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2015 Fall Newsletter
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   Fall 2015

   BPLA Newsletters
 BPLA NEWSLETTER
 Volume 46, Issue 3


President's Message by Greg Sieczkiewicz

 

"It's the fall and the unfallen apples hold their brightness a little longer into the blue air, holding the dream that they can be brighter."

Galway Kinnell (February 1, 1927 – October 28, 2014)

Colleagues, apple season is upon us, and the brightness of the apples is a fitting comparison to the vitality of the Boston Patent Law Association, which continues to stand at the pinnacle of intellectual property law associations in the country. Our position would not have been achievable without our active membership, our Committee Chairs, and Board of Governors.

 

We said goodbye to summer this year with our annual Summer Outing, continuing our tradition of having an opportunity for members to enjoy informal time together with their families and friends. Traditionally this event has been held at a Red Sox game. This year, based on a survey we sent to our membership, we held the Outing at the Museum of Science in late August. Our members enjoyed coffee and pastries together, then went to the Science Behind Pixar as a group. One member mentioned it was a fun and gentle way to get the kids back in the mindset for school, which for most started the week after our event!


 

 "... the vitality of the Boston Patent Law Association, which continues to stand at the pinnacle of intellectual property law associations in the country..."



In the first week of October, we were honored to welcome the Federal Circuit Court of Appeals to sit in Boston and hear oral arguments. The BPLA collaborated with the Federal Circuit Bar association to host a phenomenal seminar and dinner to kick off this week. The seminar, moderated by our own President-Elect Erik Belt at Boston University Law School, featured District Judge George O’ Toole, former PTAB judge Scott Kamholz and Court of Appeals for the Federal Circuit Judge Sharon Prost. The judges spoke with our members, as well as BU professors and students, in a lively, interactive session, about topics ranging from effective brief writing, Markman hearings and even how IP-focused law schools might improve their rankings!...

 

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Table of Contents





This is the last issue of the BPLA Newsletter this calendar year. Practice before and decisions from the Patent Trial & Appeal Board (PTAB) still dominate this newsletter. I have appreciated receiving articles and interfacing with the authors in our membership and look forward to seeing you all at the Annual Meeting.

Saving Patents from Inter Partes Review with Reissue

by Edmund J. Walsh and Stuart V.C. Duncan Smith of Wolf Greenfield



Edmund J. Walsh



Stuart V.C. Duncan Smith


Reproduced with permission from BNA’s Patent, Trademark & Copyright Journal, 90 PTCJ 2108, 05/22/2015. Copyright [1] 2015 by The Bureau of National Affairs, Inc. (800-372-1033) http://www.bna.com

One of the quickest ways to derail a patent enforcement lawsuit is to petition the U.S. Patent & Trademark Office (PTO) for review of the asserted patent in a post-grant proceeding such as inter partes review (IPR). The PTO institutes IPR trials in response to more than three quarters of petitions1 and finds about 79 percent of claims reaching a final decision unpatentable.2 While the patent owner’s first line of defense is proving its patent protects truly inventive technology, sometimes the patent claims are written broadly, such that amendments focusing the claims on that inventive technology are necessary to save valuable patent rights.

While claim amendments are allowed in an IPR trial, the IPR process limits the type of amendments that can be made and requires patent owners to make a case for amendment under tight deadlines and page limits, such that in only a handful of IPR trials have claim-saving amendments been allowed.

The PTO recently announced a rule change that will make it procedurally easier to offer amendments. However, a more lenient procedure will not remove the substantive hurdles of getting amendments approved in an IPR. Amendment in an IPR requires that the patent owner prove that any amendments result in claims that are patentable relative to any prior art known to the patent owner—requiring the patent owner to first prove, among other things, what it believes the state of the art to have been. Yet, amendments can only be made to respond to the issues raised in the IPR trial. Moreover, the patent owner does not have the flexibility to add claims, which could enable claims to be tailored to the infringer’s products....3

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Challenging PTAB Determinations that Proposed Grounds are "Redundant"

by David Cavanaugh, James Dowd and Michael Smith of WilmerHale



David Cavanaugh


James Dowd


Michael Smith


Reprinted with permission from the March 25, 2015 edition of
the Intellectual Property Today© 2015, Omega Communications
Inc. 

