Professional experience
Frank P. Porcelli is a principal of Fish & Richardson in the firm's Boston and Delaware offices. He joined the firm in 1971. His practice emphasizes patent and trade secret litigation and appellate work.

Representative cases
Allergan, Inc. v. Alcon Laboratories, Inc. - method of use patent for treating glaucoma. ANDA litigation for Allergan against Alcon and Bausch & Lomb on glaucoma drug, 200 F.Supp. 2d 1219, 63 USPQ2d 1427 (C.D. Cal. 2002). Litigation resulted in precedent-setting Federal Circuit decisions in 2003 on active inducement of infringement of method of use patents for off-label applications, in Warner-Lambert and Allergan appeals and generated extensive attention by FDA and pharmaceutical associations.

Great Lakes Chemical Company v. Archimica SpA and BTP, plc - method for the manufacture of N-tert-butyl-decahydro-(4aS, 8aS)-isoquinoline-3(S)-carboxamide, a/k/a, tic-d. Successfully defended Italian client's process for making a starting material used in the manufacture of AIDS drugs. Jury found the process independently developed by Archimica, which addressed shortcomings inherent in the process taught in the patent, did not infringe literally or under the doctrine of equivalents. The method employed by Archimica was shown to use a substantially different way (very low temperature for the amine addition step) to achieve a substantially different and better result (super pure tic-d).

3M v. Johnson & Johnson Orthopedics - fiberglass casting tape. Represented 3M in the U.S. District Court for the District of Minnesota against Johnson & Johnson Orthopedics on four 3M patents covering fiberglass casting tape for bone fractures. This was a suit brought by 3M for infringement by J & J of four 3M patents relating to polyurethane-impregnated fiberglass orthopedic casts for setting bone fractures. 3M also alleged a trade secret violation relating to the polyurethane impregnant. J & J was represented by Steve Judlowe of the Hopgood, Calimafde firm of New York City and Harness, Dickey & Pierce of Detroit. The Minnesota district court ruled in favor of 3M, finding all four patents valid and infringed, three of them willfully, and theft of 3M's trade secret, and doubled the damages award for willfulness, for a total award of $129 million. Successfully defended the judgment on appeal before the Federal Circuit Court of Appeals in 1992. This case represents the fourth largest patent infringement damages award in history, and the largest willful infringement penalty on record ($53 million). It is the largest known district court damages award in a patent case to be affirmed by the Court of Appeals for the Federal Circuit. The case was featured in articles in Time and Business Week.

3M v. Ampad Corporation - self-stick note pads. Represented 3M in the U.S. District Court for the District of Massachusetts against Ampad Corporation on three 3M patents covering Post-it® self-stick note pads. 3M won, all of 3M's patents were held valid, and Ampad was enjoined from infringement of one of the patents, resulting in Ampad's going out of the sticky note business.

3M v. Van Leer - reflective window film. Represented 3M in the U.S. District Court for the District of Massachusetts against Van Leer on 3M's patent covering reflective window film patent. After several weeks of trial, the defendant Van Leer asked to settle, resulting in a favorable settlement for our client.

Pacesetter, Inc. v. Cardiac Pacemakers Inc. - computer-based programming devices. Represented Pacesetter, Inc. (Pacesetter), a division of St. Jude Medical Products, in the U.S. District Court for the District of Minnesota against Cardiac Pacemakers Inc. (CPI) on Pacesetter's patent covering technology for computer-based programming devices that are used to communicate with implanted heart pacemakers and defibrillators. Jury found that CPI infringed Pacesetter's patent and awarded damages for the infringement in the amount of $9.675 million. The victory also entitled Pacesetter to injunctive relief forbidding the use of Pacesetter's technology in CPI's entire product line. The case subsequently settled favorably to our client.

Alcide Corp. v. Ecolab and Advanced Bovine Sciences Global - gelled teat dip. Represented Ecolab and Advanced Bovine Sciences Global (ABS Global) in a patent infringement suit brought by Alcide Corp. of Seattle in the U.S. District Court for the Western District of Wisconsin. U.S. District Judge Barbara Crabb granted summary judgment of non-infringement under the doctrine of equivalents for Ecolab and ABS Global with respect to Alcide's U.S. patent on a gelled teat dip to prevent bovine mastitis in cow udders. This decision followed a favorable Markman construction of the patent claims and a grant of partial summary judgment of no literal infringement shortly after the Markman hearing. The Federal Circuit affirmed the judgment for our client.

Frink America, Inc. v. Champion Road Machinery Ltd. - snow plows. Represented Champion Road Machinery Ltd. in a trade secrets case brought by Frink America, Inc. in the U.S. District Court for the Northern District of New York. The plaintiff had accused our client of stealing drawings and instructions for making snowplows. The court granted summary judgment in favor of Champion Road Machinery Ltd. The Second Circuit affirmed in part, but remanded the issue of conversion for trial. After trial and a verdict in favor of Frink, the district judge granted JMOL for our client, which was affirmed by the Second Circuit in 2002.

