Edmund J. Walsh

Ed Walsh co-chairs the firm's Reexamination Practice Group. He works with electrical and computer-related clients in IP strategy development and execution, including patent prosecution, clearances and counseling, IP portfolio management, litigation, licensing, consulting agreements, and joint development agreements. His areas of technical expertise include semiconductor processing and high-speed circuit design, wireless communication and signal processing, software, networks and network management, connectors and interconnection technology, and many types of test equipment.

Representative Matters

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.
Defended reexamination of patent, initiated by infringer, and received confirmation from U.S. Patent Office that infringed claims are patentable.
Advised manufacturer in designing around patent portfolio held by competitor and aided client dealing with customers threatened by 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, developing operating system software and analyzing communications systems.

Professional and Civic Activities

American Bar Association

Boston Patent Law Association

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

National Science Foundation Fellow

Also Noteworthy

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