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Peter J. Cuomo

Member

PJCuomo@mintz.com

+1.617.348.1854

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Peter’s practice involves intellectual property enforcement and defense, and client counseling on issues related to IP rights. His primary focus is in patent litigation where he has experience in every phase of trials and appeals as well as alternative dispute resolution. In addition to suits centered on the assertion and defense of infringement claims, Peter has experience with the successful resolution of multiple inventorship disputes and related misappropriation claims. In addition to litigation, he provides product analyses, and enforcement advice, and evaluates infringement and validity issues in relation to patent opinions and due diligence work.

Peter has represented clients across a wide range of technologies such as biotechnology inventions, automotive parts, medical and mechanical devices, consumer products. He has worked on numerous high-stakes Hatch-Waxman litigations for major pharmaceutical companies through trial and appeals. In addition to patent litigation, Peter has experience in disputes involving breach of contracts, unfair competition, trademarks and trade secret misappropriation claims.

Peter is a registered patent attorney licensed to practice and argue before the United States Patent and Trademark Office. In addition to representing clients in US District Courts and the US Court of Appeals for the Federal Circuit, he has represented clients in multiple post-grant proceedings before the Patent Trial and Appeal Board, and has successfully arbitrated a dispute for a major biotechnology company before the International Chamber of Commerce in Geneva, Switzerland.

Prior to joining the firm, Peter practiced in the intellectual property litigation practice in the Boston office of another international law firm. He also previously worked in and supervised an academic laboratory focused on researching infectious diseases. He is a co-author on multiple scientific papers and spent time in Zambia investigating the co-infection of measles and HIV. During law school, Peter was an editor on the Boston University Journal of Science and Technology Law and worked as a research assistant in intellectual property and the Health Law Department.

Education

  • Boston University School of Law (JD, Intellectual Property, Honors)
  • Johns Hopkins University (MS, Biotechnology)
  • Trinity College (BS, Biology)

Experience

Federal District Court

  • Copan Italia SpA, et al. v. Puritan Medical Products Company LLC, et al. (DME, 1:18-cv-00218) - Represent Copan Italia in enforcing patent infringement and unfair competition claims against primary competitor in a case involving the use of flocked swabs used in biological diagnostic assays.
  • Rehrig Pacific Co. v. Polymer Logistics (Israel), Ltd., et al., 2:19-cv-04952 (C.D. Cal.) – Defended claims of patent infringement brought by a competitor.  Successfully transferred the action from the U.S. District Court for the Southern District of Georgia to the Central District of California, and also obtained dismissal of willful infringement claims prior to favorable settlement.
  • Kowa Company, Ltd., et al. v. Amneal Pharmaceuticals, LLC, et al., Nos. 14-2758 and 14-7934 (S.D.N.Y., April 11, 2017 and September 19, 2017), affirmed, No. 2018-1051 (Fed. Cir. Dec. 10, 2018): Enforced client’s chemical compound and polymorph patents covering an HMG-CoA reductase inhibitor. Patents all held valid and defendants’ ANDA approval enjoined.
  • M&C Innovations, LLC v. Igloo Products Corp., 4:17-cv-02372 (W.D. Tex.) – Defended client Igloo from allegations of patent infringement and unfair competition on one of its most significant product lines.
  • Adaptive Headlamp Technologies, Inc. v. Hyundai Motor America, 1-15-00563-GMS (Jun. 26, 2017) – Defended client against claims of patent infringement for technology covering mechanical headlights. Case dismissed following a stay and successful validity challenge before the Patent Trial and Appeal Board.
  • Inline Plastics Corp. v. Easypak, LLC DMA-4-11-cv-11470 (D. Mass 2015) – Joined case after Markman and obtained dismissal of invalidity counterclaims and entry of judgment on infringement to allow for an expedited appeal. Case settled on favorable terms following remand.
  • Dallakian v. IPG Photonics, 14-cv-11863-TSH (D. Mass.) - Successfully defended against claims for correction of inventorship and trade secret misappropriation.
  • Mitsubishi Chemical Corp. v. Barr Laboratories, Inc., 718 F. Supp. 2d 382 (S.D.N.Y. 2010) aff’d, 435 Fed. Appx. 927 (Fed. Cir. Aug. 2, 2011): Enforced client’s patent covering a high concentration formulation of an anticoagulant under the Hatch-Waxman Act. The patent was found valid and defendant’s ANDA approval was enjoined.
  • Accentra Inc. v. Staples, Inc., 851 F. Supp. 2d 1205 (C.D. Cal. 2011), rev’d in part by Accentra Inc. v. Staples, Inc., No. 2012-1237 (Fed. Cir. Jan. 4, 2013). – Defended against claims of patent infringement brought by a former business partner and competitor.  Client settled on favorable terms following determination that two of three patents were either not infringed or invalid.
  • VLP Watertown L.P. v. Tristate Breeders Cooperative d/b/a/ Accelerated Genetics, 1:07-cv-11487-GAO (D. Mass.) – Represented VLP in litigation of trade secret misappropriation claims involving a cell processing method shown to improve fertility and induce statistically significant female gender bias in dairy herds. Obtained jury verdict of trade secret misappropriation and multimillion-dollar judgment.

