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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. His primary focus is in patent litigation where he has experience in every phase of trials and appeals as well as alternative dispute resolution. 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. In addition to litigation, he provides product analyses, and enforcement advice, and evaluates infringement and validity issues in relation to patent opinions and due diligence work.

Peter has represented clients across a wide range of technologies such as biotechnology inventions, automotive parts, medical and mechanical devices, consumer products. He has 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 represented clients in multiple post-grant proceedings before the Patent Trial and Appeal Board, and has successfully arbitrated a dispute for a major biotechnology company before the International Chamber of Commerce in Geneva, Switzerland.

Prior to joining the firm, Peter practiced in the intellectual property litigation practice in the Boston office of another international law firm. He 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.

Experience

Federal District Court

  • Copan Italia SpA, et al. v. Puritan Medical Products Company LLC, et al. (DME, 1:18-cv-00218) - Represent Copan Italia in enforcing patent infringement and unfair competition claims against primary competitor in a case involving the use of flocked swabs used in biological diagnostic assays.
  • Rehrig Pacific Co. v. Polymer Logistics (Israel), Ltd., et al., 2:19-cv-04952 (C.D. Cal.) – Defended claims of patent infringement brought by a competitor.  Successfully transferred the action from the U.S. District Court for the Southern District of Georgia to the Central District of California, and also obtained dismissal of willful infringement claims prior to favorable settlement.
  • Kowa Company, Ltd., et al. v. Amneal Pharmaceuticals, LLC, et al., Nos. 14-2758 and 14-7934 (S.D.N.Y., April 11, 2017 and September 19, 2017), affirmed, No. 2018-1051 (Fed. Cir. Dec. 10, 2018): Enforced client’s chemical compound and polymorph patents covering an HMG-CoA reductase inhibitor. Patents all held valid and defendants’ ANDA approval enjoined.
  • M&C Innovations, LLC v. Igloo Products Corp., 4:17-cv-02372 (W.D. Tex.) – Defended client Igloo from allegations of patent infringement and unfair competition on one of its most significant product lines.
  • Adaptive Headlamp Technologies, Inc. v. Hyundai Motor America, 1-15-00563-GMS (Jun. 26, 2017) – Defended client against claims of patent infringement for technology covering mechanical headlights. Case dismissed following a stay and successful validity challenge before the Patent Trial and Appeal Board.
  • Inline Plastics Corp. v. Easypak, LLC DMA-4-11-cv-11470 (D. Mass 2015) – Joined case after Markman and obtained dismissal of invalidity counterclaims and entry of judgment on infringement to allow for an expedited appeal. Case settled on favorable terms following remand.
  • Dallakian v. IPG Photonics, 14-cv-11863-TSH (D. Mass.) - Successfully defended against claims for correction of inventorship and trade secret misappropriation.
  • Mitsubishi Chemical Corp. v. Barr Laboratories, Inc., 718 F. Supp. 2d 382 (S.D.N.Y. 2010) aff’d, 435 Fed. Appx. 927 (Fed. Cir. Aug. 2, 2011): Enforced client’s patent covering a high concentration formulation of an anticoagulant under the Hatch-Waxman Act. The patent was found valid and defendant’s ANDA approval was enjoined.
  • Accentra Inc. v. Staples, Inc., 851 F. Supp. 2d 1205 (C.D. Cal. 2011), rev’d in part by Accentra Inc. v. Staples, Inc., No. 2012-1237 (Fed. Cir. Jan. 4, 2013). – Defended against claims of patent infringement brought by a former business partner and competitor.  Client settled on favorable terms following determination that two of three patents were either not infringed or invalid.
  • VLP Watertown L.P. v. Tristate Breeders Cooperative d/b/a/ Accelerated Genetics, 1:07-cv-11487-GAO (D. Mass.) – Represented VLP in litigation of trade secret misappropriation claims involving a cell processing method shown to improve fertility and induce statistically significant female gender bias in dairy herds. Obtained jury verdict of trade secret misappropriation and multimillion-dollar judgment.

