Andrew Baluch is an Intellectual Property law special counsel with Foley & Lardner LLP and serves as vice chair of the firm's Patent Office Trials Group. He advises companies on global IP strategies, including international portfolio management, IP diligence reviews, opinions, licensing, litigation, patent reexamination, and trade secret protection. As a member of the firm’s China practice, Mr. Baluch provides clients with information on the impact of the Chinese legal environment and consultancy on international conventions, including the WTO Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS).
Mr. Baluch is a former director of international IP enforcement in the White House Office of the IP Enforcement Coordinator. In this role, he oversaw the implementation of all international IP enforcement initiatives in the U.S. Government’s Joint Strategic Plan on IP Enforcement and coordinated U.S. Embassy personnel stationed in 17 priority countries, including China, Brazil, Russia and India. His responsibilities also included convening inter-agency teams to assist companies facing IP theft abroad and participating in all major bilateral trade dialogues with China, including the U.S.-China Joint Commission on Commerce & Trade (JCCT) and the U.S.-China Strategic & Economic Dialogue (S&ED).
Prior to his White House appointment, he was an expert legal advisor to the under secretary and director of the U.S. Patent & Trademark Office (USPTO). During his tenure with the USPTO, he participated in numerous trade missions to China, advised the director on IP litigation, drafted regulations for public comment, and helped draft the USPTO’s 2010-2015 Strategic Plan. In this role, he gained particular experience in post-grant patent disputes handled within the USPTO.
Mr. Baluch served as a law clerk to Judge Richard Linn of the U.S. Court of Appeals for the Federal Circuit and was an associate with Foley before this service.
In the area of nanotechnology, he is managing editor of Nanotechnology Law & Business and conducted graduate research in the field of molecular nano-electronics.
Mr. Baluch holds degrees in materials science engineering from Northwestern University (B.S., M.S.) and Boston University School of Law (J.D.), where he served as editor of the Boston University Law Review.
Mr. Baluch is admitted to practice in the District of Columbia, Massachusetts, the U.S. Court of Appeals for the Federal Circuit, and the USPTO.
Representative Matters:
- Takeda Pharm. Co. v. Doll, 561 F.3d 1372 (Fed. Cir. 2009). Drafted Federal Circuit brief in civil suit against USPTO Director, resulting in favorable 2-1 precedential decision vacating USPTO’s rejections against client’s patented blockbuster drug. All claims were confirmed as patentable on remand.
- Nichia Corp. v. Seoul Semiconductor, No. 06-cv-0162 (N.D. Cal.). Drafted petitions resulting in complete termination of infringer’s inter partes reexam challenge against client’s patents in USPTO, thereby preserving client’s favorable jury verdict of infringement.
- In re Certain Semiconductor Chips, ITC Inv. No. 337-TA-630, aff’d, 646 F.3d 1357 (Fed. Cir. 2011). Participated in discovery and ITC briefing phase on behalf of Japanese respondent, resulting in favorable determination of no infringement under a patent “exhaustion” defense.
Selected Publications:
- “The Surprising Efficacy of Inter Partes Patent Reexamination,” 9 Patent Strategy & Management 1 (2008) (cited by court in ACCO Brands v. PC Guardian Anti-Theft Prods., 592 F.Supp.2d 1208 (N.D. Cal. 2008))
- “Patenting Graphene: Opportunities and Challenges,” 5 Nanotechnology Law & Business 289 (2008)
- “Seed Exhaustion: Quanta’s Effect on Biotech Patents,” IP Law360 (2008)
- “Negative differential resistance through individual organic molecules bound to the Si(111)-7×7 surface,” TMS Letters, 1, 125 (2004)
- “Atomic-level robustness of the Si(100)-2×1:H surface following liquid phase chemical treatments in atmospheric pressure environments,” Journal of Vacuum Science and Technology A, 22, L1 (2004)