Meredith Addy, co-founder and managing partner of intellectual property law firm AddyHart P.C., is a deeply experienced litigator who specializes in cases before the U.S. Court of Appeals for the Federal Circuit, in the federal district courts, and at the USPTO’s Patent Trial and Appeal Board.
Addy has spent her career counseling high-profile companies in the software, technology, biotechnology, and pharmaceutical industries. Her clients include Fortune 1000 companies, mid-tier entrepreneurial firms, and individual inventors. She has argued cases involving technologies ranging from innovative software and electronics—including avionics for the defense industry, to pharmaceuticals, biotechnology, and Hatch-Waxman (ANDA) litigation.
Addy has appeared in more than 80 federal district court cases and in more than 100 appeals to the Federal Circuit; her experience includes multiple IPRs at the PTAB, and she has successfully litigated cases in the US Court of Federal Claims. Law360 has identified Addy as one of the Most Influential Women in IP Law. According to independent research reported in Law360, she is one of the five female private-sector litigators who have argued most frequently before the Federal Circuit in the last decade and one of only two of those five licensed to practice before the USPTO. Addy is the only woman ranked in Band 1 by Chambers USA for intellectual property litigation in Illinois. Along with her Chambers ranking, Addy is perennially ranked as a top lawyer in Best Lawyers, Super Lawyers, IP Stars, and Life Sciences Stars, has been listed in the IAM 1000, and was named one of the 250 Top Women in IP by IPmetrics.
Practicing in today’s highly complex technical environment, Addy has an innate ability to explain complex legal and technical issues to jurists and laypeople alike—an ability that in part depends on her training as an electrical engineer. Chambers USA has noted “She focuses on developing and executing strategies to achieve the most efficient approach to realizing her clients’ IP goals. Her clients describe her as ‘an exceptionally skilled lawyer’ and a ‘key figure, who knows the courts inside and out,’ adding that she is ‘extremely pro-business. She really understands business and how it’s run.’”
Addy has held high management positions at AmLaw100 firms and IP boutiques, including having served as office managing partner of the Chicago office of an AmLaw100 firm; as chair of the national patent litigation practice at another AmLaw100 firm; and as chair of the national appellate practice at one of the nation’s largest IP law firms. She has also served on firms’ Executive Committees and Boards of Directors. Addy for ten years was a member of the Federal Circuit Advisory Council and was a co-founder and the first president of the Richard Linn American Inn of Court, directed to intellectual property. She served on the Board of Directors for the Federal Circuit Bar Association, and as chair and co-chair of the Amicus Committees for the American Intellectual Property Law Association (AIPLA) and the Intellectual Property Law Association of Chicago (IPLAC).
Experienced in protecting and monetizing corporate intellectual asset portfolios, Addy in 2015 earned her M.B.A. from the University of Chicago’s Booth School. She has assisted district courts as a Special Master under F.R.C.P. § 706, and as a Court-Appointed Expert under F.R.C.P. § 53, supervising various aspects of complex patent cases about technologies ranging from encryption to guided vehicles to medical devices, and advising courts on all aspects of the discovery process; claim construction and patent validity; summary judgment proceedings; pre-trial proceedings, and trial.
From 2013 to 2022, Addy wrote the blog Business De Novo, which she created to generate conversations around the business of innovation and the contemporary state of patent law in the US. Addy’s articles have been published on IPWatchdog.com and has been is a perennial editor of Claim Construction in the Federal Circuit, a publication of West LegalWorks. She is a frequent speaker at legal and industry events, has taught CLE-credit courses on patent litigation, and has written numerous articles and publications.
I recently opened a Bordeaux and re-read the petition for certiorari in American Axle v. Neapco. Not because I like watching horror films or black-and-white footage of a piano sliding downstairs, mind you. But well, you know. The Petition is well written and the Bordeaux did its job; however, it was still painful to read the recounting of the successive bad decisions to invalidate American Axle’s patents in light of the arguments made by accused infringer Neapco. Yet, in context, it’s just another of the thousand blows against U.S. inventors and our innovation ecosystem. It’s shameful that a company with a new and useful technology in the automotive industry was stymied in its appeal by our nation’s highest patent court.
