Philip C. Swain

Partner, Registered Patent Attorney - Boston

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Phil Swain has represented an extremely broad range of clients in numerous cases as a patent trial and appellate lawyer for over 30 years in courts throughout the country. That includes trial of more than one dozen cases, and appearances before the United States Court of Appeals for the Federal Circuit in more than a half-dozen appeals. In addition to patent litigation, he also has tried trademark and copyright infringement, trade secret misappropriation and unfair competition cases. Phil delivers cost-effective service in complex litigation by focusing on the most practical strategies for his clients to achieve their business objectives. He works directly with his clients' engineers, scientists and executives, and when necessary, with outside experts and consultants, to understand the underlying technology and figure out how to present it persuasively to juries, judges and other forums. 

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Education:

  • Northwestern University School of Law, J.D., 1984
  • Tufts University, B.A. and B.S. in Mechanical Engineering, 1981

Representative Experience

  • Represented largest mobile payment network in the U.S. in obtaining summary judgment of non-infringement against patent troll
  • Lead counsel in defense of major International Trade Commission investigation concerning use of paper making and printing technology
  • Lead counsel in defending consortium of Boston-area hospitals and universities in patent litigation concerning magnetic resonance imaging technology
  • Lead counsel for semiconductor manufacturer in defense of patent infringement litigation concerning RF power measurement technology
  • Tried major patent and technology-related cases for a major aerospace company, a nationally-known manufacturer of complex metal components, and one of the largest pre-paid mobile phone companies in the U.S.
  • Lead counsel for two MIT researchers in a case involving use of natural language search technology on the Internet
  • Lead counsel for biotechnology company and four Boston-area universities in the Boston area in major trade secret misappropriation case
  • Successfully represented patent challengers in post-grant proceedings and interference proceedings before U.S. Patent Trial and Appeal Board.

