David Boundy

David E. Boundy is a partner in the Intellectual Property and Administrative Law practices of the Potomac Law Group, PLLC, Newton, Massachusetts. As a strategic advisor, Mr. Boundy helps clients develop their intellectual property as an asset of their business. He works closely with legal, R&D, finance, and marketing teams to ensure that intellectual property is integrated effectively. Mr. Boundy is a highly respected intellectual property strategist, recognized as one of the top 300 worldwide. He has a wealth of experience representing and advising a wide range of clients, from inventors to established corporations. His services include patent prosecution, licensing, litigation avoidance, opinions, financing, public offerings, due diligence, acquisitions, and spinoffs. In particular, he specializes in helping startups structure their IP portfolios to secure the maximum amount of financing. Mr. Boundy's technical expertise covers a range of fields, including computer hardware, systems software, and complex computation involving areas such as artificial intelligence, robotics, and medical imaging.

 Mr. Boundy is widely renowned for his expertise in administrative law as it pertains to the U.S. Patent and Trademark Office. He has successfully utilized administrative law as an alternate approach to obtain positive outcomes from the PTO, especially in Federal Circuit appeals from IPRs and PGRs. The United States Court of Appeals for the Federal Circuit recognized Mr. Boundy's expertise by inviting him to chair a panel on Chevron and Auer deference at the 2018 Federal Circuit Judicial Conference. Furthermore, the National Law Journal acknowledged Mr. Boundy as one of the 50 Intellectual Property Trailblazers for 2019 for his work in the field. In executive branch rulemaking matters, Mr. Boundy led the teams that successfully quashed the Patent Office's 2006-09 Continuations, 5/25 claims, IDS, Appeal, and IDS regulations, and the 2021 CLE and DOCX rules. Additionally, Mr. Boundy has consulted on comment letters and legal challenges to other rules. In Article III litigation and appeals, he has provided specialized consultation to lead counsel on issues at the intersection of Patent Office procedure and administrative law.

 With experience as senior in-house intellectual property counsel for a billion-dollar company, a partner in a leading Cambridge/Boston-area IP law firm, and a senior associate in two AmLaw 25 law firms practicing intellectual property and business law, Mr. Boundy is a highly accomplished professional. Throughout his successful career, he handled a wide range of intellectual property issues for clients, including litigation, licensing, and patent prosecution. He also provided counsel to well-known companies such as Hewlett-Packard, Apollo Computer, and a Massachusetts Route 128 startup on various issues, including compilers, operating system internals, processor architecture, fault-tolerant diagnostics, and networking. Additionally, he built patent prosecution practices for a leading national law firm and represented numerous noteworthy cases, including amicus briefing in Supreme Court and Federal Circuit cases, pre-assertion validity and infringement vetting, and intellectual property aspects of M&A and IPO transactions. He also facilitated highly leveraged bank lending against intellectual property and provided defensive opinion letters and due diligence.

 He is also a frequent author and lecturer on patent and administrative law and software engineering and is often quoted in local, trade, and national media outlets. Mr. Boundy even lectured at M.I.T. Laboratory for Computer Science on compiler construction. Mr. Boundy earned his Bachelor of Science from Hope College and his Master of Science in Computer and Communication Sciences from the University of Michigan. Subsequently, he attained his Juris Doctor with Harlan Fisk Stone honors from Columbia University Law School. Admitted to practice in Massachusetts and New York, Mr. Boundy represents clients before the U.S. Patent and Trademark Office, U.S. Supreme Court, U.S. Court of Appeals for the Federal Circuit, and the U.S. District Court for the Eastern and Southern Districts of New York.