David E. Boundy
Top Rated Intellectual Property Attorney in Newton, MA
David Boundy is a patent attorney with expertise in Intellectual Property and Administrative Law. Mr. Boundy has a Master’s degree and ten years’ engineering experience in computer and communications engineering. After graduating from Columbia University Law School, David held positions as senior in-house IP counsel for a billion-dollar company, and in two top-25 law firms practicing intellectual property and business law.
Mr. Boundy ia recognized 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 has included patent prosecution, licensing, counseling to avoid litigation, opinions, financing and public offering transactions, due diligence, acquisitions, and spinoffs. His special expertise is computer hardware, software, and algorithms, especially systems software and mathematically-intensive computation such as medical imaging.
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 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.
- Facebook, Inc. v. Windy City Innovations, LLC, 2018–1400 (Fed. Cir. 2020) Brief of Amicus Curiae David E. Boundy in Support of Neither Party (2020) - Decisions of the Patent Office's Precedential Opinion Panel are not entitled to Chevron deference. The court adopted my reasoning closely in its decisions of March 30, 2020 and September 3, 2020.
About David E. Boundy
First Admitted: 1997, Massachusetts
Professional Webpage: https://www.potomaclaw.com/professionals-David-Boundy
Pro bono/Community Service
- IEEE-USA, Intellectual Property Committee (incl a year as vice-chair)
- Non-degree studies in electrical engineering and computer science, M.I.T.
- Master's in Computer and Communications Engineering, University of Michigan, 1983
- IEEE-USA presented a day-long conference on the 2011 America Invents Act. This lecture describes changes that inventors and attorneys must implement to recognize the new law., Software c Leahy-Smith America Invents Act, A Survival Manual: First-Inventor-to-Fileancer, IEE-USA, 2011
Other Outstanding Achievements
- Federal Circuit Judicial Conference, panel moderator for a panel on administrative law as it applies in areas within the Federal Circuit's jurisidiction, 2018
- The Patent Trial and Appeal Board designates some of its decisions as “precedential,” some as “informative,” some as “representative,” and most as “routine.” Some opinions discuss procedural issues, some discuss issues of substantive patent law, some decide issues within the PTO’s rulemaking authority, some purport to set rules of general applicability where the PTO has no jurisdiction, let alone the PTAB. Some have been overruled by the Federal Circuit and yet remain listed on the PTAB’s “precedential” or “informative” opinion web pages. What do these designations mean? In what respect has the PTAB operated within its authority, and in what respects ultra vires? What can you as an applicant or PTAB trial litigant do when the PTAB exceeds its authority? And if you were a Chief APJ or Director of the PTO, what reforms would you adopt?, author, The PTAB is Not an Article III Court, Part 3--Precedential and Informative Opinions, AIPLA Quarterly Journal, 2018
- Agency rulemaking is governed by a number of statutes, regulations issued by the Office of Management and Budget, and executive orders. Rulemaking statutes and executive orders obligate agencies to consult with the public, introspect, analyze, provide an explanation of rationale, and perform cost-benefit balancing for any rule. Statutory rulemaking procedure is designed to ensure that an agency does not raise costs on the public by $2 to reduce agency costs by $1, does not create costs on the public that can be reduced through better internal agency controls, does not impose undue burden on small entities, etc. Statutory rulemaking procedure ensures predictability and, ultimately, “reasoned decisionmaking.” When an agency bypasses any of these obligations, there’s a high risk that the agency will fail to act in the public interest. And of course the incentives and risks are even higher when an agency is funded by user fees. The Patent and Trademark Office has never integrated these laws into its rulemaking process. The direct costs to the public are about $1.5 billion in excess costs, waste, fraud, and abuse. Indirect costs to the economy caused by PTO’s bad guidance practices -- lost patent protection, companies not formed, companies that fold because of delays and unpredictability of their patent applications, business opportunities not pursued, and similar economic effects, etc. -- are well into the billions each year. This article looks at one facet of the problem: PTO's pattern of promulgating rules through informal guidance, when more procedure is required (or, in some cases, where the rule is entirely illegal and could not be promulgated by any procedure)., author, Agency Bad Guidance Practices at the Patent and Trademark Office: a Billion Dollar Problem, 2018 Patently-O Patent Law Jornal 20, 2018
- The Patent and Trademark Office recently changed its claim construction rule for PTAB IPR/PGR trials from a “broadest reasonable interpretation” standard to an “ordinary meaning” standard. The procedures that the PTO used to implement this change raise a number of issues under the Administrative Procedure Act and other law that govern rulemaking. Just like any other federal agency rule, the ordinary meaning rule is governed by various laws, including statutes, executive orders and implementing directives issued by various parts of the executive branch. These measures are intended to guide and assist agencies toward genuine reasoned decision-making that explains how the agency considered various public interests. When an agency neglects these laws public interest concerns get less consideration than Congress intended, public confidence in the agency’s commitment to the rule of law is eroded, and the rule becomes vulnerable to being invalidated on judicial review. The May 2018 ordinary-meaning notice of proposed rulemaking and the October final rule notice contain many “anomalies” that suggest that neglect and raise invalidity concerns., author, An administrative law view of the PTAB’s ‘ordinary meaning’ rule,, Expert Commentary, Westlaw Journal Intellectual Property, 2019
