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2015 Summer Newsletter
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   Summer 2015

   BPLA Newsletters
 Volume 46, Issue 2

2015 Annual Judges Dinner









See All Photos




Table of Contents

This issue is a summer medley of articles from BPLA members addressing both patent and copyright case law developments and proceedings before the USPTO. We hope you enjoy these articles and the additional material in this issue.

USPTO Issues Updated Guidance on Patentability
By Monica Grewal (WilmerHale), Brian Seeve (WilmerHale) and Yvonne Lee (WilmerHale)

Monica Grewal

Brian Seeve

Yvonne Lee

On July 30, 2015, the United States Patent and Trademark Office (USPTO) issued updated guidance on subject-matter eligibility under 35 U.S.C. 101, intended to “assist examiners in applying the 2014 Interim Patent Eligibility Guidance during the patent examination process.”[1] Below, we provide a brief summary of the updated guidance, which includes a “July 2015 Update,” three appendices, and a Quick Reference sheet.

The USPTO is currently seeking comments from the public relating to the new guidance.

July 2015 Update: Subject Matter Eligibility

The July 2015 Update includes a description of six “major themes” the USPTO developed based on public comments received in response to its 2014 Interim Patent Eligibility Guidance (IEG):

1.       In response to “requests for additional examples, particularly for claims directed to abstract ideas and laws of nature,”[2] the USPTO has provided additional examples in Appendix 1 to be used in conjunction with the examples from the 2014 IEG. These additional examples are intended to “assist examiners and the public in applying the principles of the 2014 IEG.”

2.       For claims directed to nature-based products, the 2014 IEG states that Step 2A of the Alice test involves determining whether the claimed subject matter and its naturally-occurring counterparts have “markedly different characteristics” (MDC).[3] Some commenters suggested moving the MDC analysis to Step 2B. In response, the USPTO explains in the July 2015 Update that it has decided to retain the MDC analysis in Step 2A because it allows claims to qualify as eligible earlier in the analysis, provides an additional pathway to eligibility for claims directed to ‘product of nature’ exceptions, and ensures “that all claims are consistently analyzed for eligibility regardless of statutory category or the type of exception recited.”

3.       In response to requests for “further information regarding how examiners identify abstract ideas,” the updated guidance points out that “the 2014 IEG instructs examiners to refer to the body of case law precedent in order to identify abstract ideas by way of comparison to concepts already found to be abstract.” The July 2015 Update also provides further clarification regarding certain categories of abstract ideas, including “Fundamental economic practices,” “Certain Methods of Organizing Human Activity,” “An Idea ‘Of Itself,’” and “Mathematical relationships/formulas.”



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Comments on 2014 Interim Guidance on Patent Subject Matter Eligibility (“Interim Guidance”) in response to request for comments at 79 Fed. Reg. 74618 (Dec. 16, 2014)
By Daniel Lev (Pierce Atwood), Reza Sadr (Pierce Atwood), and David J. Wilson (Pierce Atwood) on behalf of BPLA

Daniel Lev

Reza Sadr

David J. Wilson

Dear Sir:


The Boston Patent Law Association (“BPLA”) thanks the United

States Patent and Trademark Office (“USPTO”) for the opportunity to comment on the USPTO’s 2014 Interim Guidance on Patent Subject Matter Eligibility (“Interim Guidance”). The BPLA is an association of intellectual property professionals, providing educational programs and a

forum for the exchange of ideas and information concerning patent, trademark, and copyright laws in the Boston area. These comments were prepared with the assistance of the Patent Office Practice Committee of the BPLA. The BPLA submits these comments solely as its consensus view. They are not necessarily the views of any individual member, any firm, or any client.


We appreciate the USPTO’s efforts to further clarify patent

examination related to claims directed to the three judicial exceptions to patent-eligible subject matter—laws of nature, natural phenomena, and abstract ideas.  Guidance”).


