Marc S. Segal

Counsel

segalm@ballardspahr.com
Tel 215.864.8843
Fax 215.864.8999
Philadelphia

Marc S. Segal is a member of the biotechnology and pharmaceutical teams in the firm's Patents Group. Marc's practice encompasses the spectrum of intellectual property law, including litigation, patent prosecution, counseling, and licensing.

Marc is an experienced litigator in matters involving patents, trademarks, copyrights, licensing disputes, and trade secrets, for clients in industries such as pharmaceuticals, medical devices, drug delivery systems, and computer hardware and software. Marc also has experience defending pharmaceutical companies from antitrust claims alleging baseless patent litigation under the Hatch-Waxman Act. He prepares and prosecutes patents for clients in the biotechnology, medical device, and pharmaceutical industries. He also prepares non-infringement, invalidity, and freedom-to-operate opinions, and negotiates and drafts license agreements.

Before entering private practice, Marc worked in biopharmaceutical manufacturing and development at SmithKline Beecham.

Representative Matters

  • Represent a DNA sequencing company in litigation in the District of Delaware, and in related inter partes review proceedings before the Patent Trial and Appeal Board of the U.S. Patent and Trademark Office, in which we are challenging the validity of various patents asserted against our client in the Delaware litigation
  • Defended a global biopharmaceutical company in patent infringement litigation brought in the Eastern District of Texas for alleged infringement of a patent directed to recombinant DNA technology
  • Defended a global pharmaceutical company in complex patent antitrust litigation alleging anticompetitive conduct to suppress generic competition by filing allegedly baseless patent infringement actions
  • Represented a pharmaceutical company in litigation in courts in Pennsylvania and New York regarding an inventorship dispute and the right to control development of an in-licensed pharmaceutical product
  • Obtained a jury verdict of willful infringement and an award of attorney fees on behalf of a patentee client involving a patent directed to a personal computer peripheral
  • Represented a U.K. computer company in a successful litigation and licensing campaign by asserting a patent relating to power management technology against more than 30 companies in the computer industry
  • Represented a global packaging company in a utility and design patent case involving a successful appeal to the Federal Circuit resulting in a favorable license
  • Defended a gaming company from charges of infringement relating to a communication protocol used in distributed electronic games
  • Defended a pharmaceutical manufacturing company in a patent and licensing dispute involving gelatin-free soft capsule technology

Professional Activities

American Bar Association

American Intellectual Property Law Association

Philadelphia Intellectual Property Law Association

Publications

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

Co-author, "Supreme Court Limits Defenses to Induced Infringement," Ballard Spahr Alert, May 27, 2015

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

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

University of Pennsylvania Law School (J.D. 1999, magna cum laude)
Member, Moot Court Board; Member, Journal of Labor and Employment Law; Member, Order of the Coif; Recipient, P. Pemberton Morris Prize, awarded for student with highest grades in areas of evidence, pleading, and practice

Drexel University (M.S., biological sciences, molecular biology, and molecular genetics, 1994)

Pennsylvania State University (B.S., biology, 1989, with honors)

New Jersey

Pennsylvania

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

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

U.S. Court of Appeals for the Federal Circuit

U.S. Patent and Trademark Office