Prussia, Kevin S.

Kevin S. Prussia

Kevin Prussia is a notable attorney who has developed an exceptional practice advising life sciences and technology clients on intellectual property and patent litigation. His practice is multidisciplinary and encompasses strategic counseling and opinion work, as well as litigation and post-grant proceedings. His trial experience includes bench and jury trials in several district courts, including California, Delaware, Massachusetts, New Jersey and New York. His appellate experience includes multiple cases before the United States Court of Appeals for the Federal Circuit as well as other Circuits. Mr. Prussia's post-grant practice includes several inter partes review (IPR) proceedings. He has argued major motions, cross-examined key witnesses, and argued before the Patent Trial and Appeal Board. Mr. Prussia has also has represented parties in the International Trade Commission.

Mr. Prussia has experience representing patent owners as well as patent defendants—a unique combination that allows him to better counsel his clients through complex disputes.

On the patent owner side, he has extensive experience representing clients in Hatch-Waxman litigation, Biological Price Competition and Innovation Act (BPCIA) litigation, competitor-to-competitor disputes and IPR proceedings. Mr. Prussia's Hatch-Waxman experience includes cases involving first-filers, multiple subsequent-filers, and "at-risk" launches.

On the patent defendant side, Mr. Prussia advises an array of clients in matters involving competitors as well as non-practicing entities, and has experience with utility and design patents.

Community Involvement

Mr. Prussia serves as the President of the Board of Directors for the ACLU of Massachusetts.

Professional Activities

Mr. Prussia is a member of the Boston IP American Inn of Court. From 2008 to 2010, Mr. Prussia was on the part-time faculty at Boston University School of Law, where he taught a seminar in the Legal Writing Program.

Prior to attending law school, Mr. Prussia was an assistant director of admissions for New York University's Office of Undergraduate Admissions.

Experience

    • Counsel for patentee in BPCIA litigation and several IPRs regarding patents relating to trastuzumab.
    • Counsel for patentee in several Hatch-Waxman litigation matters related to proposed generic versions of a drug used to treat abnormal cholesterol levels. Patent claims covered therapeutic methods of treatment and formulations.
    • Counsel for Fortune 50 semiconductor company and its Japanese supplier accused of infringing patents relating to the manufacture of multilayer electrical devices. Obtained judgment of non-infringement after a favorable claim construction.
    • Counsel for respondents in an ITC investigation involving recombinant factor IX products. Investigation was terminated after obtaining a favorable claim construction.
    • Counsel for patentee in an inventorship dispute involving certain immune checkpoint inhibitors. 
    • Counsel for patentees in a Hatch-Waxman litigation involving a first-filer challenge to patents covering an anti-platelet drug.
    • Counsel for patentee in several Hatch-Waxman litigations involving challenges to patents covering an orally-active iron chelator.
    • Counsel for patentee in several Hatch-Waxman litigations against over a dozen generic companies involving at-risk launches of generic drugs used to treat certain bone conditions.
    • Counsel for accused infringer in a case involving near-field communication technology. Case was voluntarily dismissed by patentee after briefing on motions to dismiss under Rules 12(b)(1) and 12(b)(6).
    • Counsel for accused infringer in a case involving web page technology. Case was settled after obtaining back-to-back orders dismissing the complaint under Rule 12(b)(6).
    • Counsel for accused infringer in a case involving compression technology. Obtained summary judgment of non-infringement and invalidity. Affirmed by the Federal Circuit.
    • Counsel for accused infringer in a case involving digital imaging technology. Obtained summary judgment of non-infringement. Affirmed by the Federal Circuit.
    • Counsel for patentee in a case involving a wide range of technologies related to the design and use of smartphones. Obtained favorable verdict after a jury trial. Affirmed in part by the Federal Circuit.

Recognition

  • Recognized among The National Bar Association's 2018 "40 Under 40 Nation's Best Advocates"
  • Named to The National Law Journal's 2015 list of Boston Rising Stars
  • Named a Massachusetts Super Lawyers "Rising Star" for intellectual property law in the 2014-2016 issues of Boston Magazine 
  • Awarded the Civil Rights Pro Bono Recognition Award from the Lawyers' Committee for Civil Rights and Economic Justice in 2013
  • Received an Honorable Mention in the Food and Drug Law Institute's 2005-2006 H. Thomas Austern Short Paper Writing Awards Competition for his paper titled "Compulsory Patent Licensure: An Answer for Stranded Clinical Trial Participants?" 

Insights & News

Credentials

  • Education

    • JD, Boston University School of Law, 2006

      Executive Editor, American Journal of Law & Medicine
    • BA, Politics, New York University, 2001

  • Admissions

    • Massachusetts

    • New York

  • Clerkships

    • The Hon. Richard G. Stearns, US District Court for the District of Massachusetts, 2007 - 2008

Credentials