Denise W. DeFranco
Denise DeFranco has been representing companies in patent infringement litigation in both trial and appellate courts for two decades. She has successfully litigated cases involving a broad range of technologies, including biotechnology, medical devices, pharmaceuticals, telecommunications, electronics, and software.
Ms. DeFranco has been engaged by organizations such as the American Intellectual Property Law Association (AIPLA) and the Federal Circuit Bar Association to write amicus briefs in high-profile patent cases before the U.S. Supreme Court and the U.S. Court of Appeals for the Federal Circuit. These cases have included Prometheus (statutory subject matter); Bilski (statutory subject matter); Merck v. Integra (271(e)(1)); Phillips (claim construction); Festo (doctrine of equivalents); and Pfaff (on sale bar).
Ms. DeFranco is a frequent speaker at conferences throughout the country for major bar associations including the ABA Intellectual Property Law Section and AIPLA. She is called upon by such organizations to share her experience regarding the America Invents Act (AIA); inter partes review (IPR), post-grant review (PGR), and covered business method (CBM) proceedings; patent protection for business methods; the extraterritorial enforcement of U.S. patents; the limits of the section 271(e)(1) safe harbor for drug development; the written description requirement of section 112 of the patent statute; and statutory subject matter.
- Respironics, Inc. v. Zoll Medical Corp. (PTAB). Represents Koninklijke Philips Electronics N.V. in an IPR proceeding before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO).
- Bilski v. Kappos (S. Ct.). Represented patent owner in U.S. Supreme Court in case involving a statutory subject matter regarding business method patents.
- Lead trial counsel in successful defense of patent infringement suit involving client's main product line of meter box locking devices.
- Lead trial counsel in successful defense of a motion for temporary restraining order and preliminary injunction.
- Representation of pro bono client before the Federal Circuit resulted in an en banc decision.
- Represented large biotechnology company in defense of patent infringement suit involving seven patents and developed invalidity theories that resulted in favorable settlement of the suit.
- Represented branded drug companies in Abbreviated New Drug Application (ANDA) litigation against multiple potential generic entrants.
- Worked five years at the USPTO as a patent examiner in the medical device arts, and as a legislative specialist in the Assistant Commissioner's Office, 1986-1991.
- Clerked for the Honorable Paul R. Michel at the Federal Circuit, 1991-1993.
- Taught a course on patent law while serving as adjunct professor at Northeastern University School of Law, 2000-2004.
- Recognized as a leader in the field of intellectual property law by Chambers USA, 2012-2016.
- Recognized as a leading patent litigator in Massachusetts by Intellectual Asset Management, 2016.
- Recognized as an “IP Star—Top 250 Women in IP,” 2013-2014; and as an “IP Star” in Massachusetts by Managing Intellectual Property, 2013-2016.
- Selected by her peers for inclusion in The Best Lawyers in America, 2010-2016.
- Ranked among top U.S. patent lawyers in Legal Media Group’s Guide to the World’s Leading Patent Law Practitioners since 2015.
- Recognized as a Massachusetts “Super Lawyer” in Intellectual Property Litigation, Super Lawyers, 2004, 2013-2015.
- Recognized as a “Top Women of Law” by Massachusetts Lawyers Weekly, 2014.
- American Intellectual Property Law Association (President-Elect, 2014; First Vice President, 2013-2014; Second Vice President, 2012-2013; Fellow, 2011-present; Board of Directors, 2007-present; chair/vice chair, Amicus Committee, 2003-2007)
- American Bar Association (Intellectual Property Law Section: council,
2011-present; Content Advisory Board, 2007-2014; Patent Law Reform Task Force, 2006-2011)
- Federal Circuit Bar Association (Board of Trustees, 2003-2006; co-chair, Amicus Committee, 2000-2003)
- AIPPI (U.S. Division of AIPLA, President-Elect, 2014)
- Fellow of the American Bar Foundation
- "Mayo: A Force to Be Reckoned With," Landslide, July/Aug. 2012.
- "Mayo v. Prometheus Guest Post: The Hot-Button Issues," Patently-O Blog, Dec. 11, 2011.
- "Corporate Espionage the Honest Way," Bloomberg IP Report, May 3, 2010.
- "Can Anything Under the Sun Be Patented?" Mass High Tech, Aug. 29, 2008.
- Coauthor. "Technology and the Global Economy: Progress Challenges the Federal Circuit to Define the Extraterritorial Scope of U.S. Patent Law," AIPLA Quarterly Journal, Fall 2006.
- "The Experimental Use Exception: Looking Towards a Legislative Alternative," Suffolk University Journal of High Technology Law, 2006.
- Coauthor. "Written Description and Enablement: One Requirement or Two?" Federal Circuit Bar Journal, 2005.