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Edward J. Naughton



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Mr. Naughton is a veteran trial attorney with comprehensive experience in intellectual property and other complex business litigation. He has litigated dozens of patent, copyright, trademark, trade secret, licensing, false advertising, unfair competition, and other technology disputes in state and federal courts and before arbitration panels.

Mr. Naughton represents high-tech businesses in many different sectors, particularly in the software industry, advising clients on matters such as proprietary and open source software development and licensing, IT system development and integration, internet and e-commerce, trade secrets and non-competition agreements, and online and traditional media.

Additionally, Mr. Naughton has considerable appellate experience, having argued before the Supreme Judicial Court of Massachusetts and written briefs on a wide range of issues to the United States Supreme Court, the United States Courts of Appeals for the First, Second, and Federal Circuits, the Massachusetts Supreme Judicial Court, and the Massachusetts Appeals Court. He has also successfully litigated many complex business disputes, including the defense of consumer, insurance, antitrust, and securities class actions and white collar criminal prosecutions.

Representative Matters

Intellectual property and complex litigation

Patent litigation

• Represented leading developer of software tools asserting claims of patent infringement against competitor, rapidly securing a favorable settlement after presenting infringement analysis.

• Defended developer of electronic publishing software against claims of patent infringement involving color correction software and methods. Working with leading experts in the field of color science, developed substantial evidence to support defenses of noninfringement and invalidity, which led to a favorable resolution after a Markman hearing.

• Co-counsel defending leading athletic shoe manufacturer in three cases alleging patent infringement, each seeking tens of millions of dollars in royalties on shock absorption and air cushioning technology. After Markman hearings, secured dismissal in one, summary judgment in another, and obtained re-examination of the patent in the third.

• Represented leading manufacturer of arc-flash protective equipment in pursuing claims for false advertising against competitor who made false claims about the performance of its products, and defending counterclaim of patent infringement, obtaining re-examination of patent after discovery of undisclosed prior art.

Trade secret and technology disputes

• Lead trial counsel for enterprise software company in claims against former executive for violations of nondisclosure and noncompetition obligations. After winning summary judgment on the former executive’s counterclaims, which sought to rescind the $20mm acquisition of his company, obtained a favorable and substantial settlement.

• Lead trial counsel for consulting firm accused of taking trade secrets in workflow software and violating non-competition agreement. After four-week jury trial resulted in adverse jury verdict, obtained JNOV overturning verdict.

• Lead trial counsel for enterprise software company in claims against offshore software development company that had failed to properly re-engineer software, securing a seven-figure settlement.

• Co-counsel defending Microsoft against a putative consumer class action alleging that it had violated wiretapping statutes and common law privacy rights by designing Windows to permit third parties to place cookies on computers. Obtained dismissal of complaint.

• Represented investors in a venture capital-backed biotech company in litigation brought by the company against a Harvard-affiliated research hospital and its principal investigator alleging that experimental data had been fraudulently altered. After discovery, secured a substantial settlement for the company and its investors.

• Represented developer of collaboration software in end user license compliance disputes against large corporate end users, generating more than $1.5mm in incremental revenue.

• Represented Microsoft in several dozen lawsuits against resellers and corporate end-users of counterfeit, infringing, and unlicensed software.

Complex business litigation

• Successfully pursued Lanham Act and false advertising claims on behalf of leading software developer whose competitor made false and misleading claims about capabilities and performance of developer’s software.

• Appellate counsel representing Boston College against The Big East Conference and its members in litigation arising from BC’s withdrawal from the conference to join the Atlantic Coast Conference. On summary judgment, secured declaratory judgment of no liability. After expedited briefing in the appeals court, case settled favorably for BC.

• Co-counsel for international manufacturer of polyester staple fiber in defense of multiple putative class action claims brought by consumers and indirect purchasers who alleged price fixing and sought damages in excess of $150 million. Obtained dismissal of claims in three separate actions.

Intellectual Property Licensing and Technology Transfer

Open source software

• Advised developer of collaboration software in connection with its shift from proprietary software model to open source software model, including intellectual property, revenue model, licensing, and related issues.

• Advise software developers concerning incorporation of open source software in code base and the development of corporate policies regarding the use of open source code.

• Conduct due diligence into and resolve issues arising from open source code in context of merger and acquisition transactions.

Licensing and development agreements

• Advised leading international software developers on shrink-wrap license issues, copyright protection in mischanneled software, first sale doctrine, and compliance with distribution and eligibility restrictions.

• Represented application and enterprise software developers in negotiating complex licensing transactions for outsourcing software reengineering needs, including software development and ownership, software and hardware selection, implementation, and licensing.

• Drafted and negotiated dozens of licensing, services, and support agreements for enterprise and application software developers and corporate end users.

Licensing compliance and piracy

• Designed and executed license compliance and anti-piracy programs for leading software developers.

• Advised Fortune 50 consumer products company in connection with development of internal anti-piracy capability for razor and blade products.

Recent Publications
•Author, “An Overview of Technology and E-Business Legal Issues,” in Inside the Minds: Winning Legal Strategies for Technology and E-Business, Aspatore Books 2005

• Co-author, "United States Intellectual Property Licensing" in International Intellectual Property Licensing, BNA International (1997 and 2005 supplement)

• Co-author, “Extraction of Public Data from Proprietary Database Is Not Infringement,” Intellectual Property Counselor, January 2005

• Co-author, “The Metamorphosis of the Free Software Movement: Monetized Open Source,” 19 The Computer Law Association Bulletin 87, December 2004

• Co-author, “Open Source Software Monetized: Out of the Bazaar and into Big Business,” 21 The Computer and Internet Lawyer 1, October 2004

• Co-author, “New Federal Anti-Spam Law Creates National Regulatory Framework,” Advertising Compliance Service, June 2004

• Co-author, “Developments Under The New Federal Anti-Spam Law,” Advertising Compliance Service, June 2004

Recent Speaking Engagements
• Panel Chair, “How To Win Motions For Summary Judgment,” Massachusetts Continuing Legal Education, Boston, Massachusetts (October 2006 and October 2007)

• Presenter, “Open Source Playbook For Software Developers,” presented at Open Source Software: Risks, Benefits, And Practical Realities In The Corporate Environment, Practicing Law Institute, San Francisco, California (March 2006)

• Presenter, “Developing With Open Source Software: The Risks and How To Manage Them,” Stanford Law School 2nd Annual E-Commerce Best Practices Conference, Palo Alto, California (June 2005)

• Presenter, “Attorney Client Privilege in An Electronic World,” Association of Corporate Counsel, New England Chapter, Boston, Mass. (January 2005)

• Presenter, “Non-Competition Agreements,” Massachusetts Continuing Legal Education, Boston, MA (January 2004)

• Presenter, “A Sale by Any Other Name? Software Licensing and the First Sale Doctrine,” New York Software Association Annual Summit, New York, New York (March 2002)

• Interviewed on intellectual property issues by a wide range of media outlets, including The Wall Street Journal, CNN/Money, Forbes, USA Today, National Public Radio’s Marketplace, Dow Jones Business Wire; The Associated Press, Reuters, C/NET, Forbes, InformationWeek, The Boston Business Journal, Massachusetts Lawyers Weekly, and Mass High Tech.

Bar Admissions & Memberships
• Admitted, Massachusetts, District of Columbia and Maryland Bars
• Member, American Bar Association, Massachusetts Bar Association, Boston Bar Association
• Member, Massachusetts Technology Leadership Counsel, Open Source Special Interest Group



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