Ronald M. Daignault

Ronald M. Daignault

Partner

Office

Practice Groups

Ronald M. Daignault is an intellectual property litigator and trial attorney. With over 25 years of experience, Ron understands that what he ultimately provides to clients is peace of mind. Creative, strategic, and meticulous, Ron builds longstanding collaborative relationships. Ron has represented clients in patent, trademark, false advertising, trade secret, and copyright cases across a broad spectrum of industries and technologies, and is widely respected as a pharmaceutical Hatch-Waxman litigator, primarily for generic drug companies. He has been involved in over 15 bench and jury trials and evidentiary hearings, and has been lead counsel or second chair in most of them. Ron has also argued before several U.S. Courts of Appeals and the New York Appellate Division. 

Ron’s trial-tested courtroom skills underlay all parts of his practice, but he is also committed to working with clients to develop cost-effective strategies for results that make sound business sense — whether a client achieves those results inside or outside the courtroom. Ron believes in efficient case management to achieve the favorable outcome that best aligns with his client’s long-term strategies.

In addition to his intellectual property litigation practice, Ron counsels startups and companies of all sizes regarding patent procurement and clearance, and domestic and international trademark prosecution and licensing. He has represented a pro bono client in connection with a New York State post-conviction criminal proceeding and federal habeas corpus petition. Ron also writes and speaks frequently on topics in the field of intellectual property, and is an advisory board member of Bloomberg/BNA's Life Sciences Law and Industry Report.

Hatch-Waxman Litigation Experience

Ron’s Hatch-Waxman litigation experience includes, for example, cases involving the following products:

  • Aripiprazole tablets
  • Canagliflozin tablets
  • Guaifenesin extended-release tablets
  • Macitentan tablets
  • Abiraterone tablets
  • Bivalirudin injectable composition
  • Lyophilized bendamustine hydrochloride composition
  • Esmolol hydrochloride for injection
  • Calcium acetate drug product
  • Clozapine orally disintegrating tablets
  • Alosetron hydrochloride tablets
  • Sulfate salt composition for cleaning the colon before a colonoscopy
  • Sublingual formulation of zolpidem tartrate used to treat middle-of-the-night insomnia
  • Famotidine/antacid pharmaceutical composition
  • Polyethylene glycol composition for treating constipation
  • Hyoscyamine orally disintegrating tablets
  • Omeprazole capsules
  • Terfenadine acid metabolite tablets
Trademark and Patent Infringement Litigation

Ron’s patent and trademark litigation experience spans communications, software, consumer products, technology and hardware, publishing, and energy. A small sampling includes:

  • Patent inventorship trial and Federal Circuit oral argument in a case regarding email and mobile communication software patents
  • Patent infringement case and evidentiary claim-construction hearing in a case involving transgenic mice
  • Patent inventorship case relating to erythropoietin peptide mimetics
  • Trademark infringement and false advertising jury trial involving Sobieski brand vodka
  • Patent infringement contempt trial involving a chemical process for manufacturing lutein
  • Represented leading consumer electronics company in patent infringement, trademark infringement, and false advertising litigation and jury trial involving inkjet printer technology
  • Trademark infringement hearing and Fourth Circuit oral argument on behalf of a book publisher
  • Multiple trademark infringement suits and domestic and international ex parte seizures involving counterfeit toner cartridges
  • Trade secret suit and evidentiary hearing involving financial systems software
  • Copyright infringement suit and evidentiary hearing involving financial forms
  • ITC litigation and trial involving diltiazem hydrochloride
  • Trademark infringement trial on behalf of New York City-based oil company 
Honors
  • Life Sciences Star and IP Star, Managing Intellectual Property, 2013–17
  • New York Metro Super Lawyers, 2012–18
Professional Affiliations
  • Amicus Committee, New York Intellectual Property Law Association
  • Advisory Board, Bloomberg BNA Life Sciences Law & Industry Report
Community Involvement
  • Co-President and Trustee, Park Slope Civic Council, 2015 to present
  • Prospect Partners, Prospect Park Alliance, 2006 to present
Admitted to Practice
  • New York
  • U.S. District Court for the Northern District of California
  • U.S. District Court for the Central District of Illinois
  • U.S. District Courts for the Eastern and Southern Districts of New York
  • U.S. District Court for the Eastern District of Wisconsin
  • U.S. Courts of Appeals for the First, Second, Fourth, and Federal Circuits
  • U.S. Supreme Court
Education
  • Washington University in St. Louis School of Law, J.D., 1991
  • University of Michigan, B.A., 1987
Publications
  • Co-Author, “Will Sovereign Immunity Shield Patent Owners From IPR Challenges?” New York Law Journal, May 18, 2018
  • Co-Author, “Trade Secrets in Life Science and Pharmaceutical Companies,” Intellectual Property in Molecular Medicine, Cold Spring Harbor Perspectives in Medicine, 2015
  • Author, “The Federal Circuit Reaffirms the Patent Eligibility of Certain Inventive Products and Methods Based on Human DNA Sequences: What Will the Supreme Court Say About That?” Bloomberg BNA: Life Sciences Law & Industry Report, October 5, 2012
  • Author, “Unanimous Supreme Court Refines the Scope of Patent-Ineligible Processes, Potentially Exposing Vulnerability of Patents in Life Science Technologies,” Bloomberg BNA Life Sciences Law & Industry Report, April 6, 2012
  • Author, “The America Invents Act: Changes in the Patent Laws of Special Interest to the Life Sciences Industry,” Bloomberg BNA Life Sciences Law & Industry Report, November 4, 2011
  • Author, “The Federal Circuit’s Wake-Up Call After Its Decision in Kubin: Biotech and Pharma Patents Not Immune to ‘Obvious to Try’,” Bloomberg BNA Life Sciences Law & Industry Report, May 2009
  • Author, “Carbon Offsets and Patent Protection for Business Methods After in reBilski,” Clean Tech Law & Business Issue 1.1, March 2009
  • Author, “Willful Patent Infringement After Knorr-Bremse,” Intellectual Property & Technology Law Journal, July 2006
Presentations
  • “Re-Evaluating Claim Construction and Markman Strategies Post-Teva,” ACI’s 10th Annual Paragraph IV Disputes, New York City, April 25, 2016
  • “Gaining Clear Understanding of Antitrust Regulations and Their Impact on the Indian Pharma Industry,” 5th Annual Pharma IPR Conference, Mumbai, India, March 9, 2016
  • Teva v. Sandoz — Claim Construction Redoux: De Novo vs. Deferential,” ACI’s Hatch-Waxman Litigation Conference, New York City, April 28, 2015
  • Teva v. Sandoz — A Debate on the Standard of Review for Claim Construction: De Novo vs. Deferential,” ACI’s 2nd Annual Paragraph IV Disputes Master Symposium, Chicago, September 30, 2014
  • “Determining the Practical Implication of Labeling Carve-Outs Within the Framework of the Hatch-Waxman Act,” Marcus Evans 6th Product and Pipeline Enhancement for Generics Conference, Arlington, VA, July 2013
  • “Patent Infringement Litigation,” Patent Resources Group, Naples, FL, April 2011