Bruce D. Sunstein

Bruce D. Sunstein

Founder, Partner

t:
617-443-9292, ext 211
f:
617-443-0004
e:
bsunstein@sunsteinlaw.com
Boalt Hall School of Law, UC Berkeley
J.D.
Indiana University
M.A.
Massachusetts Institute of Technology
B.S.

Awards

  • Bds-best-lawyers-2020
  • Martindale Hubbell-Preeminent-Badge
  • IAM-1000-recommended-individual-2019

Education

  • UC Berkeley J.D.
  • Indiana University M.A.
  • MIT B.S.

Profile

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.

Experience

  • 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.

Honors

  • 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.

Results

FairWarning IP, LLC v. Iatric, Inc.; FairWarning IP, LLC v. CynergisTek, Inc.

We successfully defended clients Iatric and CynergisTek in the District Court and Federal Circuit against claims of patent infringement relating to software for detecting fraud and misuse of protected health information. Sunstein litigation group obtained judgments of patent invalidity under Section 101.

Motorola Mobility LLC, Google Inc., and Apple Inc. v. Arendi S.A.R.L.

(IPR2014-00203.)

Motorola, Google and Apple attacked the same patent as Samsung raising several additional grounds. Our arguments carried the day and the inter partes review was not instituted, freeing our client’s patent for unfettered assertion in court.

#

$116 million settlement

Publications

Federal Circuit Astonishingly Invalidates Manufacturing Method Patent under Section 101

Federal Circuit Astonishingly Invalidates Manufacturing Method Patent under Section 101

Federal Circuit Asks Congress to Override Supreme Court's Denial of Patents for Diagnostics

Federal Circuit Asks Congress to Override Supreme Court's Denial of Patents for Diagnostics

Bipartisan Legislation Develops to Remove Supreme Court Roadblocks to Biotechnology and Computer Science Patents

Bipartisan Legislation Develops to Remove Supreme Court Roadblocks to Biotechnology and Computer Science Patents

New Guidelines Proposed for Functional Claiming in Computer-Related Inventions

New Guidelines Proposed for Functional Claiming in Computer-Related Inventions

The Federal Circuit Refines the Post-Alice Landscape, Holding Spreadsheet Tabs Patent-Eligible

The Federal Circuit Refines the Post-Alice Landscape, Holding Spreadsheet Tabs Patent-Eligible

PTO Director Iancu Launches Bold Initiative to Resolve Uncertainty in Patent Eligibility Determinations

PTO Director Iancu Launches Bold Initiative to Resolve Uncertainty in Patent Eligibility Determinations

Lessons for BioPharma from Recent Federal Circuit Decisions on Patent Eligibility

Lessons for BioPharma from Recent Federal Circuit Decisions on Patent Eligibility

The Federal Circuit Continues to Uphold Some Software Patents Despite Alice

The Federal Circuit Continues to Uphold Some Software Patents Despite Alice

Three New Federal Circuit Decisions Support Software Patents

Three New Federal Circuit Decisions Support Software Patents

Federal Circuit Is Finding More Inventions Patent-Eligible Despite Supreme Court’s Rigid Standard

Federal Circuit Is Finding More Inventions Patent-Eligible Despite Supreme Court’s Rigid Standard

The Federal Circuit Limits the Scope of Covered Business Method Proceedings

The Federal Circuit Limits the Scope of Covered Business Method Proceedings

Why China Should Top Your List of Countries for Foreign Patent Filing

Why China Should Top Your List of Countries for Foreign Patent Filing

The Federal Circuit Helps Software Developers Overcome Patent-Eligibility Rejections under Alice

The Federal Circuit Helps Software Developers Overcome Patent-Eligibility Rejections under Alice

Alice Turns 2: Fed. Circ. Grapples With ‘Implicit Exceptions’

Alice Turns 2: Fed. Circ. Grapples With ‘Implicit Exceptions’

How Should the PTO Interpret Patent Claims?  The Federal Circuit Weighs In, Yet Again

How Should the PTO Interpret Patent Claims? The Federal Circuit Weighs In, Yet Again

How Prometheus Has Upended Patent Eligibility: An Anatomy of Alice Corporation Proprietary Limited v. CLS Bank International

How Prometheus Has Upended Patent Eligibility: An Anatomy of Alice Corporation Proprietary Limited v. CLS Bank International

DDR Holdings: The Federal Circuit Leaves a Software Patent Standing

DDR Holdings: The Federal Circuit Leaves a Software Patent Standing

Surviving the Judicial War on Patents: Strategies after Alice and Ultramercial

Surviving the Judicial War on Patents: Strategies after Alice and Ultramercial

Yet Again, the Supreme Court Narrows Patent Eligibility, This Time Targeting  Computer-Related Inventions

Yet Again, the Supreme Court Narrows Patent Eligibility, This Time Targeting Computer-Related Inventions

What is Happening to Patent Eligibility and What Can We Do About It?