BASF v. Eastman Chemical Company - chemical preparation. Represented Eastman Chemical Company in a patent infringement suit brought by BASF in the U.S. District Court for the District of Delaware. BASF had claimed in its lawsuit that Eastman infringed its patent on a process for preparation of the chemical 2,5-dihydrofuran (DHF) from the chemical epoxy-1-butene (EpB). The court found that Eastman did not infringe BASF's patent, and that BASF's patent was invalid.

Raytheon Company v. Roper Corporation - microwave and conventional range combination. Defended Roper Corporation in the U.S. District Court for the District of Massachusetts in a patent declaratory judgment action brought by Raytheon Company involving a combination microwave and conventional range. Lack of utility invalidity decision was reversed on appeal, and the lower court's holding of infringement was affirmed. Court denied certiorari for Raytheon. Decision at 724 F.2d 951 (Fed. Cir. 1983). On remand district court awarded $2.5 million in damages to our client; case subsequently settled favorably.

Victor Equipment v. Uniweld Products - gas torch. Represented Victor Equipment (Wingaersheek Division) in the U.S. District Court for the Southern District of Florida against Uniweld Products involving patented Turbotorch® gas torch, which was the first torch that enabled propane to burn hot enough to do the work of acetylene. Defense was enjoined and settled before trial for $440,000. Decision at 228 USPQ 285 (S.D. Fla. 1985).

Dr. Joel Eisenberg v. Questor Corporation - ski boot. Represented Dr. Joel Eisenberg in the U.S. District Court for the District of Rhode Island against Questor Corporation involving the invention of the Caber "Bio" ski boot. The case involved the refusal of Questor, an affiliate of Spalding Sporting Goods, to pay Dr. Eisenberg for consulting fees for consulting services he performed in connection with promotion of his "Bio" boot. Jury awarded Eisenberg the full $288,000 he sought, and mooted the motion for directed verdict. Questor did not file any post-trial motions on appeal.

PPG Industries v. Avco Corporation - fire protective epoxy coating. Represented PPG Industries, Inc. in the U.S. District Court for the District of Massachusetts in a patent infringement case against Avco Corporation involving a patent covering fire protective epoxy coating for structural steel. Jury found the patent in suit valid and willfully infringed and awarded approximately $25 million in damages. Also tried a concurrent bench trial before the court on the issue of inequitable conduct. After the jury returned its verdict, U.S. District Court Judge William Young heard oral argument on the issue of inequitable conduct and rendered a decision in PPG's favor from the bench, finding no inequitable conduct. He then entered a permanent injunction, and after several months, denied all of Avco's post-trial motions. Avco appealed to the Federal Circuit, but after the appeal was fully briefed and on the eve of oral argument, Avco approached PPG and asked to settle. Settlement included a payment of approximately $13 million to PPG, Avco's taking a license under the PPG patent, and an agreement by Avco's parent, Textron, to provide PPG with substantial business opportunities in lieu of additional cash.

Bar admissions
Registered to practice before the United States Patent and Trademark Office.
Admitted to the bar in Massachusetts and Delaware.

Additional information
Named in the 2007 International Who's Who of Patent Lawyers.

Named to the 2006, 2007, and 2008 editions of The Best Lawyers in America. Named one of the "Best Lawyers in Boston" for Intellectual Property in Boston Magazine (2002).

Harvard Law School, John A. Reilly Visiting Professor from Practice in Intellectual Property Law (academic year 1998-99 and 2000-01), Visiting Professor of Law from Practice (academic year 2001-02). Chair, Fish & Richardson Appellate Practice Group (1996 - present). Instructor on Biotechnology Litigation in Patent Resources Group Continuing Legal Education course "Biotechnology: Patents, Licensing & FDA Practice" (2000 to present).

President of the Boston Patent Law Association (1990 to 91); Committee Chair, AIPLA Chemical Practice Subcommittee on Legislation (1987 to 89), Committee Chair, AIPLA Chemical Practice Subcommittee on Judicial and Administrative Decisions (1989 to 91), and Committee Chair, AIPLA Chemical Practice Committee (1991 to 92).

Presenter and co-author of "Markman Hearings and Claim Construction - A Dialogue On The Sedona Conference Report on the Markman Process," presented at the AIPLA Public Forum (April 2007). Author of numerous articles on patent damages and other patent litigation and patent law topics, and co-author, with fellow principal John Dragseth, of "Patents -- A Historical Perspective," a casebook on patent law (in progress).

Selected to Super Lawyers Massachusetts, Intellectual Property 2004-2009. Listed in Boston Magazine's November 2004 and 2007 issues as one of Top 100 Super Lawyers in Massachusetts. Named by Chambers USA as a recommended lawyer in 2005. Named in Euromoney's Expert Guide as one of the "World's Leading Patent Law Experts" (2005).