Grewal_Monica

Monica Grewal

Grewal_Monica

Monica Grewal

Partner

  • Co-Chair, Post-Grant Proceedings Group

Monica Grewal focuses on patent litigation, prosecution and post-grant proceedings, including inter partes review and covered business method reviews. She has extensive experience handling significant intellectual property matters for clients, including building strategic patent portfolios for a range of technologies in the disciplines of electrical, mechanical, biomedical devices and computer engineering. She also has experience with patent litigation in the International Trade Commission (ITC) and in the federal courts, representing clients in cases involving digital camera technology, computer software and hardware, GPS technology, signal processing, electronic devices and wireless communications technology. She has represented clients in 50 proceedings before the Patent Trial and Appeal Board (PTAB).

Clients in a range of industries also depend on Ms. Grewal for patent advice and prosecution strategy. She has written patent applications in a wide range of technology areas, including medical devices and procedures, imaging technologies for surgical and diagnostic applications, spectroscopic applications, semi-conductor fabrication, gas turbine engine applications, optics, control systems, computer networking, signal processing, business methods, and other software and telecommunications based technologies. 

Prior to joining the firm, Ms. Grewal was a partner and co-founder of the intellectual property group at a local general practice firm. She also worked at two intellectual property boutique firms and served as an in-house intellectual property attorney at Pratt & Whitney Aircraft. She also has significant technical experience: Ms. Grewal worked on a variety of US space programs as a former engineer in the Hamilton Standard Division of United Technologies Corporation, where she aided in the advanced testing of the NASA spacesuit and shuttle environmental control systems. She received multiple awards for this work, including for her role in the 1994 Hubble Telescope Repair Mission.

Professional Activities

Ms. Grewal served as the founding director of the PTAB Bar Association and as past president of the Board of Governors of the Boston Patent Law Association. She is a member of the American Bar Association, the Boston Bar Association, the Intellectual Property Owners Association and the American Intellectual Property Law Association. She is also an active member of the Engineering Advisory Committee at Trinity College.

Experience

    • Successfully represented a major software company as a patent owner in an IPR petition and defended the company a patent infringement action.
    • Successfully defended a multinational financial services group against infringement claims involving a patent related to a system for authenticating public encryption keys using certificates issued by trusted third parties, among others. 
    • Obtained a summary judgment of non-infringement on behalf of an international financial services group in an action brought by an application hosting and online accounting company in the US District Court for the Southern District of New York. The Federal Circuit affirmed in our client’s favor.
    • Achieved a series of victories for a multinational financial services group against the largest patent assertion entity in the nation. The victories culminated in four successful CBM proceedings before the Patent Office. The PTAB invalidated 83 of the patent assertion entity’s claims across four patents—in particular, finding that a patent for authenticating a web page was a CBM patent.
    • Successfully handled foreign litigations brought by a multinational telecommunications company against our client and helped identify noninfringement and invalidity positions for the challenged patents. We coordinated with US and foreign law firms to make sure our client’s positions were represented consistently across jurisdictions.
    • Successfully represented a major auto and truck parts manufacturer in its patent suit against a competitor, claiming the defendant violated three patents for electronically monitoring tires. The jury ultimately ruled that the asserted patents, while valid, were not infringed by the defendant.
    • Successfully represented a multinational conglomerate company against a major automotive manufacturer. Our client brought an action in the ITC alleging that the respondent’s wind turbines infringed on three patents. The case was appealed, and the Federal Circuit awarded a victory to our client.
    • Successfully represented insurance company clients in appeal against Intellectual Ventures. The Federal Circuit affirmed the district court's findings that two Intellectual Ventures patents are invalid under 35 U.S.C. 101, and that Intellectual Ventures did not own a third patent.
    • Obtained dismissal of a seven patent infringement complaint because all claimed patent ineligible subject matter under 35 U.S.C. § 101.
    • Successfully represented a multinational software company in a patent infringement case against a non-practicing entity and frequent litigator in the Eastern District of Texas on the ground that the asserted claim was unpatentable under 35 U.S.C. § 101.
    • Successfully represented three multinational technology companies in a Section 337 proceeding brought by a company that develops passive component solutions for the electronics industry. The ITC issued a final determination terminating the investigation with a finding of no violation.
    • Successfully represented a semiconductor manufacturer of analog circuitry in a patent infringement case against a competing semiconductor manufacturer in the District of Massachusetts.
    • Successfully represented a digital camera technology company in an action filed against two cellular handset manufacturers resulting in a finding of a violation based on infringement of two patents in a Section 337 proceeding before the ITC. A corresponding patent infringement action was withdrawn prior to the final hearing in Dusseldorf, Germany. Kodak v. Samsung/LG.
    • Successfully represented a manufacturer of GPS chips in an action against a competing GPS chip company resulting in a finding of a violation based on infringement of six patents in a Section 337 proceeding before the ITC. Broadcom v. SIRF.

Recognition

  • Named a 2019 Top Woman in Law by Massachusetts Lawyers Weekly for her accomplishments in pro bono, social justice, advocacy and business
  • Named among the Top 50 Women in PTAB Trials in 2019 by the PTAB Bar Association, which recognized female practitioners who have appeared in the highest number of PTAB trial proceedings since 2012 
  • Featured by INDIA New England News in its 2019 Women of the Year series, which profiled South Asian women in New England who have achieved phenomenal success in both the business and social arenas
  • Honored during the International Institute of New England’s 2019 annual International Women’s Day Luncheon, which celebrates “immigrant women and daughters of immigrants who have made a profound difference in New England and the world."
  • Selected by peers for inclusion in the 2014–2021 editions of the Best Lawyers in America for her intellectual property litigation and patent practices, and in 2021 named Lawyer of the Year for patent law in Boston
  • Recommended in the 2016–2018 editions of The Legal 500 United States for intellectual property: patents: prosecution (including re-examination and post-grant proceedings)
  • Recognized as a 2014–2019 Massachusetts Super Lawyer for her intellectual property practice and named among the "Top Women Attorneys in Massachusetts" in 2016 and 2017

Insights & News

Credentials

  • Education

    • JD, University of Connecticut, 1997

    • MS, Electrical Engineering, Rensselaer Polytechnic Institute, 1988

    • BS, Engineering, Trinity College, 1987

      Phi Beta Kappa
  • Admissions

    • Massachusetts

    • Connecticut

    • District of Columbia

    • Illinois

    • United States Patent and Trademark Office

  • Languages

    • Hindi

    • Punjabi

Credentials