We offer these comments on the Interim Guidance to assist the USPTO in its efforts to further hone the Guidance as a useful tool for examiners and practitioners. As the USPTO further refines its subject matter eligibility guidance, the Guidance should:


1. Focus the subject matter eligibility analysis on preemption, which is the underlying reason for the judicially-created exceptions;
2. Further clarify the criteria for a “streamlined eligibility analysis” that bypasses the full eligibility analysis;
3. Delineate the differences between the “markedly different” and “significantly more” analyses for nature-based claims;
4. Clarify the “inventive concept,” particularly for computer-based claims;
5. Better define the “abstract idea” concept; and
6. Include further examples depicting additional types of claims and expanding on the claim sets in the current Examples.




As an initial matter, we recommend that the USPTO reconsider its Interim Guidance, and particularly the associated examples, through the lens of preemption, which is at the root of the
judicially-created exceptions to the broad categories of patent-eligible subject matter under 35 U.S.C. § 101. The three judicial exceptions are not based on the statutory text or the extensive
legislative history of the Patent Act of 1790, Patent Act of 1952, or subsequent reform acts.
Rather, the judicial exceptions are grounded in the common law, reaching back to English common law, and represent a policy concern “against upholding patents that claim processes that
too broadly preempt the use of” the excepted subject matter.




Please see the full document (PDF) here.

Inter Partes Review And A Soon-To-Expire Patent
By Don Steinberg (WilmerHale), Yung-Hoon (Sam) Ha (WilmerHale), and Natalie Pous (WilmerHale)

Don Steinberg

Yung-Hoon (Sam) Ha

Natalie Pous

Reprinted with permission, material originally published by Law360


This is the fifth article in WilmerHale’s series of Expert Analysis pieces concerning post-grant issues. It was preceded by “Lessons From Inter Partes Review Denials,” “When Inter Partes Review Meets Hatch-Waxman Patents," "Claim Constructions In PTAB Vs. District Court" and "Tips For Dealing With Competing IPR And ITC Deadlines."


One of the advantages for a patent challenger in an inter partes review proceeding (as compared to a district court proceeding) is the broader claim construction standard that is employed. Specifically, IPRs employ the “broadest reasonable construction in light of the specification of the patent in which it appears” standard, generally referred to as the “broadest reasonable interpretation (BRI) standard.”[1] In contrast, in district court proceedings, claim terms are given “the meaning that [a] term would have to a person of ordinary skill in the art in question at the time of the invention”[2] — generally referred to as the “Phillips standard.” The Phillips standard can sometimes lead to a narrower construction.


Indeed, the Federal Circuit recently noted: “The broadest reasonable interpretation of a claim term may be the same as or broader than the construction of a term under the Phillips standard. But it cannot be narrower.”[3] When the BRI standard is used during an IPR, more prior art can be encompassed, which can benefit the patent challenger and disadvantage the patent owner.


Read More


Nature-Based Claims And the Patent-Eligibility Landscape
By Robert Gunther (WilmerHale), Christopher Noyes (WilmerHale) and Omar Khan (WilmerHale)

Robert Gunther

Christopher Noyes

Omar Khan

The Supreme Court recently decided two cases in which the central question was whether certain patent claims involving natural materials and biomolecules constituted patent eligible subject matter under 35 U.S.C. § 101.  In Mayo Collaborative Services v. Prometheus Laboratories., Inc.,  the Supreme Court held that patent claims to “relationships between concentrations of certain metabolites in the blood and the likelihood that a dosage . . . will prove ineffective or cause harm” are not patent eligible because they generally recite a law of nature, and the addition of certain claim steps directed to “well understood, routine, conventional activity” does not change that conclusion.  In Association for Molecular Pathology v. Myriad Genetics, Inc.,  the Court held that “genes and the information they encode are not patent eligible under §101 simply because they have been isolated from the surrounding genetic material.”


