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Peter J. Cuomo

Of Counsel vCard


Education

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

Bar Admissions

  • Massachusetts
  • United States Court of Appeals for the Federal Circuit
  • United States District Court for the District of Massachusetts
  • United States District Court for the Eastern District of Texas
  • United States Patent and Trademark Office
  • United States Supreme Court

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.

Representative Matters

  • 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.
  • Validity Challenge in IPR Proceeding – Capsule Endoscope (IPR2015-00579): Representing IntroMedic Co., Ltd., in an Inter Partes Reexamination relating to a capsule endoscope. Also represented IntroMedic in an Inter Partes Review challenging the validity of the same patent (decision on merits deferred pending results of pending Inter Partes Reexamination).
  • Inline Plastics Corp. v. EasyPak, LLC, Appeal No. 14-1305 (Fed. Cir.): Represented Inline Plastics while obtaining dismissal of invalidity counterclaims and entry of judgment on infringement to expedite appeal and .reversal and remand of case-dispositive claim construction.
  • 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.
  • SpendingMoney LLC v. Visa U.S.A. Inc. (Fed. Cir. - 08-CV-1376): Represented Visa in the appeal of a suit alleging infringement of a patent directed to a method of processing financial transactions. Prevailed before the Federal Circuit in the plaintiff's attempt to appeal district court determination of summary judgment of noninfringement.
  • 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.
  • Anderson v. General Hosp. Corp., 523 Fed. Appx. 719 (Fed. Cir. 2013): Represented MGH at the Federal Circuit following the appeal of an inventorship dispute successfully resolved at summary judgment. The Federal Circuit affirmed.
  • 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).
  • Superior Shooting Systems v. Cole, 3:10-cv-01226 (N.D. Tex): Counsel to Superior Shooting in a civil action involving the correction of inventorship for a patent related to optical ballistics technology.
  • VLP Watertown Limited Partnership v. TriState Breeders Coop., 07-cv-11487-GAO (D. Mass. 2010): Represented VLP Watertown in a breach of contract and trade secret misappropriation case in the United States District Court for the District of Massachusetts. Helped secure a multimillion-dollar jury verdict for the client at trial.
  • Accentra, Inc. and WorkTools, Inc. v. Staples, Inc. (C.D. Cal.- 07-CV-5862;Fed. Cir. -1237, -1264): Represented Staples at trial and on appeal to the Federal Circuit. Secured stipulation of dismissal of two of the asserted patents before trial and prevailed on trademark infringement claim on summary judgment. On appeal, trademark ruling was affirmed and the Federal Circuit adopted new claim constructions, under which a third patent was not infringed and under which a fourth patent was found invalid and not infringed.
  • Dbest Products, Inc. v. Staples, Inc. (1:07-VC-04895 ODW): Counsel to Staples and helped to obtain summary judgment of invalidity and unenforceability in a patent infringement litigation. After summary judgment, costs and attorney’s fees were awarded to Staples.
  • Sharp v. Xerox (E.D. Texas 02-06CV-187): Part of the team that successfully represented a major electronics company in a patent infringement action involving 29 patents covering various aspects of photocopier technology and more than 200 accused products. Analyzed validity and infringement and assisted with claim construction positions. While pending in the Eastern District of Texas, the case ultimately settled on favorable terms.

Recognitions & Awards

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

Professional & Community Involvement

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