Dianna Goldenson El Hioum

Partner
New York
767 Third Avenue, 23rd Floor
New York, NY 10017
D: 212.223.6656
Contact My Assistant
Julie Harting
D: 212.223.6528

Education

Boston College Law School
J.D., cum laude, 2002

Massachusetts Institute of Technology
B.S. Chemistry, 1995

Bar and Court Admissions

United States District Court, Northern District of New York, 2014
United States District Court, Southern District of New York, 2010
United States District Court, Eastern District of New York, 2010
New York, 2003
Massachusetts, 2002
U.S. Patent and Trademark Office, 2002

Professional Affiliations

New York Intellectual Property Law Association

Publications & Speaking

Samsung Electronics Co., Ltd. v. Apple Inc.: Design Patent Damages Limited To Profits From Patented Component, December 7, 2016

Dow Chemical Co. v. Nova Chemicals Corp.: Applying the Supreme Court’s New Standard of Definiteness, October 26, 2015

Ariosa Diagnostics, Inc. v. Sequenom, Inc.: Another Blow to the Patentability of Diagnostic Method Claims, July 31, 2015

Speaker, CASRIP Patent and IP Law Summer Institute, Biotechnological / Pharmaceutical Licensing, University of Washington School of Law, 2013-2015

Speaker, Practising Law Institutes' Advanced Patent Prosecution Seminar: Claim Drafting & Amendment Writing, 2011, 2013-2015

Caraco Pharmaceutical Laboratories, Ltd. v. Novo Nordisk A/S: Generics May Seek Correction Of Overly Broad Use Codes, May 2012

Global-Tech Appliances, Inc. v. SEB S.A., Induced Infringement: Willful Blindness Can Satisfy Knowledge Requirement, The Edge: M&G's Intellectual Property White Paper, July 2011

Speaker, The Impact of Therasense v. Becton on the Doctrine of Inequitable Conduct, LexisNexis CLE, New York, June 2011

Microsoft Corp. v. i4i Ltd. Partnership: Standard of Proof for Patent Invalidity Remains Clear and Convincing Evidence, The Edge: M&G's Intellectual Property White Paper, June 2011

A Day Late And A Few Million Dollars Short, Nature Biotechnology, 27(6):538-41, 2009

FOIA Exemption Five: Will it Protect Government Scientists from Unfair Intrusion?, Boston College Environmental Affairs Law Review, 25:2, 311-42, 2002

Isolation and Characterization of a Mammalian Homolog of the Drosophila White Gene, 185:77-85, Co-authored with J.M. Croop, G.E. Tiller, J.A. Fletcher, M.L. Lux, E. Raab, D. Son, S. Arciniegas, R.L. Wu, 1997

Press Releases

United States Senator Writes to USPTO Director and FDA Commissioner to Resolve the Problem of Miscalculated Patent Term Extension Deadlines After Reading Related Article by Dianna Goldenson, September 2009

Preliminary Injunction Motion Successfully Defeated in False Advertising Case, April 2009

With a professional background that includes large-scale drug manufacturing and development at Amgen, a large international biotechnology company, Dianna understands the procedure of developing and marketing FDA-approved drugs and medical devices from the inside out. She uses this experience in her practice, developing global strategies for her clients' expansion plans that carry a consistent voice and understanding of the portfolio to patent offices around the world.

Dianna is a partner specializing in global patent prosecution and opinion work. She has successfully counseled clients on a variety of issues, including reexaminations, licensing (involving drafting and negotiation as well as dispute resolution), freedom to operate investigations, and assessment of non-infringement, invalidity, patentability, and enforceability issues. She uses her persuasive writing and communication skills to obtain important patents, including Orange book listings, and to negotiate before or during litigation.

Dianna is experienced in a broad array of industries, including pharmaceutical, chemical, and shooting sports. She offers considerable experience on topics related to the Hatch-Waxman Act, including patent term extension, Orange Book listings, and Paragraph IV notice letters.

Prior to joining Merchant & Gould, Dianna was a principal at Darby & Darby. In her spare time, Dianna snowboards, runs, plays golf, studies Arabic, and runs a book club.


