USA - Massachusetts
Cambridge Technology Law LLC
686 Massachusetts Ave,
Cambridge, MA 02139
Tel: (646) 472-9737
David Boundy creates value in Intellectual Property and Administrative Law.
Intellectual property strategy and transactions. Mr. Boundy assists clients in developing strong intellectual property assets and comprehensive strategies to build business value. As a former Vice President for intellectual property and equity partner at one of Wall Street’s most IP-savvy financial services firms, Mr. Boundy combines in‑house counsel’s business-oriented perspective with outside counsel’s legal perspective, tailored to clients’ goals. At two prominent NYC firms (Shearman & Sterling and Willkie Farr). Mr. Boundy handled IP portions of IPOs, mergers and acquisitions, private and public financing, and licensing transactions. In this role, Mr. Boundy developed understanding of what buyers and investors look for and pay for—and how to position an IP portfolio to materially affect acquisitions, and maximize takeout value. Mr. Boundy is one of the World 300 Intellectual Property Strategists.
Administrative law. Mr. Boundy is the nation’s foremost expert on administrative law as it applies within the intellectual property sphere. In this role, Mr. Boundy consults on Federal Circuit appeals from the Patent Trial and Appeal Board, Article III litigation to seek review of Patent Office rules and decisions, and reviews by the Executive Office of the President. Mr. Boundy’s expertise was recognized by the United States Court of Appeals for the Federal Circuit, when the Court invited Mr. Boundy to chair a panel on Chevron and Auer deference at the 2018 Federal Circuit Judicial Conference. Mr. Boundy led the teams that successfully quashed the Patent Office’s 2006-09 Continuations, 5/25 claims, IDS, Appeal, and IDS regulations, resulting in a “stand down” order from the Office of Management and Budget, and an award of attorney fees. This was recognized as the #2 most important patent case of 2008. Mr. Boundy successfully argued that some regulations should not issue, reshaped others, and challenged others after they were issued, leading the PTO to suspend them the day they were to go into effect. The National Law Journal recognized Mr. Boundy as one of 50 Intellectual Property Trailblazers for 2019 for his work in the area.
Patent prosecution and evaluation. Because of his first career as an engineer, Mr. Boundy brings unique insight into commercial importance of technological features, in patents relating to microprocessor internals, systems software. Mr. Boundy has the mathematics sophistication to provide unique value in image processing, signal processing, data coding, medical imaging, and bioinformatics. Mr. Boundy also has expertise in medical devices, especially those that require cross-disciplinary understanding, such as radiation physics, materials, biocompatibility, physiology, mechanical engineering, manufacturability. Mr. Boundy is a Super Lawyer for these activities.
Avoiding and resolving disputes. When litigation threatens, Mr. Boundy advises on risk minimization, including product design-arounds, and validity and noninfringement opinions. Mr. Boundy has represented licensors and licensees in license negotiations, to negotiate win-win deal structures. During the debates that led to the America Invents Act, Mr. Boundy met with Senate Majority Leader Harry Reid to improve the AIA’s provisions for startups.
Experience. Mr. Boundy holds a law degree, with honors, from Columbia Law School, an M.S. in computer engineering from the University of Michigan, and a B.S. with a triple major in computer science, mathematics, physics. Mr. Boundy had a ten year career as an engineer, developing compliers, operating systems, CPU design, and networks. Mr. Boundy was invited to lecture at MIT on systems software. He is also a member of the ABA, AIPLA, and Boston Patent Law Association.
Cambridge Technology Law LLC is a Cambridge/Boston-area law firm specializing in creating business value from your intellectual property. We provide legal services and strategic counseling to start-ups, global corporations, individuals, and universities, helping our clients optimize the strength of their intellectual property portfolio and minimize legal exposure. We apply our decades of legal experience to helping you to achieve business objectives through targeted legal and strategic advice. We support technology transfer, strategic alliances and monetization. We translate your ideas into intellectual property (patents, trademarks, copyrights) that create value for your business.
- We specialize in software (the more complex, the more value we can add) and inter-disciplinary systems (such as medical devices, medical imaging, robotics, and electro-mechanical equipment) that combine engineering disciplines such as mechanical, electrical, software, and materials engineering.
- We’ve represented investors, acquirers, and competitors, so we know how to structure your intellectual property to maximize value in the eyes of those that matter to you.
