Adam Kessel is a Principal in the Boston office of Fish & Richardson. His practice emphasizes litigation involving Internet and software-related matters across all areas of intellectual property and related licensing and contractual issues. He also specializes in patent litigation involving chemistry and biotechnology. He has substantial courtroom and trial experience, including work on several IP cases at trial in the Federal Courts and International Trade Commission. He also handled nearly 200 criminal cases as a “lawyer on loan” to the Suffolk County District Attorney’s Office (2009-2010), several of which he took to trial as first chair.
Mr. Kessel has previous IP law firm experience, and served as a Judicial Intern for the Late Honorable Reginald Lindsay of the United States District Court for the District of Massachusetts (2003), as well as a Legal Intern for the Electronic Privacy Information Center (2002). Prior to law school, Mr. Kessel had many years of consulting experience in web and database programming (1990-2004), and also worked as a Lab Associate in a biochemistry lab at the University of Vermont Medical School (1997). Mr. Kessel also held a position at the Center for Neighborhood Technology as a Researcher, where he worked on environment and economic development policy issues.
Philips et al v. ZOLL Medical Corporation – D. Mass. (2010 – Present) and W.D. Wash. (2012 – Present) Represent medical device maker ZOLL Medical Corporation as both patentee and accused infringer in cases involving twenty-five patents relating generally to defibrillator technology. Case pending.
American Superconductor Corporation v. S&C Electric – D. Mass. (2011 – Present) Represent plaintiff AMSC in case involving multiple patents relating to reactive power compensation devices. Case pending.
Robocast, Inc. v. Microsoft Corp. – D. Del. (2011 – Present) Represent defendant Microsoft in case relating to automated web browsing tools. Case pending.
EveryScape v. Adobe Incorporated – D. Mass. (2010 – Present) Represent defendant and counterclaim-plaintiff Adobe Incorporated in case involving multiple patents relating to photo editing software. Case pending.
Trading Technologies International, Inc. v. TradeStation Securities, Inc. et al – N.D. Ill. (2009 – Present) Represent defendant TradeStation Securities in case involving multiple patents relating to electronic trading system software. Case pending.
Infineon Technologies AG v. Fairchild Semiconductor Corporation (D. Del., D. Maine. 2008-2009) – Represented semiconductor manufacturer Infineon in infringement case involving eleven patents covering various aspects of power transistors in parallel proceedings in Delaware and Maine. Case settled.
In the Matter of Certain Sucralose, Sweeteners Containing Sucralose, and Related Intermediate Compounds Thereof – (I.T.C. 2007-2009) Represented respondent manufacturer in case involving artificial sweeteners in case before the International Trade Commission. Won decision of non-infringement and patent invalidity after seven day trial on the merits. Decision affirmed by the Commission in precedential opinion presenting a novel jurisdictional issue.
Achates Reference Publishing Inc. v. Microsoft Corp. – (E.D. Tex. 2007-2009) Represented Microsoft in patent infringement lawsuit relating to Microsoft Product Activation. Case settled.
Medtronic v. Abbott, et al. – (N.D. Cal. 2007-2009) Represented Boston Scientific Corporation in patent infringement lawsuit relating to cardiovascular stents. Case settled.
Bose v. Phitek, et al. – (D. Mass. 2007-2009) Represent Bose in patent infringement action involving noise-reducing headphones. Case settled.
VistaPrint v. 123Print – (D. Minn. 2007-present) Represent online print shop in patent infringement action involving web-based design tools. Case stayed pending resolution of reexamination proceeding.
Representative Appellate Cases
Allvoice Computing PLC. v. Nuance Communications, Inc. – (Fed. Cir. 2007) Represented appellee Nuance on appeal in patent infringement lawsuit in S.D. Tex. involving computer speech recognition software on appeal. Case settled.
Omura v. Shafer et al. – (Fed. Cir. 2011) Represented appellee Shafer in appeal from patent interference. Appeal resulted in complete affirmance.
Airframe v. L-3 Communications Corp. et al. – (1st Cir. 2011) Represented appellee L-3 in appeal from copyright infringement lawsuit in D. Mass. Appeal resulted in complete affirmance.