MEDIA CENTER

All Media
White Papers
6/1/17
Impression Products, Inc. v. Lexmark International, Inc.
In a nearly unanimous decision delivered May 30, 2017 by Chief Justice Roberts in Impression Prods., Inc. v. Lexmark Int’l, Inc.,[1] the U.S. Supreme Court held that “a patentee’s decision to sell a product exhausts all of its patent rights ...
Events
2/10/16
IPR CLE in Boston
Staying Current in Inter Partes Review – Developments, Hot Topics, and What's Next? Since its inception as a provision under the America Invents Act, the inter partes review process has continued to evolve before the Patent Trial and Appeal Board. ...
White Papers
10/26/15
Dow Chemical Co. v. Nova Chemicals Corp.: Applying the Supreme Court’s New Standard of Definiteness
Dow Chemical Co. v. Nova Chemicals Corp.[1] Applying the Supreme Court’s New Standard of DefinitenessIn general terms, the definiteness requirement of 35 U.S.C. §112, ¶2 is satisfied if one of ordinary skill in the art would understand the ...
White Papers
7/31/15
Ariosa Diagnostics, Inc. v. Sequenom, Inc.: Another Blow to the Patentability of Diagnostic Method Claims
Ariosa Diagnostics, Inc. v. Sequenom, Inc.[1]  - Another Blow to the Patentability of Diagnostic Method Claims The question of what constitutes patentable subject matter lies in an uncertain and evolving area of U.S. patent law, primarily due to three ...
Press Releases
7/21/15
Launch of Merchant & Gould Japanese Newsletter
To support clients in Japan, Merchant & Gould launched a newsletter series in Japanese. The first edition of this newsletter was a summary of a Supreme Court decision to uphold a rule about patent royalties on expired patents. It was published first in ...
Events
7/16/15
Dianna El Hioum to speak at patent prosecution seminar in New York City
Merchant & Gould attorney Dianna G. El Hioum will be a speaker at Practising Law Institute's Advanced Patent Prosecution Seminar on July 16, 2015 in New York City.This PLI seminar is an advanced two-day program on claim drafting and amendment writing ...
Events
7/16/15
Katherine Kowalchyk and Dianna El Hioum to speak at CASRIP 2015 Patent & IP Law Summer Institute
University of Washington School of Law Center for Advanced Study & Research on Intellectual Property 2015 Patent and Intellectual Property Law Summer InstituteGet a great foundation in U.S. and international technology protection law and practice in ...
White Papers
5/1/12
Caraco Pharmaceutical Laboratories, Ltd. v. Novo Nordisk A/S: Generics May Seek Correction Of Overly Broad Use Codes
In a unanimous decision, the U.S. Supreme Court recently held that a generic drug company may use a counterclaim provision of the Hatch-Waxman Act to seek correction of an overly broad use code submitted in connection with a patent listed in the FDA Orange ...
White Papers
7/1/11
Global-Tech Appliances, Inc. v. SEB S.A. Induced Infringement: Willful Blindness Can Satisfy Knowledge Requirement
According to 35 USC §271(b), anyone who “actively induces infringement” (i.e., takes action that causes another party to directly infringe a patent) “shall be liable as an infringer.” The statute, however, is ambiguous as to the ...
White Papers
6/1/11
Microsoft Corp. v. i4i Ltd. Partnership: Standard of Proof for Patent Invalidity Remains Clear and Convincing Evidence
Earlier this month, the U.S. Supreme Court issued its highly anticipated decision in Microsoft Corp. v. i4i Ltd. Partnership, and unanimously held that a patent invalidity defense must be proved by clear and convincing evidence. This is good news for ...
Press Releases
4/5/10
Merchant & Gould Opens New York Office, Further Expands in Seattle, Washington D.C.
115-Year-Old IP Boutique Adds Ninth Office, Continues National Expansion Merchant & Gould, an intellectual property law firm, today announced the opening of its newest office in New York, N.Y. in Midtown Manhattan. The firm also added professionals to ...