Skip to main content

William C. Geary

Member

[email protected]

+1.617.348.3046

Share:

Bill is an experienced patent and trademark attorney with a particular background in medical technology, polymers and advanced materials, polymer processing technologies, and chemicals.

Bill provides counsel on all phases of patent and trademark law, through development strategy, protection, and exploitation of patent and trademark rights. His clients include start-ups, large companies such as Johnson & Johnson, medical technology manufacturers, and research institutions.

In the area of patent rights and litigation, Bill has represented clients in federal district courts and before the International Trade Commission. He also provides opinions on new products before they hit the public market and has served as lead counsel in patent interferences and on matters connected to foreign patent opposition. Bill’s patent experience includes technology areas such as oil drilling equipment, floppy disk liners, jewelry clasps, bioimplantable polymers, injection molding equipment and tooling, and multi-layer technology. Regarding trademark law, Bill has represented clients before state courts in Massachusetts and the Trademark Trial and Appeal Board as well as in federal district courts.

Bill is recognized for his broad experience, having received rankings from Super Lawyers in both the Corporate Counsel Edition and the Business Edition.

Education

  • Case Western Reserve University School of Law (JD)
  • University of Massachusetts - Lowell (BS, Polymer Engineering)

Experience

  • Advised medical device client on developing and implementing a post-litigation strategy. Having lost a patent litigation (in which they were represented by another law firm), Mintz attorneys helped the company assess whether they could keep their product on the market during the appeal process. We then provided advice on how to create possible design-arounds for the product to ensure it was clear of infringing the patents at issue, in the event that the appeal was unsuccessful.
  • Conducted a broad scope due diligence for a medical device manufacturer as it considered investing in a company operating in the electrical nerve stimulation space. This effort involved understanding the technology and the details of future, to-be-developed products. It was necessary to assess the potential for the company to have freedom to market these future products. In doing so, detailed evaluations of some patents were necessary. Our study also assessed the quality of the patent protection in place at the investee, with the goal of determining the effectiveness of the portfolio to prevent third parties from successfully marketing competing technology. We ultimately advised our client that the target company had clearance to operate and the client made the investment.
  • Conducted a freedom to operate assessment for a client which produces a clinical diagnostic product, essentially a lab-on-a-chip which provides for point of care testing for a wide range of infections. Most such tests have to be conducted at a central laboratory, which increases expense and causes a significant wait for results. The company's product allows treatment professionals to carry out testing on-site. We reviewed numerous third-party patents to advise the company that it had freedom to operate.
  • Provided strategic guidance to a medical device manufacturer in relation to a new product launch. This involved a detailed evaluation of more than 50 patents, assessing them for invalidity and/or non-infringement, to ensure our client's new product would not be impacted by any of the patents. The company is planning a large surgical tool product launch and this freedom to operate project provided the clearance needed to comfortably go to market.
  • Conducted complex due diligence in the course of a significant planned acquisition for an orthopedics client assessing the value of the target company from an intellectual property perspective. This included a freedom-to-operate assessment of more than 300 third party patents, and evaluation of the target company’s portfolio to determine the extent to which it provided sufficient protection to prevent competitors from marketing products that can effectively compete with the proposed next generation of products.

Recognition & Awards

  • Best Lawyers in America: Trademark Law (2018 - 2019)
  • Chambers USA: Massachusetts – Intellectual Property (2016 – 2018)
  • Included on the Massachusetts Super Lawyers list (2004 – 2018)
  • Managing Intellectual Property: Patent star - Massachusetts (2014 – 2018)

Involvement

  • Member, Boston Patent Law Association
  • Member, American Intellectual Property Law Association (AIPLA)
  • Member, American Bar Association
  • Member, Boston Bar Association
  • Advisory Board, The Massachusetts Medical Device Development Center (M2D2)

Viewpoints

Further to our previous blog post, the U.S. Patent and Trademark Office reported that the 10 millionth patent issued today with the new patent cover design.
A variety of options are available to applicants to speed up patent application examination at the U.S. Patent and Trademark Office. 
The University of Massachusetts' Medical Device Development Center (M2D2) has launched the 5th Annual M2D2 $100K Challenge, an opportunity designed to showcase the innovative ideas and entrepreneurial spirit of seed and early-stage biotech and medical technology companies.
A recent U.S. District Court decision has clarified a potential danger when filing terminal disclaimers that contain overly-broad language. The U.S. District Court for the Northern District of Illinois in Hagenbuch v. Sonrai Systems interpreted the terminal disclaimer language “I hereby disclaim the terminal part of any patent granted on the above-identified application or any continuation of it” as applying to any continuation application claiming priority from the application in which this terminal disclaimer was filed.

News & Press

Mintz partner and Massachusetts lawyer Julie Korostoff is one of 49 attorneys recognized as “Leaders in Their Fields” by the 2018 Chambers USA: America's Leading Lawyers for Business guide. Chambers named Korostoff a “Recognized Practitioner” in Technology.
Best Lawyers named 85 Mintz attorneys to its 2018 list of The Best Lawyers in America. In addition, Mintz attorneys Matthew J. Gardella and Samuel M. Tony Starr were named “Lawyer of the Year” in their respective practice areas.
Fifty-three Mintz attorneys have been named Massachusetts Super Lawyers for 2016 and thirty-one have been named Massachusetts Rising Stars. The findings will be published in the November 2016 issue of Boston Magazine and in a stand-alone magazine, New England Super Lawyers. 
Firm’s National Healthcare Practice, NY Corporate/M&A and Litigation: General Commercial Among Newest Rankings
The 2015 Chambers USA: America's Leading Lawyers for Business guide names 52 Mintz, Cohn, Ferris, Glovsky and Popeo, P.C.  attorneys as “Leaders in Their Fields.”

Events

Moderator
Nov
13
2018

IP Strategy and Management Conference

Suffolk University Law School

Suffolk University Law School, 120 Tremont Street, Boston, MA

Panelist
Jun
25
2017

2017 East Coast Academy

Cleantech Open

Federal Reserve 600 Atlantic Ave, #100 Boston, MA

Speaker
Jul
14
2016
Speaker
May
11
2015

IP Best Practices Conference 2015

Intellectual Property Resources

Tel Aviv, Israel

Speaker
Apr
16
2015

2015 M2D2 New Venture Competition Awards

The Massachusetts Medical Device Development Center (M2D2)

One Financial Center, Boston, MA

Speaker
Mar
4
2015

Tips on Swimming with the Sharks: IP Due Diligence

Massachusetts Medical Device Development Center (M2D2)

600 Suffolk Street, 2nd Floor Lowell, MA