 

The Patent Trial and Appeal Board (“PTAB” or “Board”) often denies some proposed grounds of invalidity as redundant to others when deciding whether to institute inter partes review (IPR) and covered business method patent review (CBM) proceedings.[1]  If this occurs, what options are available to petitioners?  This article explores potential avenues to challenge such a determination through requests for rehearing, appeals and petitions to the Federal Circuit, and suits in district court.

 

Requests for Rehearing

 

When the Board denies grounds as redundant, one avenue to challenge the determination is through a request for rehearing.  The request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.”[2]  To prevail, petitioners must demonstrate that the Board’s decision was an “abuse of discretion.”[3]  An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.”[4]

The Board has cautioned that a “rehearing request is not proper for advancing arguments not made previously.”[5]  For example, in Raymarine, Inc. v. Navico Holdings AS, the Board denied a request for rehearing where the petitioner argued for the first time in its request that a denied ground was stronger in some respects than other instituted grounds.[6] 

Accordingly, it will likely be difficult to prevail on a request for rehearing unless the petitioner can demonstrate how the Board misapprehended or overlooked meaningful distinctions articulated in the petition between instituted grounds and grounds denied as redundant that resulted in a clear error of judgment.

 

Appeals to the Federal Circuit from Decisions on Institution

 

The statutory provisions governing IPRs and CBMs state under the subheading “No Appeal” that the “determination by the Director whether to institute  . . . shall be final and nonappealable.”[7]  In St. Jude Medical v. Volcano Corp, the Federal Circuit affirmed the statutory provisions for IPRs bar appeals of decisions not to institute.[8]  Similarly, the Federal Circuit has found that these provisions bar immediate appeals of decisions to institute an IPR.[9]  Therefore, if the Board denies certain grounds as redundant in a decision on institution, a petitioner will not be able to challenge the Board’s determination through an immediate appeal of the decision under current Federal Circuit law...

 

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Observations On Amendments in an Inter Partes Review

by Gregory Lantier and John LeBlanc of WilmerHale



Gregory Lantier


John LeBlanc

 

Reprinted with permission from the February, 2015 edition of
the Intellectual Property Today© 2015, Omega Communications
Inc.

 

Observations On Amendments in an Inter Partes Review

While the America Invents Act (AIA) permits amendments to claims during an inter partes review (IPR), attempts to amend claims have been largely unsuccessful to date.  Indeed, the Patent Trial and Appeal Board (Board) has allowed amendment of claims (as opposed to outright cancellation) very infrequently since the AIA took effect.  In this article, we consider the rules permitting amendments, survey the results of attempts to amend, and outline alternative strategies for amending claims of patents that are involved in IPR proceedings.

I.       Statutory Authorization For and Rules Governing Claim Amendments During an IPR

Title 35 U.S.C. § 316(d) states that, during an IPR, the patent owner may file one motion to amend its patent by canceling any challenged claim and, optionally, for each challenged claim that it cancels, proposing a reasonable number of substitute claims.  One substitute claim for each cancelled challenged claim is presumed to be reasonable, although the patent owner may file additional substitute claims on a demonstration of need.[1]  Title 35 U.S.C. § 316(d) requires that such substitute claim not enlarge the scope of the challenged claim or introduce new matter.  In Idle Free v. Bergstrom, IPR2012-00027 (“the Idle Free IPR”), the Board indicated that “a motion to amend should, for each proposed substitute claim, specifically identify the challenged claim which it is intended to replace” so the Board has an adequate basis to determine the reasonableness of the number of substitute claims for each original claim. 

Before filing a motion to amend the patent during IPR, the patent owner is required to confer with the Board.  37 C.F.R. 42.121(a).  A motion to amend may be denied where the amendment does not respond to a ground of unpatentability that formed the basis for the Board’s institution decision, the amendment seeks to enlarge the scope of the claims, or the amendment introduces new subject matter.  37 C.F.R. 42.121(a)(2).  A motion to amend must not only include a claim listing, showing the changes clearly, but also must set forth (1) the support in the original written description for each amended claim, and (2) the support in an earlier-filed application for each claim for which an earlier priority date is sought.  37 C.F.R. 42.121(b)...


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A Key Question On Appeals Of Stays Pending CBM Review

by David Cavanaugh and Robert Arcamona of WilmerHale



David Cavanaugh


Robert Arcamona

 

Reprinted with permission from the January 15th, 2015 edition
of the Law360© 2015, LexisNexis.


