Eric T. Romeo

Eric Romeo is a partner in Goodwin’s Intellectual Property Litigation practice, with a focus on pharmaceutical patent litigation (Hatch-Waxman). Eric has worked with clients on intellectual property issues in the pharmaceutical, chemical, biological, and high-tech industries. Eric specializes in working with expert and technical witnesses in the biology and chemistry space. Beyond litigation, Eric’s experience includes patent prosecution, inter partes review proceedings, IP diligence and freedom to operate analysis. Eric also devotes significant time to representing pro bono clients in criminal and immigration matters.

Prior to joining Goodwin, Eric worked as a medicinal chemist at Merck Research Laboratories, where he designed and synthesized drug compounds to treat a variety of diseases, including cancer, Alzheimer’s disease, asthma, inflammation, and schizophrenia. Among these compounds was MK-8351, a novel asthma drug that progressed into human trials. Eric is an inventor on eight U.S. Patents, including U.S. Patent No. 8,796,310, on which he is the first named inventor.

From December, 2017, through June 2018, Eric served as a Special Assistant District Attorney in the Middlesex County District Attorney’s office in Lowell, Massachusetts. In this capacity, Eric prosecuted over 200 misdemeanor and felony cases, tried more than 10 jury and bench trials, and argued over 25 dispositive and evidentiary motions.

Some of Eric’s representations at Goodwin include:

• In re Bendamustine Consolidated Cases: Representing Cephalon, Inc. in patent litigation against 18 defendants involving Cephalon’s branded cancer drug, Treanda®. The U.S. District Court for the District of Delaware issued a final decision in favor of Cephalon, upholding the validity and finding infringement of all patents-in-suit following a bench trial.
• Coalition for Affordable Drugs VIII, LLC v. The Trustees of the University of Pennsylvania: Represented patent owner the Trustees of the University of Pennsylvania in an inter partes review proceeding involving patents directed to the treatment of hypercholesterolemia and hyperlipidemia with a novel dosing regimen for the drug lomitapide. The PTAB issued a final decision in favor of the patent owner, upholding the validity of the patent-in-suit.
• Merck, Sharpe & Dohme Corp. v. Actavis Laboratories FL, Inc.: Represented Actavis as ANDA-defendant in patent litigation involving Merck’s branded antifungal drug Noxafil® (posaconazole). Following a bench trial in the U.S. District Court for the District of New Jersey, the case was settled favorably.
• Sanofi-Aventis U.S. LLC v. Fresenius Kabi USA, LLC: Represented Fresenius Kabi and Actavis as ANDA-defendants in patent litigation involving Sanofi’s branded cancer drug Jevtana® (cabazitaxel). Following a bench trial in the U.S. District Court for the District of New Jersey, the Court found one of the two asserted patents to be valid and infringed and found the other patent to be invalid as obvious.
• In re: Copaxone 775 Patent Litigation: Represented Teva Pharmaceuticals USA, Inc. before the U.S. District Court for the District of Delaware in patent litigation regarding manufacturing methods for Teva’s branded product Copaxone®.The case was settled favorably prior to trial.
• Adverio Pharma GmbH et al. v. MSN Laboratories Pvt. Ltd. et. al: Represented MSN Laboratories as ANDA-defendant in patent litigation in the U.S. District Court for the District of Delaware involving Bayer’s branded pulmonary hypertension drug Adempas® (riociguat). The case settled favorably during trial.
• Cour Pharmaceuticals Development Company, Inc. v. Phosphorex, Inc.: Represented Phosphorex in an intellectual property ownership dispute before the U.S. District Court for the Southern District of New York. The case is currently stayed.
• Hoffmann-LaRoche, Inc., et al v. Fresenius Kabi USA, LLC: Represented Fresenius Kabi as ANDA-defendant in patent litigation in the U.S. District Court for the District of Delaware involving Genentech’s branded chemotherapy drug Alecensa® (alectinib). The case settled favorably prior to trial.
• Teva Pharmaceuticals International GmbH et al v. Eli Lilly and Company: Representing patent holder Teva before the U.S. District Court for the District of Massachusetts in patent litigation involving Teva’s Ajovy® (fremanezumab) and Lilly’s Emgality® (galcanezumab) migraine therapies.Following a 3-week trial, the jury returned a verdict in favor of Teva, finding all asserted claims valid and willfully infringed and awarding Teva over $176 million in damages.The case is currently in post-trial motion practice.
• Representation of a 10-year-old client from El Salvador in federal immigration proceedings. The client was granted asylum in the United States in 2016. In 2017, Goodwin received the Adams Pro Bono Publico Award from the Massachusetts Supreme Judicial Court for, among other activities, the firm’s work on this asylum case. The client received permanent resident status in 2018.
• Preparation of clemency petitions for several federal inmates serving long sentences for narcotics violations. In 2016, President Obama granted clemency to four of Mr. Romeo’s clients, two of which were serving life sentences.
• Representation of the Louis D. Brown Peace Institute and other social justice organizations in the submission of an amicus brief to the Massachusetts Supreme Judicial Court in Commonwealth v. Nathan Enesto Lugo. The case, which is currently pending, involves the constitutionality of imposing mandatory life sentences on juvenile offenders.