VRCompliance LLC et al v. HomeAway, Inc. et al. – (4th Cir. 2012) Represent appellee HomeAway in appeal from litigation in E.D. Va. relating to unauthorized website access. Appeal pending.
Representative Software and Internet Matters
HomeAway, Inc. et al v. Eye Street Solutions et al (Travis County Court, Texas and E.D. Va., 2011 – present) Represent HomeAway in co-pending litigations in state and federal court relating to unauthorized website use and related claims. Case pending.
L-3 v. Airframe – (D. Mass. 2007-2011) Represent L-3 as a defendant in multiple copyright infringement actions involving computer source code. Plaintiff asserted damages claim of $132 million. Argued motion for summary judgment in July 2010, at which the District Court granted final judgment in L-3’s favor on all claims. Also argued appeal to First Circuit which affirmed the District Court in all respects in precedential opinion dated September 2011.
Cambridge Research & Instrumentation Inc. v. Ruan et al. – (Mass. Superior Court 2009) Represented Cambridge Research & Instrumentation as plaintiff in case involving trade secret theft and breach of contract claims relating to computer source code. Court entered consent judgment enjoining defendants from using plaintiff’s technology.
Advised numerous clients on a wide range of software and Internet matters. Examples include copyright and patent issues implicated by use and distribution of open source software; ownership and licensing issues related to software development; Internet service provider immunity under the Communications Decency Act; computer fraud and identity theft liability under state and federal statutes; and electronic privacy and data protection issues under HIPAA and state laws.
Represented several trademark owners in more than a dozen domain name arbitrations, all of which have resulted in transfer of the domain name to the trademark owner.
Other Litigation/Dispute Resolution
Bose Corporation v. Vidabox, LLC – (D. Mass. 2008) Represented Bose in trademark infringement action involving speakers. Case settled.
Bose Corporation v. BTS – (D. Mass. 2008) Represented Bose in trademark infringement action involving stereo systems. Obtained permanent injunction and judgment in Bose’s favor.
Represented photographer in copyright and contract litigation against large consumer products manufacturer regarding use of photographs. Case settled.
Defended office product supply company in defamation case. Successfully defeated preliminary injunction.
Represented poet in dispute with publisher regarding copyright issues. Matter settled.
Represented graphics layout artist in dispute with publisher regarding copyright and contractual issues. Matter settled.
Drafted and prosecuted patent applications in various technical areas including software, Internet, chemical, and biotechnology for clients ranging from sole inventors to large multinational corporations.
Pro bono representation examples
In Re Matter of Search Warrant Executed on March 30, 2009. Successfully represented Riccardo Calixte, a Boston College student, in the District Court and then before the Massachusetts Supreme Judicial Court in a bid to quash a search warrant executed on his premises, on the ground that the warrant was invalid for lack of probable cause. Single justice opinion was highest state court opinion to date to address the issue of potential criminal liability for Internet users who violate terms of service.
Massachusetts Bay Transportation Authority v. Anderson, et al. – (D. Mass. 2008) Represented three M.I.T. students charged with violating the Computer Fraud and Abuse Act in connection with a security analysis they designed showing vulnerabilities in the Massachusetts Bay Transportation Authority’s fare collection system. Defeated preliminary injunction motion brought against students. Case settled after preliminary injunction was denied.
WHDH v. Doe – (Mass. Supp. Ct. 2007) Represented anonymous poster to craigslist.org in motion to quash subpoena served on Internet Service Provider to discover the poster’s identity. Identity of the anonymous poster was successfully protected. Case settled.
Kohn v. Barker – (Mass. Supp. Ct. 2006) Represented noted writer and speaker on educational issues who had been prevented from speaking at a conference by the Massachusetts Department of Education in First Amendment case. Plaintiff prevailed and was awarded attorney’s fees.
Advised graduate student creators of videos critical of creationism on copyright issues including fair use and First Amendment rights.
Assisted student with autism in Brockton Public School in obtaining funding and placement in a school specializing in autistic children.
Advised nonprofit organization that provides free books to children in Africa on trademark issues and obtained trademark registration for organization.
Advised nonprofit public health policy organization on copyright issues including Creative Commons licenses.