Keith is a trusted advisor in intellectual property matters both in the U.S. and abroad, with over 20 years of experience with focus on patent prosecution and Inter Partes Review (IPR) Proceedings.
With a background in Physics from Harvard, Keith is a seasoned patent prosecutor. Keith draws on his technical and legal expertise gained in patent prosecution to provide insightful understanding of issues in IP litigation and administrative proceedings.
Keith assists clients to obtain patent rights worldwide, managing large patent portfolios and creating consistent strategies across multiple jurisdictions. He has successfully counseled clients in multiple IPR proceedings at the United States Patent and Trademark Office (USPTO). He advises clients including start-ups, universities, and companies of all sizes with building strategic patent portfolios.
IPR Experience
He is a member of our firm’s IPR and litigation teams that have represented multiple clients in successful IPR proceedings before the Patent Trial and Appeal Board. His proceedings have included IPRs against an American multinational automobile manufacturer and IPRs in support of a multinational networking and telecommunications company. In addition, Keith has been a member of our firm’s team in multiple appeals before the United States Court of Appeals for the Federal Circuit. Keith ranked in the Top 250 for Best Performing Attorney (Patent Owner) out of nearly 1,000 stakeholders evaluated in Patexia’s 2023 PTAB Intelligence Report.
Experience
Representative Litigation Matters before the Patent Trial and Appeal Board and United States Court of Appeals for the Federal Circuit:
- Member of litigation team that represented a university spinoff patent owner in successfully obtaining denial of institution of multiple Inter Partes Review (“IPR”) petitions filed at the Patent Trial and Appeal Board by an American multinational automobile manufacturer.
- Member of litigation team that represented a large telecommunications company patent owner in responding to a series of Inter Partes Review (“IPR”) petitions filed at the Patent Trial and Appeal Board by a multinational networking and telecommunications company.
- Member of litigation team handling a Motion to Amend (MTA) in an IPR before the Patent Trial and Appeal Board.
- Member of litigation team in multiple appeals before the United States Court of Appeals for the Federal Circuit with successes related to remands to the Patent Trial and Appeal Board in view of the Arthrex appointments clause constitutional case.
Representative Patent Prosecution Matters:
- Represented an acoustics company in evaluating and expanding its patent portfolio.
- Represented an optical medical device company in developing its patent portfolio.
- Prosecuted patent applications directed to advanced technologies such as microfluidics, graphene, and nanopores for several major universities.
- Prosecuted patent applications related to fluid filtration and electrostatic chucks for semiconductor manufacturing client.
- Prosecuted complex software patent applications for small companies, large companies and universities.
- Assisted foreign counsel with obtaining U.S. national stage protection of their foreign clients’ patent portfolios.
- Prosecuted patent applications for diverse technologies, including mechanical systems and laser sensors.
- Prosecuted U.S. and foreign patent portfolios for companies in fields such as medical devices and very low temperature refrigeration.
Representative Strategic Counseling Matters:
- Conducted IP due diligence for successful acquisition of a privately held acoustics company.
- Conducted IP Due diligence for successful acquisition of a sensor company by Japanese multinational electronics company.
- Counseled clients on the importance of design patent and trademark protection as valuable additions to their overall IP protection and patent portfolios.
- Conducted IP due diligence related to investments and public offering of a medical device manufacturer.
- Counseled numerous companies on patentability matters across many technology sectors.
- Performed competitive assessments and monitoring of IP portfolios for clients interested in strategic growth and positioning of their businesses.
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
- Massachusetts
Education
- A.B. in Physics, Harvard College
- J.D., Boston College Law School
Practice Areas
- IP Audits
- IP Diligence
- IP Litigation
- Patents
- Post-Grant Proceedings
- Trademarks
Technologies
- Chemical Engineering
- Clean Technology
- Computer Software
- Energy Storage
- Materials Science
- Mechanical Engineering
- Medical Devices
- Semiconductors
- Telecommunications
Speaking Engagements
- "Clean Green Challenge Pitch Competition," Moderator of Fireside Chat, UML iHub, April 4, 2024
- "Getting from Here to There - Advancing Your Sustainability Solution," UML iHub, Panel Moderator, September 19, 2023
- "Intellectual Property Considerations for Protecting Your Company’s Innovations," MIT Enterprise Forum, Cambridge Innovation Center, March 6, 2019
- "Intellectual Property Considerations for Protecting Your Company’s Innovations" MIT Enterprise Forum, Cambridge Innovation Center, September 14, 2017
- “Smart Cyber Security, Patent and Trade Secret Protection for Startups,” MIT Enterprise Forum of Cambridge/Hamilton Brook Smith Reynolds Lecture, Cambridge, MA, November 17, 2016
Professional Associations
- American Intellectual Property Law Association
- Boston Intellectual Property Law Association (BIPLA)
- 2023 - 2024 Board Member
- Past co-chair of the International and Foreign Practice Committee
- MIT eForum of Cambridge, Past Committee Chair, Energy Special Interest Group (Energy SIG)