Shortly after the Supreme Court’s decision in Myriad, the Patent Office published the 2014 Interim Guidance on Patent Subject Matter Eligibility, which sets forth a three-step inquiry for evaluating the patent eligibility of claims involving natural and biologic material.   The Patent Office’s Guidance also provides illustrative examples of patent eligible, and ineligible, claims involving natural principles and/or products, including claims directed to various nature-based bacterial mixtures, genetically modified bacteria, nucleic acids, purified proteins, antibodies and food.



Reprinted with permission from the April 13 edition of the New York Law Journal© 2015 ALM Media Properties, LLC. All rights reserved. Further duplication without permission is prohibited. For information, contact 877-257-3382 - or visit


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Now You See It, Now You Don’t: A Rorschach Test For Anticipation?
By Adam C. Krol (Biospark Intellectual Property Law) and Muna Abu-Shaar (Biospark Intellectual Property Law)

Adam C. Krol

Muna Abu-Shaar


It is black letter patent law that a prior art species anticipates a genus under 35 U.S.C. § 102.[1] But when does a genus anticipate a species or even another genus? The Federal Circuit and its predecessor court, the Court of Customs and Patent Appeals (CCPA), have addressed this question in a series of cases dating back to 1962, when the CCPA decided In re Petering.[2] In April 2015, the Federal Circuit decided the most recent case in the series, Ineos USA LLC v. Berry Plastics Corp.[3] The claims at issue in these cases are of two main types: claims to a chemical subgenus or species of a prior art genus and claims reciting a range that overlaps with or is encompassed by a prior art range. In this article, we will explore how the anticipation analysis applied by the Federal Circuit has come to resemble an obviousness analysis and how patent drafters and prosecutors can prepare for anticipation rejections based on prior art genera.

Chemical Cases

In re Petering

The claims at issue in In re Petering were directed to a genus of chemical compounds, as well as subgenera and species encompassed by the genus.[4]  The reference relied upon by the USPTO to reject the claims, U.S. Patent No. 2,155,555 to Karrer, described a broad genus of compounds defined by a generic formula that encompassed the claimed genera and species, and also described certain specific preferences for different substituents of the generic formula.[5] The CCPA found that Karrer’s generic disclosure, which “encompasses a vast number and perhaps an infinite number of compounds,” did not describe the claimed invention within the meaning of 35 U.S.C. § 102(b).[6] However, the CCPA found that Karrer’s disclosure of the specific preferences in connection with the generic formula described a much more limited class of compounds (a total of 20) such that “one skilled in the art would, on reading the Karrer patent, at once envisage each member of this limited class.”[7]  The CCPA emphasized that it was “not the mere number of compounds in this limited class which is significant here but, rather, the total circumstances involved,” including the limited number of variations for the different substituents within the preferred class.[8]




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BPLA Authors Amicus Brief Regarding Federal Circuit’s Fact Finding Role
By Erik Paul Belt (McCarter English LLP) and Brian Larivee (McCarter English LLP)

Erik Paul Belt

Brian Larivee

On June 15, 2015, the Boston Patent Law Association (BPLA) submitted to the U.S. Supreme Court an amicus curiae brief in support of a petitioner’s petition for a writ of certiorari in a patent case involving the Federal Circuit’s standard for reviewing a jury’s findings of fact underlying a judgment of non-obviousness.  The BPLA’s amicus brief is available on the BPLA’s website at

The patent owner, I/P Engine, Inc., petitioned the Supreme Court after a Federal Circuit panel held that its paten invalid as obvious.  Applying de novo review and, in essence, disregarding the jury’s special verdict findings of fact that the patent was nonobvious, the Federal Circuit panel held that “the common sense of a skilled artisan” would have bridged the differences between the prior art and the patent’s claims. But there was no evidence in the trial court about what one of ordinary skill in the art would regard to be “common sense.”

