People

Monica Grewal

Partner

Grewal, Monica

Monica Grewal is a partner in WilmerHale's Boston office where she focuses on patent litigation, prosecution and post-grant proceedings including inter partes review and covered business method reviews. She has experience in handling significant intellectual property matters for clients including building strategic patent portfolios in a range of technology 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, involving various aspects of digital camera technology, computer software and hardware, GPS technology, signal processing, electronic devices and wireless communications technology.

With respect to patent advice and prosecution, Ms. Grewal 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. 

Ms. Grewal has experience with patent litigation in the ITC and in the Federal Courts, involving various aspects of digital camera technology, computer software and hardware, GPS technology, signal processing, electronic devices and wireless communications technology. She has also represented financial industry clients in proceedings before the Patent Trial and Appeal Board. She has represented clients such as Eastman Kodak Company, Broadcom and Intel in a variety of jurisdictions.

Her recent experience includes being part of the teams that:

  • 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 (2013)
  • 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 (2012)
  • 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 (2012).
  • Successfully represented a semiconductor manufacturer of analog circuitry in a patent infringement case against a competing semiconductor manufacturer in the District of Massachusetts (2010)
  • 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 (2009).
  • 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 (2008).
  • Obtained a summary judgment of non-infringement on behalf of a camera manufacturer in an action brought by a non-practicing entity in the District of Delaware and a summary affirmance by the Federal Circuit of a patent relating to electronic image storage systems. Successful in having a related ITC litigation withdrawn in favor of the client.

Learn more about Ms. Grewal's practice and how she can support your startup at WilmerHaleLaunch.com.

Prior to joining the firm, Ms. Grewal was a partner at a local general practice firm, where she co-founded the intellectual property group. Ms. Grewal also worked at two intellectual property boutique firms and served as an in-house intellectual property attorney at Pratt & Whitney Aircraft. Additionally, Ms. Grewal was a former engineer at United Technologies Corporation, Hamilton Standard Division, where she was involved in a variety of United States space programs, including the advanced testing of the NASA spacesuit and shuttle environmental control systems.

Ms. Grewal is the recipient of the several honors and awards including: Recognition of Exemplary Contribution—NASA JSC Crew & Thermal Systems Division (1995) and NASA Group Achievement Award—STS 61 Hubble Telescope Repair Mission (1994).

Honors & Awards

  • Selected by peers for inclusion in the 2014, 2015, 2016 and 2017 editions of the Best Lawyers in America for her intellectual property litigation and patent practices
  • Recommended in the 2016 edition of The Legal 500 United States for intellectual property: patents: prosecution (including re-examination and post-grant proceedings)
  • Named among the "Top Women Attorneys in Massachusetts" in 2016 and recognized as a 2014 and 2015 Massachusetts Super Lawyer for her intellectual property practice

Publications & News

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August 25, 2016

PTAB's 1st Preliminary Reply And Surreply Under New Rules

In this article published by Law360, Monica Grewal and Michael H. Smith discuss the most recent Patent Trial and Appeals Board rule changes and outline cases that illustrate some of the factors petitioners should consider when requesting leave to file preliminary reply.

August 15, 2016

WilmerHale Lawyers Named Among the 2017 Best Lawyers in America®, Six Recognized as Lawyers of the Year

Best Lawyers in America®—a respected peer-review publication in the legal industry—recognizes 101 WilmerHale lawyers and names six partners as Lawyers of the Year in its 23rd edition.

July 6, 2016

Trends in Inter Partes Review of Life Sciences Patents

Bloomberg BNA's Patent, Trademark & Copyright Journal published an article written by Monica Grewal, James Hill and Kathryn Zalewski, which provides a statistical analysis of inter partes review proceedings before the Patent Trial and Appeal Board and shows that it is not a ''death squad'' for patents.

June 22, 2016

The Legal 500 United States 2016 Recognizes 111 WilmerHale Lawyers Across 30 Practice Areas

The guide's rankings are based on a series of criteria, including client feedback, interviews with private practice lawyers, and its own research.

May 19, 2016

IPR Motions to Amend: Rays of Hope Despite Gloomy Statistics

An article by Monica Grewal, James Hill and Zachary Piccolomini, published in Law360 on May 19, 2016, reviews statistics and relevant case law to survey the development of motion to amend practice, while recommending tips for a successful motion to amend.

April 28, 2016

Broadest Reasonable Interpretation and Claim Amendments in Post-Grant Patent Challenges

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July 31, 2015

US Patent Office Issues Updated Guidance Regarding Patentable Subject Matter

On July 30, 2015, the United States Patent and Trademark Office (USPTO) issued updated guidance on subject-matter eligibility under 35 U.S.C. 101, intended to “assist examiners in applying the 2014 Interim Patent Eligibility Guidance during the patent examination process.”1 Below, we provide a brief summary of the updated guidance, which includes a “July 2015 Update,” three appendices and a Quick Reference sheet.

August 15, 2014

Estoppel as Applied to and From Patent Office Post-Grant Proceedings

An article by Monica Grewal and Richard Crudo published in Bloomberg BNA's Patent, Trademark & Copyright Journal, Vol. 88, No. 1020.

June 9, 2014

WilmerHale Representing Analog Devices in Pending Acquisition of Hittite Microwave Corporation

WilmerHale is representing its longtime client Analog Devices, Inc., a global leader in high-performance semiconductors for signal processing applications, in its proposed acquisition of Hittite Microwave Corporation.

May 13, 2014

Success at the Federal Circuit: WilmerHale Earns Five Victories in One Week

WilmerHale has just completed an extremely successful week at the Federal Circuit, receiving favorable decisions in five out of six patent cases concerning various legal issues.

Professional Activities

Ms. Grewal serves as President-elect of the Board of Governors of the Boston Patent Law Association (BPLA) and is a member of the American Bar Association (ABA), the Boston Bar Association (BBA), the Intellectual Property Owners Association (IPO) and the American Intellectual Property Law Association (AIPLA). She is also an active member of the Engineering Advisory Committee at Trinity College (1992–1998, 2008–present).

Ms. Grewal was a member of the Technological Advancements and Law Panel presenting Patent Protection for Medical Methods/Devices, on November 6–8, 2002, at the LawTech 2002, 3rd International Conference on Law and Technology, sponsored by the International Society for Law and Technology, Cambridge, Massachusetts. Ms. Grewal also represented WilmerHale and introduced the “Mobile 2.0: Tools and Technologies” panel in the Technology Track at TiECON on June 15, 2007.

Practices

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Education

JD, University of Connecticut, 1997

MS, Electrical Engineering, Rensselaer Polytechnic Institute, 1988

BS, Engineering, Trinity College, 1987, Phi Beta Kappa

Bar Admissions

Massachusetts

Connecticut

District of Columbia

Illinois

United States Patent and Trademark Office

Languages

Hindi

Punjabi

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