Cambridge Technology Law

Experienced Multi-Disciplinary Intellectual Property Law Firm

+1.646.472.9737 +1.978.443.4558

Maura K. Moran

PartnermauraMoran

(978) 443-4558

mmoran @ cambridgetechlaw.com

LinkedIn

Introduction

Maura Moran advises clients on all aspects of IP, transaction and licensing law. She is a seasoned patent and trademark prosecutor, specializing in software, networking, robotics, electro-mechanical equipment, and consumer goods. Ms. Moran has practiced law in major law firms, corporations, and as a sole practitioner. She has served as inside counsel for ADE Corporation (now acquired by KLA-Tencor Corporation) and Digital Equipment Corporation (now acquired by Hewlett Packard), and has practiced law with the law firms Finnegan, Henderson, Farabow, Garrett & Dunner; Lahive & Cockfield (now merged with Nelson Mullins); and Fish & Richardson.

Through her own firm, where she counseled on transaction and licensing law and provided patent and trademark prosecution for start-ups, established companies, individuals, and universities. In addition, through this firm, she acted as inside counsel for universities and companies, where she:

  • Prepared, negotiated, approved, interpreted agreements.
  • Conducted IP audits, investigations of invalidity and infringement, evaluations of third party rights.
  • Counseled and supported divestiture and acquisition teams; conducted due diligence investigations for mergers and acquisitions; revised corporate guidelines for mergers, acquisitions, and divestitures
  • Consulted on IP management and IP department administration.
  • Created presentations; provided legal and business training.

Ms. Moran is admitted to practice in Massachusetts and before the U.S. Patent and Trademark Office and several Federal Courts from the district level to the US Supreme Court. She has a mathematics and engineering background and received her J.D. from Boston University. Ms. Moran is admitted to practice in Massachusetts and before the U.S. Patent and Trademark Office and several Federal Courts from the district level to the US Supreme Court.

Ms. Moran is a member of IEEE, the world’s largest organization for technology professionals, and currently serves on the Board of Directions for IEEE-USA as Vice President, Government Relations. She is a member of IEEE’s Women in Engineering and Robotics and Automation and Computer Societies.

Experience

Legal Representations and Scientific Experience

  • In-house counsel

    • ZOLL Medical Corporation, Chelmsford, MA (managed worldwide IP portfolio, set IP strategy, supported transactions for ZOLL’s LifeVest wearable defibrillator product line.
    • FINsix Corporation, Boston, MA (managed worldwide IP portfolio, set IP strategy, supported transactions and licensing for next-gen VHF power converter developer).
    • ADE Corporation, Westwood, MA (led IP function for premier developer of metrology and inspection systems for semiconductor wafers, magnetic data storage, and optics manufacturing; acquired by KLA-Tencor Corporation 2006).
    • Digital Equipment Corporation, Maynard, MA (Acted as general counsel for Engineering Groups: hardware/software, storage, memory, worksystems, Artificial Intelligence. Corporate Trade Secret Counsel).

  • Outside counsel

    • Held positions in several years of private practice with the major law firms, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP; Lahive & Cockfield (now Nelson Mullins Riley & Scarborough); Fish & Richardson; and in her own firm.
    • Provided in-house support for HP, Agilent Technologies, Analog Devices, Stream Corporation, Northeastern University.
    • Transactions, licensing, and IP law for start-ups, universities, established companies. Licensing; agreements; transactions; litigation co-counsel; mergers, acquisitions; patent, trademark prosecution; copyright protection.
    • Represented clients in software, networks, storage, optics, automated test and laboratory equipment; chemical analysis instrumentation; information, signal processing; information theory; e-commerce, business methods, financial services, data analysis, software, social networking; e-commerce; advertising; medical devices, technology-based learning solutions, code development, computer translation, website development, hosting; fracking; artificial intelligence, knowledge engineering; apparel; athletic wear and sporting goods; home improvement devices.

  • Research

    • At the University of Dayton Research Institute, Maura supported research and drafting of technical reports in hydrodynamic ram and hypervelocity weapons armor.

Education

Education

  • J.D., Boston University School of Law, Boston, MA.
  • B.S. Mathematics, University of Dayton, Dayton, OH
  • Non-degree undergraduate and graduate studies in Electrical and Computer Engineering, Northeastern University, Boston, MA.

Ms. Moran is registered to practice in Massachusetts and before the United States Patent and Trademark Office (USPTO), the United States Supreme Court, the United States Court of Appeals for the Federal Circuit, and several other federal courts.

Maura is a member of IEEE, active in its Women in Engineering and Robotics and Automation Society. She is IEEE-USA’s Vice President for Government Relations and serves on the Board of Directors for IEEE-USA. She is also a member of the Massachusetts Technology Leadership Council (MassTLC).