Athena Diagnostics filed a petition for en banc rehearing of the United States Court of Appeals for the Federal Circuit’s decision in Athena Diagnostics v. Mayo on April 8, 2019. Amicus briefs are due April 22, 2019. The Athena decision continues to apply U.S. Supreme Court-created common law to the analysis of 35 U.S.C. §101. In its brief requesting rehearing, Athena argues that the decision is “precisely the evisceration of patent law against which the U.S. Supreme Court has long warned” and that the claims at issue were patent eligible, as they are “novel, man-made substances”, “do not preempt natural laws” and “serve a new and useful purpose of diagnosing serious diseases”. Knowles IP Strategies LLC (Sherry M. Knowles) and AddyHart (Meredith Addy) intend to file an amicus brief in support of neither party requesting that the Federal Circuit carry out its constitutional duty to apply strict statutory construction of the literal words of 35 U.S.C. §101 to decide the case (See, Unconstitutional Application of 35 U.S.C. § 101 by the U.S. Supreme Court; 18 J. Marshall Rev. Intell. Prop. L. 144 (2018)).
Four years later, the patent landscape demonstrates that Alice has become a train wreck for innovation… Unfortunately, the Federal Circuit failed to rein in this rout of Machiavellian creativity, which it could have done by relying on well-settled procedural process and patent doctrines… This year, the Federal Circuit appears finally to have awakened from its slumber. In two recent opinions, Aatrix v. Green Shades and Berkheimer v. HP, the Federal Circuit embraced long-established procedural rules and patent doctrines… Savvy and creative patent lawyering will prevail. To be successful, patent practitioners must show the PTO, the courts, and Congress the importance of our clients’ innovations and explain why the type of technology should not dictate whether there is enforceability.
But this morning, on seeing the juxtaposition of two random emails in my inbox, I had to pause at the ongoing nuttiness of our regulatory environment. In fact, I wanted to scream. First, I see, sunscreen is banned in most schools. Because it’s a drug. Email number one this morning. And while you catch your breath, consider the one immediately following it in my inbox. Headline: “Is the U.S. still the driving force of the global patent market?” … We’re not focused on the big picture. We’re mired in fights over little issues that don’t make a difference in the overall health of the country—much less our innovation economy.
Maybe I’m being too optimistic. But in a pair of decisions issued within a week of each other, Berkheimer v. HP and Aatrix Software v. Green Shades, the Federal Circuit just vacated two patent ineligibility determinations… And if you think these declarations are too good to be true, take a look at the decisions, both drafted by Judge Moore. Both are in the software field… The Court held that the district court erred in granting summary judgment of ineligibility with respect to some of Berkheimer’s claims… In Aatrix Software v. Green Shades, the Court vacated a Rule 12 dismissal for lack of patent eligibility.
Asserting patent rights is a surreal endeavor these days. While the statistics on survival at the PTAB are improving, with the percentage of initiated proceedings declining and some patents seeing their claims affirmed, the cost and time necessary for a patentee to claw their way back to the district court—i.e., back to Square One—proves too much for many patentees. Spending hundreds of thousands of dollars (or more) to fight at the PTAB simply to confirm issued patent claims is pushing many patentees out of the enforcement market. With such oppressive legal hurdles and costs, what good is a patent? For many, it cannot be enforced?
Many district courts have interpreted Alice as authorizing invalidation of issued patents as “abstract” based solely on the pleadings. They have done so even where the invalidation rests on resolution of a disputed issue of fact or of claim construction or scope. In short, since Alice, the Federal Circuit has done nothing to clear up the district courts’ confusion, but instead has affirmed pleading invalidations more than 90 percent of the time. Nothing in Alice, or Mayo for that matter, authorized these “pleadings invalidations.” Whether you agree with the decisions or not, both Alice and Mayo, were decided on summary judgment.
I used to receive telephone calls, quite frequently, asking about the procedure for preparing and filing a patent application. Today, I no longer receive these calls. I suspect the main reason is that inventors are giving up an expectation that patent protection is even worthwhile. And I get it. If I were to get a call these days, I could no longer paint a rosy picture for would-be patentees… But these days, I fear the conversation would have a different tone. It might go more like this… “for a mere $2,625,000 you can disclose your most important innovation to your competitors, and they can use it and make sure that you actually have no rights to it.”