Andrew W. Williams, Ph.D.

Partner
P: 312.913.3301
F: 312.913.0002

Andrew W. Williams is a partner with McDonnell Boehnen Hulbert & Berghoff LLP and serves as Chair of the firm's PTAB Trials Practice Group. Dr. Williams has over fourteen years of experience in all areas of intellectual property law, with particular emphasis on patent litigation, client counseling, and patent procurement in the areas of biochemistry, pharmaceuticals, and molecular diagnostics. This includes the representation of pharmaceutical and biotechnology companies, both large and small, as well as several universities. Dr. Williams’ litigation experience spans a diverse range of technologies, with a concentration in litigation involving pharmaceuticals and biotechnology. This experience includes jury and bench trials in federal district court; practice before the Patent Trial and Appeal Board; and advocacy in private arbitration proceedings. He is particularly well versed in the Biologics Price Competition and Innovation Act (“BPCIA”) and the Hatch-Waxman ANDA statute to better assist with the specific needs of his pharmaceutical and bio-therapeutic clients.

Dr. Williams is a frequent speaker and author on a variety of intellectual property law topics. In particular, he is an author and regular contributor to the Patent Docs weblog, a site focusing primarily on biotechnology and pharmaceutical patent law. He has also authored articles for such publications as Law360.com, Intellectual Property Magazine, Intellectual Property Today, Expert Opinion on Therapeutic Patents, and Biosimilar Developments. Dr. Williams has written extensively on issues specific to the AIA-related PTAB trials, with a particular focus on life-science-related IPRs and PGRs; the emergence of BPCIA-related biosimilars and the corresponding patent resolution strategies; efforts to draft legislation to curb abusive patent litigation; and ethical issues related to patent practice. Dr. Williams has regularly been quoted in Law360.com articles related to patent law issues, and has recently been quoted in articles found in MedPage Today and BioPharma related to recent events for Biosimilars. In 2013, he was interviewed for a segment that aired on the NPR program “All Things Considered” that addressed legislative efforts to address the so-called “patent troll” problem.

Speaking Engagements/Presentations

“The PTAB Front and Center at the Federal Circuit and the Supreme Court: The First Year of Appellate Review,” MBHB webinar, May, 2016

“The Evolving World of Biosimilars Litigation,” MBHB webinar, September, 2015

“Harmonization of USPTO Ethical Standards in the Post-AIA Era” at the John Marshall Law School Ethics in the Practice of Law symposium, April 2015

“Inter Partes Review (IPR) at the Patent Trial and Appeal Board” at the Northwestern Law IP Symposium, March 2015

“Prevailing Before the PTAB “Death Squad”: Practical Considerations for Petitioners and Patent Holders,” MBHB webinar, February 2015

“Attorney's Fees, Costs and Other Fee-Shifting Measures in Patent and Trademark Litigation” webinar, sponsored by the ABA Center for Professional Development, February 2015

“Reviewing Fact Issues of Claim Construction – Will the Supreme Court Defer to Federal Circuit Precedent?” ABA Section of Litigation Roundtable, June 2014

“‘Standing Out’ – The Supreme Court’s Redefined Standard for Fee Shifting in Patent Litigation, and How It Might Impact ‘Patent Troll’ Litigation” MBHB webinar, June 2014

Panelist for “Eli Lilly and the Canadian NAFTA Challenge” at the Public Citizen and American University Washington College of Law’s Secondary Use Pharmaceutical Patents: Litigation and Trade Policy Briefing, June 2014

“Ethical Considerations in Patenting Biotechnological Inventions” at the John Marshall Law School Ethics in the Practice of Law symposium, April 2014

“Solving the ‘NPE Problem’ – Legislative Proposals” at the Northwestern Law IP Symposium, February 2014

“Proposed Patent Reform Legislation: How it May Impact You (Especially if You Are Not Considered to be a “Patent Troll”), MBHB webinar, February 2014

“New USPTO Rules of Professional Conduct – Harmonization of Ethical Standards,” Corporate Counsel committee of the Intellectual Property Law Association of Chicago, January 2014

Memberships

Intellectual Property Owner’s Association

  • Member of the Pharmaceutical & Biotechnology Issues Committee
  • Past member of the U.S. Patent Law committee