The BPLA urged the Supreme Court to hear the case to clarify the Federal Circuit’s role in reviewing the jury’s factual findings on obviousness.  The BPLA argued that a more deferential standard, such as “substantial evidence,” should apply.  In particular, the BPLA argued that juries can—and should—be trusted with fact finding in obviousness cases and that their findings should not be summarily set aside.  The BPLA further argued that the issues raised in the appeal are similar to those addressed by the Supreme Court in recent decisions in Teva v. Sandoz, Microsoft v. i4i Ltd., and Octane Fitness v. ICON Health, in which the Supreme Court reasserted the role of district court judges and juries in deciding factual issues.



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Copyright and Patent Protection for Computer Software: How Has the Landscape Changed?
By Calvin Walden (WilmerHale) and Jeffrey Dennhardt (WilmerHale)

Calvin Walden

Jeffrey Dennhardt

Reprinted with permission, material originally published by Law360


It has been established for more than two decades that both patent and copyright laws in the United States provide intellectual property protections for computer software—with the former generally thought to protect the inventive idea or procedure encompassed in the software, and the latter protecting the expression of that idea through a computer program.  However, as the prominence of computer software has continued to grow, the scope of patent law software protections—and the corresponding focus on copyright law protections as an alternative measure—appear to have shifted under recent Supreme Court and Federal Circuit precedent.


By the early 1990s, it had become clear that copyright law protected different types of computer software, but only as to expressive elements, such as source code, object code and certain non-literal structural components, and only to the extent one could prove access and substantial similarity of these elements.  See Computer Assocs. Int’l, Inc. v. Altai, Inc., 982 F.2d 693 (2d Cir. 1992); Whelan Assoc., Inc. v. Jaslow Dental Lab., Inc., 797 F.2d 1222, 1229 (3d Cir. 1986), cert. denied, 479 U.S. 1031 (1987).  By the late 1990s, the scope of eligibility under patent law (which has never required proof of knowledge or actual copying to show infringement) had expanded to include a broad range of computer software, including computerized business methods that applied “a mathematical algorithm, formula, or calculation” to produce “a useful, concrete and tangible result.”  State St. Bank & Trust Co. v. Signature Fin. Group, 149 F.3d 1368, 1373 (Fed. Cir. 1998).  These expansive patent protections oftentimes resulted in a focus by software developers and the legal industry on patent law, rather than copyright law, as a measure for protecting computer software.  There have always, of course, been exceptions—for example, parties often assert software copyright claims in conjunction with claims for breach of a software license agreement (in such cases, where software has often been delivered by one party to the other, proving access and substantial similarity is usually straightforward and easy).  Nonetheless, in non-contract cases, and as a general strategy, companies have, for close to two decades, seen patents as core to the intellectual property protection of software.


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Dish Hopper Case: A Narrow Reading Of Aereo
By Andrea Weiss Jeffries (WilmerHale), and Elaine Zhong (WilmerHale)

Andrea Weiss Jeffries

Elaine Zhong

Reprinted with permission, material originally published by Law360


U.S. Supreme Court Justice Stephen Breyer promised that the high court’s holding in Aereo was limited. And at least one federal judge seems to agree.


In one of the first opinions to apply Aereo, U.S. District Judge Dolly M. Gee of the Central District of California – in the case Fox Broadcasting Company et al. v. Dish Network LLC et al. – rejected Fox’s claim that Aereo applies to the Dish Network’s Hopper technology. The Jan. 20 decision is one of several that may ultimately confine the impact of Aereo.


