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Andrew (A.J.) Tibbetts leverages prior experience as a software engineer to provide practical IP strategy counseling on matters related to software-implemented tech across a range of industries, from networking, fintech, and NLP through to life sciences AI, medical records, and medical devices. His holistic approach to software IP incorporates open source practices and trade secret policies alongside patents, and extends beyond protecting rights into licensing/ transactions, enforcement, and navigating diligence, as well as defending against infringement accusations. He has both invalidated software patents asserted against clients and defended software patents he wrote and prosecuted from being invalidated by competitors. A.J. closely studies the development of the law for protection of software inventions, enabling him to protect client’s interests despite the rapid evolution of both the law and the technology, and has helped draft amicus briefs on the Section 101 eligibility of software that were favorably cited by the Supreme Court and Court of Appeals for the Federal Circuit. 

A.J. advises a wide array of clients on IP strategies, ranging from international and publicly-traded companies and large research institutions to small and growing companies. He serves on the board of directors of MassMEDIC, helping support digital health efforts in the New England area.

Utilizing his deep technical experience, A.J. assists many clients with creating strategies for protecting their software and data science innovations. He has experience with counseling life sciences and healthtech companies with extending their portfolios to cover AI and digital health products. He also advises fintech companies (including infrastructure and market data companies) on both protecting their own innovations and defending against industry patent fights. Clients he advises also develop blockchain technologies, machine learning and AI products, speech recognition and natural language processing/understanding, operating systems, data analytics, networking and telecommunications, semiconductor technologies, FPGA technologies, and other innovative technologies.

A.J.’s previous experience includes working as a programmer for IBM/Lotus, where he was involved in the development of Lotus Notes. He also worked as lead developer of a sales analytics tool and oversaw the project from the planning phase through to coding, documentation, testing, and roll-out.

Concentrations

  • Intellectual property strategy, defining and implementing
  • Patents
  • Open source software
  • Trade secrets
  • Licensing
  • Patent infringement accusations