Patent Office Proceedings

  • Laboratory Corporation of America Holdings v. Quest Diagnostics Investments LLC, IPR2019-00738, IPR2019-01425, IPR2019-01618: (Pending).
  • Laboratory Corporation of America Holdings v. Quest Diagnostics Investments LLC, IPR2019-01517 - Represented diagnostic company patent owner and obtained decision denying institution of IPR.
  • Jennewein Biotechnologie GmbH v. Glycosyn LLC, PGR2019-00023 - Represented biotechnology patent owner and obtained decision denying institution of PGR.
  • Acclarent, Inc. et al v. Ford Albritton, IV, IPR2017-00498 (Jul. 9, 2018) - Represented medical device company in decision involving guide catheter apparatus.
  • SL Corporation v. Adaptive Headlamp Technologies, Inc., IPR2016-00193 and IPR2016-01368 (Mar. 15, 2017) – Represented automotive client challenging patent claims asserted in district court resulting in a decision finding all claims unpatentable.
  • Indivior Inc. v. Rhodes Pharmaceuticals L.P., IPR2018-00795 (Oct. 4, 2018) - Decision involving methods of opioid substitution therapy using buprenorphine sublingual film.
  • Green Cross Corp. v. Shire Human Genetic Therapies, Inc., IPR2016-00258 (Mar. 22, 2017) - Decision involving actual reduction to practice of recombinant protein.
  • Mylan Pharmaceuticals, Inc. v. Nissan Chemical Industries, Ltd., IPR2015-01069, (Oct. 20, 2015) - Represented pharmaceutical company patent owner and obtained decision denying institution of IPR.
  • Sawai USA, Inc., et al. v. Nissan Chemical Industries, Ltd., IPR2015-01647, (Feb. 4, 2016): Represented pharmaceutical company patent owner and obtained decision denying institution of IPR.
  • Sawai USA, Inc., et al. v. Nissan Chemical Industries, Ltd., IPR2015-01648, Paper No. 9 (Feb. 4, 2016): Represented pharmaceutical company patent owner and obtained decision denying institution of IPR.
  • Ace Bed Co., Ltd. v. Sealy Technology LLC, IPR2014-01119, Paper No. 12, (Nov. 24, 2015): Represented petitioner in proceeding involving bed springs and all claims were determined to be unpatentable.
  • Saturn Biomedical Systems, Incorporated v. Aircraft Medical Limited, Inter Partes Reexamination No. 95/000,161 – Counsel to a medical device company and third-party requester in a complex inter partes reexamination involving nearly 300 claims related to video laryngoscopy. On appeal and after more than six years, all but one claim that did not pose a risk of infringement were determined to be unpatentable.

Appellate

  • Acclarent, Inc. v. Albritton, No. 18-2377 (Fed. Cir. 2019) - Represented medical device company in appeal from patent office decision involving guide catheter apparatus.
  • Kowa Company, Ltd., et al. v. Amneal Pharmaceuticals, LLC, No. 2018-1051 (Fed. Cir. Dec. 10, 2018): Represented pharmaceutical company following a successful Hatch-Waxman patent infringement. Obtained affirmance of district court judgment upholding client’s patents over anticipation, obviousness, and obviousness-type double patenting challenges.
  • Green Cross Corporation v. Shire Human Genetic Therapies, Inc., No. 17-2071 (Fed. Cir, 2018) – Represented client on appeal of IPR proceeding. Successfully defeated motion to dismiss for lack of standing prior to favorable settlement and dismissal.
  • Inline Plastics Corp. v. EasyPak, LLC, 799 F.3d 1364 (Fed. Cir. 2015) – Represented Inline against a primary competitor and successfully achieved reversal and remand on case-dispositive claim construction.
  • Accentra Inc. v. Staples, Inc., No. 2012-1237 (Fed. Cir. Jan. 4, 2013) – Represented Staples against competitor on appeal. Obtained reversal on two out of three patent issues and affirmance of summary judgment of no trademark infringement. Client settled on very favorable terms following remand to district court.
  • Rubin v. The General Hospital Corporation, No. 2011-1439 (Fed. Cir. Mar. 28, 2013) – Represented the General Hospital Corporation (MGH) on appeal following a successful defense against plaintiff’s inventorship challenge at the district court. Judgment affirmed.
  • SpendingMoney LLC v. American Express Co., No. 2012-1481 (Fed. Cir. Feb. 12, 2013) - Represented the client on appeal following a successful summary judgment determination of noninfringement. Judgment affirmed.
  • MeadWestvaco v. Rexam, Appeal, 731 F.3d 1258 (Fed. Cir. 2013) - Represented MeadWestvaco on appeal of issues including claim construction, summary judgment determinations, and bench finding of infringement.
  • Mitsubishi Chem. Co. v. Barr Labs., Inc., 435 Fed. Appx. 927 (Fed. Cir. Aug. 2, 2011) - Represented pharmaceutical company following a successful Hatch-Waxman patent infringement action at the district court. Judgment affirmed.

