Naomi Birbach is a partner in Goodwin’s IP Litigation group and focuses her practice on patent matters across a wide variety of industries, including pharmaceuticals, electronic devices, display systems, and software. Naomi has represented clients in numerous patent infringement lawsuits in federal courts nationwide and has significant trial experience. She also represents clients before the Patent Trial and Appeal Board (PTAB) in post-grant proceedings such as inter partes reviews (IPRs).
Naomi has experience representing companies in all stages of patent litigation, from pre-suit investigation through trial and appeal. Matter highlights include:
Representative Technology Experience:
- Ultravision Technologies, LLC v. Shenzhen Absen Optoelectronic Co., Ltd. (E.D. Tex.): Represented defendants as a member of the trial team against claims of patent infringement relating to LED displays. The jury found that Absen’s products did not infringe the asserted patents and that the asserted patents were invalid
- Gabara v. Facebook, Inc. (S.D.N.Y.): Represented Facebook in a multi-patent litigation involving aspects of Facebook Messenger and 3D Photos. The District Court granted Facebook’s motion to dismiss for failure to claim patent-eligible subject matter
- Leviton Mfg. Co., Inc. v. Pass & Seymour, Inc.(E.D.N.Y.): Representing defendant Pass & Seymour in a long-running dispute involving P&S’s core technology, ground-fault circuit interrupters (GFCIs), between the two market leaders in the U.S. GFCI market
Representative Pharmaceuticals Experience:
- Otsuka Pharmaceutical Co., Ltd. v. Teva Pharmaceuticals USA, Inc.(D. Del.): Representing Teva in a pending patent infringement action filed by Otsuka and Lundbeck under the Hatch-Waxman Act relating to Teva’s filing of an abbreviated new drug application for a generic version of REXULTI®
- Cosmo Technologies Ltd. et al. v. Actavis Laboratories FL, Inc. (D. Del.): Represented Actavis in a patent infringement action filed by Cosmo and Valeant under the Hatch-Waxman Act relating to Actavis’s filing of an abbreviated new drug application for generic versions of Valeant’s drug UCERIS®. The District Court ruled at trial that Actavis’s product did not infringe the asserted patents and the Federal Circuit affirmed
- Otsuka Pharmaceutical Co., Ltd. v. Teva Pharmaceuticals USA, Inc.(D.N.J.): Represented Teva in a patent infringement action filed by Otsuka under the Hatch-Waxman Act relating to Teva’s filing of abbreviated new drug applications for generic versions of Otsuka’s drug ABILIFY®. Teva defeated a motion for a temporary restraining order, allowing Teva to launch its products. The case against Teva settled favorably before trial
Naomi is member of the New York Intellectual Property Law Association (NYIPLA).
Prior to entering law school, Naomi was a patent examiner at the U.S. Patent and Trademark Office.
Georgetown University Law Center
- New York
- New Jersey
- U.S. Patent and Trademark Office (USPTO)
- U.S. District Court for the Southern District of New York
- U.S. District Court for the Eastern District of New York
- U.S. Court of Appeals for the Federal Circuit
Recognition & Awards
Naomi has been selected for inclusion in The Legal 500 U.S. 2022.
Naomi has been recognized by The Best Lawyers in America Ones to Watch for her work in Litigation - Patent 2022.
Naomi was named to The Best Lawyers in America 2021: Ones to Watch.
Naomi is the Senior Project Editor of the firm’s biosimilars blog, Big Molecule Watch, which provides resources and observations through Goodwin’s active watch of legal, business and regulatory developments related to biologics, biosimilars, and the Biologics Price Competition and Innovation Act (BPCIA). Naomi was also a contributor to Goodwin’s, Guide to Biosimilars Litigation and Regulation in the U.S., 2019-2020 ed., published by Thomson Reuters. Naomi was also a Special Contributor to, Guide to Biosimilars Litigation and Regulation in the U.S., 2021-2022 ed., published by Thomson Reuters, October 2022. Additionally, Naomi was a Contributor to, Guide to Biosimilars Litigation and Regulation in the U.S., 2022-2023 ed., published by Thomson Reuters, December 2022. Naomi recently co-authored an article titled “3 Reasons Beauty Cos. Should Consider Pursuing Patents,” which was featured in the expert analysis section of the website Law360.