Patent Office Proceedings

  • Laboratory Corporation of America Holdings v. Quest Diagnostics Investments LLC, IPR2019-00738, IPR2019-01425, IPR2019-01618: (Pending).
  • Laboratory Corporation of America Holdings v. Quest Diagnostics Investments LLC, IPR2019-01517 - Represented diagnostic company patent owner and obtained decision denying institution of IPR.
  • Jennewein Biotechnologie GmbH v. Glycosyn LLC, PGR2019-00023 - Represented biotechnology patent owner and obtained decision denying institution of PGR.
  • Acclarent, Inc. et al v. Ford Albritton, IV, IPR2017-00498 (Jul. 9, 2018) - Represented medical device company in decision involving guide catheter apparatus.
  • SL Corporation v. Adaptive Headlamp Technologies, Inc., IPR2016-00193 and IPR2016-01368 (Mar. 15, 2017) – Represented automotive client challenging patent claims asserted in district court resulting in a decision finding all claims unpatentable.
  • Indivior Inc. v. Rhodes Pharmaceuticals L.P., IPR2018-00795 (Oct. 4, 2018) - Decision involving methods of opioid substitution therapy using buprenorphine sublingual film.
  • Green Cross Corp. v. Shire Human Genetic Therapies, Inc., IPR2016-00258 (Mar. 22, 2017) - Decision involving actual reduction to practice of recombinant protein.
  • Mylan Pharmaceuticals, Inc. v. Nissan Chemical Industries, Ltd., IPR2015-01069, (Oct. 20, 2015) - Represented pharmaceutical company patent owner and obtained decision denying institution of IPR.
  • Sawai USA, Inc., et al. v. Nissan Chemical Industries, Ltd., IPR2015-01647, (Feb. 4, 2016): Represented pharmaceutical company patent owner and obtained decision denying institution of IPR.
  • Sawai USA, Inc., et al. v. Nissan Chemical Industries, Ltd., IPR2015-01648, Paper No. 9 (Feb. 4, 2016): Represented pharmaceutical company patent owner and obtained decision denying institution of IPR.
  • Ace Bed Co., Ltd. v. Sealy Technology LLC, IPR2014-01119, Paper No. 12, (Nov. 24, 2015): Represented petitioner in proceeding involving bed springs and all claims were determined to be unpatentable.
  • Saturn Biomedical Systems, Incorporated v. Aircraft Medical Limited, Inter Partes Reexamination No. 95/000,161 – Counsel to a medical device company and third-party requester in a complex inter partes reexamination involving nearly 300 claims related to video laryngoscopy. On appeal and after more than six years, all but one claim that did not pose a risk of infringement were determined to be unpatentable.

