William A. Scofield, Jr.

William A. Scofield, Jr.

Partner

Tel. 617.994.0755
Fax 617.742.4214
Email: wscofield@lahive.com

Background

Education

  • Wesleyan University, B.A., magna cum laude, 1972
  • Boston University School of Law, J.D., cum laude, 1978

Bar & Court Admissions

  • Massachusetts Bar
  • U.S. District Court, District of Massachusetts
  • U.S. Court of Appeals for the First Circuit
  • U.S. Court of Appeals for the Federal Circuit

Professional Involvement

  • American Bar Association
  • American Intellectual Property Law Association
  • Massachusetts Bar Association
  • Volunteer Mediator, North Shore Community Mediation Center

Honors & Awards

  • Massachusetts Super Lawyers® List 2006, 2007, 2008, 2009

    AV® Peer Review Rating from Martindale-Hubbell

Practice Areas

Litigation, Medical Devices, Patents, Trademarks & Copyrights, Transactions

Industry & Technical Focus

Trade Secrets, Biotechnology, Chemistry, Electronics, Medical Devices

Practice Description

Mr. Scofield is chair of the Litigation group.  He has more than 25 years of experience in general and intellectual property litigation, trademarks, copyrights, licensing, and intellectual property counseling. His practice focuses on intellectual property litigation, including plaintiff’s and defendant’s cases involving patents, trademarks, copyrights, and trade secrets. Bill works closely with the firm’s biotechnology, chemistry and high technology practice groups in IP litigation and counseling. He has represented both large and small clients in matters involving such diverse technologies as semiconductors, medical devices, high speed liquid chromatography, viscometers, biotechnology, and drug development screening.

Notable Experience

  • Successful representation of start-up drug discovery biotechnology company accused of patent infringement during IPO. Asserted patent held invalid for obviousness.
  • Representing a technology design firm in cases involving wired and wireless telecommunication systems for portable access to Internet and phone service.
  • Successful representation of defendant in patent infringement case involving indoor positioning systems that use radio frequency signals to track and locate critical, portable devices and personnel in large health care facilities. Case resolved without business interruption or payment of any royalty after pre-trial motion for summary judgment.
  • Successful appeal to the Federal Circuit that a directed verdict against our client should be vacated based on the trial court’s refusal to submit separately to the jury the issues of obviousness and anticipation of prior art.
  • Successful representation of defendant in patent infringement action related to viscometer used in high performance liquid chromatography analytical system. Jury verdict of non-infringement upheld on appeal.
  • Successful representation of plaintiff in case involving misappropriation of trade secrets and unfair competition relating to high speed liquid chromatography systems. Case resolved prior to trial when defendant agreed to permanently refrain from utilizing our client’s proprietary information.
  • Regularly acting as local trial counsel in Massachusetts federal courts for companies located in other jurisdictions.
     

Publications & Speaking Engagements

  • Speaker, "Litigating Willfulness - Post In Re: Seagate," Boston Patent Law Association, June 10, 2008.

Case studies

 
 
Our Thinking Expands Yours

The client, a U.S. medical device company, had discovered that a foreign company based in Turkey had copied its web site and was using a domain name almost identical to its own registered trademark, potentially confusing and misleading customers. The client sought to prevent the foreign company from using the domain names. » read more

News & Events

Confidentiality Agreements - When "Standard" Is Not So Standard » read more

Jeanne DiGiorgio and Maneesh Gulati presenting at the AUTM 2010 Annual Meeting » read more

Patent Strategy Update: Court Curtails Extraterritorial Scope of Method Patents » read more

March 20, 2010
Jeanne DiGiorgio and Maneesh Gulati present, "Patent Prosecution Strategies: Issues, Considerations and Solutions" » read more

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