Overview

Paul H. Berghoff is a founding partner of MBHB and Chair of the firm’s Litigation & Appeals Practice Group. Fortune 500 companies engage Mr. Berghoff to help them manage intellectual property litigation and inter partes reviews.

Mr. Berghoff has more than three decades of experience as lead trial counsel in complex patent litigation – both jury and bench trials and PTAB proceedings – involving pharmaceuticals, medical devices, biotechnology, electronics, and software. He has argued numerous times before the U.S. Court of Appeals for the Federal Circuit.

Clients also seek Mr. Berghoff’s counsel on patent infringement, validity, and enforcement, which includes evaluating litigation risks and opportunities. He has served as a neutral arbitrator in major patent disputes.

Mr. Berghoff is the vice chair of the Intellectual Property Owners Association’s Amicus Brief Committee. He has lectured extensively on a wide variety of topics relating to patent litigation, most notably on strategies for trial and Markman hearings and the use of inter partes review in litigation.

Outside of work, Mr. Berghoff and his wife are long-time supporters of Lincoln Park Community Services, an organization that supports individuals facing homelessness. He currently serves as treasurer of the organization.

Education
  • B.S., Lawrence University,

    Chemistry

  • J.D., University of Michigan Law School,

    Cum Laude

Bar Admissions
  • Illinois
  • U.S. Patent & Trademark Office

Recognition

  • IAM Patent 1000
    • (“Obtaining injunctions against generic drug companies is all in a day’s work for Paul Berghoff, a lynchpin of the [MBHB] team with over three decades of experience at the coalface.”)
  • IAM Patent Litigation 250
    • (“an accomplished trial lawyer . . . a hugely experienced patent litigator . . . decades of experience in bench and jury trials under his belt . . .”)
  • Recipient, Intellectual Property Owners Assn. President’s Distinguished Service Award, 2011
  • Best Lawyers in America (2012-2024)
  • “Lawyer of the Year – Patent Law” for the Chicago metropolitan area by Best Lawyers in America 2020 & 2014
  • “Litigation – Patent Lawyer of the Year” for the Chicago metropolitan area by Best Lawyers in America 2018
  • “Litigation – Intellectual Property Lawyer of the Year” for the Chicago metropolitan area by Best Lawyers in America 2017
  • Chambers USA
  • Illinois Super Lawyers
  • Who’s Who Legal
  • Managing IP Stars
  • Recipient, 2018 Compassion in Action Award from Chicago-based Lincoln Park Community Services organization
  • Fellow of Litigation Counsel of America

Experience

  • Secured permanent injunctions in ANDA litigations preventing infringing generic drugs from flooding the marketplace prior to patent expiration. Products successfully protected include:
    • A leading non-nucleoside reverse transcriptase inhibitor for the treatment of HIV (value protected: $2+ billion)
    • A stem cell transplant drug protected in two separate trials and appeals (value protected: $1 billion)
    • A treatment for ALS (value protected: $500 million)
  • Obtained a preliminary injunction preventing an infringing generic allergy drug from launching at risk prior to patent expiration.
  • Uncovered a fraud on the FDA by a generic antibiotic manufacturer, resulting in the generic company’s CEO being sentenced to five years in federal prison and a $150+ million settlement to the patent owner
  • Won a permanent injunction and full damages jury award for infringement of a software patent for high-volume electronic trading of commodities.
  • Defeated a preliminary injunction involving an antifungal drug, which resulted in dismissal of the case and an award of attorney fees.
  • Successfully defeated petitions for inter partes review in multiple cases involving, inter alia, medical devices, industrial chemicals, and pharmaceuticals.
  • Defeated multiple Internal Trade Commission investigations in the medical device arena, resulting in the withdrawal of the Complaints.
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