                                  Appeals of Stays Pending CBM Review

             

Section 18(b)(1) of the America Invents Act (“AIA”) requires district courts to apply four factors when deciding motions to stay litigation pending Covered Business Method (“CBM”) review.[2]  Litigants unhappy with a district court’s application of those factors may take immediate interlocutory appeal to the Federal Circuit pursuant to AIA Section 18(b)(2).  Below is a brief description of the Federal Circuit’s Section 18(b) case law to date and one key question the Federal Circuit has not yet answered.

 

FEDERAL CIRCUIT PRECEDENT

             

The Federal Circuit’s first Section 18(b) decision came in July, 2014 in Virtual Agility, Inc. v. Salesforce.com, Inc., 759 F.3d 1307 (Fed. Cir. 2014).  There, the Eastern District of Texas denied a stay of litigation pending CBM review of every patent claim asserted in the case.  Id. at 1309.  The defendants appealed the court’s denial. 

             

The Federal Circuit reversed.  Although the majority provided analysis as to all four Section 18(b)(1) factors, it offered particularly noteworthy points with respect to the first factor—whether a stay pending the CBM review would simplify any future trial.  For instance, the majority stated that a stay is favored where the Patent Trial and Appeal Board (“PTAB”) institutes review of every patent claim in a litigation because the proceeding “could dispose of the entire litigation:  the ultimate simplification of issues.”  Id. at 1314. 

The second decision concerning Section 18(b) issued in September, 2014 in Benefit Funding Systems v. Advance America Cash Advance Centers, Inc., 767 F.3d 1383 (Fed. Cir. 2014).  In that case, the Federal Circuit affirmed the District of Delaware’s grant of a stay...

 

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Cooking with Alice: A Recipe for Responding to § 101 “Abstract Idea” Rejections

by Greg Gerstenzang of Lando and Anastasi



Greg Gerstenzang


In last year’s decision in Alice Corporation v. CLS Bank International, 573 U.S. ____ (2014) (“Alice”), the Court held that claims directed to abstract ideas without more should be rejected under 35 U.S.C. § 101.  Since this decision, the number of patent applications directed to computer based methods that have had claims rejected under § 101 as allegedly directed to “abstract ideas” has skyrocketed.  Applicants have had little luck having these rejections overturned on appeal to the Patent Trial and Appeal Board (PTAB), with the vast majority of applications having  § 101 rejections appealed to the PTAB affirmed as being invalid under § 101.

 

Applicants have been challenged with how to respond to rejections of claims of a patent application under § 101 as directed to an “abstract idea” (Alice rejections) per the guidance developed by the United States Patent and Trademark Office (PTO) after the decision in Alice was issued.  The following is a list of possible ingredients that might form at least part of a recipe for successfully overcoming Alice rejections.

 

Ingredient: Challenge the Prima Facie case

             

Under the Administrative Procedure Act (APA), 5 U.S.C. § 500 et seq., agency decisions, including the rejection of claims of a patent application by the PTO, must be supported by “substantial evidence.”  Yet Alice rejections issued by the PTO often consist of a bare assertion by an Examiner that the claims at issue are directed to an abstract idea without “something more” that would render them patent eligible.  The opinion of an Examiner, however, does not qualify as “substantial evidence”[i] in the sense of the APA.  The Manual of Patent Examining Procedure (MPEP) requires an Examiner to provide “clear rationale supporting the determination that an abstract idea has been claimed.”[ii]  Thus, if an Examiner has not articulated clear reasoning supporting the determination that a claim is directed to an abstract idea or has not provided “substantial evidence” that the alleged abstract idea is the type of abstract idea that should render a claim ineligible for patentability or why the claim does not include “something more” than a recitation of the alleged abstract idea itself, the Examiner has not satisfied the burden[iii] of establishing a prima facie case of unpatentability...


