Samuel S. Stone

Sam Stone focuses his practice on creating and implementing strategies to develop and enforce intellectual property portfolios. His patent counseling and portfolio development practice includes both domestic and international patents and opinion work on the topics of patentability, clearance, validity, and infringement. Sam’s patents have survived dozens of PTAB invalidity challenges, and have been licensed by some of the largest software and technology companies in the world. Sam also assists clients with IP due diligence in investment transactions, mergers and acquisitions, and initial public offerings (IPOs).

Sam counsels software and electronics companies operating in many industries, including autonomous vehicles and industrial automation, automated machine learning (AutoML), cybersecurity, biosensors, and high-performance computing. In addition, Sam advises technology and life science companies on strategies for protecting their investments in data science, artificial intelligence (AI), and machine learning (ML) in domains such as drug discovery, medical devices, medical imaging, agricultural technology, biomanufacturing, biological systems modeling, and ‘omics’ technologies.

Concentrations

• Artificial intelligence and machine learning tools

• Biotech, medtech, and agtech applications of AI/ML

• Autonomous vehicles and industrial automation

• Software, including cybersecurity platforms and location-based services

• Sensors, including biosensors and LIDAR sensors

• Integrated circuits, including silicon photonics

• High-performance computing, including processors and network devices

Experience

Representative Prosecution and Counseling Experience

• AI/ML: Lead IP counsel for an artificial intelligence / machine learning (AI/ML) software startup. Advise the company on patent enforcement matters and manage development of patent and trademark portfolios. Advised the company on patent matters during a seven-year period when its valuation increased from less than $100 million to more than $6 billion.

• Sensors: Lead prosecution counsel for a public company that developed and manufactured LIDAR sensors and software. Managed preparation and prosecution of hundreds of U.S. and foreign patent applications. Assisted in-house counsel with aligning the claims of older patent applications to current business objectives. Surfaced claims for enforcement against a key competitor and assisted litigation counsel in the enforcement action, which led to a merger between the companies.°

• Life Sciences AI/ML: Developed patent portfolios for life science and agricultural technology companies relating to the use of artificial intelligence and machine learning in drug discovery, biomanufacturing, assessment of food quality, and detection, monitoring, and management of health conditions. Advised stakeholders on whether and where to file patent applications on AI-based research tools.°

• Software: Drafted and prosecuted geolocation technology patents that survived dozens of invalidity challenges in inter parts review (IPR) and ex parte reexamination proceedings and were successfully asserted against some of the largest software and technology companies in the world.°

• High performance computing: Lead IP counsel to a privately-held developer and manufacturer of high-performance, low-power ASICs.°

• Prepared written opinions relating to invalidity and noninfringement of a competitor’s patents on microprocessor technology.°

• Performed IP due diligence on a competitor targeted by a software company for strategic acquisition and counseled the company regarding potential risks associated with the acquisition.°

• Mined a multinational technology company’s patent portfolio for claims suitable for counter-assertion against a competitor after the competitor initiated a patent infringement lawsuit, and performed infringement analyses on the competitor’s products.°

Representative Transactional Experience

• IP counsel to Bain Capital Tech Opportunities as lead investor in BioCatch’s $145 million Series C round.°

• IP counsel to Xeraya Capital in connection with its investment in a portfolio company.°

• IP counsel to Carbon Black in its $1.6 billion IPO and its subsequent $2.1 billion acquisition by Vmware.°

• IP counsel to Credit Suisse in underwriting Everbridge Inc. in its $90 million IPO.°

Pro Bono

• Lead outside counsel to the non-profit Happy Hope Foundation, which provides non-medical services to hospitalized children with special needs or chronic and life-threatening illnesses.°

• Provided pro bono immigration law services to lawful permanent residents seeking U.S. citizenship.°

• Provided pro bono education law services to public school students receiving special education services.°

°The above representations were handled by Mr. Stone prior to his joining Greenberg Traurig, LLP.

Recognition & Leadership

Awards & Accolades

• Listed, The Best Lawyers in America, “Ones to Watch,” Intellectual Property Law and Technology Law, 2023-2024

• Listed, Super Lawyers magazine, Massachusetts Super Lawyers, “Rising Stars,” 2018-2021

Professional & Community Involvement

• Judge, MIT $100K Entrepreneurship Launch Competition

• Member, Boston Intellectual Property Law Association

• Member, American Intellectual Property Law Association (AIPLA)

• Member, American Bar Association

• Member, Boston Bar Association