Last year, after the Supreme Court issued its opinion, legal observers warned that Aereo threatened the legal status of online cloud computing and streaming services. Concerned commentators echoed Justice Antonin Scalia’s dissent, where he signaled frustration with the majority’s apparent disregard for the volitional conduct requirement for direct copyright infringement — a test that had been applied by all of the courts of appeals. He concluded that the majority created a “two-tier” version of the Copyright Act, “one part of which applies to ‘cable companies and their equivalents’ while the other governs everyone else.”[1] One commentator wrote that the “uncertainty created by the court seems bound to chill innovation.”[2]



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New International Design Patent Application, Increased Patent Term Now in Effect
By Neil Ferraro (Wolf Greenfield), Eric Amundsen (Wolf Greenfield) and Jen Wang (Wolf Greenfield)

Neil Ferraro

Eric Amundsen

Jen Wang

For those considering the use of design patents as part of their patent protection arsenal, an additional system for pursuing domestic and foreign design rights became available to United States applicants starting May 13, 2015, along with associated changes to U.S. design patent law.


The U.S. previously signed on to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (the “Hague System”), which is now in effect for U.S. applicants.


The Hague System provides procedural efficiencies by allowing an applicant to file a single “International Design Application” to pursue design rights in all or some of the 64 countries of the Hague Union, which includes the U.S., the European Union, Japan, and South Korea. Other countries, including Canada, China, and Russia, are considering membership.


Coinciding with the availability of the Hague System to U.S. applicants, U.S. design patent applications filed beginning May 13 enjoy a 15-year patent term from the date of issuance of the patent – increased from the prior 14-year term – regardless of whether the application is filed using the Hague System or directly in the U.S.


Why Pursue Design Patents?

Design patents help protect the visual or ornamental aspects of products. Whereas a utility patent protects the functionality of a product, design patent protection aims at capturing would-be copycats. Without a design patent, your competitor could offer a lookalike product that functions differently yet fools customers into believing that the product is the same as yours. You would not then be able to stop your competitor’s sales, and consumers might assume the same product functionality based solely on appearance. Even when a competitor sells a product that infringes your utility patent, infringement of your design patent may be easier to prove due to the inherent complexities of utility patents. Design patent infringement can result in substantial damages awards; for example, in the Apple v. Samsung case, the jury awarded damages in excess of $1 billion, a substantial amount of which was attributable to design patent infringement.


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Taking an Alternative Approach to Patent Disputes
By Merriann Panarella

Merriann Panarella

In response to a question about the use of mediation to resolve patent disputes, a panelist at a recent patent litigation conference replied that he did not generally use mediation unless the parties were close. While mediation is the most popular dispute resolution process, it is not often used, or perhaps even understood. A mediator’s job is to work with the parties, whatever their settlement position, and, by facilitating negotiation between them, help the parties resolve their dispute.

Mediation affords parties and their counsel many well known advantages: privacy, informality, an opportunity for a frank evaluation of the merits, and control including the ability to manage the costs and risks of litigation as well as the outcome. Lest there be doubt that mediation’s advantages are directly applicable to patent disputes, both the U.S. Court of Appeals for the Federal Circuit and the U.S. International Trade Commission have permanent mediation programs. The USITC touts mediation’s benefits as including reduced costs for businesses while maintaining control of their intellectual property, heightened confidentiality, narrowing issues and claims in dispute, potentially shorter time to case resolution and greater business control over outcome.



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Important IOLTA notice about handling client funds

The new rule, which went into effect July 1st 2015, affects the handling of client funds. Advances of client funds for expenses, including filiing fees, must now be held in client trust account and may only be withdrawn as expenses are incurred. For further details, please see this PDF document.

Posternak Blankstein & Lund LLP Adds Lin Hymel, PhD, and Beverly Hjorth to its New Patent Prosecution Practice

BOSTON (April 8, 2015) – Posternak Blankstein & Lund LLP today announced Lin Hymel, PhD, and Beverly Hjorth have joined the firm’s newly created Patent Prosecution Practice. In their respective roles, Dr. Hymel and Hjorth will advise clients in patent prosecution and related intellectual property matters.

Dr. Hymel specializes in the areas of biotechnology, chemistry, material sciences and medical devices, and Ms. Hjorth specializes in the areas of mechanical, structural and environmental engineering, manufacturing, materials science, medical devices, optics and computer-implemented inventions.

