Overview

Appellate litigator Frank Porcelli has been achieving appellate wins in high-stakes, precedent-setting intellectual property cases for decades and is a co-chair of Fish & Richardson's Appellate Practice Group.

Frank has argued 20-plus IP appeals, including several of the most important patent, trademark, copyright, and trade secret appeals of the 20th and 21st centuries, and has played a critical role in over 25 other IP appeals. Frank argues cases for those fighting to overturn unfavorable rulings and those seeking to have their victories finalized on appeal. His cases run the gamut of technologies from chemistry to pharmaceuticals and medical devices to electrical and computer inventions.

Frank’s successes include some of the highest-profile and most legally significant patent, trade secret and copyright appeals in the U.S. Court of Appeals for the Federal Circuit since that court’s inception in 1982. He led two victorious en banc appeals at the Federal Circuit that established important patent law principles regarding the doctrine of equivalents and willful infringement. He also successfully argued an appeal that established reasonable royalty as a measure of federal copyright “damages” in the Federal Circuit and a trade secret appeal in the Supreme Court of Connecticut that effectively established the right to a jury trial in trade secret cases brought under the Uniform Trade Secrets Act that seek damages. In the trademark law arena, he led a victory in the First Circuit that resulted in a seminal case on likelihood of confusion.

When cases are particularly complex, involve novel issues, or require defining or clarifying the law, clients are confident in Frank’s tremendous knowledge of intellectual property law and policy, his mastery of the facts, and his exceptional advocacy skills. He also excels in assessing cases at trial, distilling what is most important, and advising on the strongest arguments to overturn a loss or preserve a win on appeal.

In his spare time, Frank is an avid ballroom and Latin dancer and enjoys watching and listening to opera. He has been a patron of the Metropolitan Opera and the Boston Lyric Opera.

Experience

Representative appellate cases

Johnson & Johnston Assoc. v. R.E. Service Co (Fed. Cir. 2002 en banc). Obtained complete reversal of a jury verdict against R.E. Service Co. after Fish was retained to take over the appeal from trial counsel. In its 12–1 en banc decision, the Federal Circuit established the doctrine of dedication as a limitation on the doctrine of equivalents.

Bard Peripheral Vasc. v. W.L. Gore & Assocs. (Fed. Cir. 2012 en banc). After Fish was retained to take over the appeal after the panel decision, obtained en banc vacatur and remand to panel of $206 million willfulness penalty against our client W.L. Gore. Panel then held that the objective prong of the Seagate willfulness test is a question of law for the District Court, not the jury, and vacated and remanded to District Court for reconsideration.

3M v. Johnson & Johnson Orthopedics (Fed. Cir. 1992). Represented 3M in the U.S. District Court for the District of Minnesota against Johnson & Johnson Orthopedics on four 3M patents covering polyurethane-impregnated fiberglass orthopedic casts for setting bone fractures. 3M also alleged a trade secret violation relating to the polyurethane impregnant. 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 $53 million patent damages award for willfulness in large part due to the adjudicated trade secret theft, for a total award of $129 million. Successfully defended the judgment on appeal before the Federal Circuit in 1992. This case represented the largest willful infringement penalty on record ($53 million) as of 2017. As a trade secret damages award it is one of the largest ever upheld by the Federal Circuit in its 41-year history. For the first 25 years of the Federal Circuit, the total damages award of $129 million remained the largest known District Court damages award in a patent case to be affirmed by the Federal Circuit. The case was featured in articles in Time and Business Week.

Gaylord v. United States (Fed. Cir.). Obtained favorable decision that established reasonable royalty as a measure of federal copyright “damages” in the U.S. Court of Federal Claims and the Federal Circuit.

Becton, Dickinson v. Tyco Healthcare (Covidien) (Fed. Cir.). Obtained outright reversal of a $58 million jury verdict based on erroneous claim construction and lack of substantial evidence of infringement of patent on hypodermic needle guard.

Evans v. General Motors (Conn.). In trade secret case, obtained 5-0 reversal in the Supreme Court of Connecticut of trial court’s denial of clients’ demand as plaintiffs for jury trial. Ruling effectively set a national precedent for the right to jury in cases under the Uniform Trade Secrets Act (UTSA) seeking damages, as the UTSA has been adopted in 49 states.

Raytheon Company v. Roper Corporation (Fed. Cir.). Defended Roper Corporation in the U.S. District Court for the District of Massachusetts in a patent declaratory judgment action brought by Raytheon involving a combination microwave and conventional range. Took appeal, and in a seminal decision on estoppel to deny utility the Federal Circuit reversed the lack of utility and lack of enablement (inoperativeness) invalidity judgment while upholding the lower court’s finding of infringement. On remand, the District Court awarded $2.5 million in damages to our client; case subsequently settled favorably.