Appellate

  • Acclarent, Inc. v. Albritton, No. 18-2377 (Fed. Cir. 2019) - Represented medical device company in appeal from patent office decision involving guide catheter apparatus.
  • Kowa Company, Ltd., et al. v. Amneal Pharmaceuticals, LLC, No. 2018-1051 (Fed. Cir. Dec. 10, 2018): Represented pharmaceutical company following a successful Hatch-Waxman patent infringement. Obtained affirmance of district court judgment upholding client’s patents over anticipation, obviousness, and obviousness-type double patenting challenges.
  • Green Cross Corporation v. Shire Human Genetic Therapies, Inc., No. 17-2071 (Fed. Cir, 2018) – Represented client on appeal of IPR proceeding. Successfully defeated motion to dismiss for lack of standing prior to favorable settlement and dismissal.
  • Inline Plastics Corp. v. EasyPak, LLC, 799 F.3d 1364 (Fed. Cir. 2015) – Represented Inline against a primary competitor and successfully achieved reversal and remand on case-dispositive claim construction.
  • Accentra Inc. v. Staples, Inc., No. 2012-1237 (Fed. Cir. Jan. 4, 2013) – Represented Staples against competitor on appeal. Obtained reversal on two out of three patent issues and affirmance of summary judgment of no trademark infringement. Client settled on very favorable terms following remand to district court.
  • Rubin v. The General Hospital Corporation, No. 2011-1439 (Fed. Cir. Mar. 28, 2013) – Represented the General Hospital Corporation (MGH) on appeal following a successful defense against plaintiff’s inventorship challenge at the district court. Judgment affirmed.
  • SpendingMoney LLC v. American Express Co., No. 2012-1481 (Fed. Cir. Feb. 12, 2013) - Represented the client on appeal following a successful summary judgment determination of noninfringement. Judgment affirmed.
  • MeadWestvaco v. Rexam, Appeal, 731 F.3d 1258 (Fed. Cir. 2013) - Represented MeadWestvaco on appeal of issues including claim construction, summary judgment determinations, and bench finding of infringement.
  • Mitsubishi Chem. Co. v. Barr Labs., Inc., 435 Fed. Appx. 927 (Fed. Cir. Aug. 2, 2011) - Represented pharmaceutical company following a successful Hatch-Waxman patent infringement action at the district court. Judgment affirmed.

Recognition & Awards

  • Paul J. Liacos Scholar, Boston University School of Law
  • Dean’s Award for Corporate Law, Boston University School of Law

Involvement

  • Member, American Intellectual Property Law Association
  • Member, Boston Bar Association
  • Member, Boston Patent Law Association

Recent Insights

News & Press

Viewpoints

Federal Circuit Appeals Viewpoint Thumbnail
In Network-1 Techs., Inc. v. Hewlett-Packard, No. 18-2338, the Federal Circuit reversed and vacated multiple aspects of the district court’s final judgment holding that Hewlett-Packard (HP) did not infringe U.S. Patent No. 6,218,930 (“the ’930 patent”) disclosing an apparatus and method for remotely powering Ethernet compatible equipment.
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Patent Litigation Viewpoint Thumbnail
On July 30, 2020, the U.S. District Court for the District of Delaware, in APS Technology, Inc. v. Vertex Downhole, Inc. et al, No. 19-cv-01166, denied Vertex Downhole’s Rule 12(b)(6) motion to dismiss APS’s patent infringement complaint.
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On July 13, 2020, the U.S. District Court for the Eastern District of Michigan, in Mich. Motor Techs., v. Volkswagen Aktiengesellschaft, No. 19-10485, granted Volkswagen’s motion to dismiss Michigan Motor Technologies’ (MMT’s) willful infringement claims and request for enhanced damages under 35 U.S.C. § 284 because MMT failed to allege sufficient facts to plausibly establish that Volkswagen acted egregiously and with knowledge of both the asserted patents and Volkswagen’s infringement thereof.
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Federal Circuit Appeals Viewpoint Thumbnail

Federal Circuit: Licensees’ Failure to Mark Eliminates Entitlement to Pre-Suit Damages

July 27, 2020 | Blog | By Adam Samansky, Peter Cuomo, Matthew Karambelas, Courtney Herndon

Recently, in Packet Intelligence LLC v. NetScout Sys., Inc., No 19-2041 (July 14, 2020), the Court of Appeals for the Federal Circuit reversed a jury verdict of $3.5 million in pre-suit damages and vacated the trial court’s enhancement of that award because licensees of the asserted patents failed to properly mark allegedly patent practicing products.
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Intellectual Property Viewpoints Thumbnail

Filling the Hole with Common Sense: When Evidentiary Support is Adequate

July 6, 2020 | Blog | By Peter Cuomo, Serge Subach

The Federal Circuit recently reaffirmed a case where common sense was used to supply a missing element in a § 103 obviousness analysis.  On June 26, 2020, the Federal Circuit issued a decision in B/E Aerospace, Inc. v. C&D Zodiac, Inc., Nos. 2019-1935, 2019-1936 (Fed. Cir. Jun. 26, 2020) (“B/E Aerospace”) affirming a Patent Trial and Appeal Board (“PTAB”) final written decision finding patent claims invalid in view of a combination of prior art and common sense.
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Intellectual Property Viewpoints Thumbnail
On June 26, 2020, the U.S. District Court for the District of Delaware, in VLSI Tech. LLC. v. Intel Corp, No. 18-0966-CFC, denied VLSI’s motion for leave to amend to add claims for willful infringement of U.S. Patent Nos. 6,212,633 (the “’633 patent”) and 7,523,331 (“the ’331 Patent”) based on pre-suit activity but granted it as to alleged post-suit infringement (which Intel did not oppose).
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Intellectual Property Viewpoints Thumbnail