International Trade Commission

  • Certain Flocked Swabs, Products Containing Flocked Swabs, And Methods of Using Same (337-TA-1279) - Representing Copan Italia and Copan Industries as complainants in the International Trade Commission, asserting patent infringement claims against global competitors in a case involving the use of flocking technology (common in the textile industry) in the production of biological specimen collection swabs. Evidentiary hearing is scheduled for June 2022.
  • Certain Human Milk Oligosaccharides and Methods of Producing the Same (337-TA-1120) – Represented Glycosyn LLC as complainant before the ITC against respondent Jennewein Biotechnologies GmbH, a large global competitor. The complaint alleged unlawful and unauthorized importation and production and/or manufacture of 2'-fucosyllactose oligosaccharides that directly infringe one or more claims of Glycosyn's U.S. Patent No. 9,453,230. Following oral hearing in May 2019, the Administrative Law Judge issued an Initial Determination finding that Jennewein had infringed claims of Glycosyn’s patent and recommended that a limited exclusion order issue, including a certification provision with heightened requirement.
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viewpoints

A Business Deal Could Kill Your Right to Challenge a Patent’s Validity

February 22, 2022 | Blog | By William Meunier, Peter Cuomo, Marguerite McConihe, Sean Casey

Last week, the Federal Circuit issued a decision holding that parties can contractually bargain away their rights to file petitions for Inter Partes Review (“IPR”) at the Patent Trial and Appeals Board (“the Board”). This precedential case is the first to hold that a forum selection clause can forfeit the right to challenge a patent’s validity by IPR. The takeaway from this case is that when entering into any type of patent related agreement, be careful to ensure that your right to file IPR petitions is not stripped away, particularly by way of a forum selection clause which is “prima facie valid and should be enforced” in the words of the Federal Circuit.
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D. Del. Says ANDA Specification Trumps All Else in Infringement Analysis

February 17, 2022 | Blog | By Peter Cuomo, Adam Samansky, Joe Rutkowski, Tianyi Tan

On February 8, 2022, U.S. District Court Judge Maryellen Noreika of the United States District Court for the District of Delaware granted the plaintiff’s motion to exclude defendant’s expert testimony for being “based on an erroneous legal theory” in a suit alleging defendants’ proposed generic Abbreviated New Drug Application (“ANDA”) product would infringe Exela’s patents under the Hatch-Waxman Act. Judge Noreika’s decision in this case reinforces the Federal Circuit’s holding in Sunovion and serves as a reminder that ANDA product infringement is primarily assessed by comparing the asserted claims with the ANDA specification, rather than other ANDA submission materials further describing the ANDA product.
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On January 18, 2022, U.S. District Judge R. Gary Klausner of the Central District of California sided with the majority of divided district courts, dismissing claims of willful and induced infringement that based the defendants’ required knowledge of the asserted patents on its receipt of the original complaint for patent infringement. Ravgen Inc. v. Quest Diagnostics Inc., No. 21-cv-09011 (C.D. Cal. Jan. 18, 2022) ECF 146 - Order dismiss willful infringement
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On November 5, 2021, the U.S. Court of Appeals for the Federal Circuit in Celgene Corp. v. Mylan Pharmaceuticals Inc., Case No. 21-1154, affirmed a decision from the District Court of New Jersey dismissing a suit brought by Celgene Corporation (“Celgene”) under Rule 12(b)(6) for improper venue as to defendants Mylan Pharmaceuticals Inc. (“MPI”) and Mylan Inc. and for the failure to state a claim against defendant Mylan N.V. Celgene had brought suit after MPI submitted an ANDA seeking approval to market a generic version of the drug Pomalyst used to treat multiple myeloma. In assessing venue, the court held that it was MPI’s ANDA submission to the U.S. Food and Drug Administration (“FDA”), and not the sending of a notice letter to Celgene in New Jersey, that was the artificial act of infringement pursuant to the Hatch-Waxman Act. The district court thus held, and the Federal Circuit affirmed, that venue in New Jersey was improper.
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Federal Circuit Clarifies that Willful Infringement Does Not Require Egregious Conduct