Read More

 




Protecting the Brick: LEGO’s Global IP Enforcement Efforts

by Christopher Noyes and Crystal Roberts of WilmerHale



Christopher Noyes


Crystal Roberts


Introduction

 

There are few toys as recognizable as the LEGO® brick.  The tiny plastic brick is the LEGO Group’s “most important product.”[1]  Although LEGO products have undergone extensive development since the launch of the traditional LEGO® brick in 1958, the foundation has remained the same.  LEGO has twice been named “Toy of the Century.”[2]  

In 1999, the brick was named as one of the “Products of the Century” by Fortune Magazine.[3]  It has spawned licensing deals with well-known franchises such as Star Wars, Lego-themed television shows, theme parks, videogames, and the 2014 box office hit, The LEGO Movie.

Given the success of the LEGO® brick, the LEGO Group has, not surprisingly, sought and obtained patents to protect its foundational brick technology.  LEGO’s early U.S. patents issued in the 1960s and claimed variations of the famous toy brick.[4]  Over the years, LEGO’s early brick patents expired, opening the market to competitors to sell “similar if not identical products.”[5]  Many of these competitors, such as Canadian company Mega Bloks, make lower cost products that are compatible with LEGO® bricks.  For example, Mega Bloks initially had developed and marketed large-size (i.e., “mega”) building blocks, but “after the expiry of the last LEGO patents in Canada, it decided to use the traditional LEGO technology” and has since become a significant global competitor to LEGO.[6]  As a result, LEGO has sought to protect its valuable bricks using a variety of intellectual property.

 

As described in this article, over the past 20 years, LEGO has made attempts in jurisdictions around the world to protect its LEGO® bricks and related product lines using a combination of patent, trademark, and copyright.  LEGO’s IP enforcement efforts, which largely have been an uphill battle, demonstrate a company with valuable, but older, technology attempting to protect its most enduring asset...


Read More


 

Reprinted with permission from the July 13th 2015 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 - reprints@alm.com or visit www.almreprints.com.


 


Summary of the 2015 ABA-IPL Trademark Day: Behind the Scenes at the USPTO

by John Carl Zwisler, Juris Doctor Candidate 2016, Northeastern University School of Law



John Carl Zwisler


On September 16, the USPTO held an event entitled 2015 ABA-IPL Trademark Day: Behind the Scenes at the USPTO. The event was open to attorneys from across the country and was meant to give participants an inside look at the responsibilities of different sections of the USPTO, provide updates on policies and procedures, and give an overview of the TTAB. I, along with three other law students from across the country, was able to attend and act as a law student reporter for the event.

 

The morning began with an overview of the USPTO. There was a discussion of the inner workings of the office and general information about the filing process. We were told of the recent changes to the TMEP and were told to stay informed of any changes by signing up for email alerts on the USPTO website. One highlighted proposed change was the ability to search back in time to find out how applications or registrations have changed over a period of time.

 

The morning ended with a presentation of the life of a trademark examining attorney. The presentation showed how the attorneys use the FAST system for searches and discussed the workload an attorney is assigned. We were also informed that an examining attorney is on somewhat of a probation period for the first two years. This way, office actions and final refusals will be reviewed by a supervisor before issued to an applicant...


Read More






Invented Here! 2015 Event

by Mark B Solomon of Hamilton Brooks Smith Reynolds, Rory Pheiffer of Nutter McLennan, Aaron Connor of Eli Lilly and Company, and Reza Sadr of Pierce Atwood



Mark B Solomon


Rory Pheiffer


Aaron Connor


Reza Sadr


On Thursday, October 22, 2015, the Boston Patent Law Association’s (BPLA) Invented Here! Committee celebrated Massachusetts Inventors Day by holding its fifth annual Invented Here! event to honor New England’s innovators and their innovations.  This year, the event recognized an inventor who is a leader in the titanium industry, and started in that industry at its very beginning -- the 1950s.  The inventor, Stanley Abkowitz, has received patents in each of the past seven decades: 1950s, 1960s, 1970s, 1980s, 1990s, 2000s, 2010s, and has patent applications pending!  Mr. Abkowitz’s innovations have made their way into military, commercial, and consumer products.  Titanium is currently being used in products such as aircraft, missiles, medical devices, automobiles, bicycles, and golf clubs, and has many other applications.

 


Stanley Abkowitz

 

Mr. Abkowitz’s patents have enabled others to follow in his path and continue the growth of the very important titanium industry.  During a short speech, Mr. Abkowitz shared with the audience how his titanium process and compounds are created and used in the development and production of titanium components. He also passed around and explained some interesting show-and-tell pieces related to his inventions. 

