Christopher T. McWhinney

Representative Client Work

Mr. McWhinney regularly advises clients on the development and management of their intellectual property portfolios, particularly as it relates to patents and trade secrets. Mr. McWhinney is presently managing a portfolio of several hundred active cases for a client involved in software and mechanical technologies. Mr. McWhinney also has extensive experience representing clients related to their pharmaceutical and biotechnology related inventions, including work with several large branded U.S. and foreign pharmaceutical companies.

Counseling and Opinion Matters

• Counseling and analysis of patents relating to electronic medical devices
• Investigation and analysis of patents relating to pharmaceuticals and related formulations (handled a variety of clearance and other matters for pharmaceutical and biotech companies)
• Counseling on patent issues spanning a variety of technologies, including: location-based services in mobile telecommunications; earthquake monitoring; customer loyalty rewards programs; and carbon fiber fabric manufacturing
• Investigation and analysis of patents owned by the Lemelson foundation relating to bar code technology (this analysis correctly predicted the invalidity and unenforceability of these patents)
• Investigation and analysis of patents owned by the Ronald Katz patent portfolio (these patents relate to automated call center technology)
• Investigation and analysis of patents covering software related to shipping goods internationally (this analysis correctly predicted a later claim construction that significantly narrowed the scope of the relevant claims)

Litigation

• Fowler Woods v. uLocate Communications, (E.D. TX). Represented defendant in patent infringement action involving online advertising (settled favorably prior to trial)
• Reese v. AT&T, (E.D. TX). Represented defendant Southwestern Bell Telephone in patent litigation involving telecommunications technology (obtained favorable claim construction ruling)
• SomaLogic, Inc. v. Santa Coloma, (BPAI). Represented patent applicant in interference directed to methods of obtaining biologically active molecules known as aptamers
• Pharmaceutical Solutions v. Vitamax RX, (D. MN). Represented patentee in infringement action involving veterinary pharmaceuticals (settled favorably prior to trial)
• Rossin v. Kanno (Guild Associates Inc. v. Hitachi Ltd.), (BPAI). Represented patent applicant in multiple interferences directed to decomposing perfluorinated compounds (obtained favorable final order)

Bar & Court Admissions

• U.S. Patent & Trademark Office, 1998
• Florida, 2000
• District of Columbia, 2001
• U.S. Court of Appeals for the Federal Circuit

Client Advisories

• Leahy-Smith America Invents Act
• District Court Says USPTO Miscalculates Patent Term Adjustment
• Supreme Court Rejects Personalized Medicine Patent Claims as Unpatentable Laws of Nature
• Bilski et al. v. Kappos
• Federal Circuit Vacates Tafas Panel Ruling

Speaking Engagements

• "Distributing & Licensing Software & Other Technologies," Massachusetts Continuing Legal Education, Inc. (MCLE) (May 9, 2012)
• "The Bilski Decision," Intellectual Property Group Update, Sullivan & Worcester LLP, Boston (May 10, 2010)

Professional & Civic Activities

• American Bar Association
• American Intellectual Property Law Association
• Intellectual Property Owners Association
• New York Intellectual Property Law Association

Education

• M.S., Biotechnology, Johns Hopkins University, 2005
• J.D., cum laude, University of Miami School of Law, 1999
• B.S., Chemistry, William & Mary, 1994 (American Chemical Society Certified)