Merri C. Moken is of counsel in the Intellectual Property and Litigation practice of Paul Hastings, and is based in the firm's New York office. Her broad-based patent litigation practice includes 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 represents both plaintiffs and defendants concerning patent infringement, validity and enforceability, as well as trade secret misappropriation and other contract-related matters. She also represents internationally-based clients and has served as counsel in both domestic and foreign proceedings. Her practice includes client counseling, due diligence, licensing, trade secrets, unfair competition, dispute resolution, opinion work and strategy for 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.
Ms. Moken has served as lead counsel in a number of patent and trademark infringement 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. 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.
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. Ms. Moken further advises clients with respect to contractual matters and IP strategy, rights, and protection, in addition to representing them in both commercial and IP litigation.
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.
Accolades and Recognitions
Licensing International, "U.S. Supreme Court Rules on Trademark Case," April 26, 2020 - Merri Moken was quoted regarding the Supreme Court's decision in Romag Fasteners, Inc. v. Fossil, Inc. regarding trademarks and the Lanham Act.
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
Boston University School of Law, J.D., 2004 (High honors in concentration of litigation and dispute resolution)
Princeton University, B.A. Chemistry, 2001
Led Roundtable entitled, "Trade Secrets in a Work-from-Home World " at the 2020 Annual Meeting of the Licensing Executives Society - October 20, 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
Core Principles in Successful Trade Secrets StrategyTHE IP STRATEGY SUMMIT SERIES: NEW YORK, CENTERFORCE / NOVEMBER 13, 2018
A Primer on and Interesting Developments in U.S. Intellectual Property LawSPONSORED BY THE AMERICAN INTERNATIONAL EDUCATION AND EXCHANGE CENTER / AUGUST 29, 2017
Understanding the Defend Trade Secrets Act of 2016LAWLINE WEBINAR / OCTOBER 27, 2016
Licensing Executives Society, member of planning committee for the Annual Meeting for 2019, the Younger Members' Council, and various other committees
Board of Directors, Metropolitan Opera Guild
Represented BioNTech SE, which filed the world's first FDA application for a Covid-19 vaccine and an mRNA drug product, in a patent infringement litigation brought by Allele BioTechnology and Pharmaceuticals, Inc.
Won summary judgment in federal litigation for Curved Light Productions LLC d/b/a/ Startalk and Neil DeGrasse Tyson in copyright infringement litigation.
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 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 TMX Finance LLC and Kim Merritt in multiple litigations in the South Carolina Court of Common Pleas 2012 asserting tortious interference, misappropriation of TMX's confidential and trade secret information, conversion and unjust enrichment, as well as a litigation asserting quid pro quo claims against TMX.
Represented SCR Pharmatop in enforcing patents concerning I.V. solutions of acetaminophen against Innopharma Licensing LLC and Innopharma Inc.
Defended Akzo Nobel Surface Chemistry LLC against infringement claims relating to patented asphalt technology and chemical additives. Successfully argued claim construction and obtained favorable settlement prior to trial.
Represented plaintiff Akzo Nobel Surface Chemistry LLC 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.
Defended Bosch in ObjectVideo's ITC enforcement action, in which ObjectVideo asserted infringement of six patents pertaining to video analytics and computer vision; obtained favorable settlement prior to issuance of initial determination.