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 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 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.
Experience
Federal District Court
- Chr. Hansen HMO GMBH f/k/a Jennewein Biotechnologie GmbH v. Glycosyn LLC, 1:22-cv-11090 (D.MA) – Represent defendant and counter-claim plaintiff Glycosyn asserting patent on bioengineered human milk oligosaccharides (pending).
- Evoke Pharma, Inc. v. Teva Pharmaceuticals, Inc., 1:22-cv-02019 (D.N.J.) - Represented Teva Pharmaceuticals, Inc. and Teva Pharmaceuticals USA, Inc., in settled ANDA litigation involving metoclopramide nasal spray product.
- Horizon Medicines LLC v. Teva Pharmaceuticals USA, Inc., 2:20-cv-08188 (D.N.J.) – Represented Teva Pharmaceuticals USA, Inc., in ANDA litigation involving fixed-dose oral combination product. Obtained dismissal with prejudice after briefing case-dispositive claim construction.
- Nanoco Technologies, Ltd. v. Samsung Electronics Co., Ltd. et al, 2:20-cv-00038 (EDTX) - Represented Nanoco in enforcing patents directed to quantum dots used in televisions resulting in $150M settlement for client.
- Copan Italia SpA, et al. v. Puritan Medical Products Company LLC, et al.,1:18-cv-00218 (DME) - Represent Copan 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
- Eyenovia, Inc. v. Sydnexis, Inc., IPR2022-00384, -00414, 00415 – Represent pharmaceutical client challenging patent claims directed to low-dose ophthalmic compositions and method of using the same (pending)
- Samsung Electronics Co., Ltd. et al v. Nanoco Technologies, Ltd., IPR 2021-00182, -00183, -00184, -00185, and -00186 - Represented patent owner and obtained decisions upholding all claims as valid.
- Laboratory Corporation of America Holdings v. Quest Diagnostics Investments LLC, IPR2019-00738, IPR2019-01425, IPR2019-01517, IPR2019-01618 - Represented diagnostic company patent owner in multiple proceedings involving methods of detecting metabolites.
- 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 district court defendant medical device company and third-party requester in a complex inter partes reexamination involving nearly 300 claims related to video laryngoscopy. All but one claim that did not pose a risk of infringement were determined to be unpatentable.
Appellate
- Copan Italia S.p.A. v. Puritan Medical Products Company LLC, 22-1943 (Fed. Cir.) - Represent Copan in defendants’ appeal from decision denying immunity from liability under the Public Readiness and Emergency Preparedness Act (PREP Act) (pending).
- Copan Italia S.p.A. v. ITC, 23-1668 (Fed. Cir.) - Represent Copan in appeal from ITC decision (pending).
- Copan Italia S.p.A. v. Puritan Medical Products Co. LLC, No. 22-7085 (D.C. Cir. 2022) - Represented Copan in defendants’ appeal from decision denying immunity from liability under the Public Readiness and Emergency Preparedness Act (PREP Act). Dismissed for lack of jurisdiction.
- Samsung Electronics Co., Ltd. v. Nanoco Technologies Ltd., Nos. 22-1847, -1848, -1849, -1850, -1851 (Fed. Cir. 2022) - Represented Nanoco in appeal from patent office decisions finding all challenged claims valid. Dismissed pursuant as part of $150M settlement for client.
- 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.
International Trade Commission
- Certain Flocked Swabs, Products Containing Flocked Swabs, And Methods of Using Same (337-TA-1279) - Representing Copan Italia and Copan Industries as complainants in the International Trade Commission, asserting patent infringement claims against global competitors in a case involving the use of flocking technology (common in the textile industry) in the production of biological specimen collection swabs. Evidentiary hearing is scheduled for June 2022.