October 26, 2021 | Blog | By Adam Samansky, Peter Cuomo, Joe Rutkowski

On September 28, 2021, in a precedential opinion, the United States Court of Appeals for the Federal Circuit, in SRI Int’l, Inc. v. Cisco Systems, Inc., Nos. 2020-1685, -1704, clarified its decision from a prior appeal in the same case to hold that a finding of willful infringement requires only deliberate or intentional infringement, not egregious, wanton, malicious, or bad-faith infringement conduct.
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After an inter partes review (“IPR”) is instituted, a patent owner may move to amend challenged claims to overcome the prior art. Here we provide some further information for patent owners considering ways to amend claims that are challenged in IPR by filing a reissue application or requesting reexamination.
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Nonobviousness of Commercially Successful Designs: Mmm, Mmm, Not So Fast

August 31, 2021 | Blog | By Adam Samansky, Peter Cuomo, Serge Subach

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News & Press

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Mintz Members Peter Cuomo and Adam Samansky and Associate Joseph Rutkowski were quoted in an article published by Law360 on the potential implications of the Federal Circuit’s recent ruling in Celgene Corp. v. Mylan Pharmaceuticals Inc., which cemented a prior decision in Valeant v. Mylan holding that patent suits against generic drugmakers must be filed where the company is incorporated or where it performed actions related to its Abbreviated New Drug Application.
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Mintz Members Peter Cuomo and Muriel Liberto co-authored an article published in the March/April 2021 issue of IP Litigator that examined how the U.S. written description requirement is developing in the ‘unpredictable’ pharmaceutical and biotechnology-related arts. In their article, Mr. Cuomo and Dr. Liberto reviewed a line of post-Ariad “blaze marks” cases illustrating what may become a trend toward a higher bar for satisfying the written description requirement in the United States, particularly as applied to genus claims covering molecules large and small, such as antibodies, enzymes, and small organic molecules. Where the claim further relies upon functional language to define a genus of compounds, the authors cautioned that the bar is likely to be even higher to the extent this line of cases is followed.
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Mintz Members Peter Cuomo and Adam Samansky co-authored an article published by IAM examining the U.S. Supreme Court’s decision to deny a petition for certiorari in Eli Lilly and Co. v Hospira, Inc., upholding the infringement of Eli Lilly’s chemotherapy drug Alimta (pemetrexed), and what the development means for the doctrine of equivalents and for patent application amendments.
An article published by Law360 reported that following the U.S. International Trade Commission’s initial decision that Jennewein Biotechnologie GmbH’s imports infringe a Glycosyn LLC patent on human milk oligosaccharides, the Patent Trial and Appeal Board denied Jennewein’s petition for post-grant review of a related patent.

The Mintz team representing Glycosyn at the ITC includes Michael Newman, Thomas Wintner, Michael Renaud and James Wodarski; and the Mintz team representing Glycosyn at the PTAB includes Michael Newman, Thomas Wintner, Peter Cuomo and Daniel Weinger.
In this article published by Law360, Mintz Members Adam Samansky and Peter Cuomo commented on lingering questions related to the America Invents Act's estoppel provision, which prevents challengers from arguing in court that a patent is invalid on grounds that were raised — or reasonably could have been raised — during inter partes review at the Patent Trial and Appeal Board.
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.
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Events & Speaking

Panelist
Feb
10
2021

PTAB update: IPR Discretionary Denials Due to Parallel Proceedings

The Alan D. Lourie Boston IP American Inn of Court

Webinar

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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

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Recognition & Awards

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

  • Member, American Intellectual Property Law Association
  • Member, Boston Bar Association
  • Member, Boston Patent Law Association
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Peter J. Cuomo

Member

Boston