- 37 C.F.R. § 1.75(e), recommending that applicants “should” use Jepson form, is a classic case of a “general statement of policy” under the Administrative Procedure Act, 5 U.S.C. § 553(b)(A). It’s only hortatory, with no force of law. The PTO did exactly the right thing, stating that its preference is non-binding, by using the word “should.” Patent attorneys do exactly the right thing in recognizing the multiple substantive perils of Jepson claims, and ignoring § 1.75(e)., author, 37 C.F.R. § 1.75(e), Jepson claims, and the Administrative Procedure Act, Patently-O, 2017
- Cuozzo Speed Technologies v Lee illustrates an important lesson for the patent bar: federal courts are far more familiar with administrative law than with patent law. Almost every federal court hears several times as many administrative law cases as patent cases. Even the Federal Circuit sees at least as many administrative law issues (involving various federal employees and contracts) as patent law issues. We patent lawyers need better issue spotting skills for administrative law issues, and when a case presents them, to best serve our clients, we must argue on administrative law grounds with administrative law expertise. Basic principles of good advocacy urge us to argue our cases on the courts’ choice of turf. Cuozzo is a prime illustration. Many federal agencies have statutes that provide for judicial review of some agency decisions, and preclude review of others. These “preclusion of review” statutes have been considered in a long line of Supreme Court cases. For 200 years, the Supreme Court has applied a strong presumption of judicial review: agency decisions are presumed to be reviewable, and preclusion statutes are construed narrowly. Even within the scope of preclusion, an agency decision that reflects “brazen disregard” of procedure, or “abuse,” or that has sufficiently grave consequences, often can be reviewed. In Cuozzo, the Supreme Court extended its line of preclusion cases, to confirm that even though Cuozzo’s specific institution was unreviewable, some decisions to institute are judicially reviewable—but the guidance from the Supreme Court is murky. Both Cuozzo’s loss and the Court’s murkiness stem from Cuozzo’s brief: the brief fails to mention a dead-on statute, and is all but silent on the Supreme Court’s administrative law case law. The murkiness creates many future opportunities for informed administrative law advocacy, as the law redevelops in light of Cuozzo’s ambiguities., author, Administrative law observations on Cuozzo Speed Technologies v. Lee, ABA Landslide, Jan/Feb 2017, 2017
- author, Software Cancer: Seven Early Warning Signs, ACM SIGSOFT Software Engineering Notes, 1993
- Aqua Products Inc. v. Matal illustrates a principle raised in two recent papers in Landslide—not every patent case is a patent law case. Aqua’s briefs presented the case as statutory interpretation of the Patent Act. The Federal Circuit en banc ruled against Aqua’s position. However, the court threw Aqua a remarkable lifeline: despite near-complete silence in Aqua’s briefs on administrative law principles, seven judges in three opinions sua sponte decided the case around those principles. Only because of that remarkable lifeline did the court decide in Aqua’s favor—the Patent Office’s attempt to give rulemaking authority to the Patent Trial and Appeal Board (PTAB), and the PTAB’s attempt to make law by mechanisms outside the Administrative Procedure Act (APA) and all the other laws that govern agency rulemaking, were invalidAqua Products is an example of a case that’s really tough on patent law grounds, but a clear winner on administrative law grounds. This article looks at issues presented in Aqua Products, and explains various applicable administrative law principles pertinent to PTAB proceedings. The article also suggests several reforms to prevent recurrence., lead author, The PTAB Is Not an Article III Court, Part 2: Aqua Products v. Matal as a Case Study in Administrative Law, ABA Landslide, May/June 2018, 2018
- What rules may the United States Patent and Trademark Office (USPTO) promulgate? What procedures must the agency follow when it promulgates a rule? What effect do various rules have? Some are binding against the public, some are only hortatory. Some require extensive rule making procedure, some can be promulgated with the stroke of a pen. Some are unilateral in binding only agency employees but not the public. And some are simply invalid. How is agency rule making power different than an Article III court’s? Administrative law expertise is becoming more and more important to successful representation of clients in intellectual property matters. This is Part 1 of a multi-part article, giving an overview of the basic framework of agency rule making. In particular, I provide a table that classifies agency rules—this table simplifies and clarifies a great deal of overly complicated discussion in the standard administrative law treatises. This table and its discussion describe the choices and tradeoffs that agencies face in their rule making decisions, and the opportunities that those choices create for parties before the agency. Expertise in administrative law and agency rule making can guide agency tribunals to favorable decisions, and present compelling arguments to courts after unfavorable decisions., author, The PTAB Is Not an Article III Court Part I: A Primer on Federal Agency Rule Making, ABA Landslide, Nov/Dec 2017, 2017
- Medical Devices
- PTAB trials and appeals
Last Updated: 5/15/2022