Celgene v. Sun Pharma Global: Satisfying Subject Matter Jurisdiction Under § 271(e)(2)

April 13, 2020 | Blog | By Adam Samansky, Peter Cuomo, Joe Rutkowski

On April 6, 2020, the U.S. District Court for the District of New Jersey, in Celgene Corp. v. Sun Pharma Global FZE, No. 19-cv-10099, denied Sun’s motion to dismiss Celgene’s claims that Sun’s generic Revlimid® (lenalidomide) Abbreviated New Drug Application (ANDA) product infringes three patents not listed in the Orange Book for Revlimid® and for which Sun did not make any Paragraph IV certifications.
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Intellectual Property Viewpoints Thumbnail
Mintz is recognized as among the top ten firms in ITC Section 337 litigation by Patexia in its inaugural "ITC Intelligence Report". We are pleased to be among the firms included in this publication and thrilled that it has come on the heels of a great year at the ITC for the Mintz team.
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Viewpoint-Landing Intellectual Property Mintz

Year in Review: The Most Popular IP Posts of 2019

January 6, 2020 | Blog | By Christina Sperry

As 2020 begins and intellectual property (IP) strategies are being developed for the new year, it is a good time to reflect on what IP issues were prominent in 2019.  According to many readers, hot topics included § 112 written description, prosecution history estoppel, and venue in the wake of TC Heartland.
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Federal Circuit affirms Safe Harbor ruling and $70 million award in Amgen Inc. v. Hospira, Inc.

December 20, 2019 | Blog | By Thomas Wintner, Peter Cuomo, Nana Liu

On December 16, 2019, the Court of Appeals for the Federal Circuit issued an opinion that fully upheld the District of Delaware’s denial of Hospira, Inc.’s motion for judgment as a matter of law (JMOL), or alternative motion for new trial, in Amgen Inc. v. Hospira, Inc., Nos. 2019-1067, 2019-1102.  
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News & Press

News Thumbnail
Mintz Members Peter Cuomo and Adam Samansky co-authored an article published by IAM examining the U.S. Supreme Court’s decision to deny a petition for certiorari in Eli Lilly and Co. v Hospira, Inc., upholding the infringement of Eli Lilly’s chemotherapy drug Alimta (pemetrexed), and what the development means for the doctrine of equivalents and for patent application amendments.
An article published by Law360 reported that following the U.S. International Trade Commission’s initial decision that Jennewein Biotechnologie GmbH’s imports infringe a Glycosyn LLC patent on human milk oligosaccharides, the Patent Trial and Appeal Board denied Jennewein’s petition for post-grant review of a related patent.

The Mintz team representing Glycosyn at the ITC includes Michael Newman, Thomas Wintner, Michael Renaud and James Wodarski; and the Mintz team representing Glycosyn at the PTAB includes Michael Newman, Thomas Wintner, Peter Cuomo and Daniel Weinger.
In this article published by Law360, Mintz Members Adam Samansky and Peter Cuomo commented on lingering questions related to the America Invents Act's estoppel provision, which prevents challengers from arguing in court that a patent is invalid on grounds that were raised — or reasonably could have been raised — during inter partes review at the Patent Trial and Appeal Board.
Mintz has secured a string of substantial victories in Hatch-Waxman litigation for innovative drug manufacturers Kowa Pharmaceutical Co., Ltd., Kowa Pharmaceuticals America, Inc., and Nissan Chemical Industries Ltd.
Mintz announced a pair of victories before the Patent Trial and Appeal Board on behalf of SL Corporation and Hyundai Motor America, Inc. against Adaptive Headlamp Technologies, Inc.

Events

Speaker
May
1
2018

Technology Centers 3600 & 3700 Customer Partnership Meeting

USPTO and American Intellectual Property Law Association

USPTO Headquarters 600 Dulany Street, Madison Auditorium Alexandria , VA