Bruce Sunstein’s strategic approach to intellectual property has enabled a wide range of enterprises to achieve dominant patent positions in their markets. Patents issuing on applications that Bruce has handled have been enforced for 8- and 9-figure infringement recoveries. He is a patent & IP strategist for market leaders and startups in diverse industries including computer hardware and software, electronic circuits and systems, communications and speech, medical devices, pharmaceuticals bioinformatics, and mechanical devices. He is also an experienced expert witness, and arbitrator, in intellectual property disputes.
- Broad focus on both intellectual property and business representation of enterprises that have a substantial component of intellectual property.
- Provides strategic advice for development and enforcement of intellectual property rights and for the structure and implementation of technology-based business transactions.
- Experience as expert witness, and as arbitrator, in intellectual property disputes.
- Obtained patents in a wide range of matters including neuromedical measurement devices, arthroscopic surgical instruments, ultrasonic bone densitometers, infusion pumps, PCR-based gene expression assays and indices, polysaccharide-based compositions and methods, combination drugs, devices for analysis of single-bit polymorphisms, speech recognition and coding systems, data compression software, graphic accelerators, computer-based statistical representation systems and methods, microprocessor-controlled transportation systems, high-performance document scanners, x-ray cargo inspection systems, radio range detection systems, athletic shoes, interactive television systems, electric motors, fuel nozzles, advanced ceramic compositions and methods, computer-implemented and web-based business methods, financial trading systems, and magnetic recording systems.
- Representation in inter partes review proceedings, ex parte reexaminations, and patent appeals to the Patent Trial and Appeal Board and to the Federal Circuit.
Expert Witness, Arbitration, and Special Master Engagements
- Iconics, Inc. v. Massaro et al., C.A. No. 11-11526-DPW, U.S. District Court for the District of Massachusetts, Special Master for discovery matter regarding sealed documents, 2017, in dispute concerning alleged theft of trade secrets relating to modular OPC-based industrial and manufacturing systems software. Fish & Richardson P.C., counsel for plaintiff, and Burns & Levinson LLP, counsel for defendants. Case settled after jury selection.
- Barba et al. v. Shire U.S. et al., Case No. 13-21158-Civ-Lenard/Goodman, District Court for the Southern District of Florida. Patent law expert for plaintiffs in antitrust litigation over reverse payments made in settlement of Hatch-Waxman litigations. Expert report provided June 17, 2015. Case settled. Golomb & Honik, P.C., counsel for plaintiffs.
- In re Nexium (Esomeprazole) Antitrust Litigation, District Court for the District of Massachusetts, MDL No. 2409. Patent law expert for direct purchaser class plaintiffs and for indirect purchaser class plaintiffs in antitrust litigation over reverse payments made in settlement of Hatch-Waxman litigations. Expert report provided August 23, 2013; rebuttal report October 25, 2013; deposition testimony given, November, 2013; no trial testimony given. Hagens Berman Sobol Shapiro LLP, co-counsel for plaintiffs.
- Boston Scientific Corp. v. Commissioner of Revenue, Appellate Tax Board Nos. C298913, C305025, C298912, C305024, C298882, and C305023. Intellectual property law expert for Massachusetts Department of Revenue in a dispute, arising from the use of an IP holding company, over the amount of Massachusetts corporate excise tax liability of Boston Scientific. Case settled during trial.
- Nomir Medical Technologies, Inc. v. McDermott Will & Emery LLP et al., U.S. District Court for the District of Massachusetts (report given in 2011). Patent licensing and prosecution expert for defense in legal malpractice case involving patent prosecution; case settled after submission of expert reports.
- W.L. Gore and Associates, Inc. v. Commissioner of Revenue, Appellate Tax Board (active 2008-2009). Intellectual property law expert for Massachusetts Department of Revenue in a dispute, arising from the use of an IP holding company, over the amount of Massachusetts corporate excise tax liability of W.L. Gore. Case settled prior to trial.
- Boston Scientific Corp. v. Commissioner of Revenue, Appellate Tax Board. Intellectual property law expert for Massachusetts Department of Revenue in a dispute, arising from the use of an IP holding company, over the amount of Massachusetts corporate excise tax liability of Boston Scientific. Case settled prior to trial.
- Diomed, Inc. v. Angiodynamics, Inc., U.S. District Court for the District of Massachusetts (deposition testimony and report given in 2005). Patent law expert for Angiodynamics regarding pertinence of prior art reference to inequitable conduct asserted in connection with patent for minimally invasive endovascular laser technology in the treatment of swollen or varicose veins.
- Khyber Technologies Corp. v. Hewlett-Packard Co. and Hewlett-Packard Singatore PTE. LTD, U.S. District Court, District of Mass (deposition testimony and report given in 2005). Patent law expert for plaintiff in connection with patent infringement litigation concerning a portable messaging and scheduling device with a home base station; case settled.
- Truebro, Inc. v. Plumberex Specialty Products, Inc. et al., (testimony given in 2003). Patent law expert for plaintiff in connection with patent infringement litigation concerning protective devices for under-sink plumbing in disability-equipped lavatories. Judgment of infringement with enhanced damages was awarded to plaintiff.
- Information Mapping, Inc. v. Performance Technology Association, Inc., AAA case. Member of a panel of arbitrators (including Ralph Oman, former Register of Copyrights, and Kenneth M. Kaufman) involving a claim for copyright infringement. Matter settled following involvement of the panel.
- Weiss v. Security Dynamics Technologies, Inc. (now known as RSA Security, Inc.), AAA case (testimony given in 2000-1). Patent expert for Mr. Weiss in connection with claim for patent rights (involving primarily computer and related security systems) against company he founded.
- Martin Annis et al. v. American Science and Engineering et al., Massachusetts Superior Court, Middlesex County. Expert testimony as to theft of trade secrets related to x-ray cargo inspection systems.
- Bassil v. Finn, Massachusetts Superior Court, Suffolk County. Expert testimony concerning applicable standard of attorney conduct in legal malpractice case arising out of sale of business. Case settled.
Professional and Community Involvement
- Speaks nationally on intellectual property law and business strategy.
- Authored numerous papers on intellectual property matters.
- Co-inventor of a cannulated screw system for use in knee surgery, patent 9,452,007, and of a business method for assisting in the prevention of identity theft, patent 6,985,887.
- Mentor, MIT Venture Mentoring Service (VMS).
- Member of the American Intellectual Property Law Association, the Boston Patent Law Association, Licensing Executives Society, American Bar Association, Massachusetts Bar Association, Boston Bar Association, and the Institute of Electrical and Electronics Engineers.
- Selected by his peers for inclusion in Best Lawyers in America® in the field of Intellectual Property – Litigation.
- Named to the Super Lawyers® list in the practice area of intellectual property in Massachusetts, a list limited to the top 5 percent of attorneys in each region. The attorneys featured in Super Lawyers were selected by their peers in an extensive nomination and polling process conducted by the research team at Super Lawyers, a service of Thomson Reuters and seen in a special advertising section in Boston magazine. Bruce was also named by the publishers of Law & Politics and Boston magazine as among the top 100 lawyers in Massachusetts.
- Named one of the five best intellectual property lawyers in Boston by Boston magazine and the only one cited for patent prosecution skills.
Bar and Court Admissions
- California, Massachusetts, United States Patent and Trademark Office, United States District Court for the Northern District of California, United States District Court for the District of Massachusetts, United States Court of Appeals for the Ninth Circuit, First Circuit, Federal Circuit, United States Tax Court, and Supreme Court of the United States.