Reported Cases

  • Shipping & Transit, LLC v. IA Auto, Inc., 2017 WL 5001445 (S.D. Fla. 2017)
  • Shipping & Transit, LLC v. IA Auto, Inc., 2017 WL 4999383 (S.D. Fla. 2017)
  • Robertson v. Republic of Nicaragua, 2017 U.S. Dist. LEXIS 98599 (N.D. Cal. 2017)
  • Robertson v. Republic of Nicaragua, 2017 U.S. Dist. LEXIS 89313 (N.D. Cal. 2017)
  • Barron v. SCVNGR, Inc., 100 F. Supp. 3d 47 (D. Mass. 2015)
  • SCVNGR v. eCharge Lincensing, LLC 2014 U.S. Dist. LEXIS 135408 (D. Mass. 2014)
  • Barron v. SCVNGR, Inc., 2014 U.S. Dist. LEXIS 91798 (D. Mass. 2014)
  • Emhart Industries, Inc. v. New England Container Co., 2013 U.S. Dist. LEXIS 160976 (D. R.I. 2013)
  • ADA Solutions v. Engineered Plastics, Inc., 2011 U.S. Dist. LEXIS 142667 (D. Mass. 2011)
  • ADA Solutions, Inc. v. Engineered Plastics, Inc., 826 F.Supp.2d 348 (D. Mass. 2011)
  • ON Semiconductor Corp. v. Hynix Semiconductor, Inc., 2010 WL 3855520 (E.D. Tex. 2010)
  • Emhart Industries, Inc. v. New England Container Co., Inc., 2009 WL 1172839 (W.D.N.C. 2009)
  • Emhart Industries, Inc. v. New England Container Co., Inc., 2008 WL 5340134 (D.R.I. 2008)
  • Cytyc Corp. v. TriPath Imaging, Inc., 505 F.Supp.2d 199 (D. Mass. 2007)
  • Freedom Wireless, Inc. v. Boston Communications Group, Inc., 2006 WL 4451477 (D. Mass. 2006)
  • Freedom Wireless, Inc. v. Boston Communications Group, Inc., 390 F.Supp.2d 63 (D. Mass. 2005)
  • Freedom Wireless, Inc. v. Boston Communications Group, Inc. 369 F.Supp.2d 159 (D. Mass. 2005)
  • Freedom Wireless, Inc. v. Boston Communications Group, Inc., 369 F.Supp.2d 155 (D. Mass. 2005)
  • Brine, Inc. v. STX, L.L.C., 367 F.Supp.2d 61 (D. Mass. 2005)
  • NTP, Inc. v. Research In Motion, Ltd., 418 F.3d 1282 (Fed. Cir. 2005)
  • VLT, Inc. v. Artesyn Technologies, Inc., 103 Fed.Appx. 356, 2004 WL 1194245 (D. Mass. 2004)
  • Freedom Wireless Inc. v. Boston Communications Group, Inc., 2003 WL 26111441 (D. Mass. 2003)
  • Freedom Wireless, Inc. v. Boston Communications Group, Inc., 2003 WL 25783583 (D. Mass. 2003)
  • VLT Corp. v. Lambda Electronics, Inc., 238 F.Supp.2d 347 (D. Mass. 2003)
  • Freedom Wireless, Inc. v. Boston Communications Group, Inc., 2002 WL 1926857 (D. Mass. 2002)
  • Freedom Wireless, Inc. v. Boston Communications Group, Inc., 220 F.Supp.2d 16 (D. Mass. 2002)
  • Freedom Wireless, Inc. v. Boston Communications Group, Inc., 218 F.Supp.2d 19 (D. Mass. 2002)
  • Rexnord Corp. v. Laitram Corp., 274 F.3d 1336 (Fed. Cir. 2001)
  • Eli Lilly and Co. v. Barr Laboratories, Inc., 251 F.3d 955 (Fed. Cir. 2001)
  • In re ‘639 Patent Litigation, 154 F.Supp.2d 157 (D. Mass. 2001)
  • MacNeill Engineering Co., Inc. v. Trisport, Ltd., 126 F.Supp.2d 51 (D. Mass. 2001)
  • Lockheed Martin Corp. v. U.S., 210 F.3d 1366 (Fed. Cir. 2000)
  • In re Patent Litigation, 1999 WL 528806 97 (D. Mass. 1999)
  • MacNeill Engineering Co., Inc. v. Trisport, Ltd., 73 F.Supp.2d 73 (D. Mass. 1999)
  • MacNeill Engineering Co., Inc. v. Trisport, Ltd., 59 F.Supp.2d 199 (D. Mass. 1999)
  • Abbott Laboratories v. LifeScan, Inc., 37 F.Supp.2d 70 (D. Mass. 1999)
  • Johns Hopkins University v. CellPro, Inc., 152 F.3d 1342 (Fed. Cir. 1998)
  • Hughes Aircraft Co. v. U.S., 148 F.3d 1384 1998 (Fed. Cir. 1998)
  • Hughes Aircraft Co. v. U.S., 140 F.3d 1470 (Fed. Cir. 1998)
  • Hughes Aircraft Co. v. U.S., 116 F.3d 1583 (Fed. Cir. 1997)
  • Hughes Aircraft Co. v. U.S., 116 F.3d 453 (Fed. Cir. 1997)
  • Hughes Aircraft Co. v. U.S., 86 F.3d 1566 (Fed. Cir. 1996), vacated on other grounds, 520 U.S. 1183 (1997), aff'd on remand, 140 F.3d 1470 (Fed. Cir. 1997)
  • Imazio Nursery, Inc. v. Dania Greenhouses, 69 F.3d 1560 (Fed. Cir. 1995), cert. denied, 518 U.S. 1018 (1996)
  • Hughes Aircraft Co. v. National Semiconductor Corp., 857 F.Supp. 691 (N.D. Cal. 1994)
  • Hughes Aircraft Co. v. National Semiconductor Corp., 850 F.Supp. 828 (N.D. Cal. 1994)
  • Imazio Nursery Inc. v. Dania Greenhouse, 1992 WL 551670 (N.D. Cal. 1992)
  • In re Coordinated Pretrial Proceedings in Petroleum Products Antitrust Litigation, 782 F.Supp. 487 (C.D. Cal. 1991)
  • In re Coordinated Pretrial Proceedings in Petroleum Products Antitrust Litigation, 782 F.Supp. 481 (C.D. Cal 1991)
  • E.I. DuPont de Nemours & Co. v. Phillips Petroleum Co., 723 F.Supp. 1023 (D. Del. 1989)
  • Teradyne, Inc. v. Clear Communications Corp., 707 F.Supp. 353 (N.D. Ill. 1989)
  • E.I. Du Pont De Nemours & Co. v. Phillips Petroleum Co., 720 F.Supp. 373 (D. Del. 1989)
  • E.I. DuPont de Nemours & Co. v. Phillips Petroleum Co., 711 F.Supp. 1205 (D. Del. 1989)
  • Mendenhall v. Astec Industries, Inc., 1988 WL 188449 (E.D. Tenn. 1988)
  • E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430 (Fed. Cir.), cert. denied, 488 U.S. 986 (1988)
  • E.I. DuPont de Nemours & Co. v. Phillips Petroleum Co., 835 F.2d 277 (Fed. Cir. 1987)
  • E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 659 F.Supp. 92 (D. Del. 1987)
  • Samuel Bingham Co. v. Maron, 651 F.Supp. 102 (N.D. Ill. 1986)

