Susan, a patent attorney, represents science and technology companies in all facets of invention enforcement and protection from the courtroom to the Patent Office.
Susan uses analysis, communication, and advocacy to achieve clients’ goals in patent, trademark, copyright, trade dress, and trade secret matters. Her experience covers a broad spectrum of technologies and industries, including biotechnology, chemistry, electrical, mechanical, green technology, ecommerce, medical devices, and consumer products.
Susan has wide-ranging experience representing national and international clients enforcing patents and defending against patent infringement actions through means tailored to the particular business and circumstances. Susan handles patent disputes in courts throughout the country and before the United States Patent and Trademark Office. Her experience handling contested matters before the Patent Office as a Registered Patent Attorney for more than three decades enables her to develop and carry out effective strategies in interrelated courtroom and Patent Office proceedings. Susan is equally adept at pursuing and defending against enforcement actions and contested matters in the trademark realm.
Experience
- Achieved preliminary injunction against continued infringement of client’s patents, and succeeded in having defendant found in contempt, with an award of attorneys’ fees, even though the injunction was dissolved based on newly discovered prior art.
- Stopped infringement of client’s trademark rights by obtaining injunction shortly after the filing of the complaint. The injunction, issued by The Honorable Joseph Tauro after a Hearing, resulted in settlement of the matter with the entry of a permanent injunction and payment of our client’s attorneys’ fees.
- Convinced company that had threatened patent enforcement not to pursue matter by demonstrating prior art and literature that questioned the validity of the patent.
- Defended against a complex portfolio of interrelated patents directed to bioreactors and mixers for use by the biotech industry resulting in resolution shortly after deposition of patentee’s prosecuting attorney.
- Defended against patent infringement action involving LED backlight technology and light enhancing films in the U.S. District Court for the District of Delaware. A defense strategy was formulated including discovery, mediation, and depositions to achieve a very favorable settlement for our client within ten months of service of the complaint, on the eve of our taking the inventor’s deposition.
- Enforced multiple patents involving sampling devices and related mechanical device in multiple courts, resulting in a mediated and negotiated resolution with competitor.
- Achieved dismissal of a patent infringement action for lack of personal jurisdiction.
- Achieved goal of Markman and summary judgment Hearing in the initial phase of litigation in representing an academic institution in a patent case against a major technology corporation involving technology related to speech analysis, compression and transmission. .
- Achieved cessation of infringement of patents on pool cue couplers by pursuing multiple competitors in a succession of actions and obtaining consent judgments in favor of our client.
- Stopped false advertising and trademark infringement by client’s competitor by bringing a complaint and motion for preliminary injunction, resulting in consent judgment.
- Achieved immediate concession of priority in interference on diagnostic involving a nucleic acid.
- Negotiated early dismissal of client from multi-party lawsuit alleging infringement of patents directed to molecular cloning and expression of protein coupled receptors.
- Achieved voluntary dismissal of complaint alleging Lanham Act and other claims against our client and obtained payment by client’s insurance company of all attorneys’ fees for representing client.
- Counseled a start-up biomedical and diagnostic company in negotiating a license to platform technology.
- Prepared combined software-hardware use license with service agreements for a corporate maker of chemical and bio-tech manufacturing process equipment and components.
Credentials
Bar Admissions
- U.S. Court of Appeals for the Federal Circuit
- U.S. District Court, District of Massachusetts
- U.S. Patent and Trademark Office
- U.S. Supreme Court
- Massachusetts
- New York
- Various federal trial and appellate courts around the country
Education
- Newton (North) High School, 1973
- B.S. in Chemistry, University of Vermont, 1977
- J.D., Boston University School of Law, 1980
Practice Areas
- Agreements
- Copyrights
- Counseling
- Design Patents
- IP Intelligence and Audits
- IP Litigation
- Licensing
- Patents
- Post-Grant Proceedings
- Trade Secrets
- Trademark Opposition & Cancellation Proceedings
- Trademarks
Technologies
- Biologics & Immunotherapies
- Biotechnology & Life Sciences
- Business Methods
- Chemical Engineering
- Chemistry
- Clean Technology
