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.

Representative Experience

  • 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

Presentations

  • America Invents Act, A Survival Manual: First-Inventor-to-File, sponsored by IEEEā€‘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)

Briefs, Etc.

Papers On Software Engineering

Quoted In Congressional Floor Debate

Interviews/Press Mentions

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

Education

  • Columbia University Law School, J.D.
    • Harlan Fisk Stone honors
  • University of Michigan, M.S., Computer and Communication Sciences
  • Hope College, B.S.

Previous Experience

  • 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)

Admissions

  • Massachusetts
  • 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

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