- Certain Human Milk Oligosaccharides and Methods of Producing the Same (337-TA-1120) – Represented Glycosyn LLC as complainant before the ITC against respondent Jennewein Biotechnologies GmbH, a large global competitor. The complaint alleged unlawful and unauthorized importation and production and/or manufacture of 2'-fucosyllactose oligosaccharides that directly infringe one or more claims of Glycosyn's U.S. Patent No. 9,453,230. Following oral hearing in May 2019, the Administrative Law Judge issued an Initial Determination finding that Jennewein had infringed claims of Glycosyn’s patent and recommended that a limited exclusion order issue, including a certification provision with heightened requirement.
viewpoints
Federal Circuit Affirms Obviousness of Rifaximin Polymorph Patents and Denial of Motion to Modify Judgment After Post-Trial Patented Indication Carve Out
April 25, 2024 | Blog | By Joe Rutkowski, Peter Cuomo, Thomas Wintner, Adam Samansky, Alex Trimble, PhD
In a precedential opinion issued on April 11, 2024 in Salix Pharmaceuticals, Ltd. v. Norwich Pharmaceuticals Inc., Nos. 22-2153, 23-1952, the U.S. Court of Appeals for the Federal Circuit affirmed the U.S. District Court for the District of Delaware’s decision holding claims directed to polymorphic form “β” of rifaximin invalid as obvious.
How Your Trade Secret Could Help to Defend Against Claims of Patent Infringement
February 1, 2024 | Blog | By Adam Samansky, Peter Cuomo, Nicholas Armington, Stephen Chen
Inherent Limitations in Prior Patents can Lead to Obviousness-Type Double-Patenting
December 21, 2023 | Blog | By Peter Cuomo, Amanda Metell
Federal Circuit Puts the Onus on Patent Owners to Disclaim Patent Term or Face Double-Patenting
September 7, 2023 | Blog | By Peter Cuomo, Thomas Wintner, James Whittle, PhD
On August 28, 2023, the U.S. Court of Appeals for the Federal Circuit, in In re Cellect, Appeal No. 2022-1293, evaluated for the first time how statutorily authorized patent term adjustments interact with the judge-made doctrine of obviousness-type double patenting.
Federal Circuit Clarifies That Secondary Considerations Must Be Considered Both Individually And As A Whole In An Obviousness Analysis
August 31, 2023 | Blog | By Michael Newman, Peter Cuomo, Paul Weinand
On August 24, 2023, the U.S. Court of Appeals for the Federal Circuit, in Volvo Penta of the Ams. LLC v. Brunswick Corp., Case No. 22-1765, vacated a Final Written Decision of the Patent Trial and Appeal Board (PTAB) holding all claims of U.S. Patent 9,630,692 (the “’962 patent”) unpatentable as obvious.
An Overview of Shotgun Pleadings in the Federal Courts
August 7, 2023 | Blog | By Joe Rutkowski, Peter Cuomo
Advice that may have served House of Pain in their 1992 hit song, “Jump Around,” to “bring a shotgun” to battle likely does not translate well to plaintiffs in federal litigation contemplating bringing a “shotgun” pleading to court. In this article we explore types of shotgun pleadings identified by courts and outline potential responses to a shotgun pleading.
Supreme Court Unanimously Affirms Amgen Repatha® Antibody Patents Invalid for Lack of Enablement
May 25, 2023 | Blog | By Joe Rutkowski, Peter Cuomo, Thomas Wintner, Adam Samansky, Terri Shieh-Newton
Making Bacon Still Requires a Significant Contribution for Joint Inventorship
May 10, 2023 | Blog | By Peter Cuomo, Hannah Edge
Federal Circuit Affirms Delisting of REMS System Patent from FDA Orange Book
March 6, 2023 | Blog | By Peter Cuomo, Adam Samansky, Peter McFadden
On February 24, 2023, the U.S. Court of Appeals for the Federal Circuit, in Jazz Pharmaceuticals, Inc., v. Avadel CNS Pharmaceuticals, LLC, Case No. 23-1186, affirmed a decision from the District Court of Delaware directing Jazz Pharmaceuticals, Inc. (“Jazz”) to delist U.S. Patent No. 8,731,963 (the “’963 patent”) from the FDA’s Approved Drug Products with Therapeutic Equivalence Evaluations publication (the “Orange Book”). The district court held, and the Federal Circuit affirmed, that the ’963 patent, which covers Risk Evaluation and Mitigation Strategies (“REMS”) for the narcolepsy drug Xyrem®, failed to claim a drug or method of use, and was thus improperly listed.
