Will is an intellectual property litigator with experience representing clients in Federal District Courts, before the Patent Trademark and Appeal Board, and before the U.S. International Trade Commission. He is also a member of teams arguing before the Court of Appeals for the Federal Circuit. Will represents clients in matters involving a wide range of technologies involving biology, chemistry, mechanical and medical devices, and high tech.
Will’s experience includes litigating intellectual property cases through pre-litigation investigation, litigation, and appeal. Will also maintains a pro bono practice representing and counseling clients in matters related to immigration.
During law school, Will was a managing editor of the American Journal of Law & Medicine and was selected to represent BU Law in the Oxford International Intellectual Property Moot competition. He also served as a summer intern with the Veterans Legal Clinic at Harvard Law School’s Legal Services Center, where he worked for the clinic’s Estate Planning Project. Will was a Summer Associate at Mintz in 2018.
While earning his undergraduate degree, Will was a member of a graduate research group focused on using single molecule fluorescence techniques to study RNA. In 2013, he received the James E. Harris Scholarship to fund his summer research.
Will is an intellectual property litigator with experience representing clients in Federal District Courts, before the Patent Trademark and Appeal Board, and before the U.S. International Trade Commission. He is also a member of teams arguing before the Court of Appeals for the Federal Circuit. Will represents clients in matters involving a wide range of technologies involving biology, chemistry, mechanical and medical devices, and high tech.
Experience
Federal Circuit Appeals
- Truveris, Inc. v. SkySail Concepts, LLC, No. 23-1024 (Fed. Cir.): Represented Defendant-Appellee SkySail in an appeal involving a patent claiming a computer-implemented system and method that manages the selection of prescription drug plans. The Federal Circuit issued a per curiam summary affirmance of the District Court’s order granting SkySail’s motion to dismiss for lack of patentable subject matter under 35 U.S.C. § 101.
- Eyenovia, Inc. v. Sydnexis, Inc., 2023-2402, -2403, -2411 (Fed. Cir.): Representing Appellee Eyenovia in an appeal from IPRs invalidating all challenged claims of patents claiming ophthalmic compositions for the treatment of myopia.
International Trade Commission
- 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.
District Court
- Nanoco Technologies Ltd. v. Samsung Electronics Co., No. 20-00038 (E.D. Tex.): Represented British nanotechnology company Nanoco Technologies, Ltd., a world leader in the development and manufacture of cadmium-free quantum dots and other nanomaterials, in a patent infringement case involving the synthesis of quantum dots, and use of quantum dot film resins in electronic display devices. The firm secured a $150 million settlement for the client, which put an end to all global litigation between Nanoco and Samsung.
- SRAM, LLC v. Princeton Carbon Works Inc., 9:21-cv-80581 (S.D. Fla): Obtained a significant and complete defense verdict for client Princeton CarbonWorks, Inc. in the U.S. District Court for the Southern District of Florida. Princeton CarbonWorks is a Connecticut-based bicycle wheel maker that was accused of infringing two patents by competitor and industry giant SRAM, LLC. This was a “bet-the-company” dispute for Princeton CarbonWorks that culminated in a two-week trial in Miami, Florida. At the conclusion of the trial, a nine-person jury reached a verdict of no infringement and no damages in favor of Princeton CarbonWorks.
- SoClean, Inc. v. Sunset Healthcare Solutions, Inc., No. 21-10131 and 20-10351 (D. Mass.): Counsel to plaintiff in patent and trademark infringement actions involving devices for sanitizing CPAP machines; successfully obtained preliminary injunction on trademark claims (affirmed on appeal).
Inter Partes Reviews
- Eyenovia, Inc. v. Sydnexis, Inc., IPR2022-00384, -00414, -00415: Represented patent challenger Eyenovia in IPRs involving patents claiming ophthalmic compositions for the treatment of myopia. Obtained Final Written decisions invalidating all challenged claims (totaling 50 claims) for all three challenged patents.
viewpoints
The Trademark Modernization Act Establishes New Trademark Cancellation Procedures
January 12, 2021 | Blog | By Michael Graif , Williams Dixon
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