Robert R. Baron, Jr.

Partner

baron@ballardspahr.com
Tel 215.864.8335
Fax 215.864.8999
Philadelphia

Robert Baron is Practice Leader of Ballard Spahr's Intellectual Property Litigation Group. He is a partner in the Litigation and Intellectual Property Departments and the former Vice Chair of the Intellectual Property Department. He prosecutes and defends cases at the trial and appellate levels involving patent, copyright, trademark, and trade dress infringement; the theft of trade secrets; breaches of contract; licensing disputes; the breakdown of commercial acquisitions and related investments; unfair competition; partnership disputes; and business terminations.

Rob has litigated and tried cases, including injunction actions, before state and federal courts and arbitration panels throughout the country. He represents pharmaceutical and biotech companies, software developers, chemical companies, financial institutions, manufacturers, aerospace companies, publishers, universities, retailers, franchise systems and distributors, accounting firms, real estate funds and partnerships, and charitable organizations.

Chambers USA: America's Leading Lawyers for Business, a directory built primarily on client and peer interviews, has named Rob a leader in the field of intellectual property law every year since 2012. Chambers notes that clients praise Rob as a "brilliant strategist who anticipates future issues and navigates around them." IAM Patent 1000– The World's Leading Patent Professionals, one of the world's most extensive guides to leading private practice patent professionals, has ranked him as a leading patent litigator annually since 2013, citing him as an "extraordinarily successful litigator." In addition, Managing Intellectual Property magazine recognizes him as one of the "IP Stars" in Pennsylvania since 2013, this year referencing both his patent and trademark work for clients. He also has been named a "Pennsylvania Super Lawyer" from 2004 through 2016 for both Intellectual Property and Business Litigation.

Rob served as the Chair of the Business Litigation Committee of the Philadelphia Bar Association. He serves as a Judge Pro Tem for the Commerce Litigation Division of the Philadelphia County Court of Common Pleas to assist the court when asked in the management of settlement discussions and mediations.

Rob writes and speaks nationally on a variety of intellectual property and litigation topics. In addition, he is active in his community, serving on the boards of a number of nonprofit organizations.