“We are so pleased to welcome Lin and Beverly to our team, to lead and develop our Patent Prosecution Practice,” said David Barbash, Managing Partner at Posternak. “Collectively, they bring years of expertise in Patent and Intellectual Property Law and will undoubtedly provide a new, valuable array of services to our clients.”

About Posternak Blankstein & Lund LLP

Founded in 1980, Posternak Blankstein & Lund LLP is a Boston based general practice law firm. The firm offers a broad array of services to its individual and corporate clients in a variety of practice areas, including real estate, corporate transactions, trusts and estates, family law, employment and healthcare. For more information, please visit

BPLA Biotech Committee’S ITC Webinar

BPLA’s Biotechnology Committee hosted a successful webinar on June 18th entitled "Enforcing and Defending Biotech Patents Before the ITC." The Event was sponsored by Wolf Greenfield. A video of the complete webinar can be viewed by clicking here.

Job Postings



Technical Advisor: Life Sciences - Ropes & Gray LLP, Boston & NY

Ropes & Gray has a well-established technical advisor program in which we hire individuals with Ph.D. degrees in a variety of technical areas who are interested in the field of patent law.  We are currently seeking individuals with a Ph.D. degree in the chemical or biological sciences including synthetic organic chemistry, medicinal chemistry, immunology, pharmacology, neurobiology, molecular biology, cellular biology and/or biochemistry for our New York and Boston offices…


Patent Agent/Attorney - OvaScience,Inc.

OvaScience,a global fertility company, seeks a U.S. patent attorney/agent with no fewer than 3 years of experience in patent prosecution and portfolio management in a pharma or biotech company, or representing such clients in a law firm.  An advanced degree in biology, molecular biology, cell biology or medicine, or equivalent industry or laboratory experience is required, with a Ph.D. or M.D. preferred but not required.  Knowledge of both domestic and international patent laws, regulations, and procedures is required… 


Patent Prosecution Associate or Technology Specialist - Fish & Richardson

Fish & Richardson is seeking a Patent Prosecution Associate or Technology Specialist to join the firm’s Boston office.  The ideal candidate will have a strong background in molecular biology or closely related field, advanced degree (preferably PhD), and 2 - 5 years of patent prosecution experience…


Patent Technical Advisor/Agent/Associate - Cooley LLP

Cooley’s Boston office is currently seeking  highly motivated and qualified technical advisors, patent agents and associates to join the firm's growing life science focused patent counseling, prosecution, and litigation practice. The ideal candidate will have substantive industry experience, and preferably, 1-4 years of law firm experience…


Patent Associate or Patent Agent - Saul Ewing LLP

Saul Ewing's Boston office is currently seeking an exceptional mid-level associate or patent agent to join the firm's growing intellectual property practice. The successful candidate will have 3 - 5 years in drafting and prosecuting patent applications, assisting in the preparation of opinions in the life sciences and conducting prior art searches…


Life Sciences Associate - Intellectual Property – WilmerHale

We are interested in discussing possible associate and senior associate positions with lawyers who have three to five years of post-JD experience with an advanced Life Sciences degree. A Ph.D. in a field relating to molecular biology, immunology, microbiology or genetics is strongly preferred. Prior litigation or prosecution experience with biologics and/or nucleic acid-based diagnostics is also preferred…


Life Sciences Associate - Intellectual Property – WilmerHale

We are interested in discussing possible associate and senior associate positions with lawyers who have two to five years of post-JD experience with an advanced Life Sciences degree. A Ph.D. is strongly preferred…


Intellectual Property Technology Specialist – WilmerHale

We are seeking a Technology Specialist candidate with a degree in Electrical Engineering or Computer Science. As part of WilmerHale's Technology Specialist Program, a Technology Specialist is expected to attend an ABA accredited law school in its evening division, obtain a law degree in four years, and take and pass the USPTO patent examination to become registered as a patent agent…


