Brian is a Partner in the Intellectual Property Practice Group. His practice is primarily complex patent litigation. He has litigated patent infringement cases in numerous jurisdictions, including California, Texas, Virginia, Delaware, New York, New Jersey, Georgia, North Carolina, Ohio, Washington, Oregon, and Massachusetts, as well as before the Court of Appeals for the Federal Circuit. In addition to his U.S. bar admissions, Brian is licensed as a Solicitor in England and Wales. As a registered Patent Attorney, Brian oversees the preparation and prosecution of U.S. and foreign patent applications and assists clients with patent portfolio development and licensing. In addition, Brian has significant experience with patent reexaminations before the U.S. Patent and Trademark Office. Given his extensive background as a practicing electrical engineer with Hewlett-Packard Co., Siemens, and MIT-Draper Laboratory, Brian has particular expertise in the electrical and software arts, with an emphasis on digital circuitry and semiconductor design and fabrication. Brian has considerable experience with optical technologies, energy storage devices, imaging/remote sensing technologies, and medical devices as well. Brian was included in the Massachusetts Rising Stars listing, a Thomson Reuters publication, from 2005-2008 in the field of Intellectual Property Litigation. Notable Experience · Brian has wide-ranging experience in the many aspects of Patent Litigation, including expert discovery, Markman Hearings, and pretrial motion practice. Some of Brian's cases include:
- Representing Massachusetts General Hospital in an inventorship dispute, successfully obtaining summary judgment for the Hospital.
- Representing Cakewalk, Inc. in litigation involving authentication software, obtaining a favorable settlement for Cakewalk.
- Representing Soitec S.A. and Commissariat á L'Énergie Atomique in litigation regarding multiple patents on high-performance silicon-on-insulator ("SOI") semiconductor substrates.
- Representing Aircraft Medical, Ltd. in a matter involving video laryngoscope technology.
- Representing Continuum Electro-Optics, Inc. in a matter involving laser technology.
- Representing Beacon Power Corp. in a matter regarding flywheels for the storage of electrical energy.
- Representing NessCap Co., Ltd. in a matter regarding ultracapacitor energy storage devices, successfully defeating a motion for a preliminary injunction.
- Representing Foster-Miller, Inc., Planning Systems, Inc., and Johns Hopkins University in the enforcement of a patent on acoustic technology for gunshot detection.
- Representing Cellectricon AB in the enforcement of several patents on microfluidic assay technology.
- Representing Avitar, Inc. in a matter regarding drug screening devices.
- Litigating a dispute over the enforcement of a patent regarding toll collection and traffic enforcement technologies. · In addition to his Patent Litigation experience, Brian has litigated copyright and trademark disputes, including matters involving allegedly infringing website content and source code. In addition, Brian has filed lawsuits on behalf of the Massachusetts Institute of Technology, Massachusetts General Hospital, and Memorial Sloan-Kettering Cancer Center to recover patent term improperly withheld by the U.S. Patent Office. · Brian is a Certified Electronic Discovery Specialist and has advised clients regarding preventive measures to limit exposure to electronic discovery. · Brian has overseen the preparation of opinions on patentability and, in connection with patent litigation, on the scope and validity of issued patents, including the feasibility of design-around alternatives. · Brian has advised clients with respect to patent and other intellectual property rights in connection with financings, mergers, acquisitions, and other transactions. · Brian has helped clients obtain numerous patents and trademark registrations in the U.S. and in various foreign countries. Recent Speaking Engagements and Publications · "Computers and the Law: Intellectual Property: Part One," co-author, Computer Magazine, January 12, 2012. · "Computers and the Law: Intellectual Property: Part One," speaker, Computer Magazine podcast, January 2012. · "Ten Things to Know When Your Patent Application Is Allowed," co-author, Computer Magazine, September 2011. · "Patent Law: Ten Things to Know When Your Patent Application Is Allowed," speaker, Computer Magazine Podcast, September 29, 2011. · "Patent Law: Ten Things to Know When Your Patent Application Is Pending," speaker, Computer Magazine Podcast, September 7, 2011. · "Patent Law: Ten Things