Andrew W. Williams, Ph.D.

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 sixteen 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, 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 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.

Representative Speaking Engagements/Presentations

“Top Stories at the PTAB: What You Need to Know,” MBHB webinar, March, 2018

"Strategies for Coping with the Evolving Landscape of Biosimilars Patent Resolution in the United States," 4th Biologics & Biosimilars Congress, March, 2018

"Advanced IPR Topics," Chicago Regional IPR Seminar, December, 2017

"Show Me the Money: Strategies to Overcome Valuation Challenges," American Conference Institute’s Summit on IP Due Diligence (Comprehensive and Practical Tips for Pharmaceutical, Biotechnology, and Medical Device Professionals), November, 2017

“Drafting Patent Counsel Engagement and Disengagement Letters," Strafford Webinar, July 2017

“Post-Grant Review at the PTAB: What Petitioners and Patent Owners are Doing and What Lies Ahead?,” MBHB webinar, March, 2017

“Strategies for Addressing Intellectual Property Barriers to Biosimilar Marketing,” 3rd Biologics & Biosimilars Congress, March, 2017

“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


PTAB Bar Association

  • Member of the Program Committee

Intellectual Property Owner’s Association

  • Member of the U.S. Patent Law committee (voting) and Pharmaceutical & Biotechnology Issues Committee (non-voting)

The Richard Linn American Inn of Court

Federal Circuit Bar Association

  • Member of the Amicus Committee

American Bar Association

  • Member of the Patents in the Chemical and Life Sciences Committee

American Association for the Advancement of Science


Top Author in JD Supra Readers’ Choice 2017 (“Pharmaceutical Industry”) and 2016 (“Patents”)

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


April 24, 2018 (snippets Alert)
MBHB snippets Alert - April 24, 2018

In a 7-2 decision, the Supreme Court today in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC held that inter partes review (IPR) proceedings do not violate Article III or the Seventh Amendment of the Constitution. Writing for the majority, Justice Thomas explained that a grant of a patent is a matter involving a public right. Moreover, because IPR proceedings involve the same basic matter as the grant of a patent, they also fall within the public rights doctrine. As a result, the Constitution does not prohibit the Patent Office from resolving issues of validity after grant outside of an Article III court. Important to the analysis was the lack of distinction between IPR proceedings and the initial grant of the patent because “[p]atent claims are granted subject to the qualification that the PTO has ‘the authority to reexamine – and perhaps cancel – a patent claim’ in an inter partes review.”

Winter 2018 (snippets)
In Aqua Products, Inc. v. Matal, a highly fractured en banc Federal Circuit determined that the PTAB can no longer place the burden of establishing the patentability of amended claims on the patent owner in IPR proceedings.
October 5, 2017
MBHB snippets Alert - October 5, 2017

In Aqua Products Inc. v. Matal, a highly fractured en banc Federal Circuit determined that the PTAB, in ruling whether to allow claim amendments in an IPR proceeding, can no longer place the burden to establish the patentability of the amended claims on the patent owner. This should result in more claim amendments being allowed in such proceedings, and it also opens the possibility that more motions to amend will be filed. However, this decision is unlikely to be the panacea hoped for by patent owners.
June 12, 2017 (snippets Alert)
The Supreme Court handed down its opinion in Sandoz Inc. v. Amgen Inc., marking the first time the Court has interpreted the Biologics Price Competition and Innovation Act (“BPCIA”) for the approval of biosimilar drugs. On the first question considered, the Court held that a biologic reference product sponsor (“RPS”) cannot seek enforcement of 42 U.S.C. §262(l)(2)(A) by injunction under federal law. The Court’s analysis of the second question, regarding the 180-day notice provisions of the statute, was more straightforward. The Court held that the Federal Circuit had misinterpreted the statutory language by imposing a requirement for FDA approval before proper notice could be given.
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.
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