Awards

Selected Awards And Honors

  • Charter recipient of Digital Equipment Corporation’s General Counsel Excellence Award for development of innovative approaches to structuring development projects.
  • Recipient of the Digital Equipment Corporation Artificial Intelligence Technology Center’s Teamwork Recognition Award for successful establishment from multilateral consortium.
    Bar Admissions
  • Inducted as Professional Member into IEEE-Eta Kappa Nu (IEEE-HKN), the honor society of IEEE, dedicated to encouraging and recognizing individual excellence in education and meritorious work in professional practice and in any of the areas within the IEEE-designated fields of interest.
  • Registered to practice before the U.S. Patent and Trademark Office(Registration No.: 31,859)
    Admitted to the bar in Massachusetts, U.S. Federal Courts (D. Mass, First Circuit, the Court of Appeals for the Federal Circuit, and the US Supreme Court)

Publications

Publications and Presentations

  • Co-Moderator, “IoT Governance in the USA – Policy Challenges and Issues Industry Forum,” IEEE World Forum on Internet of Things, Reston, VA (2016).
  • Maura K. Moran, “Beyond Networking 101,” IEEE WIE Forum USA East, Boston, MA (2016).
  • Maura K. Moran, “Trade Secrets: Now More Than Ever,” 2015 IEEE Region 1 Annual Student, and Women in Engineering Conference, Burlington, VT (2015)
  • Maura K. Moran, “Sophisticated Software Licensing: IP Protection in Software; Ownership Allocation; License Grant and Conditions; Risk Allocation: Representations, Warranties, and Indemnifications, Part 1,” Massachusetts Continuing Legal Education (2015)
  • Maura K. Moran, “Trade Secrets: Now More Than Ever,” IEEE-USA Boston Chapter Women in Engineering, Chelmsford, MA (2014)
  • Maura K. Moran, “Intellectual Property for the Engineer and Scientist,” Boston IEEE Smart Tech Metro Area Workshop, Waltham, MA (2013)
  • Maura K. Moran, “A Call to Clarity and Leadership: IEEE-USA Comments on USPTO’s Preliminary Examination Instructions in view of Alice.” Licensing Executives Society, Boston MA (2013)
  • Maura K. Moran, “The America Invents Act of 2011: Changes to the Game”, IEEE Robotics and Automation Society, Boston Chapter (2013)
  • Maura K. Moran, “Intellectual Property Management: A Strategic Approach to Building, Protecting, and Maintaining Valuable Business Assets through Patents and Other Forms of Intellectual Property,” Marcus Evans, Chicago, IL (2013)
  • Maura K. Moran, “How To Talk To Each Other: Intellectual Property Considerations”, IEEE Robotics and Automation Society, Boston Chapter (2011)
  • Maura K. Moran, “The Patentability of Data Structures After Warmerdam and Lowry”, The National Intellectual Property Law Institute Seminar On Computers, Software And Intellectual Property (1994).
  • Maura K. Moran, “Protecting and Exploiting Innovation through Intellectual Property”, Inaugural Grace Hopper Celebration of Women in Computing (1994)
  • David J. Hayes and Maura K. Moran, “Protection of Trade Secrets under SARA Title III”, AIPLA Selected Legal Papers V. 7, N. 2, pp.321 – 335 (Dec. 1989)

Awards, Honors, and Accomplishments

  • 2016-2017 IEEE-USA Vice President for Government Relations. Ms. Moran represents the interests of approximately 190,000 engineers, advocating before all levels of government, on issues relating to intellectual property, immigration, and R&D policy.
  • Charter recipient of Digital Equipment Corporation’s General Counsel Excellence Award for development of innovative approaches to structuring development projects.
  • Recipient of the Digital Equipment Corporation’s Artificial Intelligence Technology Center’s Teamwork Recognition Award for successful establishment of a multilateral consortium.
  • At Digital, Ms. Moran identified innovations and drafted and prosecuted patent applications. One resultant patent was used by Digital in a multi-patent patent infringement litigation against Intel Corporation. The litigation resulted in Digital winning a $1.5 billion settlement from Intel to Digital.
  • At Digital, in a six week period at Digital, Ms. Moran conducted a patentability analysis for a Digital major product under development. She led a team of patent attorneys in drafting and filing patent applications based on 40 key innovations. The process was adopted Digital-wide for creating major product patent portfolios.
  • At ADE Corporation, a premier developer of metrology and inspection systems for semiconductor wafers, magnetic data storage, and optics manufacturing, Ms. Moran organized and enhanced its IP portfolio in preparation for its negotiations with KLA-Tencor Corporation that resulted in KLA-Tencor’s acquisition of ADE.

Interviews/Press Mentions

  • Williams, “Intellectual Property, The Intersection of Law and Innovation: An Interview with Maura Moran,” 17 IEEE Women in Engineering Magazine, Vol. 7, No. 2 (Dec. 2013)
  • Godwin et al., “Patent Plums: A Special Report on the Juiciest U.S. Patents and the Lawyers Who Nurture Them,” Fish & Neave IP WorldWide (Aug. 2001)