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Kathleen B. Carr

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Education

  • Tulane University (JD)
  • Dartmouth College (ABE)
  • Dartmouth College (ABP)

Bar Admissions

  • Massachusetts
  • Rhode Island
  • United States Court of Appeals for the Federal Circuit
  • United States Court of Appeals for the First Circuit
  • United States Court of Appeals for the Sixth Circuit
  • United States District Court for the District of Massachusetts
  • United States District Court for the District of Rhode Island
  • United States District Court for the Eastern District of Michigan
  • United States District Court for the Eastern District of Texas
  • United States Patent and Trademark Office
  • United States Supreme Court

Kathleen has led trial teams in multibillion- and multimillion-dollar Hatch Waxman pharmaceutical patent litigation, and has successfully served as lead counsel for over 20 years on many cases in both federal and state court. She has argued successfully before the US Court of Appeals for the First Circuit, and prevailed in appeals before the Federal Circuit. She is registered to practice before the US Patent and Trademark Office.

Kathleen is recommended by the Legal 500 United States for Health Care: Life Sciences.  She is listed in Best Lawyers in America for IP litigation, and has been listed as an LMG “Life Sciences Star” for IP litigation since its inaugural publication in 2012.  Kathleen recently was elected to the Fellows of the American Bar Foundation, which is limited to one percent of lawyers licensed to practice in each jurisdiction.

Kathleen’s IP litigation practice focuses on patent, trademark, and copyright cases and disputes for clients ranging from major pharmaceutical companies to start-ups and senior executives. A registered U.S. patent attorney, she has served as lead counsel prevailing in several Patent Office inter partes review matters. She has successfully litigated and mediated patent cases for various technologies including pharmaceuticals, biotechnology, mechanical devices, computers, business methods, printing machines, mechanical seals, fax technology, and photocopiers. Kathleen's intellectual property practice is comprehensive, and encompasses contract and license negotiation, arbitration and mediation, due diligence, infringement and validity opinions, patent term extension, indemnity issues, research "safe harbor" issues, and biologics/biosimilars. 

Her broad litigation experience includes cases involving admiralty and maritime law, contract disputes, insurance coverage disputes, and various other matters such as real estate, architecture and engineering, fire damage, and complex business litigation. 

Prior to joining Mintz Levin, Kathleen served as Co-Chair of the Intellectual Property Litigation Group at a large international law firm.

Representative Matters

Patent

  • Lead counsel in consolidated Hatch-Waxman litigation involving a cholesterol-lowering drug.
  • Lead counsel in multiple IPR proceedings; successfully obtained denial of institution.
  • Lead trial counsel in Hatch-Waxman litigation involving a direct thrombin inhibitor. Prevailed on all claims in a 156-page District Court decision, affirmed on appeal.
  • In multibillion-dollar Hatch Waxman pharmaceutical litigation, successfully defended against multiple generic manufacturers’ ANDA attacks on diabetes drug patents.  Prevailed in both District Court and on appeal.
  • Lead counsel in the negotiation of numerous settlements in Hatch-Waxman ANDA litigation.
  • Lead counsel obtaining a $17+ million award for a pharmaceutical patent holder on an attorneys’ fees petition.
  • Lead counsel in patent litigation filed in the Eastern District of Texas involving 29 patents covering photocopier technology. Settled very favorably.
  • Trial counsel in a patent infringement action involving mechanical seals.  Settled favorably on the fifth day of jury trial.
  • Multiple successes on behalf of an excavator in a patent license dispute, and ultimately obtained a very favorable settlement in patent litigation involving a tree stump excavating and crushing device patent.

Trademark

  • Represented a global modeling agency in trademark and dilution litigation.  Successfully negotiated a favorable settlement protecting the agency’s trade name. 
  • Represented a pharmaceutical company in trademark litigation.  Negotiated a favorable settlement protecting the company’s trade name and marks.
  • Multiple successes on behalf of clients through litigation and pre-litigation/cease and desist letters, including early and practical resolution disputes.

Other Litigation

  • Represented intermodal carrier in hotly contested contract and insurance dispute.  Settled on very favorable terms, which preserved the client’s business.
  • Represented and counseled clients on admiralty and maritime law issues and litigation, vessel arrests and attachments, on-board investigations and vessel-related incidents, and marine insurance coverage matters.
  • Defended securities fraud class and derivative actions.
  • Wide variety of experience in contract, insurance, and business litigation.

Recognitions & Awards

  • Recommended by The Legal 500 United States for Health Care: Life Sciences (2016)
  • Best Lawyers in America: Intellectual Property Litigation (2016 - 2017)
  • LMG Life Sciences Star (2012 - 2016)
  • Elected to Fellows of the American Bar Foundation (2016)

Professional & Community Involvement

  • Former Counselor; current Board Member, Boston IP American Inn of Court
  • Former elected member, Charter Commission, Town of Braintree, Massachusetts
  • Former member, Government Study Committee, Town of Braintree, Massachusetts
  • Fellow, American Bar Foundation
  • Member, American Bar Association
  • Member, Federal Circuit Bar Association
  • Member, Boston Patent Law Association
  • Member, Federal Bar Association
  • Member, Maritime Law Association
  • Member, Massachusetts Bar Association
  • Member, Rhode Island Bar Association
  • Member, AIPLA
  • Former VISTA (Volunteers in Service to America) volunteer
  • Former US Coast Guard 100-ton licensed boat captain