Professional Experience

  • Taught or lectured on intellectual property law at Boston University, Northeastern University, Northwestern University, Stanford University, Tufts University, University of Massachusetts, University of New Hampshire and Yale University 

Books

  • "Patent Troll Watch - States Are Pushing Patent Trolls Away from the Legal Line” (eBook, 2015)
  • “Managing Intellectual Property in Technology Companies,” (eBook, ExecSense, 2012)
  • “The United States Court of Appeals for the Federal Circuit: A History 1991 – 2002,” (Chapters on Patent and Trademark Cases) (2003)
  • “International Information Technology Law,” (Chapter on United States Contracts for Products and Services) (Center for International Legal Studies, 1997)

Articles

  • "Taming the Trolls," 11 IPPro magazine 21 (2018) 
  • “A Brief Biography of Giles Sutherland Rich,” 3 Fed. Cir. Hist. Soc. J. 9 (2009)
  • “Upcoming Supreme Court case may affect patents,” Mass. High Tech (September 29, 2006)
  • “The One Thing Judge Rich Wanted Everyone to Know About Patent Law,” 9 Fed. Cir. Bar J. 97 (2000)
  • “Section 337 and the GATT: The Problem or the Solution?”42 Am. U. L. Rev. 779 (1993)

Reports

  • “Patent Protection in the Biotechnology Industry after KSR Int'l Co. v. Teleflex, Inc., Impact on Federal Circuit and Trial Court Litigation,” Boston Patent Law Association, May 7, 2008
  • “Patent Injunctions one year after eBay v. MercExchange,” Suffolk High Technology Law Conference, April 20, 2007
  • “The role of equivalents and prosecution history in defining the scope of patent protection,” International Association for the Protection of Intellectual Property Report Q. 175, October 25, 2003
  • “Electronic Evidence and Art:  What Do You Do With It When You Get It?,” American Intellectual Property Law Association 2002 Annual Meeting, October 17, 2002
  • “Legal Issues Raised by the Peer Review System,” American Type Culture Collection, Biotech Patent Forum, September 15, 1997
  • “Choice of Forum and Cross Border Injunctions in the United States,” Union Internationale des Avocats Annual Congress, September 6, 1997

Foley Hoag Alerts & Updates

Honors

  • Listed in Massachusetts Super Lawyers, IAM Patent 1000 and Who's Who Legal: Patents
  • Ranked by Chambers USA: America's Leading Lawyers for Business 

