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Tom Engellenner

Partner

One Post Office Square
30th Floor
Boston, MA 02109
tom.engellenner@nelsonmullins.com

Tom Engellenner’s practice includes patents, licensing, trademarks, copyrights, and litigation. He has particular experience in the fields of biotechnology, pharmaceuticals, analytical instruments, and medical devices.

Mr. Engellenner has more than 30 years of experience in prosecuting and litigating patents and advising clients generally on intellectual property strategies. His litigation experience includes patent infringement cases in the...

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Tom Engellenner’s practice includes patents, licensing, trademarks, copyrights, and litigation. He has particular experience in the fields of biotechnology, pharmaceuticals, analytical instruments, and medical devices.

Mr. Engellenner has more than 30 years of experience in prosecuting and litigating patents and advising clients generally on intellectual property strategies. His litigation experience includes patent infringement cases in the U.S. federal courts and interference and reexamination proceedings at the U.S. Patent Office, as well as infringement and validity trials in Japan and Europe.

Most recently, Mr. Engellenner’s practice has expanded to include post-grant proceedings at the U.S. Patent Office, which were established in 2012 by the America Invests Act. He has represented clients in more than 60 inter partes review proceedings.

U.S. federal courts and interference and reexamination proceedings at the U.S. Patent Office, as well as infringement and validity trials in Japan and Europe.

Most recently, Mr. Engellenner’s practice has expanded to include post-grant proceedings at the U.S. Patent Office, which were established in 2012 by the America Invests Act. He has represented clients in more than 60 inter partes review proceedings.

Tom Engellenner’s practice includes patents, licensing, trademarks, copyrights, and litigation. He has particular experience in the fields of biotechnology, pharmaceuticals, analytical instruments, and medical devices.

Mr. Engellenner has more than 30 years of experience in prosecuting and litigating patents and advising clients generally on intellectual property strategies. His litigation experience includes patent infringement cases in the... U.S. federal courts and interference and reexamination proceedings at the U.S. Patent Office, as well as infringement and validity trials in Japan and Europe.

Most recently, Mr. Engellenner’s practice has expanded to include post-grant proceedings at the U.S. Patent Office, which were established in 2012 by the America Invests Act. He has represented clients in more than 60 inter partes review proceedings.

Experience

Following is a selected sampling of matters and is provided for informational purposes only. Past success does not indicate the likelihood of success in any future matter.

Previous Experience

  • Partner, Chair of Life Sciences Practice Group and Co-Chair of Patent Practice Group, Boston law firm
  • Trial attorney, U.S. Environmental Protection Agency
  • Patent and licensing attorney, Office of Technology Licensing, Massachusetts Institute of Technology
    • Obtained more than 150 patents for MIT

Representative Matters

  • Provided counsel in numerous inter partes review (IPR) proceedings at the U.S. Patent Office, successfully arguing on behalf of patent owners in several IRPs that a trial should not be initiated
  • Participation in numerous U.S. patent reexamination proceedings and European patent oppositions on behalf of life science and high tech clients
  • Design of a patent strategy and portfolio development for the first company to secure FDA approval in the U.S. for laser vision correction devices; also was a member of the trial team that secured a multimillion-dollar jury verdict in a patent infringement suit against a competitor based on one of the patents he drafted
  • Obtained summary judgment of invalidity for life science company accused of patent infringement
  • Outside IP counsel for world-famous institute of regenerative medicine
  • Representation of a client as defendant accused of patent infringement in an International Trade Commission proceeding and secured a judgment that no exclusion order was warranted based on public interest factors
  • Representation of a life science company in a Federal Trade Commission antitrust investigation that resulted in a dismissal without penalties or admission of wrongdoing
  • Assisting a life science client in a sale of its catheter business to a major medical device company, including term sheet negotiation, due diligence, and final asset purchase agreement

 

Education

  • Boston University School of Law, JD
  • Rensselaer Polytechnic Institute, MS, Environmental Studies
  • Rensselaer Polytechnic Institute, BS, Engineering

Admissions

  • Massachusetts
  • New York
  • U.S. Patent & Trademark Office
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. District Court for the District of Massachusetts

Practice Areas

Industries

The bar rules of some states require that the standards for an attorney's inclusion in certain public accolades or recognitions be provided. When such accolades or recognitions are listed, a hyperlink is provided that leads to a description of the respective selection methodology.

  • American Bar Association
  • American Intellectual Property Law Association
  • Association of University Technology Managers
  • Boston Bar Association
  • Boston Patent Law Association (President, 2000-2001)
  • Board member, All Newton Music School in Newton, Mass.
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