Intellectual Property Associate – WilmerHale

We are interested in discussing possible associate and senior associate positions with lawyers who have two to six years of post-JD experience with an Electrical Engineering or Computer Science degree…


Pro Bono IP Clinic Pilot Progam

The Boston Patent Law Association and the IP Clinic of Northeastern School of Law are starting a pilot program to refer pro bono clients of the IP Clinic to members of BPLA. The IP Clinic has recently referred the first pro bono case to one of our BPLA members, the work will involve preparing a provisional patent application on an invention in the field of electrical engineering. If you are interested in working on future pro bono cases from the IP Clinic of Northeastern School of Law, know someone who may be interested, or have any question about this program or the Northeastern Law School IP Clinic in general, please contact Chelsea Loughran ( or Rex Huang (


Activities and Public Relations

Jennifer Zarutskie Sieczkiewicz, Biogen Idec Inc.


AIPLA Moot Court

Katherine Moskop, Seyfarth Shaw LLP

Joshua Dalton, Morgan, Lewis & Bockius LLP

Emma Hall, Morgan, Lewis & Bockius LLP



Erik Paul Belt, McCarter & English, LLP

Leslie McDonell, Finnegan, Henderson, Farabow, Garrett & Dunner

Heather Repicky, Nutter McClennen & Fish LLP



Susan Glovsky, Hamilton, Brook, Smith & Reynolds, P.C.

Lawrence Cogswell, Hamilton, Brook, Smith & Reynolds, P.C.



Daniel Young, Wolf, Greenfield & Sacks, P.C.

Jennifer Camacho, Gen9, Inc.


Business & Marketplace

Jeremy Bond, Sanofi S.A.

Jamie Kemler, Stryker Corporation


Case Law

Leslie Meyer-Leon, IP Legal Strategies

David Thibodeau, Cesari and McKenna LLP


Chemical Patent Practice

John Hobgood, Wilmer Cutler Pickering Hale and Dorr LLP

Rebecca M. McNeill, McNeill Baur PLLC

Chris Albert, Hamilton, Brook, Smith & Reynolds, P.C



Computer Law

Josh Matloff, Hamilton, Brook, Smith & Reynolds, P.C.

Lawrence Stanley, Morgan Lewis & Bockius LLP


Contested Matters

Rachel Emsley, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

Amelia Baur, McNeill Baur PLLC

Andrej Barbic, Wilmer Cutler Pickering Hale and Dorr LLP


Copyright Law

Nicole Rizzo Smith, Ropes & Gray LLP

Michael Bevilacqua, Wilmer Cutler Pickering Hale and Dorr LLP


Corporate (In-House) Practice

Michael Robinson, Agenus Inc.

Nick Boivin, Cubist Pharmaceuticals, Inc.


Ethics and Grievances

Stacy Anderson, Foley Hoag LLP


International and Foreign Practice

Eric Raciti, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

Keith Wood, Hamilton, Brook, Smith & Reynolds, P.C.


Invented Here!

Mark B. Solomon; Hamilton Brook Smith Reynolds

Rory Pheiffer; Nutter McClennen & Fish LLP

Aaron Connor

Reza Sadr; Pierce Atwood LLP

Michael Carbonello; Houston & Associates, LLP



John Hamann, Hamilton, Brook, Smith & Reynolds, P.C.

William Worden, Pierce Atwood LLP


Wendy Plotkin, Biogen Idec Inc.

Jeremy Younkin, Foley Hoag LLP


Medical Devices

Claire Laporte, Foley Hoag LLP

David Lane, Johnson & Johnson

Lisa Adams, Mintz, Levin, Cohn, Ferris, Glovsky & Popeo, PC


New Lawyers and Law Students

Michael Carbonello, Houston & Associates

Reza Sadr, Pierce Atwood LLP


Patent Agents and Technical Specialists

Cristin Berkey, Lando & Anastasi

Natalie Grace, Oblon, McClelland, Maier & Neustadt, L.L.P.