Representative Matters

  • Lead trial lawyer defending a global diagnostic company against one of the world's largest clinical lab companies, in a case about personalized health care. Rob and the Ballard team successfully dismissed before discovery the plaintiff's patent infringement claims related to the detection of genetic mutations, on the ground that the patents were "laws of nature." The case also involved a critical dispute relating to whether its client marketed products outside the licensed field. The parties reached a confidential settlement.
  • Lead trial lawyer for a DNA sequencing company in patent litigation in the District of Delaware and the Northern District of California, as well as proceedings in Germany and before the Patent Trial and Appeal Board of the U.S. Patent and Trademark Office relating to next generation DNA sequencing technology. The parties recently settled these disputes in an omnibus settlement.
  • Lead trial counsel for Kenexa and IBM and its customers in numerous patent infringement cases filed in the Eastern District of Texas related to career locator technology. The cases settled successfully after mediation that included Rob presenting to defendants IBM's proposed opening statement for the pending first trial.
  • Lead trial counsel for Spark Therapeutics in trademark infringement litigation against one of the world's largest pharmaceutical companies. After filing preliminary injunction papers and a court-ordered mediation, the other side stopped its offending use of the trademarks in question, and the parties thereafter settled.
  • Lead trial counsel for CSL Behring, a global biopharmaceutical company, in patent infringement litigation brought in the Eastern District of Texas by Novartis Vaccine and Diagnostics and Novo Nordisk for alleged infringement of a patent alleged to be directed to certain recombinant Factor VIII protein technology.
  • Lead counsel for Pioneer Hi-Bred, which was a victim of international trade secret theft in a well-publicized case reported on in many media outlets. Roband the Ballard team worked with the Justice Department and the U.S. Attorney's office in the Southern District of Iowa in the United States' prosecution of the criminal case against Chinese nationals arrested for stealing secret modified corn seeds. The case resulted in a defendant pleading guilty.
  • Lead trial counsel for Auxilium Pharmaceuticals in courts in Pennsylvania and New York regarding Auxilium's right to control development of a pharmaceutical licensed from another, as well as regarding Auxilium's related IP rights. After a successful TRO proceeding and consent judgment in one case, and further litigation in the others, the parties settled via an amended license.
  • Lead counsel for CSL Behring in a royalty dispute with a licensor regarding a therapy used to suppress viral infection in organ transplant patients. The licensor dismissed the case against CSL without prejudice.
  • Lead counsel for SAP and its subsidiary Sybase in a patent infringement case brought in the Eastern District of Texas by QualiQode regarding workflow software patents; the case settled favorably in four months.
  • Trial counsel for the University of Iowa in cases against two of the world's largest biotech companies for infringement of patents directed to a CMV promoter/enhancer, a fundamental tool used in the biotech industry.
  • Led cases in state and federal courts on behalf of a global biopharmaceutical company against a competitor for breach of an important supply agreement and for patent infringement, favorably settling the case before trial via the parties agreeing to a new multi-billion dollar supply agreement for an extended period of time.
  • Represented a leading global producer of mechanical pipe joining and fire protection systems as trial counsel to bring an injunction action to stop one of its senior engineers from undertaking a similar position with a competitor; successfully negotiated a favorable settlement for our client.
  • Winning trial counsel in an arbitration concerning complex post-closing adjustments arising from a client's purchase of a multimillion-dollar food-distribution business.
  • Served on the trial team that won an important arbitration arising from the termination of a co-promotion agreement between major pharmaceutical companies for a leading cholesterol drug.
  • Trial counsel for Houghton Mifflin Harcourt in a succession of copyright litigation related to the alleged use of photographs in textbooks.
  • Counsel for several large aerospace companies in trade secret litigation.
  • Served as trial counsel for a leading developer of document management and workflow software, prosecuting claims for trade secret misappropriation and breach of an important software license against another, larger technology company; the case favorably settled days before the trial was to begin.
  • Served on the team that represented a well-known media corporation in various complex disputes against its principal competitor throughout the country, including an appeal before the U.S. Court of Appeals for the Federal Circuit related to the ownership of a trademark, and a publicized trade secret case in Los Angeles Superior Court that was favorably settled during jury selection.
  • Defended a major accounting firm in connection with its decision not to pursue private equity participation in a proposed roll-up IPO of court-reporting companies.
  • Represented a variety of clients, including a university health care system and a pharmaceutical company, in the investigation and prosecution of civil fraud cases against former employees.
  • Handled the trademark, copyright, and right of publicity work on behalf of the players associations for the U.S. Women's National Team and the Women's United Soccer Association.
  • Defended a real estate investment fund in tax litigation and an indemnity dispute related to the purchase and sale of an office building in Philadelphia.
  • Enforced franchisee terminations in Delaware and Long Island, New York, on behalf of a national franchise system.

Rob is a member of the Board of Trustees of The Philadelphia History Museum at the Atwater Kent, where he was formerly Chair of the Governance Committee. He serves on The Arts & Business Council of the Philadelphia Chamber of Commerce. Rob also served on the board of the Philadelphia Chapter of the American Jewish Committee. He participated in Leadership, Inc., Philadelphia's premier leadership-training organization, and in the Federal Bureau of Investigation's Community Partnership Program.

Rob is a graduate of Brown University (B.A. 1988) and The George Washington University Law School, where he graduated with honors, was a member of the George Washington Journal of International Law and Economics, and was selected as a Dean's Fellow for Legal Research and Writing.