- Computer Software
- Materials Science
- Mechanical Engineering
- Medical Devices
- Mobile
- Pharmaceuticals
- Robotics
- Semiconductors
Speaking Engagements
- “Erecting and Tearing Down Patent Barriers to Market Access,” Advancing Gene Therapy Conference, Woburn, MA, March 29, 2022
- "Strategic Focus on Innovation Protection and Rights Enforcement," German American Business Council of Boston, May 19, 2021
- "Entrepreneur Success Through Involvement in Local and International Organizations," MIT Enterprise Forum Podcast, August 6, 2020
- "Solutions for Manufacturing Your Electronic Ideas," MIT Enterprise Forum Podcast, June 5, 2020
- "Going Green and Organic? The How To’s of Protecting Sustainable Marks and Labels," 2018 INTA Annual Meeting, Seattle, WA, May 23, 2018
- “IP in the Courts: Three Steps Forward, Two (or Four?) Steps Back: A Trial Lawyer’s Synopsis of the Latest in IP Litigation,” Massachusetts Continuing Legal Education (MCLE), Boston, MA, June 20, 2017
- “Going Green and Organic? How to Protect Sustainable Marks and Labels,” 2017 INTA Annual Meeting Table Topic, Barcelona, Spain, May 24, 2017
- ”Intellectual Property Protection Strategies,” Hamilton Brook Smith Reynolds / German-American Business Council of Boston Lecture, Newton, MA, April 6, 2016
- "Protecting Innovation - Best Practices,” Hamilton Brook Smith Reynolds / Ogletree, Deakins, Nash, Smoak & Stewart Lecture, Waltham, MA, November 5, 2015
- “Search Strategies and Tools for Post Grant Proceedings at the PTAB,” Boston Patent Law Association, Boston, Massachusetts, October 29, 2014
- "September 2014 Meeting of the BPLA IP Case Law Club," Boston Patent Law Association, Boston, Massachusetts, September 12, 2014
- "Think Your Company’s Trademark Will Be Difficult to Protect?" Hamilton Brook Smith Reynolds Webcast, June 24, 2014
- "Cross-Pollinating Litigation and Prosecution Intelligence," Association of Intellectual Property Firms Webcast, April 9, 2014
- "Design Patents: Modernizing an Old Property Interest," Suffolk University Law School, Boston, Massachusetts, November 22, 2013
- "September 2013 Intellectual Property Roundtable - Hot Topics from the Summer," American Bar Association, Boston, Massachusetts, September 26, 2013
- "Moving the Battleground to the Patent Office by Taking Advantage of Post-Grant Proceedings," Hamilton Brook Smith Reynolds Webcast, September 19, 2013
- "Fighting It Out in the Patent Office - Early Experiences and Observations about IPRs," Boston Patent Law Association Lecture, Waltham, Massachusetts, June 19, 2013
- "Wrestling the eDiscovery Beast - The Role of In-House Counsel," Hamilton Brook Smith Reynolds Lecture, Boston, Massachusetts, March 19, 2013
- “United States Intellectual Property in a Global Economy,” Boston University School of Management, Boston, Massachusetts, February 28, 2012
- “Considerations in Corporate Structuring to Maximize Potential Recovery in Patent Cases,” Waltham, Massachusetts, June 9, 2011
- “Selecting, Protecting, and Enforcing Trademark Rights,” Association of Corporate Counsel, Northeast Chapter, December 2, 2009
- "Effectively Managing and Protecting Your Company's Intellectual Property," New England Corporate Counsel Association, June 3, 2009
- “What Does Not Kill Us Makes Us Stronger: Smart IP Decisions to Maximize Post Recession Strengths,” Association of Corporate Counsel, Northeast Chapter, Waltham, Massachusetts, May 28, 2009
- “Tools and Tactics for Managing Trade Secrets and Other Corporate Treasures,” Association of Corporate Counsel, Northeast Chapter, Waltham, Massachusetts, June 12, 2008
Professional Associations
- American Arbitration Association - National Roster of Neutrals
- American Bar Association – Litigation Section; Intellectual Property Law Section
- American Intellectual Property Law Association – Alternative Dispute Resolution Committee; USPTO Inter Partes Patent Proceedings Committee; Patent Litigation Committee, Model Patent Jury Instructions sub-committee
- Association Internationale pour la Protection de la Propriété Intellectuelle (AIPPI - International Association for the Protection of Intellectual Property) – Selected by the US Division to be a member of the Association’s Working Committee for Patent Question Q244 directed to Inventorship of Multinational Inventions; Previously, involved as speaker and coordinator for workshops at AIPPI’s 41st World Intellectual Property Congress held in Boston in 2008.
- Boston Bar Association – Intellectual Property Section; Litigation Section
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Boston Patent Law Association - Past President; Former Co-chair Antitrust and Contested Matters Committees; Founder, Member and prior Co-Chair Litigation Committee
- International Trademark Association - Member of the Enforcement Committee and its Task Force on Pretext Investigations; Past co-chair of the Sustainable Labels Subcommittee of the Emerging Issues Committee
- German-American Business Council of Boston - Former Board Member