Federal Circuit Bar Association

  • Member of the Amicus Committee

American Bar Association

  • Member of the Patents in the Chemical and Life Sciences Committee
    • Co-chair of the BPCIA and Biosimilars Legislation subcommittee

American Intellectual Property Law Association

Chicago Bar Association

American Association for the Advancement of Science

Distinctions

Top Author in JD Supra Readers’ Choice 2016 (“Patents”)

Extern, Hon. Richard Linn, U.S. Court of Appeals for the Federal Circuit

Upcoming Events

July 27, 2017
MBHB Partner Dr. Andrew Williams Is the Featured Presenter

Past Events

March 14, 2017
MBHB Partners Dr. Andrew Williams and James Lovsin Are the Featured Presenters
March 7, 2017
MBHB Partner Dr. Andrew Williams Is Featured Presenter
May 18, 2016
September 22, 2015
MBHB Partners Kevin E. Noonan, Ph.D. and Andrew W. Williams, Ph.D. Are the Featured Presenters
April 24, 2015
MBHB Partner Andrew Williams is the Featured Presenter at this John Marshall Law School-Sponsored Program

Publications

Winter 2017 (snippets)
In 2011, the Leahy-Smith America Invents Act (“AIA”) established new post-issuance procedures for challenging the validity of a granted patent before the Patent Trials and Appeal Board (“PTAB” or “Board”). Inter partes reviews (“IPRs”) and Covered Business Method patent reviews (“CBMs”) have been available since September 16, 2012, and their utilization since that time has exceeded expectations. A third mechanism, post-grant review (“PGR”), was also made available on that date, but because a PGR petition can only be filed for patents that were examined pursuant to the new First-Inventor-to-File scheme established by the AIA, it has not yet been significantly utilized. Here, we describe the IPR and PGR estoppel provisions of 35 U.S.C. §§ 315(e) and 325(e) and courts’ interpretations of those provisions thus far.
June 20, 2016 (snippets Alert)
MBHB snippets Alert - June 20, 2016

In its first pronouncement regarding the post-grant reviewing proceedings established by the America Invents Act (“AIA”), the Supreme Court ruled that the Patent and Trademark Office’s positions on two of the law’s provisions regarding inter partes review (“IPR”) were correct. First, the Court held unanimously that the PTO properly applied the “broadest reasonable interpretation” standard for claim construction for IPRs. Second, six members of the Court also agreed that the statute mandated that the decision to institute an IPR was not subject to judicial review.
June 14, 2016 (snippets Alert)
MBHB snippets Alert - June 14, 2016

On June 13, 2016, the Supreme Court ruled unanimously, in an opinion by Chief Justice Roberts, that an award of enhanced damages pursuant to 35 U.S.C. § 284 should be within the sound discretion of a district court, albeit wherein this discretion is limited to “egregious cases of misconduct beyond typical infringement.” The decision in the combined Halo Electronics, Inc. v. Pulse Electronics, Inc. and Stryker Corp. v. Zimmer, Inc. cases reverses the Federal Circuit test established in In re Seagate Tech., LLC, which had required a patentee to satisfy a two-part test (having subjective and objective components) to establish willful infringement.
Spring 2016 (snippets)
In March 2015, the FDA approved the first biosimilar application, which was for a follow-on biologic drug of Amgen’s reference product NEUPOGEN® (filgrastim). Yet, before the applicant, Sandoz, could launch its biosimilar under the brand name ZARXIO®, it had to wait for the Federal Circuit to interpret the controlling statute, the Biologics Price Competition and Innovation Act (“BPCIA”). This year, a different applicant with an approved biosimilar drug is in a very similar situation.
Winter 2016 (snippets)
February 4, 2016, marked the one-year anniversary of the initial In re Cuozzo Speed Technologies, LLC Federal Circuit decision – the first opinion stemming from the first appeal of the first final written decision of the first inter partes review (“IPR”) ever filed. From the time that decision came out until the end of January 2016, there have been at least 56 appeals from IPRs and Covered Business Method (“CBM”) patent reviews resolved by this appeals court.
Summer 2015 (snippets)
In the highly fractured Amgen v. Sandoz decision, the Federal Circuit, in part, concluded that the Biologics Price Competition and Innovation Act (“BPCIA”) patent resolution procedure was not mandatory, leaving open the distinct possibility that no biosimilar applicant will ever use the new biosimilar approval pathway.
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