David Boundy is a Partner in our Intellectual Property and Administrative Law practices, advising clients in strategic development of intellectual property as an integrated asset of the business, and synergizing intellectual property with legal, R&D, finance, and marketing. Mr. Boundy is listed as one of the 300 leading intellectual property strategists in the world. He has represented and counseled inventors, investors, startups, and established companies in intellectual property matters. The scope of representation includes patent prosecution, licensing, counseling to avoid litigation, opinions, financing and public offering transactions, due diligence, acquisitions, and spinoffs. His special expertise is in structuring startups’ IP portfolios to maximize financing. Special technological expertise includes computer hardware, systems software, and mathematically intensive computation such as artificial intelligence, robotics, and medical imaging.
Mr. Boundy is also recognized as an authority in administrative law as it applies to the U.S. Patent and Trademark Office, and using administrative law as an alternative approach to obtain beneficial results from the PTO, particularly in Federal Circuit appeals from IPRs and PGRs. 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. The National Law Journal recognized Mr. Boundy as one of 50 Intellectual Property Trailblazers for 2019 for his work in the area. In executive branch rulemaking matters, Mr. Boundy led the teams that successfully quashed the Patent Office’s 2006-09 Continuations, 5/25 claims, IDS, Appeal, and IDS regulations, and the 2021 CLE and DOCX rules. Mr. Boundy has consulted on comment letters and legal challenges to other rules. In Article III litigation and appeals, Mr. Boundy has provided specialty consultation to lead counsel on issues at the intersection of Patent Office procedure and administrative law.
Mr. Boundy has held positions as senior in-house intellectual property counsel for a billion-dollar company, partner in a leading Cambridge/Boston-area IP law firm and senior associate in two AmLaw 25 law firms practicing intellectual property and business law.
Mr. Boundy is a frequent author and lecturer on patent and administrative law and software engineering and is often quoted in local, trade and national media outlets. He lectured at M.I.T. Laboratory for Computer Science on compiler construction.
- At Cantor Fitzgerald, now the largest independent investment bank and among the most patent-savvy broker-dealers on Wall Street, performed licensing, amicus briefing in Supreme Court and Federal Circuit cases and patent prosecution. Prepared strategic response to troll inquiries and actively participated in several organizations’ advocacy activities, including meeting with Senators and Representatives during consideration of the AIA, amicus briefing in patent and administrative law cases.
- Represented clients in a broad spectrum of intellectual property issues including litigation, defensive opinion letters, pre-assertion validity and infringement vetting, licensing, due diligence, intellectual property aspects of M&A and IPO transactions, and highly leveraged bank lending against intellectual property.
- Built patent prosecution practices for a leading national law firm.
- Provided counsel to Hewlett-Packard, Apollo Computer, and a Massachusetts Route 128 startup on several issues including compilers, operating system internals, processor architecture, fault-tolerant diagnostics and networking.
Honors & Awards
- National Law Journal, 50 Intellectual Property Trailblazers (2019)
- IAM300, Recommended Individual (2018-2022)
Publications and Speeches
Papers On Patent And Administrative Law
“Nonfunctional Descriptive Material” vs. “Printed Matter”—The PTAB’s Defiance of Federal Circuit Precedent, Landslide (American Bar Ass’n) vol 12 nr 3, pp 46-51 (Jan-Feb 2020).
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).
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).
Agency Bad Guidance Practices at the Patent and Trademark Office: a Billion Dollar Problem, 2018 Patently-O Patent Law Journal 20 (Dec. 3, 2018).
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).
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).
Administrative Law Observations on Cuozzo Speed Technologies v. Lee, American Bar Ass’n, Landslide, vol. 9 no. 3 (electronic edition) (Jan-Feb 2017).
Why Administrative Law Matters to Patent Attorneys—In re Cuozzo Speed Technologies LLC, Patently-O (Feb. 9, 2015).
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)
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, co-authored with Renee Kaswan and Gerald Barnett, (Dec 15, 2010)
Special Issue on Patent Reform, Wolters Kluwer Lippincott Medical Innovation & Business vol. 2 no. 2, co-authored with Renee Kaswan and Ron Katznelson, eds., (Jun 2010).
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, co-authored with Matthew Marquardt (Jun 2010).
Festo Shmesto—Patent Prosecution for Literal Infringement, Patent Strategies and Tactics (Apr 2001), co-authored with Salem Katsh.
America Invents Act, A Survival Manual: First-Inventor-to-File, sponsored by IEEE‑USA, Co-presented with Leahy-Smith, (Oct. 16, 2012).
Corporate IP Counsel Summit, World Research Group (Apr. 27-28, 2010)
PLI, Advanced Patent Prosecution Workshop
Complier Construction, Rules of Thumb, MIT Laboratory for Computer Science invited lecture (1992)
David is frequently asked to brief as amicus curiae in patent cases, and was lead author in IEEE-USA’s briefs in Bilski v. Kappos at certiorari stage, in CLS v. Alice at the Federal Circuit, in Hyatt v. Kappos, and other cases.
