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Peter J. Cuomo

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[email protected]

+1.617.348.1854

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Peter’s practice involves intellectual property enforcement and defense, and client counseling on issues related to IP rights. Peter's primary focus is in patent litigation where he has experience in every phase from pre-suit investigations through appeal, including, initial evaluation and case initiation, fact and expert discovery, pre-and post-trial motion practice, and trials and appeals. In addition to suits centered on the assertion and defense of infringement claims, Peter has experience with the successful resolution of multiple inventorship disputes and related misappropriation claims.

Peter has represented clients across a wide range of technologies such as biotechnology inventions, automotive parts, medical and mechanical devices, consumer products. He has also worked on numerous high-stakes Hatch-Waxman litigations for major pharmaceutical companies through trial and appeals. In addition to patent litigation, Peter has experience in disputes involving breach of contracts, unfair competition, trademarks and trade secret misappropriation claims.

Peter is a registered patent attorney licensed to practice and argue before the United States Patent and Trademark Office. In addition to representing clients in US District Courts and the US Court of Appeals for the Federal Circuit, he has experience in multiple post-grant proceedings before the Patent Trial and Appeal Board and its predecessor. He also provides patent and product analyses, and evaluations of prior art related to noninfringement and invalidity opinions.

Prior to joining the firm, he practiced in the intellectual property litigation practice in the Boston office of another international law firm. Peter also previously worked in and supervised an academic laboratory focused on researching infectious diseases. He is a co-author on multiple scientific papers and spent time in Zambia investigating the co-infection of measles and HIV. During law school, Peter was an editor on the Boston University Journal of Science and Technology Law and worked as a research assistant in intellectual property and the Health Law Department.

Education

  • Boston University School of Law (JD, Intellectual Property, Honors)
  • Johns Hopkins University (MS, Biotechnology)
  • Trinity College (BS, Biology)

Experience

  • Validity Challenge in Inter Partes Reexamination – Counsel to a medical device company as the third-party requester in a complex inter partes reexamination at the United States Patent and Trademark Office involving nearly 300 claims related to video laryngoscopy. On appeal and after more than six years, the Patent Office invalidated all but one claim that did not pose a risk of infringement to our client.
  • Member of a trial team that represents major international pharmaceutical companies and has successfully litigated cases at both the district court and appellate level in ANDA patent infringement actions under the Hatch-Waxman Act.  Representative civil actions: Mitsubishi Chem. Co. v. Barr Labs., Inc., 718 F. Supp. 2d 382 (S.D.N.Y. 2010), aff’d, 435 Fed. Appx. 927 (Fed. Cir. Aug. 2, 2011); Takeda Pharmaceutical Company Limited et al v. Mylan, Inc. et al, (S.D.N.Y. -12-cv-00024); Takeda Chem. Indus., Ltd. v. Alphapharm Pty., Ltd., 492 F.3d 1350 (Fed. Cir. 2007), cert. denied, 552 U.S. 1295 (2008).
     
  • Defense of Multiple IPRs – Pharmaceuticals (IPR2015-01069, IPR2015-01647, IPR2015-01648): Representing Kowa Company in defense of three inter partes reviews filed by Mylan and Sawai. Petitioners are defendants in Hatch-Waxman cases asserting Kowa’s patent rights related to the drug product Livalo.
  • Validity Challenge in IPR Proceeding – Bed Spring (IPR2014-01119): Represented ACE Bed Co., Ltd., in an inter partes review proceeding that resulted a final decision invalidating all of the challenged claims of a patent assigned to Sealey Technology LLC relating to bed springs.
  • Validity Challenge in IPR Proceeding – Recombinant proteins (IPR2016-00258): Representing Green Cross Corporation as the petitioner in an IPR proceeding challenging the validity of patent claims on a recombinant therapeutic enzyme.
  • Validity Challenge in IPR Proceeding – Vehicle Headlights (IPR2016-00193): Representing SL Corporation as the petitioner in an IPR proceeding challenging the validity of patent claims on an automatic control system for vehicle headlights.
  • MeadWestvaco v. Rexam, Appeal No. 12-1518 (Fed. Cir.): Represented the plaintiff-appellee on appeal to the Federal Circuit following a bench trial awarding the company with permanent injunctions against two direct competitors. While considering numerous challenges to infringement and validity from both defendant-appellants in a consolidated appeal, the Federal Circuit affirmed, inter alia, the district court’s decisions on infringement and did not disturb injunctions awarded to our client.
  • Dallakian v. IPG Photonics, 3:14-cv-11863-TSH (D. Mass.): Represented IPG Photonics while successfully defending against claims for correction of inventorship and trade secret misappropriation.