Capabilities

Experience

  • Lead prosecution counsel for major speech recognition and natural language processing company. Managed prosecution of hundreds of matters, including assisting in-house counsel with ensuring alignment of old matters to current business objectives. Surfaced matters for potential enforcement and cross-claims in litigation, then defended patents from IPR challenges.°
  • Analyzed client’s patent portfolio in light of growing competition, identified matters that could be leveraged against competitor, conducted targeted prosecution with drafting of claim charts to ensure client was positioned for litigation.°
  • Life Sciences AI: Advised biopharma company on best practices for expanding patent portfolio to incorporate AI-based research tools and software-implemented manufacturing techniques, including aligning claim strategy with business objectives. Guided on implementation, including advising on where not to file patent applications and drafting applications.°
  • Med Device: Lead IP counsel for medical device company whose hybrid hardware/software device received “breakthrough” designation from FDA. Drafted and prosecuted patent applications for AI and hardware, assisted with licensing of training data from hospitals, and assisted with in-licensing and out-licensing of technologies for manufacturing.°
  • Life Sciences AI: Counseled biotech company on protectability, including patent-eligibility, of a software tool for quickly screening proteins like antibodies to see whether they possess a particular characteristic qualifying them for further clinical evaluation.°
  • Open Source: Assisted multiple companies with developing and implementing policies that would enable engineers to contribute to open source software projects and leverage open source software in their own projects while maintaining the company’s overall IP goals. Counseling included tailoring selection of open source license for new projects based on unique business considerations.°
  • Developed IP strategy for a medtech startup company that included preparation of patent applications in stages, as the company progressed through related phases of its business plan. Prepared filings first for a mobile app and subsequently for specialty hardware to operate with that mobile app.°
  • Analyzed software companies' product portfolios to identify key elements that would be most valuable to protect in view of business plan, including exit strategy. Prepared patent applications targeted at those elements.°
  • Counseled client throughout its life cycle, including in developing original IP strategy for the startup, preparing patent applications as the company grew from the startup to a medium-sized company, defending the company during acquisition due diligence, and assisting post-acquisition with educating acquirer on the value of IP and aligning IP with new post-acquisition business plan.°
  • Assisted client in handicapping ongoing multi-jurisdiction telecom litigation between industry-dominant chipset supplier and competitors and trade regulators, including handicapped potential outcomes of the three-continent litigation and potential government responses. Analyzed patents identified as standards-essential for various cellular communication standards.°
  • Drafted IP provisions for a software development agreement for a U.S. company outsourcing development of a software product to a Southeast Asian company.°
  • Negotiated scope of patent and copyright license for company seeking to commercialize technologies developed at major research hospital.°
  • Assisted major software company with obtaining certification of a “standards essential patent” (SEP) for a telecommunications standard, including by analyzing large patent portfolio, analyzing telecom standard, surfacing relevant patents, and preparing charts demonstrating alignment of patents and standard. Gained the company the desired access to a patent licensing pool and associated licensing revenue stream.°
  • Counseled a client interested in acquiring and monetizing a large telecom patent portfolio on validity and current value of the portfolio, including engaging telecom experts to gauge utility of patented techniques.°
  • Assisted markets infrastructure company with defense to multi-patent infringement suit touching on market data technologies, including advising on redesign to avoid infringement and invalidity challenges to patents launched at USPTO.°
  • Advised multiple markets infrastructure companies on strategies for responding to litigious company in industry, including analyzing patent portfolio, analyzing each company’s products and identifying non-infringement positions specific to each company.°
  • Served as lead technical attorney on six-patent district court litigation and related post-grant proceedings at USPTO, in dispute between industry competitors in networking and telecommunications. Led team in identifying patents to assert from client’s patent portfolio. Identified strategies that led to multiple wins in IPR challenges and immediate subsequent settlement of litigation. Led settlement negotiations and drafted terms of settlement. Following an end of the litigation, client asked A.J. to take over responsibility for prosecution of its U.S. patent portfolio.°
  • Served as lead technical attorney representing defendant in an International Trade Commission (ITC) patent investigation. Key in building strategy for dismissing the action under an ineligibility theory—the first time the ITC’s fast-track “100 day” program had been used to dismiss an action under ineligibility. Also served as lead attorney in related USPTO IPR challenge that found all pending claims invalid as obvious. Took lead in developing arguments for the petition, preparing declaration with expert to support client’s petition, deposing patent owner’s expert, and preparing client’s response to the patent owner’s arguments.°
  • Defended large multinational against patent infringement charges from a telecom “patent assertion entity” at the U.S. International Trade Commission (ITC), which included a detailed workup of patent validity and non-infringement positions with a team of technical experts, as well as a parallel effort challenging the validity of the patents at the patent office.°
  • Defended software startup against a "non-practicing entity" accusing the startup of patent infringement. After raising early questions of non-infringement and invalidity, the startup was able to end the suit.°

°The above representations were handled by Mr. Tibbetts prior to his joining Greenberg Traurig, LLP.

  • Programmer, IBM/Lotus, 2005
  • Programmer, Christmas Tree Shops, 2003-2004

Recognition & Leadership

  • Listed, Super Lawyers magazine, Massachusetts Super Lawyers, “Rising Stars,” 2014-2021
  • Member, Boston Patent Law Association (BPLA), 2006-Present
    • Chair, BPLA Computer Law Committee, 2017-2019, 2022
  • Board of Directors, Massachusetts Medical Device Industry Council (MassMEDIC), 2018-Present

Credentials

Education
  • J.D., cum laude, Suffolk University Law School
  • B.S., Computer Science and Computer and Systems Engineering, magna cum laude, Rensselaer Polytechnic Institute
    • Editor-in-Chief, The Rensselaer Polytechnic
Admissions
  • Massachusetts
  • U.S. Patent and Trademark Office