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Edmund J. Walsh

Ed Walsh co-chairs the firm's Cleantech Group and Post-Grant Proceedings Group. He also works with electrical and computer-related clients in IP strategy development and execution, including patent prosecution, clearances and counseling, IP portfolio management, dispute resolution through Patent Office post-grant proceedings or litigation, licensing, consulting agreements, and joint development agreements. His areas of technical expertise include software and SaaS, wireless communication and signal processing, Internet implemented inventions, networks, semiconductor processing and high-speed circuit design, and connectors and interconnection technology.

Representative Matters
  • Won decisions in multiple inter partes reexaminations finding that all challenged claims are invalid.
  • Defended reexamination of patent, initiated by infringer, and won confirmation from U.S. Patent Office that infringed claims are patentable.
  • Developed a position to prove a client was entitled to participate in a patent pool associated with a significant wireless communication standard.
  • Conducted due diligence to support acquisition of technology developed on three continents.  Developed strategies to avoid risks that eight figure purchase price would be jeopardized by ambiguities in technology ownership. 
  • Designed licensing and patent portfolio program resulting in leading technology client's use of competitors to sell its product to gain market acceptance while retaining benefits of technology investment.
  • Guided client in responding to demand for nine figure payment from patentee holding over 100 patents relating to wireless technology, evaluated whether portfolio represented threat or opportunity, and negotiated satisfactory resolution with patent holder.
Previous Experience

Ed served over 14 years as in-house counsel for technology companies, including Chief Intellectual Property Counsel for Teradyne, a position he held for 10 years. Before working for Teradyne, Ed served as Division IP Counsel for Textron Specialty Materials, working on in-bound and out-bound technology transfer as well as portfolio development and securing data rights under government contracts. Ed also worked as a patent attorney for Raytheon.

Prior to entering law school, Ed worked as an electrical engineer, managing a team developing operating system software and analyzing communications systems.

Professional and Civic Activities

American Bar Association

Boston Patent Law Association

  • Co-chair, Computer Law Committee

Institute of Electrical and Electronics Engineers

MIT $100K

  • Mentor

University of Massachusetts Amherst

  • Guest Lecturer at the Isenberg School of Management
  • Technology Innovation Challenge, judge

Intellectual Property Owners Association

  • Corporate IP Management Committee
Honors and Awards
  • Best Lawyers in America® (IP Law)
  • National Science Foundation Fellow
  • Massachusetts Super Lawyers
Also Noteworthy

Ed was an Adjunct Professor and Lecturer in electrical engineering at Boston University.

Recent Articles and Presentations

March 2014 - Responding to Accusations of Patent Infringement

February 2013 - Is Your New App Patentable? Uncertainty Surrounding Computer-Related Inventions

Education

Boston University, B.S., Electrical Engineering

Stanford University, M.S., Electrical Engineering

Suffolk University Law School, J.D.

Admitted To Practice

Massachusetts

U.S. Patent and Trademark Office

Newsstand

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