Recognition & Awards

  • Paul J. Liacos Scholar, Boston University School of Law
  • Dean’s Award for Corporate Law, Boston University School of Law

Involvement

  • Member, American Intellectual Property Law Association
  • Member, Boston Bar Association
  • Member, Boston Patent Law Association

Recent Insights

News & Press

Viewpoints

Viewpoint
Recently in Nobel Biocare Services AG v. Instradent USA, Inc., the Federal Circuit affirmed a decision of the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (“the Board”) in an inter partes review (“IPR”) finding certain claims of U.S. Patent No. 8,714,977 (“the ’977 Patent”), directed to dental implants, unpatentable as anticipated.  The Nobel decision is the latest in a recent line of Federal Circuit cases holding that materials distributed at conferences, trade shows, and meetings are publically available “printed publications” within the meaning of pre-AIA 35 U.S.C. § 102(b).
On May 14, 2018, the United States Court of Appeals for the Federal Circuit, In re: ZTE (USA) Inc., No. 2018-113, held that Federal circuit law governs the burden of proof for venue challenges under 28 U.S.C. § 1400(b) and that the burden of proof rests on the plaintiff to demonstrate proper venue upon a defendant’s motion to dismiss for lack of venue.
The U.S. Patent and Trademark Office announced a propose change to the standard for construing both unexpired and amended patent claims in Patent Trial and Appeal Board (PTAB) proceedings under the America Invents Act (“AIA”).
In a precedential opinion issued on October 11, 2017, the United States Court of Appeals for the Federal Circuit reversed the Patent Trial and Appeals Board’s (“PTAB”) finding of non-obviousness where the prior art taught away from some, but not all, of the embodiments covered by the challenged claims.
On September 6, 2017, an expanded panel of the Patent Trial and Appeal Board issued an “informative” decision in General Plastic Industrial Co., Ltd, v. Canon Kabushiki Kaisha setting forth the Board’s framework for analyzing follow-on inter partes review (IPR) petitions.
In EmeraChem Holdings LLC v. Volkswagen Group of Am. Inc., the Federal Circuit reminded the PTAB that it must abide by the APA’s requirements of adequate notice and an opportunity to respond when conducting a post-grant review.
On May 10, 2017 and following a Patent Trial and Appeal Board (PTAB) reexamination decision upholding certain claims, the United States Court of Appeals for the Federal Circuit ruled in Cisco Systems, Inc. v. Cirrex Systems, LLC that all of the appealed claims of a fiber optic patent held by Cirrex are invalid for lack of a written description support required by 35 U.S.C. § 112.
On March 14, 2017, the United States Court of Appeals for the Federal Circuit clarified, in a precedential opinion, that an anticipating reference must supply all of the claim elements, regardless of what a person of skill in the art might envision when reading the reference.
On March 3, 2017, the United States Court of Appeals for the Federal Circuit reaffirmed, in a precedential opinion, that prosecution disclaimers may only limit the scope of a claim where the disclaimer is “both clear and unmistakable to one of ordinary skill in the art.”
Plaintiffs bringing patent infringement complaints under the Iqbal/Twombly pleading standard should take notice.  On September 30, 2016, a panel of the Federal Circuit affirmed a district court’s dismissal of a deficient complaint under Rule 12(b)(6).

News & Press

Mintz has secured a string of substantial victories in Hatch-Waxman litigation for innovative drug manufacturers Kowa Pharmaceutical Co., Ltd., Kowa Pharmaceuticals America, Inc., and Nissan Chemical Industries Ltd.
Mintz announced a pair of victories before the Patent Trial and Appeal Board on behalf of SL Corporation and Hyundai Motor America, Inc. against Adaptive Headlamp Technologies, Inc.

Events

Speaker
May
1
2018

Technology Centers 3600 & 3700 Customer Partnership Meeting

USPTO and American Intellectual Property Law Association

USPTO Headquarters 600 Dulany Street, Madison Auditorium Alexandria , VA