What is Happening to Patent Eligibility and What Can We Do About It?

New Obstacles Are Raised to Protecting Computer-Related Inventions

New Obstacles Are Raised to Protecting Computer-Related Inventions

How Prometheus Has Upended Patent Eligibility An Anatomy of CLS Bank v. Alice Corp., 717 F.3d 1269 (Fed. Cir. 2013)

Strategies for Pharmaceutical Portfolio & Product Life-Cycle Management In Face of the New U.S. Patent Law

How to Use Patents to Protect Your Company’s Business Model

The New European Unitary Patent: All Your Eggs in One Basket

The New European Unitary Patent: All Your Eggs in One Basket

Why due diligence is not a rear-guard action for the patent-savvy company in a patent deal

Why due diligence is not a rear-guard action for the patent-savvy company in a patent deal

Patent Filers: Beware the Ides of March January 2 to March 15, 2013 will be beyond busy, so planning is essential

Patent Filers: Beware the Ides of March January 2 to March 15, 2013 will be beyond busy, so planning is essential

Why due diligence is not a rear guard action for the patent-savvy company in a patent deal

Why due diligence is not a rear guard action for the patent-savvy company in a patent deal

Strategies for Pharmaceutical Portfolio & Product Life-Cycle Management In Face of the New U.S. Patent Law

Supreme Court Invalidates Diagnostic Claims; Its Reasoning Promises Broad Implications

Supreme Court Invalidates Diagnostic Claims; Its Reasoning Promises Broad Implications

America Invents Act: Highlights of First-to-File

America Invents Act: Highlights of First-to-File

Congress Brings First-to-File Patent System to the U.S.

Congress Brings First-to-File Patent System to the U.S.

Disembodied Embodiments: Medical Device Strategy for PCT and Foreign Applications

Disembodied Embodiments: Medical Device Strategy for PCT and Foreign Applications

Change Is in the Air: Be Ready for a First-To-File Patent System

Change Is in the Air: Be Ready for a First-To-File Patent System

Five-lecture series at Korea Advanced Institute of Science and Technology

Five-lecture series at Korea Advanced Institute of Science and Technology

Updated Guidelines on What Is “Obvious” Reflect an Updated PTO

Updated Guidelines on What Is “Obvious” Reflect an Updated PTO

Strategic Implications for Pharmaceuticals in Recent U.S. Patent Law Developments

Strategic Implications for Pharmaceuticals in Recent U.S. Patent Law Developments

What Kind of Patent Portfolios Will Matter to Life Science Companies in the Next Five Years

What Kind of Patent Portfolios Will Matter to Life Science Companies in the Next Five Years

Federal Judge Would Invalidate All DNA Patents, But His Rationale Is Controversial

Federal Judge Would Invalidate All DNA Patents, But His Rationale Is Controversial

PTO Aims in a New Direction: Pulls Dreaded Prosecution Rules; Seeks Improved Quality of Its Services

PTO Aims in a New Direction: Pulls Dreaded Prosecution Rules; Seeks Improved Quality of Its Services

Related Applications, Separately Owned, Create Double-Patenting Hazard

Related Applications, Separately Owned, Create Double-Patenting Hazard

Patent Portfolio Strategies in the Post-KSR Environment

U. S. Antitrust Limitations on Patent Licensing

U. S. Antitrust Limitations on Patent Licensing

Federal Circuit Narrows Eligibility Requirements for Business Method Patents

Federal Circuit Narrows Eligibility Requirements for Business Method Patents

PTO Lobs National Security Salvo at Outsourcing the Preparation of US Patent Applications

Strategic Approaches for Protecting Pharmaceutical Innovations in the Changing U.S. Patent Environment

