William R. Boudreaux
Shareholder
Overview

“Effectively representing a client requires fostering an open and trusting relationship. My job is to address your issues and relieve your stress.”

Bill Boudreaux is an experienced pharmaceutical patent lawyer, bringing more than 20 years of experience from both in-house and private practice settings. Bill’s extensive in-house experience at major pharmaceutical companies gives him a unique perspective, allowing him to provide clients with practical, business-focused advice. He is known for his thoughtful, thorough approach and ability to anticipate client needs.

Bill represents a broad range of biotech and pharma clients ranging from Global Fortune 50 Companies to start-ups.  While at Eli Lilly and Pfizer, he was primary patent counsel for several late-stage and post-launch drug products, including four blockbuster drugs. He has extensive experience in global patent portfolio creation and management, pharmaceutical patent life-cycle planning and IP due diligence. Bill’s experience also includes freedom-to-operate studies, due diligence reviews, infringement/validity studies, and strategy and support for Hatch-Waxman litigation.

Whether providing advice to in-house counsel or business associates, Bill understands the importance of delivering legal advice in a distilled, business-focused way. In-house counsel appreciate that Bill has stood in their shoes. One lead lawyer at a global pharmaceutical company commented that it is rare to find someone like Bill who understands all aspects of her job—the legal issues, the pressures and relational dynamics.

A recognized leader in the life sciences space, Bill co-chairs Brinks Gilson & Lione’s Biotechnology and Pharmaceutical practice group and served on the firm’s Board of Directors and Executive Committee. He has been named a “Life Science Star” by Managing Intellectual Property magazine and a “Leading Intellectual Property Lawyer” by Leading Lawyers Network.

Education
  • J.D.
    Louisiana State University Paul M. Hebert Law Center, 1991
  • B.S., Biochemistry
    Louisiana State University, 1987
Bar Admissions
  • Indiana
  • Michigan
  • Ohio
  • Supreme Court of the United States
  • U.S. Court of Appeals, Fed. Cir.
  • U.S. Patent & Trademark Office
Technical Background
  • Biopharma
Experience | Overview
  • Served as primary patent counsel for blockbuster osteoporosis drug from launch of drug to Hatch-Waxman challenge. Managed global portfolio of over 140 patent families supporting this drug. Counseled internal product team regarding patent strategy, prepared for litigation and patent issues regarding product label language. Devised patent reissue strategy on key patents that survived challenge through appeal to the Federal Circuit extending loss of exclusivity by two years.
  • Provided IP diligence for mid-size pharmaceutical client’s multi-million dollar acquisition of another pharmaceutical company. Included review of several patent portfolios and multi-party license agreements.
  • Counseled small pharmaceutical company regarding patent life-cycle management issues resulting in successful licensing of drug and eventual FDA approval. Provided business-focused guidance regarding drug label language, patent listing in FDA’s Orange Book and drafted and filed Hatch-Waxman patent term extension applications.
Experience | Legal

Brinks Gilson & Lione, Ann Arbor, Michigan
Shareholder, January 2009-Present
Counsel, June 2007-December 2008

Pfizer Inc., Ann Arbor, Michigan
Senior Corporate Counsel, January 2005-June 2007

Eli Lilly and Co., Indianapolis, Indiana
Patent Counsel, July 1999-January 2005
Patent Attorney, July 1997-July 1999

Hoechst Marion Roussel Inc., Cincinnati, Ohio
Senior Patent Attorney, June 1994-July 1997
Patent Attorney, September 1992-July 1997

Ethyl Corp., Baton Rouge, Louisiana
Patent Engineer, May 1990-September 1992

Forward Thinking
alert
December 07, 2016

The Supreme Court recently granted a petition for writ of certiorari to review the Federal Circuit’s en banc ...

in the media
February 05, 2016

On February 4, 2016 Mike Spink, Bill Boudreaux, Jon Beaupre and L.G. Almeda were mentioned in the ...

alert
June 15, 2015
On June 12, 2015, the Federal Circuit held certain prenatal diagnostic testing claims invalid under Section 101, concluding that the claims were directed to a natural phenomenon. Ariosa Diagnostics, Inc. v. Sequenom, Inc. (2014-1139). The decision ...
in the media
January 22, 2015
Steven Oberholtzer, Lawrence Almeda, William Boudreaux, James Cleland and Eric Sosenko were mentioned in Washtenaw County Legal News for being named Leading Lawyers. Click here to read more.
in the media
January 15, 2015
The news that Steven L. Oberholtzer, Kelly K. Burris, Lawrence (L.G.) Almeda, William R. Boudreaux, James K. Cleland and Eric J. Sosenko were named Leading Lawyers for 2014-2015 was mentioned in the “People and Achievements” section ...
in the media
November 30, 2014
On November 30, 2014, Bill Boudreaux was mentioned in Detroit Free Press regarding being named a Life Science Star in LMG Life Sciences. Click here to read more.
in the media
September 25, 2014
On September 25, 2014, Bill Boudreaux was mentioned in MLive’s Ann Arbor Business Briefs for recently named a Life Science Star in the third annual edition of LMG Life Sciences. Click here to read more
multimedia
June 25, 2014

Brinks discusses the USPTO Guidance, the underlying case law related to the Guidance, and the implications for ...

