Samuel J. Petuchowski, Ph.D., J.D.

Samuel J. Petuchowski, Ph.D., J.D.

Of Counsel

t:
617-443-9292, ext 237
f:
617-443-0004
e:
spetuchowski@sunsteinlaw.com
Georgetown University
J.D.
University of Illinois
M.S., Ph.D. Atomic and Molecular Physics; Quantum Optics Dissertation: Raman Scattering in Infrared Excited Gases
Hebrew University
B.Sc., Mathematics, Physics

Practice Areas

Education

  • Georgetown University J.D.
  • University of Illinois M.S., Ph.D. Atomic and Molecular Physics; Quantum Optics Dissertation: Raman Scattering in Infrared Excited Gases
  • Hebrew University B.Sc., Mathematics, Physics

Profile

Samuel J. Petuchowski specializes in structuring and developing client patent portfolios, especially in fields of physics and instrumentation.

Experience

  • Sam works with clients including corporations, institutions, and entrepreneurs to build up and maintain portfolios from the first patent around which a start-up might be built, to portfolios of a hundred patents, or more, covering many aspects of a developing technology. Sometimes the patents of an enterprise constitute its crown jewels. Which aspects of a technology are to be patented and which are to be kept as trade secrets require careful consideration. At other times, an effective patent strategy entails keeping a close eye on the patent activities of a client’s competitors and intervening, when necessary, to ensure that competitors may assert no more coverage than they are entitled to.
  • Sam has both a strong background and prior career in the physical sciences. In fact, he enjoys maintaining familiarity with salient developments in various scientific fields of interest. Prior to taking up the practice of law, Sam worked for the National Aeronautics and Space Administration in the development and application of astronomical instrumentation, with particular emphasis on infrared probes of the Galaxy. As an undergraduate at the Hebrew University in Jerusalem, Sam majored in mathematics and physics. His graduate academic career focused on atomic and molecular physics, with doctoral research on far infrared laser physics leading to a Ph.D. from the University of Illinois in 1979. Sam has also held positions at the University of Maryland and at the U.S. Naval Research Laboratory, where he developed photoacoustic and fiber optic sensors.
  • Sam has successfully established prior rights of a client to subject matter that had been patented by a competitor, resulting in cancelation of the offending patent. Sam has also defended a client’s patents against validity challenges by a competitor, resulting in a strengthened patent posture for the client.
  • Keeping current with changes in the jurisprudential environment allows Sam to assist clients in establishing rights in contentious areas of intellectual property protection, in the U.S. and abroad.
  • Working with a network of foreign associates, Sam assists a client in structuring a global posture that meets the marketing strategy of a client and known threats to a client’s interests in the marketplace, seeking to optimize for future business opportunities or combinations and, if necessary, enforcement of a client’s property rights.

Honors

  • Sam was selected for inclusion in Super Lawyers® 2014-2017 in Massachusetts. Only 5% of lawyers in each region were selected. 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.

Bar and Court Admissions

  • Sam is a member of the bars of the Commonwealth of Massachusetts and the state of Maryland, and has been admitted to practice before the U.S. Patent and Trademark Office and the U.S. District Court for the District of Massachusetts.

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.

Exergen Corporation vs. Kaz, USA, Inc.

United States District Court for the District of Massachusetts

Sunstein’s trial team won a jury verdict for our client Exergen, resulting in a $16 million judgment against Kaz, the maker of consumer products sold under the Vicks and Braun brands. Despite Kaz’s multiple challenges to the twelve patent claims asserted by Exergen, the jury upheld the validity of all of them, and found that the forehead thermometers sold by Kaz infringed those claims. Exergen is a Watertown, MA-based manufacturer and seller of thermometers for both the professional and consumer markets.

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$16 million judgment

Practice areas

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