 

When asked by a member of the audience what makes a successful entrepreneur, Mr. Abkowitz replied: “The entrepreneurial mind has to be creative, must have the passion to pursue the goal, must be willing to take certain risks and, of course, must have the vision to target a worthy end product.”

 

As part of the evening’s recognition, Mr. Abkowitz received the first annual Jacob (“Jesse “) N. Erlich Achievement Award for his outstanding accomplishments, as illustrated by his patents and the span of time over which he was awarded those patents.  Laura Erlich and Adam Erlich, wife and son of late BPLA Past President and former partner at Burns & Levison, Jesse Erlich, were in attendance at the event. Also in attendance were Lorraine Abkowitz, wife of Stanley, and their daughter Susan Abkowitz.  Susan, a co-inventor with her father Stanley on some of the more recent patents, also participated in the event by serving as a panelist with Stanley and responding to questions from the audience during a questions and answers period... 

 


Read More



 

 

 

 

 




Job Postings


 

 

IP Associate - Nutter McClennen & Fish LLP

Nutter McClennen & Fish LLP seeks an intellectual property attorney with 4 or more years of patent prosecution and counseling experience. Advanced technical degree in electrical engineering, mechanical engineering, physics, or medical device/biomedical engineering is preferred...

 

 

Technology Specialists & Associates - Lando & Anastasi, LLP

Join our rapidly growing practice as a Technology Specialist or a Patent Attorney. These are exciting opportunities to work with a broad range of clients, including start-ups, inventors, and medium-sized and large public companies. You'll work closely with senior members of the firm on a wide variety of intellectual property matters, including patent prosecution, opinion work, due diligence projects, and general intellectual property counseling...

 

 

Foreign Filing Specialist or Patent Paralegal with Foreign Filing Experience - Onello & Mello LLP

Forget about the commute to Boston!! Come to work in a GREAT Burlington Law Firm as a Foreign Filing Specialist or Patent Assistant! The Firm is very busy, and we need an additional team member!...

 

 

Patent Litigation Lawyer - Blackbird Technologies

Company recently formed by partners of AmLaw20 firms looking for experienced mid to senior level associate with at least three years of patent litigation experience, who can handle most day-to-day case demands autonomously. Rare opportunity for substantive courtroom experience, independence and an entrepreneurial environment...

 

 

Docket Clerk - ImmunoGen, Inc

Reporting to the Patent Administrator, the Patent Docket Specialist will provide docketing and filing to our team of biology and chemistry patent practitioners. The Patent Docket Specialist, as part of the IP team, will review and file all correspondence in WorkSite electronic document management system and docket information and dates into CPi docket...

 

 



 

 

 

Harbor Consulting Celebrates its 20th Year Anniversary!

 

2015 MARKS COMPANY MILESTONE


September 2015, Portsmouth, NH – Harbor Consulting IP Services, Inc. (“HCIP”) proudly announces its 20th Year Anniversary. Started in September of 1995, HCIP began as a one person operation. Over the last 20 years, the company has grown in both size and reputation to become the most recognized outsource provider for worldwide Sequence Listing compliance, as well as the go to provider for sequence, full text, and small molecule IP searching in the life sciences industry. Today, HCIP boasts well over a thousand US and international law firms, as well as several Fortune 500 and mid to small level biotech companies as its clientele.

 

“Since 1995, HCIP has grown and succeeded by providing exceptional quality, efficiency, and service to our clients in a very niche industry. Our unwavering focus on these core company values, combined with our consistent goal to get better and improve every day, as well as the exceptional efforts of each and every staff member, has led to a reputation for which I am equally humbled and proud of to this day,” said James Coburn, President and CEO of HCIP. “This is an exciting time in the life sciences industry, so while the past 20 years have been a terrific ride, I truly look forward to what HCIP will accomplish going forward.”

 

About Harbor Consulting

 

Harbor Consulting IP Services, Inc. (www.seqidno.com) is a dedicated leader in the life sciences IP industry committed to providing excellent service to our clients. It is our mission to assist law firm, in-house, and sole practitioner patent attorneys/agents with various aspects of their practices by leveraging and utilizing our vast experience and expertise in the industry. Our business model centers on the basic philosophies of teamwork, commitment, accuracy, quality, efficiency, accessibility, innovation, and charitable giving. Quite simply - our clients will know we work hard to provide accurate, timely results while keeping their best interests in mind; our employees will know we're a team that supports, encourages and respects one another; and our community will know we're dedicated to continuing our long standing tradition of supporting those in need.

