Barbara Clarke McCurdy

Partner

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Barbara Clarke McCurdy

Partner

+1 202 408 4047 +1 202 408 4047
barbara.mccurdy@finnegan.com barbara.mccurdy@finnegan.com

901 New York Avenue, NW
Washington, DC 20001-4413

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Barbara McCurdy has more than 25 years of experience creating, enforcing, and defending patent rights, with a particular focus on patent litigation, patent counseling, and contested patent proceedings before the U.S. Patent and Trademark Office (USPTO). She has been lead trial counsel in patent cases in the U.S. district courts, appeals before the U.S. Court of Appeals for the Federal Circuit, Section 337 investigations at the U.S. International Trade Commission (ITC), and contested proceedings at the USPTO.

Barbara's experience before the USPTO includes leading more than 20 contested proceedings before the Patent Trial and Appeal Board (PTAB). In addition to inter partes proceedings before the USPTO involving challenges to patentability and priority of invention, she also has been lead counsel in district court actions under 35 U.S.C. § 146 reviewing USPTO Board decisions and district court actions under 35 U.S.C. § 291 involving interfering patents. She has lectured extensively around the world on the strategic interplay between USPTO post-grant proceedings and litigation in district courts and the ITC.

Barbara has been recognized by Intellectual Asset Management as a leading patent litigator in the D.C. area, and nationally for post-grant procedures. Her cases have involved a wide range of technologies, including computers, software, semiconductors, medical devices, chemicals, and pharmaceuticals.

Barbara provides a range of patent counseling, including strategic patent prosecution, validity and infringement opinions, patent portfolio management, and litigation strategy. She develops strategies that meet the business goals of clients, including advising them on building patent portfolios in significant new technology areas, developing IP positions that take into account the IP landscape, advising on acquisitions or licensing of technology, and developing offensive and defensive litigation strategies. She has taught patent law to hundreds of law school students and USPTO contested proceedings practice to hundreds of patent attorneys.

Barbara served as chairman of Finnegan, following a three-year term as the firm's managing partner.

Experience

Represented Home Diagnostics in a patent litigation concerning blood glucose meters; securing judgments of noninfringement from two district courts, which were affirmed on appeal.

5:99-cv-21269; 5:01-cv-20725, N.D. Cal., Judges Ware, Trumbull, Seeborg
01-1428, 03-1370, Fed. Cir., Judges Rader, Dyk, Prost, Mayer, Michel

Represented the University of Missouri in a patent interference related to hemodialysis catheters before the USPTO, two district courts, and the Federal Circuit; judgment of priority was awarded in favor of the client and against Vas-Cath.

Int. No. 103988, Board of Patent Appeals and Interferences, Judge Martin
1:03-cv-01952, D.D.C., Judge Stafford
2:05-cv-00400, W.D. Mo., Judge Fenner
06-1100, Fed. Cir., Judges Newman, Lourie, Rader

Represented LG (Lee) in a patent interference provoked by competitor Whirlpool (Voglewede) attempting to challenge LG refrigerator patents; judgment entered against Whirlpool and in favor of client LG.

Int. No. 105711, Board of Patent Appeals and Interferences, Judge Lee

Represented Research in Motion (Lazaridis) in a patent interference provoked by rival Motorola (Eggleston) attempting to challenge early RIM patents involving certain message "pushing" technology for electronic mail systems; judgment entered against Motorola and in favor of client RIM.

Int. No. 105,700, Board of Patent Appeals and Interferences, Judge Lee

Defended Syngenta in ITC investigation in which Sumitomo was seeking to exclude Syngenta agricultural products from the U.S.; successfully argued for early termination of the proceeding by the administrative law judge and the full ITC. The Commission terminated Sumitomo's investigation against Syngenta based on a license arbitration agreement.

337-TA-635, ITC, Judge Bullock

Defended Home Diagnostics, a manufacturer of blood testing equipment, against infringement allegations by competitor. Obtained summary judgment of noninfringement of one patent and a holding of unenforceability of the other patent following a bench trial.

