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Mr. Leonardo is Chair of the firm's Intellectual Property Group and oversees the firm's intellectual property and technology practice. Mr. Leonardo's practice encompasses all areas of intellectual property, including commercial exploitation and management of patent portfolios, patent and trademark procurement, and opinion counseling on complex legal and technical issues particularly in the medical device and biomedical instrumentation fields. He assists clients in developing comprehensive and strategic patent portfolios that maximize a company's competitive advantage; negotiating technology development, licensing and technology transfer agreements; trade secret and unfair competition counseling; and conducting intellectual property portfolio reviews for technology-driven companies.
Mr. Leonardo has been able to bring a breadth of real world experience to his clients by routinely acting as "in-house" intellectual property counsel on an as needed basis. In doing so, Mr. Leonardo has been able to provide unique legal assistance in overseeing the development of intellectual property policies and strategies for client companies and individual business units, including interfacing with general counsel, division executives, and research and product development departments. As in-house intellectual property counsel, Mr. Leonardo routinely assists his clients with analyzing, negotiating and counseling on various transactions and agreements; analyzing competitor product lines including developing and implementing offensive and defensive strategies; as well as review of and advice on sales, advertising and promotional materials and programs.
Mr. Leonardo is particularly active in counseling clients in connection with the acquisition and protection of intellectual property rights in corporate transactions, including strategies for protecting their organization's intellectual property, evaluating the intellectual property of their prospective business partners, assessing merger candidates, corporate due diligence, and intellectual property investigations in conjunction with private venture financing, public offerings, mergers, acquisitions and divestitures.
Additionally, Mr. Leonardo represents high technology companies in areas of complex patent litigation. He has advised both plaintiffs asserting their patent rights, and defendants opposing charges of patent infringement. Work on patent litigation and litigation counseling has been in the areas of medical devices, mechanical instruments, and consumer products.
Prior to his work at the Firm, Mr. Leonardo was a Patent Examiner in the Electro-Mechanical and Biomedical Arts Groups at the United States Patent & Trademark Office.
Representative Matters
o Served as primary intellectual property counsel on a $100 million launch of major product line for Fortune 100 company.
o Represented the intellectual property interests of an investor in the area of Carbon Emission Reduction Credits (CERC) under The Kyoto Protocol in Latin America, including investor's ability to secure liens and interests against the CERC production facilities' intellectual property.
o Represented American Railcar, a Carl Icahn affiliate, in connection with intellectual property matters related to its $200 million IPO completed January 2006, co-led by UBS and Bear Stearns.
o Member of the intellectual property team representing patentee, a small family company, in a patent litigation over consumer appliances against a billion dollar corporation. Results included the issuance of a preliminary injunction in favor of client and a win on appeal at the Federal Circuit upholding the injunction, prior to the matter resulting in a favorable settlement for the client.
o Served as primary intellectual property counsel for public company client in acquisition of another public company worth over $500 million.
o Patent litigation has included preparing and responding to discovery requests, drafting and opposing discovery and evidentiary motions, taking and defending depositions, drafting expert reports and consulting with experts, drafting and opposing motions for summary judgment, drafting and opposing motions to dismiss, and preparing pre-and post-trial memoranda and drafting briefs.
Publications
o Co-author, "Exploring the Perimeters of Whole Business Securitization," Global Securitisation and Structured Finance 2007
o "The Fundamentals of Intellectual Property Protection: A Primer for Biotechnology and Life Science Companies," The Journal of Biolaw & Business, Special Supplement: Intellectual Property, 2001
o "Foreign Service of Process By Letters Rogatory," The Law Works, Volume 1, No. 9, Cover Story, page 7, (Sept. 1994)
Bar Admissions & Memberships
o Admitted, Massachusetts Bar
o Admitted, United States Court of Appeals for the Federal Circuit
o Registered Patent Attorney, U.S. Patent and Trademark Office
o Member, American Intellectual Property Law Association, Boston Patent Law Association, Massachusetts Bar Association; American Bar Association |