- Our attorneys have many years of experience as in-house counsel in billion dollar firms, and in law firms:
- overseeing portfolio management
- licensing intellectual property into and out of companies
- buying and selling IP
- buying and selling companies based on IP value (mergers/acquisitions, divestitures, and IPOs)
- forming strategic alliances to maximize the value of intellectual property
- counseling to minimize legal exposure and to achieve business objectives.
- Administrative law, Patents and Trademark Appeals Board (PTAB) trials and Federal Circuit appeals: We consult to law firms under the administrative law to ensure that the PTAB fairly considers argument and evidence, to obtain more favorable standards of review.
- Administrative law, rulemaking: During agency rulemaking, we consult to operating companies and trade organizations to ensure that regulations reflect the public interest.
Unlike most patent law firms, all of our lawyers have been in-house counsel, in the trenches, balancing needs of multiple stakeholders within the company. We’ve been embedded with the engineers—some of us were practicing engineers—participating in the R&D strategy, building corporate value to build value through intellectual property that complements the product, and vice-versa. We understand how technology is developed and exploited in a company.
We know how to do more than just bill you for a patent, we help you build your business. We help you build in options, and avoid hazards. We’ve got first rate legal technical skills too, but more importantly, the business environmental experience to translate those legal skills into business value.
- David E. Boundy, The PTAB is Not an Article III Court, Part 3: Precedential and Informative Opinions, AIPLA Quarterly Journal, vol. 47 no. 1 pp. 1-97 (Jun. 2019).
- David E. Boundy, An administrative law view of the PTAB’s ‘ordinary meaning’ rule, Westlaw Journal Intellectual Property, vol. 25 no. 21, pp. 13-16 (Jan. 30, 2019).
- David E. Boundy, Agency Bad Guidance Practices at the Patent and Trademark Office: a Billion Dollar Problem, 2018 Patently-O Patent Law Journal 20 (Dec. 3, 2018, this version revised Dec. 6, 2018).
- David E. Boundy, The PTAB is Not an Article III Court, Part 2: Aqua Products v. Matal and Chevron Deference, American Bar Ass’n, Landslide (the magazine of the ABA Intellectual Property Law Section), vol. 10 no. 5 (May-Jun 2018).
- David E. Boundy, The PTAB is Not an Article III Court, Part 1: A Primer on Federal Agency Rulemaking, American Bar Ass’n, Landslide, vol. 10 no. 2 (Nov-Dec 2017).
- David E. Boundy, Administrative Law Observations on Cuozzo Speed Technologies v. Lee, American Bar Ass’n, Landslide, vol. 9 no. 3 (electronic edition) (Jan-Feb 2017).
- David E. Boundy, Why Administrative Law Matters to Patent Attorneys—In re Cuozzo Speed Technologies LLC, Patently‑O (Feb. 9, 2015).
- David E. Boundy, Why the 2011 America Invents Act is Bad for Entrepreneurs, Bad for Startups, and Bad for America—and How to Fix It, International In-House Counsel Journal, Cambridge UK (Jun, 2012)
- Opportunity to Reform Existing PTO Regulations and to Ease Patent Application Paperwork Burden, IP Watchdog (Apr 25, 2012)
- David E. Boundy, Why Patent Reform is Bad for Startups, Small Business, Patent Attorneys and America. Westlaw Journal of Intellectual Property – expert commentary series (Jan. 2012)
- Renee Kaswan, David Boundy, Gerald Barnett, Supreme Court Case Could Deprive Inventors & Businesses Ability to Commercialize Inventions, IP Watchdog (Dec 15, 2010)
- David Boundy, Renee Kaswan, Ron Katznelson, eds., Special Issue on Patent Reform, Wolters Kluwer Lippincott Medical Innovation & Business vol. 2 no. 2 (Jun 2010) .
- David Boundy and Matthew Marquardt, Patent Reform’s Weakened Grace Period: Its Effects On Startups, Small Companies, University Spin-Offs And Medical Innovators, Wolters Kluwer Lippincott Medical Innovation & Business vol. 2 no. 2 pp. 27-37 (Jun 2010) .
- David Boundy and Salem Katsh, Festo, Shmesto – Patent Prosecution for Literal Infringement, Patent Strategies and Tactics (Apr 2001)