Recognition & Accomplishments

Chambers USA: America's Leading Lawyers for Business, intellectual property law, 2012-2016

IAM Patent 1000 – The World's Leading Patent Professionals, patent litigation, annually since 2013

Recognized as one of "IP Stars" in Pennsylvania by Managing Intellectual Property magazine, 2013-2016

Named a Pennsylvania Super Lawyer, 2004-2016

Philadelphia Business Journal, 2003 recipient of "40 Under 40" award, which recognizes 40 individuals under age 40 who have become leaders in their respective professional fields and communities

AV Peer Review Rating, Martindale-Hubbell

Professional Activities

Philadelphia Bar Association
Past Chair, Business Litigation Committee

Philadelphia County Court of Common Pleas
Judge Pro Tem, Commerce Litigation Division, assisting the court when asked in the management of settlement discussions and mediations

University of Pennsylvania Inn of Court, Barrister (2002-2004)

Participant in Leadership, Inc., Philadelphia's premier leadership-training organization, and in the Federal Bureau of Investigation's Community Partnership Program

Publications

Co-author, "Federal Circuit Narrows Availability of CBM Patent Review," Ballard Spahr Alert, November 22, 2016

Co-author, "Pa. Superior Court Affirms Punitive Damage Award in Breach of Noncompetition Agreement," Ballard Spahr Alert, September 21, 2016

Co-author, "The Defend Trade Secrets Act Signed into Law," Ballard Spahr Alert, May 11, 2016

Co-author, "President Obama Signs Defend Trade Secrets Act into Law," Ballard Spahr Alert, May 11, 2016

Co-author, "Amended PTAB Rules Give Patent Owners a Boost," Ballard Spahr Alert, April 1, 2016

Co-author, "Pharmaceutical Companies Get Off-Label Marketing Victory," Ballard Spahr Alert, August 11, 2015

Co-author, "Supreme Court Upholds Ban on Royalties after Licensed Patent Expires," Ballard Spahr Alert, June 23, 2015

Co-author, "Federal Circuit Sides with USPTO in First Review of AIA Final Decision," Ballard Spahr Alert, February 5, 2015

Co-author, "U.S. Supreme Court Delivers Important Ruling in Teva v. Sandoz Case," Ballard Spahr Alert, January 21, 2015

Co-author, "Federal Court Ruling in Pa. Narrows Computer Fraud and Abuse Act," Ballard Spahr Alert, March 25, 2014

Co-author, "Third Circuit Clarifies Time Limits for Joint Authorship Copyright Claims, and Bars District Courts from Canceling Copyright Registrations," Ballard Spahr Alert, January 31, 2014

Co-author, Biopatent Law: European vs. US Patent Law, SpringerBriefs in Biotech Patents, 2014 edition

Co-author, "Inter Partes Review: It's No Party for University Patent Owners," Biotechnology Law Report, April 2014, 33(2): 52-53

Co-author, "USPTO Clarifies Standard for Review of Financial Services Patents," Ballard Spahr Alert, November 5, 2013

Co-author, "Tell it to the Judge, Federal Circuit Rules: The Judge—Not Jury—Decides Threshold Issue of Willful Infringement in Patent Cases," Ballard Spahr Alert, June 18, 2012

Co-author, "Computer Fraud and Abuse Act Applies Only to Hackers, Not Thieving Workers, 9th Circuit Rules," Ballard Spahr Alert, April 13, 2012

Co-author, "Second Circuit Ruling Affects Copyrighted Works Produced Abroad," Ballard Spahr Alert, August 19, 2011

Co-author, "Seventh Circuit Ruling Affects State, State University Challenges and Appeals of TTAB Decisions," Ballard Spahr Alert, August 12, 2011

Co-author, "Supreme Court Tightens Test for Patent Infringement by Inducement," Ballard Spahr Alert, June 1, 2011

Co-author, "Licenses Do Not Automatically Transfer in the Merger or Sale of a Business," Ballard Spahr Alert, October 2, 2009

Co-author, "Watch that Text: Unsolicited Text Messages Can Be Unlawful under Telephone Consumer Protection Act," Ballard Spahr Alert, June 24, 2009

"A Trade Secrets Practice with Extraordinary Bench Strength and a Strong Sense of Economic Trends," a Q&A with the editor of The Metropolitan Corporate Counsel, September 2008

Co-author, "Justice Department Continues to Target IP Crimes—Implications of the Proposed Intellectual Property Protection Act of 2007," Ballard Spahr Alert, June 4, 2007