 

For more information, contact:

James Coburn

800-318-3021 (x101)

jcoburn@seqidno.com

 

Or

 

Tara Rix

800-318-3021

(x102)

trix@seqidno.com




 

Adler Pollock & Sheehan has added an experienced Patent, Trademark and Copyright Services Group to its team of business law practitioners.

 

Daniel J. Holmander joins Adler Pollock & Sheehan as Counsel and Chairman of the Patent Services and Trademark & Copyright Services Group, bringing with him more than 15 years of experience with clients ranging from growing startups to Fortune 500 companies. Dan most recently practiced patent and trademark law at Barlow, Josephs & Holmes, Ltd. in Providence, where he specialized in supporting research universities, companies and technology companies.

 

George N. Chaclas joins Adler Pollock & Sheehan as Counsel. George brings more than 17 years of experience in IP law, providing counsel to a wide range of companies, academic institutions, startups and entrepreneurs. George is a registered patent attorney at the U.S. Patent and Trademark Office (USPTO). He most recently practiced law at Locke Lorde LLP in Providence.

 

The group, which will specialize in patent, trademark and copyright prosecution, will expand the offerings of the firm’s existing Intellectual Property services, such as IP litigation and IP transactional services. Adler Pollock & Sheehan is now the only full-service law firm in Rhode Island with a patent prosecution group. As noted in the Providence Business News’ list of Intellectual Property Law Firms, Adler Pollock & Sheehan was ranked number one by its number of intellectual property lawyers.

 

“We are thrilled to bring such a talented and seasoned team of IP prosecution professionals into the firm, and the opportunity this presents to expand our intellectual property services to include all of the important intellectual property issues facing companies of all sizes and industries today,” said AP&S Managing Partner Robert Brooks. “Our ability to integrate this prosecution IP group into our business practice will provide our clients with a valuable resource they need to compete and thrive in this marketplace.”

 


 

BPLA Amicus Brief filed on August 25th 2015

 

BPLA filed an Amicus Brief related to CHRIS E. MALING v. FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP on August 25th 2015. For details, please see here.

 



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 (
Chelsea.Loughran@WolfGreenfield.com) or Rex Huang (huang@fr.com).






Committees

Activities and Public Relations

activities@bpla.org

Jennifer Zarutskie Sieczkiewicz, Biogen Idec Inc.

 

AIPLA Moot Court

mootcourt@bpla.org

Katherine Moskop, Seyfarth Shaw LLP

Joshua Dalton, Morgan, Lewis & Bockius LLP

Emma Hall, Morgan, Lewis & Bockius LLP

 

Amicus

amicus@bpla.org

Erik Paul Belt, McCarter & English, LLP

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

Heather Repicky, Nutter McClennen & Fish LLP

 

Antitrust

antitrust@bpla.org

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

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

 

Biotechnology

biotechnology@bpla.org

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

Jennifer Camacho, Gen9, Inc.

 

Business & Marketplace

businessandmarket@bpla.org

Jeremy Bond, Sanofi S.A.

Jamie Kemler, Stryker Corporation

 

Case Law

caselaw@bpla.org

Leslie Meyer-Leon, IP Legal Strategies

David Thibodeau, Cesari and McKenna LLP

 

Chemical Patent Practice

chemical@bpla.org

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

computer@bpla.org

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

Lawrence Stanley, Morgan Lewis & Bockius LLP

 

Contested Matters

contestedmatters@bpla.org

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

Amelia Baur, McNeill Baur PLLC

Andrej Barbic, Wilmer Cutler Pickering Hale and Dorr LLP

 

Copyright Law

copyright@bpla.org

Nicole Rizzo Smith, Ropes & Gray LLP

Michael Bevilacqua, Wilmer Cutler Pickering Hale and Dorr LLP

 

Corporate (In-House) Practice

inhouse@bpla.org

Michael Robinson, Agenus Inc.

Nick Boivin, Cubist Pharmaceuticals, Inc.