New Vision Gaming & Development, Inc. v. SG Gaming, Inc. v. USPTO, Federal Circuit No. 20-1399, opening brief (Jun. 30, 2020 ); reply brief (Dec. 15, 2020).
In the PTAB’s first “Precedential Opinion Panel” (POP) case, Proppant Express Investments LLC v. Oren Technologies, LLC, IPR2018-00914, an amicus brief challenging the jurisdiction to the PTAB to substitute the POP for statutory rulemaking as required by the Administrative Procedure Act. When the Proppant rule got to the Federal Circuit, at oral argument, the court cited the Proppant brief to request further briefing on the issue. In response to the PTO’s brief defending the POP, an amicus brief explaining the unlawfulness of the POP. The court’s decision adopted my reasoning closely, and rejected the PTO’s. Facebook, Inc. v. Windy City Innovations, LLC, 953 F.3d 1313, 1343 (Fed. Cir. Mar. 18, 2020) (additional views of unanimous panel), reaff’d on reh’g 973 F.3d 1321, 1353 (Sep. 4, 2020).
On an appeal from a PTAB decision to not institute, a brief in support of the Federal Circuit’s jurisdiction to review institution decisions, in Cisco Systems, Inc. v. Ramot at Tel Aviv University Ltd., No. 20-2047, relying on the APA to distinguish Thryv, Inc. v. Click-to-Call Technologies, LP
At the United States Supreme Court, on behalf of USIJ (U.S. Startups and Inventors for Jobs), in Oracle v. Google, an amicus brief in support of copyright eligibility for API declaring code
In Tafas v. Dudas, Briefs of amicus curiae Polestar Capital et al. These briefs received considerable coverage in the major patent law blogs:
Brief Highlights Patent Office’s Suspicious Procedures, Patent Baristas (Jan. 11, 2008)
Oops, They Did It Again — Patent Office has “Typographical Error”, Patent Baristas (Jan. 14, 2008)
Letters to Patent Office and Office of Management and Budget opposing 2008 Appeal Regulations raising issues under the Paperwork Reduction Act, which ultimately resulted in OMB ordering the PTO to stand down on these regulations:
Notice and Comment letter to PTO (Aug 18, 2008)
Letter to Office of Management and Budget on economic effects of 2007 IDS Regulation, on behalf of 27 signatory companies (Oct 17, 2007). These letters were discussed in the prominent patent law blogs:
The OMB Isn’t Listening, Either, Patent Docs (Dec. 11, 2007, 2008)
Cantor Fitzgerald VP Criticizes IDS Rule in Letter to OMB, Patent Docs (Oct 18, 2007)
Letter to Office of Management and Budget on budget effects of 2007 Continuations and Claims regulations, on behalf of 26 high technology companies (Jul 3, 2007)
Presentation at White House Conference Center to the Office of Management and Budget on the effects of the 2007 Claims and Continuations Rules, on behalf of 27 high technology and pharma companies (Jun 15, 2007)
Papers On Software Engineering
Software cancer: the seven early warning signs, ACM SIGSOFT Software Engineering Notes (Jan 1993).
A taxonomy of programmers, ACM SIGSOFT Software Engineering Notes (Jan 1991).
Quoted In Congressional Floor Debate
- Dianne Feinstein, Senate Floor Debate on S.23, S.Amdt. 133, describing effect of America Invents Act on small inventors, quoting David extensively (Mar. 2, 2011)
- The Bipartisan ‘Stick It to Individual Inventors’ Act, The National Review (May 22 2015).
- Not so Intellectual Property, International Bar Ass’n Journal of Energy & Natural Resources Law , From the USA (Oct 2011)
- Top Stories of 2008: #5 to #1, Patent Docs blog — David’s win in an administrative law case was the number 2 event of 2008. (Jan. 5, 2009)
- New Patent Appeals Rules: Delayed by White House OMB, Patently-O notes David’s role in blocking the 2008 PTO appeal regulations. (Dec. 9, 2008)
- PTO Publishes Comments on Proposed BPAI Rules, Patently-O (Nov. 8, 2007).
Memberships and Affiliations
- IEEE (Institute for Electrical and Electronic Engineers), Member
- IEEE Intellectual Property Committee, vice chair for patents
- American Intellectual Property Law Association, Member
- Boston Patent Law Association, Member
News, Events & Insights
- Columbia University Law School, J.D.
- Harlan Fisk Stone honors
- University of Michigan, M.S., Computer and Communication Sciences
- Hope College, B.S.
- Cantor Fitzgerald, Partner, Vice President, and Senior Intellectual Property Counsel
- Willkie Farr & Gallagher LLP
- Shearman & Sterling
- Hewlett-Packard Co., senior software engineer (compilers and RISC processor architecture)
Areas of Practice
- New York
- U.S. Patent and Trademark Office
- U.S. Supreme Court
- U.S. Court of Appeals for the Federal Circuit
- U.S. District Court for the Eastern District of New York
- U.S. District Court for the Southern District of New York