Involvement

  • Federal Circuit Bar Association (past President)
  • Federal Circuit Historical Society (Board of Governors, past President)
  • International Association for the Protection of Intellectual Property (AIPPI); Chair, AIPPI-US Division, American Intellectual Property Law Association; Chair, AIPPI Boston 2008 Congress
  • American Bar Association, Intellectual Property Law Section (Chair, Amicus Committee; Books Editorial Board; past Council member; Section Officers Committee on Professional Responsibility; member, American Bar Foundation Life Fellows)
  • American Intellectual Property Law Association (member, AIPLA Fellows)
  • International Bar Association
  • International Trade Commission Trial Lawyers Association
  • Boston Bar Association
  • Boston Patent Law Association
  • Boston Intellectual Property Law Inn of Court
  • Intellectual Property Owners (U.S. Patent Law Committee)
  • University of New Hampshire School of Law IP Advisory Council
  • Fellow, Center for International Legal Studies,  Salzburg, Austria
  • Town of Concord, Finance Committee; Public Works Commission (past Chair)
  • Deacon, Trinitarian Congregational Church, Concord, MA (past Chair)
  • “Supreme Court and Appellate IP Update,” American Bar Association, October 2018
  • “Provisional and Post Term Enforcement of Patents,” AIPPI World Congress, September 2018
  • "Top Ten Patent Decisions from the Federal Circuit 2016-17," AIPPI-U.S Global Educational Forum, July 2017
  • "The Implications of the Supreme Court's Decision in TC Heartland LLC v. Kraft Food Brands Group LLC," Boston Patent Law Association, June 2017
  • "Recognition of Patent Agent Privilege in the United States," AIPPI Italy, June 2016
  • "The Broadened Standard for Dividing Infringement," Chartered Institute of Patent Attorneys, June 2016
  • "Employee Inventions in the United States," AIPPI Israel, The Economy of Innovation, March 2016
  • "Teva v. Sandoz and Other Recent Decisions in U.S. Litigation," Intellectual Property Law Association, London, June 2015
  • "The Effect of Alice v. CLS Bank on Patent Subject Matter Eligibility in the U.S. Courts and the Patent Trial and Appeal Board," AIPPI France, and Chamber of Patent Attorneys, Munich, June 2015
  • “Patenting Computer-Implemented Inventions,” AIPPI World Intellectual Congress, September 2014
  • “Hot Topics in International IP Law,” ABA Intellectual Property Law Section, 26th Annual Intellectual Property Law Conference, April 2011
  • "2009 Federal Circuit Update," National CLE Conference, January 2010
  • “Hot Topics in Patent Litigation in the Aftermath of Major Decisions,” American Bar Association, February 2009
  • “Top 10 Developments in Patent Law in 2008,” Boston Bar Association, January 2009
  • “Patent Protection in the Biotechnology Industry after KSR Int'l Co. v. Teleflex, Inc., Impact on Federal Circuit and Trial Court Litigation,” Boston Patent Law Association, May 2008
  • “Top 12 Developments in Patent Law in 2007,” National CLE Conference, January 2008
  • “Patent Injunctions one year after eBay v. MercExchange,” Suffolk High Technology Law Conference, April 2007

Media Appearances

  • Boston Herald, "Techies Seek to Squash Patent Trolling," May 18, 2016
  • Communications Daily, "Supreme Court to Hear Samsung Appeal at Apple Patent Suit Damages," March 22, 2016
  • Intellectual Property Lawcast, “Supreme Court’s increased interest in IP Law,” August 7, 2006
  • CNBC/Wall Street Journal interview on eBay v. MercExchange in the United States Supreme Court, March 29, 2006 
  • CNBC interview on eBay v. MercExchange in the United States Supreme Court, March 21, 2006
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Bar Admissions

  • Massachusetts
  • Illinois
  • California
  • District of Columbia

Court Admissions

  • U.S. District Court for the District of Massachusetts
  • U.S. Court of Appeals First Circuit
  • U.S. Court of Appeals Federal Circuit
  • U.S. Supreme Court
  • U.S. District Court for the Northern District of Illinois
  • U.S. District Court for the Central District of California
  • U.S. District Court for the Northern District of California
  • U.S. District Court for the Eastern District of California
  • U.S. District Court for the Southern District of California
  • U.S. District Court for the District of Arizona
  • U.S. District Court for the Eastern District of Michigan
  • U.S. Court of Federal Claims
  • U.S. Patent & Trademark Office (Agency)