Douglas A. Robinson

Principal / St. Louis Metro Office

Doug’s practice is focused on intellectual property contested matters in the areas of patents, trade secrets, and trademarks. His experience includes all aspects of federal IP litigation in numerous district courts across the country and in the Federal Circuit Court of Appeals.

A precise advocate and experienced negotiator, Doug’s expertise spans every phase of the dispute resolution process, from pre-suit investigation through appeal. Doug also devotes a substantial portion of his practice to Inter Partes Review and other proceedings before the USPTO, where he is admitted as a Patent Attorney. He has also served as litigation counsel in numerous cases under the Hatch-Waxman Act and on behalf of various generic pharmaceutical companies. Doug has also represented clients in International Trade Commission matters, and has experience in arbitration proceedings and other alternative dispute resolution forums, such as the Better Business Bureau’s National Advertising Division. 

  • On behalf of a pharmaceutical manufacturer, served as Lead Counsel in an appeal to the Federal Circuit over the USPTO’s denial of a patent application involving a new composition.
  • Obtained dismissal of trademark infringement and false advertising claims at pleading stage.
  • Lead counsel in trademark infringement lawsuit between competitors; negotiated favorable settlement terms for defendant.
  • Ongoing defense of farm equipment manufacturer in patent infringement lawsuit between competitors.
  • Ongoing representation of patentee in litigation between competitors involving infant and toddler products
  • Provided local counsel services in patent infringement and unfair competition claims between competitors.
  • Representation of defendants in patent litigation regarding pest remediation; obtained favorable summary judgment ruling of non-infringement and successful Daubert challenge of patentee’s expect.
  • Representation of defendant in patent infringement lawsuit concerning spray tanning booths. The case ended with a favorable settlement following institution of Inter Partes Review and successful motion to transfer venue from the Eastern District of Texas to the defendant’s home forum.
  • Representation of defendant in patent infringement case involving stationary bicycle; obtained favorable summary judgment rulings of non-infringement and patent invalidity.
  • Lead counsel representation for defendant in patent infringement litigation concerning tattoo and permanent make-up devices. The case ended with a favorable settlement following institution of an Inter Partes Review proceeding on petition drafted for the defendant.
  • Lead counsel representation for defendant in patent infringement litigation concerning tattoo and permanent make-up devices. The case ended with a favorable settlement following claim construction briefing.
  • Representation of plaintiff regarding infringement patent covering an enclosed conveyor belt system. Representation also included successful defense of two ex parte patent reexaminations proceeding instituted by defendant. Case ended in favorable settlement.
  • Representation of defendant and patent company in patent infringement litigation concerning antenna-testing technology; obtained favorable summary judgment ruling of non-infringement.
  • Representation of petitioner in multiple Inter Partes Review proceedings concerning heat dissipation technology. All challenged claims were found unpatentable by the PTAB, and were later affirmed by the Federal Circuit.
  • Successful defense of patent-in-issue in an Inter Partes Review proceeding, which was the first Inter Partes Review decision where a patent claim survived a final written decision.
  • Representation of complainant in ITC proceeding involving kitchen appliances; case ended in favorable settlement.
  • Representation of defendant against patent infringement lawsuit regarding a virtual music reality system. After a two-day Markman hearing, a claim construction ruling construed four terms in the defendant’s favor, prompting the plaintiff to file a notice of dismissal.
  • Representation of defendant in patent infringement lawsuit concerning soil erosion prevention fabrics; successfully defeated motion for preliminary injunction, then obtained favorable claim construction order, prompting plaintiff to dismiss litigation with prejudice.
  • Representation of respondent in arbitration proceeding; developed defenses and, following a day-long meeting between the parties, complainant withdrew its allegations with prejudice.
  • Representation of respondent in false advertising complaint filed with the BBB’s National Advertising Division; collaborated with FDA counsel to obtain medical device clearance for product from the FDA, which negated the arguments presented by the complainant.
  • Representation of complainant in patent arbitration regarding balancer technology. Following a weeklong trial, the arbitrator awarded seven figure compensation based on an above industry average 7% royalty rate, and further ordered respondent to pay attorneys’ fees and all arbitration costs.
  • Obtained partial grant of summary judgment in a false advertising case regarding mouthwash; the ruling prompted the plaintiff to settle on favorable terms.

In the News

Events

Doug is regularly asked to comment on pending Hatch-Waxman litigation for industry publications. Articles in which Doug has been quoted include the following:

  • Otuska/BMS’s Abilify: Strong inequitable conduct challenge presented by generics at trial faces uphill battle
  • Somaxon’s patents for newly launched insomnia drug Silenor seen as unlikely to survive potential generic ANDA challenge
  • Shire’s Patents for ADD drug Intuniv may be vulnerable to generic design-around in ongoing ANDA litigations
  • Roche/Genentech seen as likely to prevail in proving that Herceptin does not infringe GSK’s patents in ongoing litigation

Articles

Blogs

Doug is dedicated to understanding his client’s broader objectives. Doug’s clients appreciate that he knows the law, inside and out, and as a result, is able to deliver immediate and understandable answers. His attention to detail and responsiveness is the result of more than a decade of practical experience. He consistently maintains perspective on how the law fits into the larger commercial strategy.

Doug’s technological experience is broad, and includes pharmaceuticals, chemicals, biologics, satellite communications equipment, exercise equipment, medical devices, pest and mold remediation technology, automated meter reading systems, injection molding machines, vehicle parts refurbishing, spray tanning booths, heatsinks for electronics, and antenna testing equipment.

When Doug is not in the office, he spends much of his time coaching or cheering for his children’s sports teams. He also enjoys hiking, fishing, and participating in other outdoor activities with his family.

Prior to joining Harness Dickey, Doug worked in the Chicago office of a large IP firm.

Awards & Distinctions

  • Best Lawyers, Litigation – Patent, 2017-2022
  • Best Lawyers, Litigation – Intellectual Property, 2019-2022
  • Missouri Lawyers Weekly, “Up and Coming Lawyer,” 2013
  • Kansas Super Lawyers “Rising Star,” 2013
  • Missouri Super Lawyers “Rising Star,” 2013-2014
  • Order of the Coif, Washington University School of Law, awarded to Top 10% of graduating class
  • Washington University Law Quarterly (now Washington University Law Review), Executive Articles Editor
  • Mary Collier Hitchcock Prize for best Note in Washington University Law Quarterly, 2004
  • Awards for Excellence in Intellectual Property Law, Insurance and American Legal History

Education

J.D., Washington University in St. Louis, 2004

  • Order of the Coif

B.S., Biochemistry and Chemistry minor, cum laude, University of Missouri, 2000

Bar & Court Admissions

Missouri

Illinois

U.S. Patent and Trademark Office