1:04-cv-00358, S.D. Ind., Judges McKinney, Shields

Insights

At the PTAB Blog

Delaware Court Applies “Skilled Researcher Conducting a Diligent Search” Standard in Finding Estoppel Under § 315(e)(2) Delaware Court Applies “Skilled Researcher Conducting a Diligent Search” Standard in Finding Estoppel Under § 315(e)(2)

August 18, 2021

Webinar

Doctrine of Equivalents in Patent Prosecution: DOE Application, Festo Exceptions, Recent Case Law Developments Doctrine of Equivalents in Patent Prosecution: DOE Application, Festo Exceptions, Recent Case Law Developments

December 1, 2020

Webinar

On Sale and Public Use Bars to Patentability: Minimizing the Risk of Patent Ineligibility or Invalidation On Sale and Public Use Bars to Patentability: Minimizing the Risk of Patent Ineligibility or Invalidation

February 20, 2020

Webinar

At the PTAB Blog

Where Are We Now? Are You Estopped or Not? Where Are We Now? Are You Estopped or Not?

February 19, 2020

Webinar

December 5, 2019

Webinar

Motion to Amend Patent Practice: New USPTO Pilot Program, Updates to Amendment Precedent Motion to Amend Patent Practice: New USPTO Pilot Program, Updates to Amendment Precedent

May 30, 2019

Webinar

24 more

Professional Recognition

“Barbara McCurdy…[features] on the national table of the top post-grant experts…McCurdy doesn't play games, but is a grounded adviser with an admirable ability to carefully think through difficult issues and present creative solutions.”

“Also highly rated is Barbara Clarke McCurdy, who practises with the utmost integrity, peers acknowledge: ‘She’s always straight with her opponents—judges see this and appreciate it.’ Like many here, McCurdy is a versatile operator capable of emerging victorious from battle in any forum.”

“McCurdy can ‘triage issues effectively as a result of her diverse expertise.’”

News

Media Mention

Biogen MS Drug Patent Survives Mylan's PTAB Challenge Biogen MS Drug Patent Survives Mylan's PTAB Challenge

February 6, 2020

Law360

Media Mention

Biogen Prevails in Fed. Circ. MS Drug Dispute with Forward Biogen Prevails in Fed. Circ. MS Drug Dispute with Forward

October 24, 2018

Law360

Media Mention

Women in IP Law Give Tips for Taking the Lead Women in IP Law Give Tips for Taking the Lead

October 31, 2016

Managing Intellectual Property

Press Release

Finnegan Announces New Management Team Finnegan Announces New Management Team

July 18, 2016

Award/Ranking

Finnegan Recognized by Intellectual Asset Management as 2016 Leading Patent Law Firm Finnegan Recognized by Intellectual Asset Management as 2016 Leading Patent Law Firm

May 27, 2016

Intellectual Asset Management

Media Mention

100 Best Law Firms for Female Attorneys 100 Best Law Firms for Female Attorneys

April 17, 2016

Law360

19 more

Professional Activities

American Bar Association (Section on Intellectual Property)
American Intellectual Property Law Association
Federal Circuit Bar Association

Admissions and Education

Admissions

District of Columbia
Massachusetts

U.S. District Court, District of Columbia
U.S. District Court, D. Massachusetts
U.S. Court of Appeals, Federal Circuit
U.S. Patent and Trademark Office
Supreme Court of the United States

Education

Suffolk University Law School: J.D., cum laude, 1985

Duke University: B.S.E., Mechanical Engineering, 1982

Barbara's Practices

Patent Litigation: Appeals; ITC Section 337; Patent Trial; Pre-Trial Strategy; Settlement
Patent Office Examinations: Prosecution
Patent Portfolio Management, Monetization, and Transactions: Due Diligence; Opinions and Counseling
Post-Grant Proceedings: Derivations; Interferences; IPR, PGR, and CBM

Barbara's Industries

Chemicals, Industrials, and Materials: Manufacturing
Electronics and Information Technology: Electrical and Computer Technology
Life Sciences: Medical Device and Diagnostics; Pharmaceutical