Denise W. DeFranco

Partner

Denise DeFranco has been representing companies in patent infringement litigation in both trial and appellate courts since 1993. 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 Federal Circuit. These cases have included Pfaff (on sale bar); Festo (doctrine of equivalents); Phillips (claim construction); and Merck v. Integra (271(e)(1)). Most recently Ms. DeFranco represented the patent owner in Bilski v. Kappos (statutory subject matter) before the U.S. Supreme Court.

Ms. DeFranco is a frequent speaker at conferences throughout the country for major bar associations including the ABA Intellectual Property Law Section and AIPLA. Ms. DeFranco is called upon by such organizations to share her expertise on the extraterritorial enforcement of U.S. patents, the limits of the section 271(e)(1) safe harbor for drug development, and the written description requirement of section 112 of the patent statute.

Highlights

• Lead trial counsel in successful defense of patent infringement suit involving client’s main product line of meter box locking devices.
• 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.
• Representing branded drug companies in ANDA litigation against multiple potential generic entrants.
• Conducted landscape analysis for leading pharmaceutical company before major product launch.
• Strategic counseling of $10 million venture-backed pharmaceutical company in worldwide patent portfolio development.
• Worked five years at the U.S. Patent and Trademark Office as a patent examiner in the medical device arts and as a specialist in the Assistant Commissioner’s Office.
• Clerked for two years for the Honorable Paul R. Michel at the U.S. Court of Appeals for the Federal Circuit.
• Taught a course on patent law while serving as Adjunct Professor at Northeastern University School of Law.

Professional Recognition

• Selected by her peers for inclusion in The Best Lawyers in America (2010).

Professional Activities

• AIPLA (Board of Directors, 2007-present; Chair/Vice Chair, Amicus Committee, 2003-2007)
• ABA Intellectual Property Law Section (Patent Law Reform Task Force, 2006-present; Content Advisory Board, 2007-present; Chair, Committee on Ex Parte Patent and Trademark Office Affairs, 2005-2007; Chair, Committee on Inventors, 2004-2005; Chair, Special Committee on Patent Experts, 2001-2003)
• Federal Circuit Bar Association (Board of Trustees, 2003-2006; Co-Chair, Amicus Committee, 2000-2003)
• AIPLA Journal, Editorial Board, 2002-2004

Select Publications

• "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.
• Coauthor. "Patent Infringement Damages: A Brief Summary," Federal Circuit Bar Journal, 2000.