Co-author, "Trade Secrets and Restrictive Covenants: Keep Your Secrets Safe and Your Employees Honest," 10th Annual Employment Law Institute (Volume II), Pennsylvania Bar Institute

Co-author, "Intellectual Property Basics and How Software Licensing Interplays with IP Concepts," chapter one of Software Licensing, Pennsylvania Bar Institute, 2001

"Metatags Raise Serious Legal Issues," New York Law Journal, September 14, 1998

"Invisible Ink and Unfair Competition: Metatags and the Internet," Ballard Spahr Intellectual Property Newsletter, Spring 1998

"NSI Revises Its Domain Name Dispute Resolution Policy, Again," Ballard Spahr Intellectual Property Newsletter, Spring 1998

Speaking Engagements

"Biosimilars: An Examination of the Complexities of Exclusivity and Best Practices for Protecting IP for Biologics," Ballard Spahr CLE program, Philadelphia, April 29, 2015

Panelist, Atlanta Bar Association CLE, IP SpringPosium, April 10-11, 2015

"A New Battlefield in Patent Litigation: Post-Grant Review Procedures before the Patent Trial and Appeal Board," Ballard Spahr CLE program, Philadelphia, May 7, 2014

"Post-Grant Proceedings Under the AIA: How Do They Affect My University?" AUTM Professional Development Program, March 4, 2014

"Demystifying Patents: An Overview of the Basics and Current Issues Facing Medical Technologies," The Ohio State University College of Medicine, May 9, 2013

"Where Have All the VCs Gone? Why Universities are Stepping in as Venture Investors and the Pitfalls to Avoid," Association of University Technology Managers, February 28, 2013

"Reap the Benefits of a Strong Post-License Monitoring System," Technology Transfer Tactics webinar, November 29, 2011

Course planner and panelist, "Attorney-Client Privilege in the Corporate Environment: Practical Approaches and Recent Developments," Philadelphia Bar Association 2011 Philadelphia Bench Bar Conference, October 14, 2011

Panelist, "The Who, When, Why and How of Royalty Auditing," Technology Transfer Tactics webinar, May 25, 2011

"Deciding When to Enforce Your IP Rights," AUTM 2010 Eastern Regional Meeting, Atlanta, June 8, 2010

Moderator, "State of the Philadelphia Commerce Court Program," Philadelphia Bar Association program, January 19, 2010 (with Hon. D. Webster Keogh, Hon. William Manfredi, Hon. Albert Sheppard, and Hon. Mark Bernstein)

"Trade Secrets and the Inevitable Disclosure Doctrine—Practical Strategies for Litigation and Settlement," Business Law Section of the Philadelphia Bar Association CLE seminar, December 9, 2009 (with Hon. Henry S. Perkin)

"Navigating Your Way Through Commerce Court," Philadelphia Bar Association Annual Bench Bar & Conference, October 23, 2009

"The Impact of Twombly and Tellabs on Litigation Strategy—Plaintiff and Defense Perspectives," Philadelphia Bar Association Federal Courts Committee, May 21, 2008

Community Activities

Rob is an active community leader. He is the immediate past Co-President of the Board of Directors of Operation Understanding, a nonprofit organization devoted to improving race relations through youth education, travel, and training. Rob participated in Leadership, Inc., Philadelphia's premier leadership-training organization, and in the Federal Bureau of Investigation's Community Partnership Program.

Board Memberships

The Philadelphia History Museum at the Atwater Kent, Board of Trustees
Member; Past Chair, Governance Committee

The Arts & Business Council, Philadelphia Chamber of Commerce

American Jewish Committee, Philadelphia Chapter
Past Board Member

Operation Understanding, Board of Advisors
Past Co-President of the Board

George Washington University Law School (J.D. 1992, with honors)
Member, George Washington Journal of International Law and Economics; Dean's Fellow for Legal Research and Writing

Brown University (B.A. 1988)

New Jersey

Pennsylvania

U.S. District Court for the Eastern District of Pennsylvania

U.S. District Court for the District of New Jersey

U.S. District Court for the District of Colorado

U.S. Court of Appeals for the Third Circuit

U.S. Court of Appeals for the Federal Circuit