to Know When Applying for a Patent," speaker, Computer Magazine Podcast, August 19, 2011. · "Ten Things to Know When Your Patent Application Is Pending," co-author, Computer Magazine, August 2011. · "Federal Circuit Upholds Patentability of Isolated DNA, but Affirms Invalidity of Claims to Methods 'Comparing' or 'Analyzing' Genetic Sequences," co-author, Edwards Angell Palmer & Dodge Client Advisory, August 2011. · "Ten Things to Know When Applying for a Patent," co-author, Computer Magazine, July 2011. · "False Marking - Best Practices for In-House Counsel," Association of Corporate Patent Counsel Summer Meeting, June 2011. · Speaker, "Inequitable Conduct After Therasense v. Beckton-Dickinson," Boston Bar Association, June 2011. · "Recent U.S. Supreme Court Decision in Henderson v. Shinseki May Provide Support for Challenging Patent Term Adjustment in Older Patents," co-author, Edwards Angell Palmer & Dodge Client Advisory, June 2011. · "Mistakes in Patent Infringement Cases," author, Intellectual Property Magazine, June 2011. · "Fractured Federal Circuit "Tightens" Its Inequitable Conduct Doctrine," co-author, Edwards Angell Palmer & Dodge Client Advisory, May 2011. · "Mass. Hospital Wins Gene Patent Inventorship Fight," quoted, Law360, April 29, 2011. · "Bilski Decision Maintains Patent Eligibility," co-author, Mass High Tech, July 7, 2010. · "Business Methods and Software Patent Eligibility Saved with Bilski Decision," co-author, Edwards Angell Palmer & Dodge Client Advisory, June 29, 2010. · Speaker, "Ethics in an Age of Digital Duplication," Association of Professional Model Makers Annual Conference, March 2010. · "Federal Circuit Upholds Decision Granting Additional Patent Term Adjustment to Compensate for Examination Delays," co-author, Edwards Angell Palmer & Dodge LLP, January 2010. News & Publications January 2012, In Article and Podcast, Edwards Wildman Team Provides IP Primer for Computer Magazine October 17, 2011, Computer Magazine Publishes Brian Gaff's Tips to Facilitate Issuance of a Patent September 30, 2011, Brian Gaff Featured in Computer Magazine Podcast on Tips to Successful Patent Filers September 2011, Brian Gaff Elected Secretary of Massachusetts Society of Professional Engineers September 9, 2011, Computer Magazine Podcast on Pending Patent Applications Features Brian Gaff August 25, 2011, Brian Gaff Featured in Computer Magazine Podcast on Tips for Patent Applications August 2011, Brian Gaff Co-Authors Analysis of Patent-Filing Strategies in Computer Magazine August 2011, Client Advisory - Federal Circuit Upholds Patentability of Isolated DNA, but Affirms Invalidity of Claims to Methods "Comparing" or "Analyzing" Genetic Sequences July 25, 2011, Brian Gaff Authors Article on Patent Application for Computer Magazine June 2011, Client Advisory - Recent U.S. Supreme Court Decision in Henderson v. Shinseki May Provide Support for Challenging Patent Term Adjustment in Older Patents June 8, 2011, In Intellectual Property Magazine, Brian Gaff Highlights Mistakes Made in Patent Infringement Cases May 2011, Client Advisory - Fractured Federal Circuit "Tightens" Its Inequitable Conduct Doctrine June 29, 2010, Client Advisory - Business Methods and Software Patent Eligibility Saved with Bilski Decision January 2010, Client Advisory - Federal Circuit Upholds Decision Granting Additional Patent Term Adjustment to Compensate for Examination Delays December 17, 2008, Edwards Angell Palmer & Dodge Announces Six New Partners and Three New Counsel October 30, 2008, EAPD Attorneys Named Super Lawyers 2008 August 29, 2007, Request for Preliminary Injunction Against Client Denied Before Edwards Wildman Prior to joining the firm, Brian was an associate at a major Boston law firm in their Patent and Intellectual Property Practice Group. Besides Edwards Wildman Brian is a registered professional electrical engineer in California, Massachusetts, New York, and New Hampshire. Brian is a senior member of the Institute of Electrical and Electronics Engineers as well as a member of the National Society of Professional Engineers, American Physical Society, and the American Vacuum Society. Industries · Cloud Computing - IT Hosting/Outsourcing · Technology Memberships · American Bar Association · American Intellectual Property Law Association · Boston Bar Association · Boston Patent Law Association · Essex County Bar Association · Federal Circuit Bar Association · Los Angeles County Bar Association · Massachusetts Bar Association · Massachusetts Society of Professional Engineers (Secretary) · New Hampshire Association for Justice · Thomson Reuters Westlaw Litigation Advisory Board |