Frank Porcelli

About Frank

​Frank Porcelli is a senior principal in the Boston and Delaware offices of Fish & Richardson P.C. His practice emphasizes patent and trade secret appellate work, and he is co-chair of Fish’s appellate group (1996 – present). He joined the firm in 1971. Over the first 28 years of the existence of the U.S. Court of Appeals for the Federal Circuit, Frank has successfully argued some of the highest profile and most legally significant patent appeals in this court, including Minnesota Mining v. Johnson & Johnson Orthopedics, 976 F.2d 1559, 61 USLW 2236 (1992) ($129 million judgment for 3M was the highest district court patent infringement judgment upheld by the Federal Circuit over its first 25 years; case was featured in Time and Business Week) and Johnson & Johnston Assocs. v. R.E. Service Co., 285 F.3d 1046 (2002 en banc) (12-1 decision established the doctrine of dedication as a limitation on the doctrine of equivalents). He also successfully argued a trade secret appeal in the Supreme Court of Connecticut that effectively established the right to jury trial in trade secret cases brought under the Uniform Trade Secrets Act. Evans v. General Motors, 277 Conn. 496, 893 A.2d 371 (2006).

Speaking Engagements

• “IP Jeopardy” Honorable William C. Conner Inn of Court Meeting (May 2017)

Education and Teaching Positions

Frank graduated from Boston College, A.B. English Literature 1968 magna cum laude; Harvard Law School, J.D. 1971; and Northeastern University, M.S. Chemistry 1981.

• Co-instructor for Patent Litigation Workshop at Harvard Law School, Spring 2013, with Bob Hillman and Larry Kolodney of the Boston Office
• Instructor on Pharma and Biotechnology Litigation in Patent Resources Group Continuing Legal Education course “Pharma & Biotech Strategies” (2000 to present)
• The Harvard Law School John A. Reilly Visiting Professor from Practice in Intellectual Property Law (academic years 1998-99 and 2000-01) and Visiting Professor of Law from Practice (academic year 2001-02), teaching Patent Law

Publications

• “Markman Hearings and Claim Construction – A Dialogue On The Sedona Conference Report on the Markman Process,” AIPLA Public Forum (April 2007)
• Author of numerous articles on patent damages
• Author of numerous articles on other patent litigation and patent law topics
• Co-author, with fellow principal John Dragseth, “Patents — A Historical Perspective,” a casebook on patent law (in progress)

Johnson & Johnston Assoc. v. R.E. Service Co. 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.

3M v. Johnson & Johnson Orthopedics 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. 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 patent 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 largest willful infringement penalty on record ($53 million). For the first 25 years of the Federal Circuit it remained 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.

Becton, Dickinson v. Tyco Healthcare Obtained outright reversal of $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 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. UTSA has been adopted in 46 states.

Raytheon Company v. Roper Corporation 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. Took appeal, and in a seminal decision the Federal Circuit reversed the lack of utility and lack of enablement (inoperativeness) invalidity judgment while upholding the lower court’s finding of infringement. 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.

Alcide Corp. v. Ecolab and Advanced Bovine Sciences Global 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. Obtained affirmance of the judgment by the Federal Circuit for our client.

Frink America, Inc. v. Champion Road Machinery Ltd 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 court granted summary judgment in favor of Champion Road Machinery Ltd. 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 for our client, which was affirmed by the Second Circuit in 2002.

Sunny Fresh Foods, Inc. v. Michael Foods, Inc. 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.

Represented a leading pharmaceutical company in ANDA litigation against competitor on glaucoma drug. Litigation resulted in precedent-setting Federal Circuit decisions in 2003 on active inducement of infringement of method of use patents for off-label applications, and generated extensive attention by FDA and pharmaceutical associations.

Great Lakes Chemical Company v. Archimica SpA and BTP, plc   Represented Italian client Archimica in successful defense of its process for making a starting material used in the manufacture of AIDS drugs (N-tert-butyl-decahydro-(4aS, 8aS)-isoquinoline-3(S)-carboxamide, a/k/a “tic-d”). Jury found that the process 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. Ampad Corporation 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 Represented 3M in the U.S. District Court for the District of Massachusetts against Van Leer on 3M’s patent covering insulating reflective window film. 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. 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 three Pacesetter patents covering technology for pacemaker circuitry and for computer-based programming devices that are used to communicate with implanted heart pacemakers and defibrillators. Jury found that CPI infringed one of Pacesetter’s programming device patents 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.

BASF v. Eastman Chemical Company 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 based on prior work by Eastman.

Victor Equipment v. Uniweld Products 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. After three-day liability trial, court ruled from the bench that the patent was valid and infringed and that an injunction should issue. Case settled on the eve of damages trial for $440,000. Liability decision at 228 USPQ 285 (S.D. Fla. 1985).

Dr. Joel Eisenberg v. Questor Corporation Represented Dr. Joel Eisenberg in the U.S. District Court for the District of Rhode Island against Questor Corporation involving the Caber “Bio” ski boot invented by Dr. Eisenberg. The case involved the refusal of Questor, an affiliate of Spalding Sporting Goods, to honor its agreement 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.  Questor did not file any post-trial motions or appeal.

Avco Corporation v. PPG Industries Represented PPG Industries, Inc. in the U.S. District Court for the District of Massachusetts in a declaratory judgment action brought by Avco (part of Textron) seeking a declaration of invalidity and noninfringement of PPG’s patent covering fire protective epoxy coating for structural steel. PPG counterclaimed for patent infringement. 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 subsequently 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.

• Named in The Best Lawyers in America^© List (2022)
• Recognized as a Massachusetts Super Lawyer (2004-2021)
• Named in The Best Lawyers in America^© List (2006-2008, 2013)
• Named a Top Rated Litigator by The American Lawyer (2019)
• Named to the Lawyer of the Year list of The Best Lawyers in America^© (2018-2019)
• Named an “IP Star” by Managing Intellectual Property (2013-2018)
• Selected as a Lawdragon 500 “Leading Lawyers in America” (2014-2015)
• Selected as a Lawyer of the Year by Massachusetts Lawyers Weekly (2013)
• Recognized as a Top Rated – AV® Preeminent^TM Lawyers in Intellectual Property Law (2013)
• Recommended for Court of Appeals for the Federal Circuit (2014-2015)
• Selected as an ALM “Best Lawyer in America in Intellectual Property Law” (2011)
• Named in the IAM Top 20 Federal Circuit Appellate Advocates (2011)
• IAM’s The World’s Leading Patent Litigators (2011)
• Named one of the top 25 Patent Experts in the USA Legal Media Group (2008)
• Listed in Boston Magazine as one of Top 100 Super Lawyers in Massachusetts (November 2007)
• Named as a Leading Lawyer for Intellectual Property in Chambers USA (2005-2014)
• Named in the International Who’s Who of Patent Lawyers (2005-2008, 2010-2011)
• Named in Euromoney‘s Expert Guide as one of the “World’s Leading Patent Law Experts” (2005)
• Top-ranked in “Band 1″ for Intellectual Property by Chambers USA
• Named to Intellectual Asset Management’s (IAM’s) Patent 1000