Patent Law

Nishla Keiser, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

Konstantin Linnik, Nutter McClennen & Fish LLP


Patent Office Practice

Sean Coughlin, Lathrop & Gage LLP

Bo Han, Wilmer Cutler Pickering Hale and Dorr LLP

Emily Whelan, Wilmer Cutler Pickering Hale and Dorr LLP

Nicole Palmer, Lando & Anastasi, LLP


Pro Bono

Reza Sadr, Pierce Atwood LLP

Chelsea Loughran, Wolf, Greenfield & Sacks, P.C.

Rex I. Huang, Fish & Richardson P.C.


Trade Secrets Law

Elias Domingo, Covidien

Michael Bunis, Choate, Hall & Stewart LLP


Trademarks and Unfair Competition

Josh Dalton, Morgan Lewis & Bockius LLP

Lori Shyavitz, McCarter & English, LLP


The Boston Patent Law Association (BPLA) is an association of intellectual property professionals, providing educational programs and a forum for the interchange of ideas and information concerning patent, trademark, and copyright laws. Through a volunteer Board of Governors and committees, it organizes and hosts educational seminars, social events, and conventions, and comments on rules, legislation, and judicial decisions impacting the profession. Visit the BPLA at The BPLA Newsletter is published four times a year by the Boston Patent Law Association. Articles appearing in the newsletter represent the views of the authors and do not necessarily carry the endorsement of the BPLA.



Monica Grewal, WilmerHale



Monica Grewal (WilmerHale), Brian Seeve (WilmerHale), Yvonne Lee (WilmerHale), Daniel Lev (Pierce Atwood), Reza Sadr (Pierce Atwood), David J. Wilson (Pierce Atwood), Don Steinberg (WilmerHale), Yung-Hoon (Sam) Ha (WilmerHale), Natalie Pous (WilmerHale), Robert Gunther (WilmerHale), Christopher Noyes (WilmerHale), Omar Khan (WilmerHale), Adam C. Krol (Biospark Intellectual Property Law), Muna Abu-Shaar (Biospark Intellectual Property Law), Erik Paul Belt (McCarter English LLP), Brian Larivee (McCarter English LLP), Calvin Walden (WilmerHale), Jeffrey Dennhardt (WilmerHale), Andrea Weiss Jeffries (WilmerHale), Elaine Zhong (WilmerHale), Neil Ferraro (Wolf Greenfield), Eric Amundsen (Wolf Greenfield), Jen Wang (Wolf Greenfield), and Merriann Panarella


Boston Patent Law Association, One Batterymarch Park, Suite 101, Quincy, MA 02169-7454


Letters to the editor, articles and job postings are encouraged. E-Mail all correspondence to:


©2015 Boston Patent Law Association. All rights reserved.


Board of Governors


Gregory Sieczkiewicz

MPM Capital



Rory Pheiffer

Nutter McClennen & Fish LLP


Board Member

Michael Bergman

Bergman & Song LLP.



Erik Paul Belt

McCarter & English, LLP



Deirdre Sanders Hamilton, Brook, Smith & Reynolds, PC


Board Member

Daniel W. Young

Wolf Greenfield & Sacks P.C..


Vice President

Monica Grewal

Wilmer Cutler Pickering Hale and Dorr LLP


Immediate Past-President and Board Member

Donna Meuth

Eisai Inc.


Board Member

Nikhil Patel

Burns & Levinson LLP

Do you have a new job? Made a lateral move lately? Been promoted? We want to hear about your news. Please send your job-related news to:


Boston Patent Law Association

One Batterymarch Park, Suite 101,

Quincy, MA 02169

Phone: 617.507.5570





Boston Patent Law Association
One Batterymarch Park, Suite 101
Quincy, MA 02169
Phone: 617.507.5570

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