Federal Circuit Resolves District Court Split, Holds Foreign Defendant Cannot Defeat Rule 4(k)(2) Personal Jurisdiction by Unilateral Post-suit Consent to Jurisdiction in Alternative Forum
January 23, 2023 | Blog | By Joe Rutkowski, Adam Samansky, Peter Cuomo
On January 9, 2023, the U.S. Court of Appeals for the Federal Circuit in In re Stingray IP Solutions, LLC, No. 23-102 granted a writ of mandamus, vacating a decision of the Eastern District Court of Texas which had transferred a patent infringement suit filed against foreign defendants to the Central District of California based on defendants’ post-suit consent to jurisdiction there.
News & Press
The Best Lawyers in America 2025 Recognizes 184 Mintz Attorneys across 56 Practice Areas
August 15, 2024
187 Mintz attorneys have been recognized by Best Lawyers® in the 2025 edition of The Best Lawyers in America©. Notably, three Mintz attorneys received 2025 “Lawyer of the Year” awards, and 64 firm attorneys were included in the 2025 edition of Best Lawyers: Ones to Watch.
Mintz is pleased to announce that 120 firm attorneys have been recognized as leaders by Best Lawyers® in the 2024 edition of The Best Lawyers in America©.
Mintz Guides Nanoco Group in $150M Patent Litigation Settlement
February 03, 2023
Mintz secured a $150 million settlement for Nanoco Group plc in the company’s patent infringement litigation against Samsung Electronics Co. Ltd. and Samsung Electronics America Inc. Mintz Member Michael Newman led a team that represented the maker of cadmium-free quantum dots and other nanomaterials in a federal district court in Texas and before the US Patent and Trademark Office.
Why Cellect's Federal Circuit Case Is One To Watch
December 16, 2022
Members Adam Samansky and Peter Cuomo spoke to Managing IP on the implications that a pending case in the Court of Appeals for the Federal Circuit could have on litigation and prosecution strategies for life sciences companies.
As ANDA Suit Venue Options Shrink, Del., NJ Rule For Now
November 29, 2021
PTAB Says Mass. Biotech's Milk Patent Ineligible For Review
September 18, 2019
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.
The Estoppel Questions On The Minds Of Patent Challengers
September 9, 2019
Victory on Appeal After Lengthy Litigation Over Cholesterol Inhibitor
December 14, 2018
Mintz Promotes Six Attorneys to Member
May 23, 2018
Mintz Secures Full Patent Victory for Kowa Pharmaceuticals and Nissan Chemical in Lengthy Battle
September 22, 2017
Mintz Triumphs for SL Corporation and Hyundai Motor America, Inc. Before the Patent Trial and Appeal Board
March 16, 2017
Events & Speaking
PTAB update: IPR Discretionary Denials Due to Parallel Proceedings
The Alan D. Lourie Boston IP American Inn of Court
Webinar
Technology Centers 3600 & 3700 Customer Partnership Meeting
USPTO and American Intellectual Property Law Association
USPTO Headquarters 600 Dulany Street, Madison Auditorium Alexandria , VA
Recognition & Awards
Paul J. Liacos Scholar, Boston University School of Law
Dean’s Award for Corporate Law, Boston University School of Law
Best Lawyers in America: Patent Litigation (2024 - 2025)
Involvement
- Member and co-chair of the Intellectual Property Law Section, Boston Bar Association
- Member, American Intellectual Property Law Association
- Member, Boston Intellectual Property Law Association
- Member, Boston Intellectual Property Inn of Court