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Kevin C. Amendt

Associate

[email protected]

+1.617.348.4863

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As a patent attorney, Kevin's focus is on strategic IP counseling, including patent procurement and IP litigation. He is known for identifying and capturing maximum value from his client’s innovations. His success on behalf of clients comes from his combination of strong technical and legal skills.

Kevin counsels clients on all aspects of patent prosecution. He drafts and prosecutes patent applications and performs patent portfolio, infringement, and validity analyses. He helps clients obtain patents that reflect the technical details of their invention as well as their business plan.

Kevin is involved in intellectual property disputes. He handles post-grant proceedings before the USPTO and the Patent Trial and Appeal Board, including ex-parte re-examinations and inter-partes reviews (IPRs). He also is involved in patent litigation with experience supporting cases in federal district court and at the International Trade Commission (ITC). Kevin plays an active role in analyzing prior art, infringement material, and discovered documents to formulate and support litigation positions.

Kevin has worked on behalf of entities ranging from individual inventors and venture-backed startups to academic institutions, hospitals, and large multinationals. His experience spans broad technical fields including medical devices, software, consumer electronics, signal processing, telecommunication, robotics, artificial intelligence, business methods, mechanical systems, and biotechnology.

Kevin graduated first in class and summa cum laude from Suffolk Law’s evening program while working full time at Mintz as a patent agent. Upon graduation he received the Daniel J. Fern Award for outstanding academic achievement.

Before joining Mintz, Kevin worked as a systems engineer for Raytheon Corporation in their missile defense systems department. He has also worked for Science Applications International Corporation (SAIC), and Tangible Media, a research group with the MIT Media Laboratory. While pursuing his MS in Electrical and Computer Engineering, he focused on intelligent systems, robotics, and control.

Education

  • Suffolk University Law School (JD, summa cum laude)
  • University of California - San Diego (MS, Electrical and Computer Engineering)
  • Massachusetts Institute of Technology (BS, Electrical Engineering and Computer Science)

Experience

  • Managed and prosecuted portfolio of bill validators for private equity-backed company spun out of one of the largest privately held companies in the United States. Also conducted landscape and freedom to operate analysis for new product releases.
  • Handle patent prosecution and invention harvesting for emerging e-sports company.
  • Handled world-wide patent portfolio strategy for an Inc. 500 international retail jewelry company.
  • Inter Partes Reexamination 95/001,874 – Represented Petitioner Camtek Ltd. in invalidating some claims of U.S. Patent No. 7,729,528 related to an automated wafer defect inspection system. All instituted claims were found invalid. Patent Trial and Appeal Board upheld decision on patent owner appeal.
  • Ambato Media LLC v. Clarion Co. Ltd et al., 2:09-cv-00242, (E.D. Texas) –Helped develop validity and infringement positions for patent owner Ambato Media, LLC in its patent infringement jury trial victory over Garmin International, Inc.

Recognition & Awards

  • Daniel J. Fern Award, Suffolk Law (Given annually to the graduate with the highest cumulative GPA)
  • Admiral Cochrane Leadership Award, MIT (Given annually to student-athlete who shows the highest qualities of humility, leadership, and inspiration)

Recent Insights

Events

Viewpoints

The Court of Appeals for the Federal Circuit ruled in February that it was wrong for a judge to rule that a patent was ineligible under the Alice standard because there were underlying factual disputes that could not be resolved on summary judgement.
Struggling to keep case law relating to subject matter eligibility organized?  In February 2018, the United States Patent and Trademark Office (USPTO) released an improved Eligibility Quick Reference Sheet, providing patent practitioners with a useful tool for analyzing claims in view of 35 U.S.C. § 101 subject matter eligibility requirements.
On August 25, 2017, the Patent Trial and Appeal Board issued a precedential opinion in Ex Parte McAward, reaffirming the Patent Office’s use of a lower pre-issuance threshold for indefiniteness distinct from the Supreme Court’s Nautilus standard.
Someone stole your invention and filed for a patent on it? Derivation proceedings in the Patent Office may be an answer. The Leahy-Smith America Invents Act (AIA) amended 35 U.S.C. § 135 to replace interference proceedings with a new process called derivation proceedings.
The Patent Trial and Appeal Board ("the Board") recently announced the addition of its March 26, 2015 decision in Dell, Inc. et al. v. Electronics and Telecomms. Res. Inst., IPR2015-00549 (“the ‘549 IPR”) to its online list of Representative Orders, Decisions, and Notices.

Events

Speaker
Aug
7
2018

Legal Start-Up Workshop

Boston College’s Soaring Startup Circle

Boston, MA

Speaker
Jul
17
2017

Legal Start-Up Workshop

Boston College’s Soaring Startup Circle

Boston, MA

Speaker
Nov
5
2015

Patents in an Innovation Economy

CreaGen Life Science Incubator

Woburn, MA