Practice experience
Gilbert H. Hennessey is a principal of Fish & Richardson in the firm's Boston office. He has thirty-five years of experience in intellectual property law, including IP litigation and general IP management involving opinions, patent litigation, ADR and agreements, and IP due diligence, as well as prosecution, with special emphasis on infringement analysis and strategy relating to computer technology and biomedical devices.

Prosecution
Mr. Hennessey has extensive prosecution experience in electronics and computer software (e.g., eCommerce, eSecurity, networks), industrial control systems (sensors, communications), manufacturing, and medical device technology (implantable cardiac devices such as pacemakers, pumps, and valves), as well as opinion and due diligence expertise.

Litigation examples
Eaton Corp. v. American Power Conversion Corp. - (EDNC. 2005) Co-lead counsel for Eaton, settled at mediation following wide-ranging discovery and Markman decision, involving 7 patents on uninterruptible power supply technology.

Coppola v. Eaton - (CDCA. 2005) Co-lead for Eaton in UPS software case, concluded successfully following series of mediations.

Fischer Imaging v. Trex Medical Corp. - (D.CO 2002) and related action Fischer Imaging v. Hologic - (D.MA 2002) Co-lead counsel in complex breast imaging/biopsy cases, settled after multiple Markman hearings and summary judgment motions.

Micro Motion v. Endress + Hauser - (D. CO 2002) Lead defense counsel in electronics patent infringement case against Swiss/German process instrument company involving Coriolis flow meter technology. Settled after extensive discovery including numerous depositions in Germany and ultimately unsuccessful motions to dismiss our antitrust counterclaims

Minkus v. SmarterKids.com - (N.D. Ill. 1999) Lead counsel in defense of preliminary injunction motion based on early business method patent asserted against eCommerce start-up. Settled favorably on the eve of client’s IPO, which raised $60 million.

Micro Motion v. Foxboro Deutschland GmBH - (Germany 2000) Assisted in infringement trial in district court in Duesseldorf, Germany as US defense counsel.

Refac Int’l, Ltd. v. Lotus Development Corp. - (S.D.N.Y. 1995, affirmed by Fed. Cir. 1996) A landmark inequitable conduct case, patent counsel for defendant , in the world’s first software patent suit against 1-2-3’s use of “natural order recalc;" architected inequitable conduct defense, participated in successful motion to dismiss for champerty (another landmark decision), prior art development and analysis, technical and patent expert witness selection and preparation, took key depositions on dispositive patent fraud issues, and assisted in successful separate trial on inequitable conduct. Potential industry liability avoided was over $1 billion.

Leading Edge, Inc. v. Mosaic Software, Inc. - (AAA Arbitration 1986-87) As sole arbitrator, heard and decided four-day fully briefed trial, plus motions for injunctive relief in copyright and license case.

Cordis Corp. v. Cardiac Pacers, Inc. - (D. MN 1981) Second chair for patentee in patent infringement suit by Cordis on the first programmable pacer; attended about 30 days of depositions, witness preparation, and exhibits, six-day bench trial on the merits, appeal and petition for cert.

Vermont Castings, Inc. v. Franklin Cast Products, Inc. - (D. VT 1982) Second chair for plaintiff in ground-breaking shape trademark case; prepared all witnesses, exhibits, jury instructions, motions in 29-day jury trial, resulting in $1.2 million verdict in a trademark case; judge found willful infringement despite jury recommendation against, injunction plus attorneys fees, filed follow-on suits against Sears, etc., appeal to Second Circuit eventually settled, attended over 50 days of depositions in the case.

Honors and publications
Mr. Hennessey was named to the 2006, 2007, and 2008 editions of The Best Lawyers in America and by Chambers USA – America’s Leading Business Lawyers as one of the top IP lawyers in Massachusetts in 2004-2005. He was also selected to
Super Lawyers Massachusetts, Intellectual Property 2004-2009. Mr. Hennessey also served as National Chair of the Giles Rich Moot Court (1976- 1978).

Co-author, Patent Practice (ed. Kayton), Patent Resources Institute, 1976-95 (7 Vols.). Co-author, Compendium of Packaged Software Licensing Provisions (2d ed.), American Intellectual Property Law Association, 1988.

Mr. Hennessey is a frequent speaker on patent-related topics with the Mass Technology Leadership Council.

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