Cozen O’Connor: Mogil, Darren S.

Darren S. Mogil

Member

New York

(212) 883-4976

(646) 588-1385

Recent Publication:

Breathing New Life Into The “Tangential” Exception to Prosecution History Estoppel [Alert]

Martin B. Pavane and Darren S. Mogil discuss the importance of carefully analyzing the prosecutorial history of a patent to determine the reason for the narrowing amendment. If the reason was only tangential to the equivalent at issue, estoppel will not apply.

Darren Mogil's practice includes patent litigation, with particular emphasis on pharmaceutical and ANDA cases, patent prosecution matters, licensing and opinion work. He has worked in all aspects of intellectual property law, including patent, trademark and copyright law, and also has experience in insurance defense litigation.

Darren is admitted to the bars of the State of New York, the Southern and Eastern Districts of New York, and the Eastern District of Texas, and to practice before the U.S. Department of Veterans Affairs and the United States Patent and Trademark Office. He has worked on patent matters concerning a wide range of technical areas, such as chemical, pharmaceutical, electronics and mechanical. In the pharmaceutical area, he has been involved in a number of Hatch-Waxman/ANDA litigations concerning various pharmaceuticals such as propofol, metaxalone and fexofenadine. Darren also has worked on appellate matters before the United States Court of Appeals for the Federal Circuit.   

Darren graduated cum laude and Phi Beta Kappa with a B.A. in chemistry from Hofstra University in 1998. He received his J.D. degree from St. John's University School of Law in 2001. 

Experience

Publications

Breathing New Life Into The “Tangential” Exception to Prosecution History Estoppel [Alert]

August 26, 2019

Martin B. Pavane and Darren S. Mogil discuss the importance of carefully analyzing the prosecutorial history of a patent to determine the reason for the narrowing amendment. If the reason was only tangential to the equivalent at issue, estoppel will not apply.

USPTO Issues Revised Guidances Concerning 35 U.S.C. §§ 101 and 112 [Alert]

January 28, 2019

Tom Pontani, Ed Weisz, and Darren Mogil review the USPTO's new guidance for patent-eligible subject matter and claims using functional language to claim computer-implemented inventions.

Confidential Sales of an Invention Do Not Avoid the “On Sale” Bar Under the America Invents Act [Alert]

January 23, 2019

Martin B. Pavane and Darren S. Mogil discuss the U.S. Supreme Court decision in Helsinn Healthcare S. A. v. Teva Pharmaceuticals USA, Inc.

The Federal Circuit Redefines Secondary Meaning and Infringement for Product Trade Dress in Converse [Alert]

November 19, 2018

Camille M. Miller and Darren S. Mogil discuss the Federal Circuit opinion that finds registered trade dress carries a presumption of secondary meaning only prospectively from the date of registration and product design trade dress can only infringe if it is substantially similar to the protected trade dress.

When A Patent Disclosure Is Not A Disclosure [Law360]

November 14, 2018

Martin Pavane, vice chair, and Darren Mogil, a member of Cozen O'Connor's Intellectual Property department, co-authored an article in Law360 on the Federal Circuit's decision in FWP IP APS v. Biogen MA, Inc., an appeal from a Patent Trial and Appeal Board decision in an interference between FWP and Biogen.

When is a Disclosure Not a Disclosure? [Alert]

November 01, 2018

Martin B. Pavane and Darren S. Mogil discuss the Federal Circuit's decision in FWP IP APS v. Biogen MA, Inc., an appeal from a Patent Trial and Appeal Board decision in an interference between FWP and Biogen.

Nobel Biocare Services AG v. Instradent USA, Inc. – When is a Printed Publication Publicly Available? [Intellectual Property Alert]

October 03, 2018

Martin B. Pavane and Darren S. Mogil discuss how this case provides guidance on how a party seeking to use a publication as prior art can establish when that publication became publicly available, which is the paramount requirement for establishing the date on which the printed publication qualifies as prior art.

The Importance of Properly Maintaining Priority [Intellectual Property Alert]

October 03, 2018

Martin B. Pavane and Darren S. Mogil discuss the Federal Circuit's opinion in Natural Alternatives International, Inc. v. Iancu, concerning priority claims in familial patent applications.

Attorney-Client Privilege Can Protect Multi-Purpose Corporate Communications [Intellectual Property Alert]

July 05, 2018

Martin B. Pavane and Darren S. Mogil discuss the Court of Appeals for the District of Columbia Circuit's decision in the Court of Appeals for the District of Columbia Circuit, Federal Trade Commission v. Boehringer Ingelheim Pharmaceuticals, Inc.

The Use of IPR Institution Denial Decisions in Litigation [Intellectual Property Alert]

October 24, 2017

Darren Mogil and Marty Pavane discuss the important issue that arises at trial when the PTAB denies institution of an IPR.

Evidence Postdating a Patent’s Priority Date May Be Relevant to Written Description and Enablement [Intellectual Property Alert]

October 19, 2017

Martin Pavane and Darren Mogil discuss the Federal Circuit's decision in Amgen Inc. v. Sanofi.

Petitioner has the Burden of Proving Unpatentability of Amended Patent Claims in IPRs [Intellectual Property Alert]

October 12, 2017

Darren Mogil discuses Aqua Products, Inc. v. Matal and how it will likely lead to an increase the number of proposed claim amendments allowed by the PTAB.

Venue in Patent Infringement Actions: The Federal Circuit’s Raytheon Co. v. Cray, Inc. Decision [Intellectual Property Alert]

September 28, 2017

In the wake of the U.S. Supreme Court’s decision in TC Heartland LLC v. Kraft Foods Group Brands LLC, district courts have been faced with numerous motions to transfer venue. In response to those motions, district courts have developed varying tests for analyzing whether venue is proper. One such test was crafted by Judge Gilstrap of the Eastern District of Texas in a June 29, 2017, opinion in Raytheon Co. v. Cray, Inc., denying defendant Cray’s motion to transfer venue. Believing that the district court erroneously determined that venue was proper in the Eastern District of Texas, Cray petitioned the Federal Circuit for a writ of mandamus.

Education

  • St. John's University School of Law, J.D., 2001
  • Hofstra University, B.A., cum laude, 1998
  • New York
  • United States Patent and Trademark Office
  • New York Court of Appeals
  • U.S. District Court -- Eastern District of New York
  • U.S. District Court -- Southern District of New York
  • New York State Bar Association