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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. She has also represented clients in proceedings before the Patent Trial and Appeal Board.

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. 

Her recent experience includes being part of the teams that:

  • 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.
  • 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.
  • 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.

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 2014-2018 editions of the Best Lawyers in America for her intellectual property litigation and patent practices
  • Recommended in the 2016 and 2017 editions 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 2017, and recognized as a 2014-2017 Massachusetts Super Lawyer for her intellectual property practice

Publications & News

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October 24, 2017

Federal Circuit Issues Precedential Opinion Affirming Dismissal of Patent Suit Against Universal Wilde

WilmerHale secured a significant victory for Universal Wilde, Inc. when the Federal Circuit delivered a precedential opinion affirming the dismissal of a patent-infringement lawsuit brought by Secured Mail Solutions LLC.

August 16, 2017

WilmerHale Lawyers Named Among the 2018 Best Lawyers in America®, Nine Recognized as Lawyers of the Year

Best Lawyers in America®—the oldest and most respected peer-review publication in the legal industry—recognizes 107 WilmerHale lawyers and names nine partners as Lawyers of the Year in its 24th edition.

June 9, 2017

The Legal 500 United States 2017 Recognizes 125 WilmerHale Lawyers Across 28 Practice Areas

The Legal 500 United States has released its 2017 rankings, recommending 125 WilmerHale lawyers—including 12 who are named to its elite “Leading Lawyers” list and two on its “Next Generation Lawyers” list—and 28 practice areas in its 11th edition.

September 20, 2016

Monica Grewal to Serve as an Interim Director of New PTAB Bar Association

The association's mission is to promote the highest professional and ethical standards among lawyers and stakeholders who appear before the PTAB, to help establish best practices for the practice and skills required before the PTAB, and to foster communication among its various stakeholders.

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

Monica Grewal and Michael Smith, in an article published in the American Constitution Society's blog, discuss the recent debate over whether the Patent Office should apply BRI or Phillips constructions in post-grant proceedings.

Professional Activities

Ms. Grewal serves as director of the Patent Trial and Appeal Board (PTAB) Bar Association, as President of the Board of Governors of the Boston Patent Law Association (BPLA), and as 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).

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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