 

Ethics and Grievances

ethics@bpla.org

Stacy Anderson, Foley Hoag LLP

 

International and Foreign Practice

international@bpla.org

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

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

 

Invented Here!

inventedherecommittee@bpla.org

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

 

Licensing

licensing@bpla.org

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

William Worden, Pierce Atwood LLP


Litigation

litigation@bpla.org

Wendy Plotkin, Biogen Idec Inc.

Jeremy Younkin, Foley Hoag LLP

 

Medical Devices

medicaldevices@bpla.org

Claire Laporte, Foley Hoag LLP

David Lane, Johnson & Johnson

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

 

New Lawyers and Law Students

newlawyers@bpla.org

Michael Carbonello, Houston & Associates

Reza Sadr, Pierce Atwood LLP

 

Patent Agents and Technical Specialists

patagents_techspecs@bpla.org

Cristin Berkey, Lando & Anastasi

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

 

Patent Law

patents@bpla.org

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

Konstantin Linnik, Nutter McClennen & Fish LLP

 

Patent Office Practice

patentofficepractice@bpla.org

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

probono@bpla.org

Reza Sadr, Pierce Atwood LLP

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

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

 

Trade Secrets Law

tradesecrets@bpla.org

Elias Domingo, Covidien

Michael Bunis, Choate, Hall & Stewart LLP

 

Trademarks and Unfair Competition

trademarks@bpla.org

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 www.bpla.org. 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.

 

Editor-In-Chief:

Monica Grewal, WilmerHale

 

Contributors:

Edmund J. Walsh and Stuart V.C. Duncan Smith of Wolf Greenfield; David Cavanaugh, James Dowd and Michael Smith of WilmerHale; Gregory Lantier and John LeBlanc of WilmerHale; David Cavanaugh and Robert Arcamona of WilmerHale; Greg Gerstenzang of Lando and Anastasi; Christopher Noyes and Crystal Roberts of WilmerHale; John Carl Zwisler, Juris Doctor Candidate 2016, Northeastern University School of Law; and Mark B Solomon of Hamilton Brooks Smith Reynolds, Rory Pheiffer of Nutter McLennan, Aaron Connor of Eli Lilly and Company, and Reza Sadr of Pierce Atwood

 

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: vice-president@bpla.org

 

©2015 Boston Patent Law Association. All rights reserved.

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Board of Governors

President

Gregory Sieczkiewicz

MPM Capital

President@bpla.org

 

Treasurer

Rory Pheiffer

Nutter McClennen & Fish LLP

Treasurer@bpla.org

 

Board Member

Michael Bergman

Bergman & Song LLP.

Board@bpla.org

 

President-Elect

Erik Paul Belt

McCarter & English, LLP

President-elect@bpla.org

 

Secretary

Deirdre Sanders Hamilton, Brook, Smith & Reynolds, PC

Secretary@bpla.org

 

Board Member

Daniel W. Young

Wolf Greenfield & Sacks P.C..

Board@bpla.org

 

Vice President

Monica Grewal

Wilmer Cutler Pickering Hale and Dorr LLP

Vice-President@bpla.org

 

Immediate Past-President and Board Member

Donna Meuth

Eisai Inc.

Board@bpla.org

 

Board Member

Nikhil Patel

Burns & Levinson LLP

Board@bpla.org



2014 Annual Meeting Minutes are available here.

 

 

Nominations for the BPLA officers for 2015-2016

 

The BPLA nominating committee has nominated the following officers for BPLA for the 2015-2016 year:

President:           Erik Belt (automatic elevation)
President-Elect:  Monica Grewal
Vice President:   Rory Pheiffer
Treasurer:           Deirdre Sanders
Secretary:           Michael Bergman
Board of Governors:
      Gregory Sieczkiewicz (Immediate Past President)
      Daniel Young
      Nikhil Patel
      Michael McGurk

BPLA will have its 2015 Annual Meeting on December 1st 2015 where all active, dues paid members will have an opportunity to vote on the above proposed new Board for BPLA. One can register for the Annual Meeting here.

 


Proposed membership by-law change

 

The Board of Governors recommends the following proposed revision to the by-law for qualifications for membership to encourage more people to join and to clarify who is eligible for membership to the BPLA. The Board will ask the membership to vote on the revision at the Annual Meeting on December 1, 2015.

