Timothy M. Murphy

Timothy M. Murphy

Partner, Patent Co-Chair

t:
617-443-9292, ext 245
f:
617-443-0004
e:
tmurphy@sunsteinlaw.com
Columbia University School of Law
J.D.
Columbia University
B.S.

Awards

  • Tmm-best-lawyers-2020

Education

  • Columbia University School of Law J.D.
  • Columbia University B.S.

Profile

Tim’s extensive experience includes patent office litigation matters such as patent interference proceedings, Inter Partes Review and reexamination proceedings. He has shaped and executed winning strategies in patent litigations. In helping clients achieve their business goals, Tim devises strategies for maximizing the value of patent portfolios for litigation, licensing or acquisition. He develops and implements strategies for protecting his clients’ key technologies and for avoiding allegations of infringement. Tim is co-chair of the firm’s Patent Practice.

Experience

  • By working closely with clients to understand their business goals and inventions, Tim has developed intellectual property portfolios that have provided significant value to our clients. Tim has worked with clients of all sizes, and he takes a special interest in protecting the intellectual property portfolios of our clients as they grow.
  • The technologies that Tim has handled are wide-ranging and include: mechanical and electromechanical devices, such as electric motors, scanners and plotters, printing press technology, IV delivery systems, blood-processing equipment, surgical instruments, diagnostic equipment, HVAC, and clean room systems; hardware and software inventions, such as image-processing systems, sound-processing systems, magnetic-resonance imaging, various types of tracking devices, remote-control devices, file servers, and web-based business methods; as well as recombinant proteins, antisense oligonucleotides, and a variety of pharmaceutical matters.
  • Tim has also worked with clients to help ensure their products do not infringe third-party patents. He has decades of experience conducting clearance studies where the competitor’s patent was determined to be invalid, or where the client’s product was determined not to infringe.
  • In other situations, Tim has provided guidance to clients to successfully design around competitors’ patents. Tim also has a great deal of experience preparing clearance opinions, when necessary for protecting clients from charges of willful patent infringement.
  • Representative cases include:
    • Kotowski et al. v. Mastronardi et al.
      Board of Patent Appeals and Interferences
    • McGuire et al. v. Schmieding (lead attorney)
      Board of Patent Appeals and Interferences
    • Thompson et al. v. Normand et al. (lead attorney)
      Board of Patent Appeals and Interferences
    • In re U.S. Patent No. 6,835,887 (Activision Publishing, Inc.), In re U.S. Patent No. 6,369,313 (Activision Publishing, Inc.), In re U.S. Patent No. 6,225,547 (Konami Digital Entertainment Co., Ltd.)
      Inter Partes Reexamination Proceedings, USPTO
    • University of Western Australia, v. Academisch Ziekenhuis Leiden (lead attorney) Patent Trial and Appeal Board
    • Ivera Medical Corp. v. Catheter Connections, Inc.
      United States District Court for the Southern District of California
    • Catheter Connections, Inc. v. Ivera Medical Corp.
      United States District Court for the District of Utah
    • Softspikes, LLC et al. v. MacNeill Engineering Company, Inc.
      Trisport, Ltd. et al. v. MacNeill Engineering Company, Inc. et al.
      United States District Court for the District of Delaware
    • MacNeill Engineering, Inc. v. Trisport, Ltd.
      United States District Court for the District of Massachusetts
    • HP Hood LLC v. Stremicks Heritage Foods LLC
      United States District Court for the Southern District of California
    • Comair Rotron v. Papst Licensing Gmbh
      United States District Court for the District of Columbia
    • Comair Rotron v. Nippon Densan Corporation and Nidec Corporation
      United States District Court for the District of Connecticut
    • Comair Rotron, Inc. v. Matsushita Electric Corporation of America et al.
      United States Court of Appeals for the Federal Circuit
      United States District Court for the District of New Jersey
    • B. Braun Medical, Inc. v. Abbott Laboratories
      United States Court of Appeals for the Federal Circuit
      United States District Court for the Eastern District of Pennsylvania
    • Network Appliance, Inc. v. BlueArc Corporation
      United States District Court for the Northern District of California
    • Precision Engineered Systems v. v Printex Products Corp.
      United States District Court for the District of the Western District of New York
    • Amgen, Inc. v. Hoffman-La Roche Inc.
      United States District Court for the District of Massachusetts
    • APP Pharmaceuticals, LLC v. Ameridose, LLC
      United States District Court for the District of New Jersey
    • Linotype-Hell AG v. Intergraph Corporation
      United States District Court for the District of Massachusetts
  • Prior to joining Sunstein, Tim worked in New York and California in the legal department of a large, multinational computer manufacturer.

Professional and Community Involvement

  • Tim is currently on the Steering Committee for the Intellectual Property Law Section of the Boston Bar Association. Previously, he was Chair of the Education Committee of the BBA and on the Board of Editors of the Boston Bar Journal, and he has held other positions at the BBA. Tim has also lectured for, written for, and chaired programs at Massachusetts Continuing Legal Education, Inc. relating to intellectual property.

Honors

  • Selected by peers for inclusion in Best Lawyers in America® 2019-2020.
  • Tim was selected for inclusion in Super Lawyers® for 2005-2007 and 2010-2018 in Massachusetts. His primary area of practice is intellectual property. 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.
  • Tim completed a joint engineering/law program at Columbia University in 1985, obtaining a degree in mechanical engineering with honors from Tau Beta Pi, as well as a law degree.

Bar and Court Admissions

Tim is admitted to practice in Massachusetts, New York, and California, and he is also a registered patent attorney.

Results

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.

#

$16 million judgment

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.

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