• Eric was recognized in U.S. News Ones to Watch, Litigation – Patent (2023)
• Eric was recognized in Benchmark Litigation’s 40 & Under Hot List (2023)

• Lead Author, “Hatch-Waxman and BPCIA Fundamentals: Understanding Follow-On Products and the Rules for Generic Entry,” American Conference Institute, FDA Boot Camp, September 20-21, 2023
• Co-Author, “In re Cellect: Federal Circuit Opens New Path for Double Patenting Challenges,”  Goodwin Insights, August 2023 [with Olivia D. Uitto, Gabriel Ferrante, Denise Go]
• Lead Author, “Avoiding an Inventor Own Goal: Publication Strategy and Best Practices for Drug Discovery Scientists,” Presented at the Fall 2023 National Meeting of the American Chemical Society, August 13-17, 2023, Division of Medicinal Chemistry, Lunch & Learn. [with Olivia D. Uitto]
• Co-Author, “The Patent Savvy Executive: Crafting your IP Narrative,” Presented at the Fall 2023 National Meeting of the American Chemical Society, August 13-17, 2023, Lunch & Learn. [with Olivia D. Uitto, Christopher Haley]
• Co-Author, “Specificity & the Specification: How the Federal Circuit Applies the ‘Blaze Marks’ Inquiry,” Presented at the Fall 2023 National Meeting of the American Chemical Society, August 13-17, 2023, Division of Chemistry and the Law, Paper No. 3924505 [with Gabriel B. Ferrante, Natasha E. Daughtrey]
• Co-Author, “Role of the Chemist as an Expert Witness in Pharmaceutical Patent Litigation,” Presented at the Fall 2023 National Meeting of the American Chemical Society, August 13-17, 2023, Division of Chemistry and the Law, Paper No. 3927891 [with Yoko J. Bian, Natasha E. Daughtrey]
• Lead Author, “Chemists Take the Stand: The Medicinal Chemist’s Role as a Witness in Pharmaceutical Patent Litigation,” Spring 2022 National Meeting of the American Chemical Society, March 20-24, 2022, Division of Medicinal Chemistry, Lunch & Learn.
• Lead Author, “Medicinal chemist’s guide to patents: Key concepts and strategies,” Presented at the Spring 2021 National Meeting of the American Chemical Society, April 5-30, 2021, Division of Medicinal Chemistry, Paper No. 3552076. [with Matthew Miner]
• Co-author, “Strategic Considerations for Seeking Patent Term Extension (PTE) and its Scope for Drug Products,” Goodwin Insights, May 2020. [with Theresa C. Kavanaugh]