Supreme Court Hands Another Loss to Patent Owners in Quanta Computer Case

Supreme Court Hands Another Loss to Patent Owners in Quanta Computer Case

Rambus v. FTC: Memory Chip Pioneer Rambus Rescued a Second Time From the Quicksand of Standards Setting

Rambus v. FTC: Memory Chip Pioneer Rambus Rescued a Second Time From the Quicksand of Standards Setting

PTO Appeals the Ban on its Rules Package; Uncertainty Reigns

PTO Appeals the Ban on its Rules Package; Uncertainty Reigns

Although on Hold for Now, Rule Changes May Yet Transform Patent Protection

Although on Hold for Now, Rule Changes May Yet Transform Patent Protection

Patent Preparation and Prosecution under Uncertain Patent Eligibility Standards

Patent Preparation and Prosecution under Uncertain Patent Eligibility Standards

Patentable Subject Matter and the Supreme Court: What’s the Matter?

Patentable Subject Matter and the Supreme Court: What’s the Matter?

Building and Maintaining BioPharma Patent Portfolios After KSR v. Teleflex: Strategies Addressing Higher Standards for Patentability

Building and Maintaining BioPharma Patent Portfolios After KSR v. Teleflex: Strategies Addressing Higher Standards for Patentability

Sweeping Changes to the Patent Rules Require New Strategies

Sweeping Changes to the Patent Rules Require New Strategies

New PTO Claims and Continuation Practice: Working with the Rules

New PTO Claims and Continuation Practice: Working with the Rules

Strong Advocacy Needed: Supreme Court Raises the Patentability Bar To Indefinite Heights

Strong Advocacy Needed: Supreme Court Raises the Patentability Bar To Indefinite Heights

Harnessing Collaborative Web-Based Technology To Bring Prior Art to the Patent Process— An Inventor’s Perspective

Harnessing Collaborative Web-Based Technology To Bring Prior Art to the Patent Process— An Inventor’s Perspective

Claiming Subject Matter in Business Method Patents

Claiming Subject Matter in Business Method Patents

Funding Patent Assertion Litigation

Funding Patent Assertion Litigation

Patents: Billions Riding on a Word

Patents: Billions Riding on a Word

Making Words Mean Just What We Choose Them to Mean: Patent Claim Interpretation in Light of Phillips v. AWH

Making Words Mean Just What We Choose Them to Mean: Patent Claim Interpretation in Light of Phillips v. AWH

When Lost Profits Are Lost: Damages in Patent Assertion on Litigation with an IP Holding Company

When Lost Profits Are Lost: Damages in Patent Assertion on Litigation with an IP Holding Company

Investor Relations Meets Intellectual Property

Investor Relations Meets Intellectual Property

Competitive Intelligence in Patent Portfolio Building

Competitive Intelligence in Patent Portfolio Building

IP Due Diligence and the Value Proposition: Developing and Evaluating BioPharma IP Portfolios for Strategic Investment Benefits

IP Due Diligence and the Value Proposition: Developing and Evaluating BioPharma IP Portfolios for Strategic Investment Benefits

Building a Patent Portfolio for Strategic Advantage

Building a Patent Portfolio for Strategic Advantage

Patent Portfolio Management and Technical Standard Setting: How to Avoid Loss of Patent Rights

Patent Portfolio Management and Technical Standard Setting: How to Avoid Loss of Patent Rights

Drafting Patent Applications After Festo and Johnson & Johnston

Drafting Patent Applications After Festo and Johnson & Johnston

Global Trademark Protection for Biotech and Life Science Companies: What It Takes to Get through the Trademark Thicket

Global Trademark Protection for Biotech and Life Science Companies: What It Takes to Get through the Trademark Thicket

When Is It Safe to Tout Technology? Avoiding Unintended Patent Consequences Resulting from Premature Announcements

When Is It Safe to Tout Technology? Avoiding Unintended Patent Consequences Resulting from Premature Announcements

Recent Federal Case Undermines Multi-Filing Patent Strategies: A Routine Foreign Filing Trips Up a Patent Holder

Recent Federal Case Undermines Multi-Filing Patent Strategies: A Routine Foreign Filing Trips Up a Patent Holder

Inventorship Disputes Vex Biotechnology Industry

Inventorship Disputes Vex Biotechnology Industry

Database Protection: When is it Merely Sweat of the Brow and When is Protection Available?

Database Protection: When is it Merely Sweat of the Brow and When is Protection Available?

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