Secrets Act of 2016"
    LAWLINE WEBINAR / October 27, 2016

Involvement

  • Licensing Executives Society, member of planning committee for the Annual Meeting for 2018-2022, the 2020 YMC Annual Licensing Program (Virtual), the Younger Members’ Council, and various other committees
  • Board of Directors, Metropolitan Opera Guild and member of Development Committee
  • Board of Directors, Opera Lafayette and elected to the Executive Committee and Audit Committee
  • Board of New York Chapter of Questers, a national organization focused on art, architecture, antiques, and historic preservation

Practice Areas

Intellectual Property
Litigation

Languages

Anglais

Admissions

New York Bar
Massachusetts Bar

Education

Boston University School of Law, J.D. 2004
Princeton University, A.B. 2001

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