Robert Schaffer

Robert Schaffer brings 30-plus years of experience to IP counseling, licensing and dispute resolution. His particular strengths are practical focus, deep technical knowledge, persuasive writing and rapid response. Bob uses creative problem-solving to achieve compelling, effective results for his clients.

Bob advises pharmaceutical, biotech and software clients in high-stakes matters, including mission-critical patent procurement, transactional matters, due diligence, inter partes review, district court cases and Federal Circuit appeals.

His work includes complex software patents and development agreements, patent portfolios for Orange Book drugs, ANDA litigations, biotech patent cases, and international disputes. A common thread throughout his work is integrity – in both senses: genuine sincerity and determined coherence.

Bob’s work in biotech and pharmaceuticals relates to small-molecule drugs, biologic therapies, vaccines and formulation design, particularly for pain management; neurological, autoimmune and cardiac disorders; antivirals; antibiotics; cancer; HIV; malaria; and diabetes.

He has worked extensively in directed evolution of genes and proteins, combinatorial chemistry, rational drug design, nanotechnology, microfluidic devices, genomics and proteomics, genetically engineered antigens and antibodies, therapeutic and industrial enzymes, personalized medicine, and bioinformatics.

For software clients, Bob has advised with respect to financial transaction software, digital rights management, streaming and data compression technologies, content delivery, distributed networking, caching and memory management, security and encryption, network diagnostics, software certificates, digital watermarking, antivirus software, document management software, and graphical user interfaces.

Representative Matters :

• Successfully defended multiple inter partes review proceedings brought by generic drug companies against a client’s Orange Book patents covering a billion-dollar drug formulation for treating ADHD.
• Successfully prosecuted an extensive family of key Orange Book patents for the flagship abuse-resistant pain product of a multibillion-dollar pharmaceutical company.
• Successfully represented a maker of industrial enzymes in patent litigation involving genetically modified enzymes. Was the first U.S. attorney to appear pro hac vice as co-counsel in an Australian court.
• Counseled a major pharmaceutical company in its due diligence for the acquisition of a company focused on rare diseases. Vetted freedom-to-operate and patent exclusivity for more than 20 commercial and pipeline products.
• Protected a patentee in a Federal Circuit appeal from an adverse summary judgment of noninfringement, leading to a favorable settlement, including an agreement to vacate the decision below and payment of damages to the client.
• Counseled a major financial institution in connection with patents concerning imaging electronic checks and online banking transactions.

Professional and Community Involvement :

• Member, Council for the Arts at MIT
• Member, Advisory Board for Dancers Responding to AIDS (Broadway Cares/Equity Fights AIDS)
• Former President, Complexions Contemporary Ballet
• Former Member, Leadership Council, Roundabout Theatre Co.

EDUCATION :

• New York Law School, 1984
• New York University Tisch School of the Arts, M.F.A., 1983
• Massachusetts Institute of Technology, S.B., 1980

BAR ADMISSIONS : New York, Connecticut, U.S. Patent and Trademark Office

COURT ADMISSIONS :

• U.S. Court of Appeals for the Federal Circuit
• U.S. District Court for the Southern District of New York
• U.S. District Court for the Eastern District of New York