The proposed membership by-law is as follows (a Word version is available here):

The membership of this Association shall consist of three classes of membership: Attorney, Non-Attorney, and Life.

(A) ATTORNEY MEMBERS. Attorneys at law who are in good standing in any court of record in the United States, or any of the States or territories thereof, and engaged in the practice of patent, trademark, copyright, or other intellectual property law shall be eligible for election to Attorney membership. Attorney Members shall have the right to vote. Only Attorney Members who reside or have a principal office in the First Federal Judicial Circuit as now fixed by law shall have the right to hold office.

(B) NON-ATTORNEY MEMBERS. Non-Attorney Members shall have the powers, privileges, and obligations of Attorney Members of the Association except those of voting and holding office.  The following categories of persons who do not qualify for Attorney Membership and who reside or have a principle place of business in the First Federal Judicial Circuit as now fixed by law may be eligible for election to Non-Attorney Membership, subject to the discretion of the Board of Governors:

(1) patent agents registered in the United States Patent and Trademark Office;

(2) students who are enrolled and in good standing in an accredited law school;

(3) paralegals and technical specialists who are employed by, or provide services to, a firm or company engaged in the practice of patent, trademark, copyright, or other intellectual property law;

(4) inventors, engineers, scientists, researchers, technicians, authors, and artists;

(5) academics and university students (a) in any science, engineering, or technical field recognized by the United States Patent and Trademark Office or (b) who have demonstrated a verifiable interest in intellectual property issues;

(6) subject matter consultants and experts who regularly advise or provide services to intellectual property lawyers and their law firms; provided, however, that are not seeking membership merely as a means to gain access to sales and business opportunities;

(7) others who have demonstrated a verifiable interest in intellectual property issues and who are not seeking membership merely as a means to gain access to sales and business opportunities.,

In exercising its discretion to admit or deny admission to Non-Attorney Members, the Board of Governors may delegate its authority to the Secretary of the Board of Governors. The Board of Governors reserves the right to revoke membership of any person deemed by the Board of Governors to be marketing products or services to other members to the detriment of the Association.


(C) LIFE MEMBERS. All Attorney and Non-Attorney Members upon reaching the age of seventy shall automatically become Life Members of the Association. Life Members shall continue to have all the powers, privileges and obligations they had prior to becoming Life Members except that they shall be exempt from the payment of dues.


The current membership by-law is as follows (full by-laws are available here):

The membership of this Association shall consist of three classes of membership: Attorney, Non-Attorney, and Life.

ATTORNEY MEMBERS. Attorneys at law who are in good standing in any Court of record in the United States, or any of the States or territories thereof, and engaged in the practice of patent, trademark, copyright or other intellectual property law shall be eligible for election to Attorney membership. Attorney Members shall have the right to vote. Only Attorney Members who reside or have a principal office in the First Federal Judicial Circuit as now fixed by law shall have the right to hold office.

NON-ATTORNEY MEMBERS. Persons who do not qualify for Attorney Membership and who are (1) registered in the United States Patent and Trademark Office as entitled to represent applicants before the Patent and Trademark Office in the presentation and prosecution of applications for patents be eligible for election to Non-Attorney Membership in the Association, (2) students who are enrolled and in good standing in an accredited law school shall be eligible for election to Non-Attorney Membership in the Association, (3) paralegals who are employed by, or provide services to, a firm or company engaged in the practice of patent, trademark, copyright or other intellectual property law shall be eligible for election to Non-Attorney Membership in the Association, and (4) others (after specific consideration and election by the Board of Governors) who have an interest in intellectual property law, and its practice, who are employed by, or provide services to, a firm or company engaged in the practice of patent, trademark, copyright or other intellectual property law shall be eligible for election to Non-Attorney Membership in the Association. Non-Attorney Members shall have the powers, privileges, and obligations of Attorney Members of the Association except those of voting and holding office.

LIFE MEMBERS. All Attorney and Non-Attorney Members upon reaching the age of seventy shall automatically become Life Members of the Association, Life Members shall continue to have all the powers, privileges and obligations they had prior to becoming Life Members except that they shall be exempt from the payment of dues.

 



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: vice-president@bpla.org



 

Boston Patent Law Association

One Batterymarch Park, Suite 101,

Quincy, MA 02169

Phone: 617.507.5570

www.bpla.org


 

 

 

 

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

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