Presentations
  • “Patent Prosecution and the Newly Implemented USPTO (AIA) Regulations” Midwest Intellectual Property Symposium, Indianapolis, Indiana, November 15, 2012
  • "An Industry Perspective on Implementation of the AIA, New PTO Proceedings, and Their Collective Impact on Life Cycle Management," American Conference Institute's Maximizing Pharmaceutical Patent Life Cycles, New York City, October 10, 2012
  • "The post-AIA World: Factoring the Impact of Patent Reform into Biosimilars Prosecution and Litigation Strategies," American Conference Institute's 3rd Advanced Forum on Biosimilars, New York City, May 23, 2012
  • “Pharmaceutical Patent Life Cycle Management – a US Perspective,” D. Young & Co. Life Sciences Patent Seminar, Copenhagen, Denmark, October 4, 2010
Representative Matters

Patent Portfolio Creation and Management

  • Strategic counseling, patent portfolio development, and pharmaceutical life-cycle planning. As in-house counsel, supported cross-functional product teams from preclinical phase through post-launch of drug.
  • Drafting and prosecuting hundreds of patent families in the pharmaceutical space including small molecule pharmaceuticals, pharmaceutical formulations, therapeutic methods, dosing regimens, second medicinal uses, and the like.
  • Conducting pre-litigation reviews of patent portfolios; filing of Hatch-Waxman patent term extension applications; corrective actions such as patent reissue filings.

Appeals

  • Integra Lifesciences I, Ltd. v. Merck KGaA, 496 F.3d 1334 (Fed. Cir. 2007). Counsel of record for Eli Lilly and Company as amicus curiae.
  • Merck KGaA v. Integra Lifesciences I, Ltd., 545 U.S. 193 (2005). Supporting reversal of Federal Circuit’s holding that pre-clinical pharmaceutical research and development activity does not fall under the infringement exemption of 35 U.S.C. §271(e)(1). Counsel of record for Eli Lilly and Company as amicus curiae at the petition for certiorari stage.

Patent Reviews

  • Due diligence reviews prior to entering licensing, joint venture or financing agreements
  • Freedom to operate opinions and pre-marketing patent audits
  • Patent infringement and validity studies

Intellectual Property Agreements

  • Negotiating and drafting new agreements related to joint research and licensing
  • Interpretation and counseling regarding existing agreements
Press Releases & Events
January 04, 2017

ANN ARBOR, MICH.-Brinks Gilson & Lione, one of the nation’s largest intellectual property law ...

December 29, 2015

ANN ARBOR – Brinks Gilson & Lione, one of the largest intellectual ...

October 23, 2014
CHICAGO—Gary M. Ropski, a shareholder at intellectual property law firm Brinks Gilson & Lione and the firm's past president, has been named the #1 Leading Intellectual Property Lawyer in Illinois by Leading Lawyers, and fifty-nine ...
September 19, 2014
CHICAGO—William R. Boudreaux and Andrew D. Stover, shareholders and patent attorneys at intellectual property law firm Brinks Gilson & Lione, have again been named Life Science Stars in the third annual edition of LMG Life Sciences, which ...
January 14, 2014
CHICAGO -- Brinks Gilson & Lione, one of the nation’s largest intellectual property law firms, has announced the 2014 chairpersons of its legal and industry practice groups and geographic task forces. The firm added a new practice group ...
June 05, 2013
ANN ARBOR - Brinks Gilson & Lione, one of the largest intellectual property law firms in the U.S., announces the publication of the third edition of its intellectual property law primer, The Basic Principles of Intellectual Property Law. The ...
January 15, 2013
CHICAGO – Brinks Gilson & Lione has added four new attorneys as chairs of its firm-wide practice groups and formed two new task forces to focus on intellectual property legal services to clients in Germany and Brazil. Appointees include ...
January 14, 2013
ANN ARBOR/DETROIT – Six attorneys from the Michigan offices of Brinks Gilson & Lione, one of the largest intellectual property law firms in the U.S., have been named or reappointed to firm-wide Practice Group Chairs within the Firm for ...
November 15, 2012
On November 15, William R. Boudreaux will be presenting,"Patent Prosecution and the Newly Implemented USPTO (AIA) Regulations” at the Midwest Intellectual Property Symposium in Indianapolis IN.
October 9-11, 2012
Allen R. Baum and William R. Boudreaux will be featured presenters during ACI's Maximizing Pharmaceutical Patent Life Cycles conference in New York City. Mr. Baum will be a panelist for the preconference session, "Assessing the Impact of ...
July 16, 2012
ANN ARBOR–Brinks shareholder and patent attorney William R. Boudreaux has been named a Life Sciences Star in intellectual property law in the inaugural edition of LMG Life Sciences, a supplement to Managing Intellectual Property magazine. Mr. ...
July 16, 2012
CHICAGO–Brinks shareholders and patent attorneys Andrew D. Stover and William R. Boudreaux have been named Life Sciences Stars in intellectual property law, in the inaugural edition of LMG Life Sciences, a supplement to Managing Intellectual ...
Honors
  • Leading Intellectual Property Lawyer, Leading Lawyers Network, 2014-2016
  • "Life Science Star," Intellectual Property Law, LMG Life Sciences, 2012-2015
Affiliations
  • Intellectual Property Owners Association
    Patent Law (U.S.) Committee, 2010-2012
    Pharmaceutical Issues Committee, 2006-2007 and 2013-present
    Hatch Waxman Committee, 2006-2007
    Patent Office Practice (U.S.) Committee, 2007
  • American Intellectual Property Law Association
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