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. Dr. Williams has over a decade 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 pharmaceuticals 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 includes both jury and bench trials in federal district court, as well as advocacy in private arbitration proceedings. He is particularly well versed in the specific needs of pharmaceutical innovator clients in Hatch-Waxman litigations. Dr. Williams also has experience with post-issuance proceedings at the Patent Office, including an ex parte reexamination for a transcription-factor-related patent resulting in the cancellation of all claims asserted in Federal litigation.

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 on biotechnology and pharmaceutical patent law. 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 pending legislation to curb abusive patent litigation, ethical issues related to patent practice, and issues specific to the litigation of pharmaceutical patents. 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

“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, including member of the Patent Law committee

American Association for the Advancement of Science

American Bar Association

American Intellectual Property Law Association

Chicago Bar Association

Distinctions

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

Past Events

April 24, 2015
MBHB Partner Andrew Williams is the Featured Presenter at this John Marshall Law School-Sponsored Program
February 25, 2015
MBHB Attorneys Andrew W. Williams, Ph.D. and John "Jay" M. Schafer Are the Featured Presenters
February 17, 2015
MBHB Partner Andrew W. Williams, Ph.D. is a Featured Panelist at this ABA Sponsored Webinar
June 12, 2014
MBHB Partner Dr. Andrew Williams is the Featured Moderator at this ABA Sponsored Roundtable Event
June 10, 2014

Publications

Winter 2015 (snippets)
This article highlights some of the takeaway lessons from the Patent Trial and Appeal Board’s decisions and guidance with regard to three of the most important issues: the content of the substitute claim set, the burden of proof, and the requirement of the patent holder to establish patentability of the substitute claims.
February 5, 2015 (snippets Alert)
MBHB snippets Alert - February 5, 2015

On February 4, the Federal Circuit affirmed the Patent Trial and Appeal Board’s (“PTAB” or “Board”) first inter partes review (“IPR”) Final Written Decision. In fact, In re Cuozzo Speed Technologies, LLC. was the first appeal of any IPR Final Written Decision, and it related to the first IPR ever filed. As such, this case was significant not only for its substance, but for what the Federal Circuit said regarding some of the more controversial rules promulgated by the Patent Office for IPR proceedings. With regard to the substance of this case, the Federal Circuit agreed with the Board that the reviewed claims in Cuozzo’s patent were invalid as obvious over the prior art. In this case, the claimed technology was directed to indicating speed limits at particular locations on GPS units.
January 20, 2015 (snippets Alert)

MBHB snippets Alert - January 20, 2015

In a 7-2 decision authored by Justice Breyer, the U.S. Supreme Court today held that an “appellate court must apply a ‘clear error,’ not de novo, standard of review” to the evidentiary underpinnings of a district court’s claim construction determination. Teva Pharmaceuticals USA, Inc. v. Sandoz Inc., No. 13-854, slip op. at 1-2 (U.S. Jan. 20, 2015). But what are those evidentiary underpinnings?

Spring 2014 (snippets)
Both Congress and the White House have been actively pursuing patent litigation reform in an attempt to combat the perceived “patent troll” problem. Of course, any legislation will impact all patent holders, even though most will not consider themselves to be patent trolls. The disconnect occurs because so-called “trolls” are being equated with all non-practicing entities (“NPEs”) , even though this includes a large number of entities to which that derogatory term was never meant to apply. After all, an NPE is simply a patent holder that does not commercialize the claimed innovation.
Winter 2014 (snippets)
Both the executive and legislative branches of the U.S. government have been working on patent reform. For example, the White House released a report last June entitled “Patent Assertion and U.S. Innovation,” accompanied by several executive initiatives and legislative recommendations. In addition, several pieces of legislation have been introduced in both the House and the Senate to address this perceived “patent troll” problem. As Sens. Leahy and Lee explained, the goal of such legislation is “to make it harder for bad actors to succeed, while preserving what has made America’s patent system great.” The difficulty is in narrowly crafting such legislation to specifically address the perceived problems without also ensnaring legitimate patent holders, and without introducing unexpected negative consequences for the patent system as a whole.
Summer 2013 (snippets)

On May 3, 2013, the United States Patent and Trademark Office (“USPTO” or “Office”) Rules of Professional Conduct (“USPTO Rules”) went into effect to govern the ethical obligations for representing others before the Office. These new rules are based on the ABA Model Rules for Professional Conduct, and replaced the USPTO Code of Professional Responsibility, which dated back to 1985. Because almost every other U.S. jurisdiction had already adopted some form of the ABA Model Rules, this resulted in a harmonization of ethical standards. The adoption of the USPTO Rules was a significant event for every patent practitioner.

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