Astra Pharmaceutical Products v. Beckman Instruments (1st Cir.). Obtained for Beckman Instruments affirmance of summary judgment of no trademark infringement by Beckman’s use of ASTRA for blood analyzers of plaintiff’s trademark ASTRA for anesthetic pharmaceuticals. Case was an important precedent on the test for likelihood of confusion in the First Circuit.

Alcide Corp. v. Ecolab and Advanced Bovine Sciences Global (Fed. Cir.). Represented Ecolab and Advanced Bovine Sciences Global (ABS Global) in a patent infringement suit brought by Alcide Corp. of Seattle in 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. Obtained affirmance of the judgment by the Federal Circuit for our client.

Frink America, Inc. v. Champion Road Machinery Ltd (2nd Cir.). Represented Champion Road Machinery, Ltd., in a trade secrets and related tort action 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 District Court granted summary judgment in favor of Champion Road Machinery, Ltd. on all counts. The Second Circuit affirmed in part, but remanded the sole issue of conversion for trial. After trial and a verdict in favor of Frink, the district judge granted JMOL on the sole remaining claim for our client, which was affirmed by the Second Circuit.

Sunny Fresh Foods, Inc. v. Michael Foods, Inc. (Fed. Cir.). Secured full affirmance by the Federal Circuit of a jury verdict of noninfringement of liquid egg pasteurization process in the U.S. District Court for the District of Minnesota won by another firm in favor of client Sunny Fresh Foods (a Cargill company). The plaintiffs had sought over $160 million in damages but ultimately obtained none.

Testimonials

"Frank Porcelli … [has] exceptional appellate expertise." — Intellectual Asset Management (IAM)

Professional associations

  • Member, Board of Trustees, American Inns of Court (2012-2016); Chair, First Circuit Advisory Committee (2013-2016); Liaison to the Board for the Linn Alliance of Intellectual Property American Inns of Court (2011-2016)
  • Member of the Board, Linn Alliance of Intellectual Property American Inns of Court (presently 25 IP inns comprise the Alliance) (2012 to present), including member of the following Alliance inns: the Alan D. Lourie Intellectual Property American Inn of Court in Boston (member of Founders Committee, Executive Committee, and a Master of the Inn), New York City (Conner Inn), and Washington (Giles Rich Inn); formerly active in Northern District of New York (IP & Innovation Inn) and Philadelphia (Ben Franklin Inn); one of the first recipients of the Distinguished Service Medal of the Linn Inn Alliance (2011)
  • Member, Federal Circuit Bar Association (1996 to present); recipient of the Enduring Leadership Award of the FCBA Charitable and Education Fund (2009)
  • Member, Federal Circuit Historical Society (since its founding in 1999 to present)
  • Member, Hispanic National Bar Association (2019 to present); Region 1 participant in legislative lobbying in Massachusetts; mentor, Young Lawyers & Law Students National Speed Mentoring Program (2022)
  • Member, Boston IP Law Association (formerly known as Boston Patent Law Association) (1972 to present); president (1990-1991); co-chair, Amicus Committee (2022 to present)
  • Committee Chair, AIPLA Chemical Practice Subcommittee on Legislation (1987-1989)
  • Committee Chair, AIPLA Chemical Practice Subcommittee on Judicial and Administrative Decisions (1989-1991)
  • Committee Chair, AIPLA Chemical Practice Committee (1991-1992)

Pro bono activities

  • Led Federal Circuit appeal in Gaylord v. U.S. on copyright damages
  • Participated in legislative lobbying for the Hispanic National Bar Association
  • Served as a mentor for the Hispanic National Bar Association's Young Lawyers & Law Students National Speed Mentoring Program

Education & teaching positions

  • Co-instructor for Patent Litigation Workshop at Harvard Law School, Spring 2013-Spring 2015, with Bob Hillman and Larry Kolodney of the Fish Boston Office, and Spring 2016 and Spring 2018 with Larry Kolodney and Chris Dillon of the Boston office.
  • Instructor on Pharma and Biotechnology Litigation in Patent Resources Group Continuing Legal Education course “Pharma & Biotech Strategies” (2000-2010)
  • The Harvard Law School John A. Reilly Visiting Professor from Practice in Intellectual Property Law (academic years 1998-1999 and 2000-2001) and Visiting Professor of Law from Practice (academic year 2001-2002), teaching Patent Law