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.
“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