John D. Murnane has decades of experience as a litigator in patent and trade secret cases. He has appeared as lead counsel in such matters since 1986, representing clients in federal trial courts throughout the United States, in the International Trade Commission and before the Federal Circuit Court of Appeals and the USPTO Patent Trial and Appeal Board.
John has represented many companies in significant, complex litigations involving patents in a variety of fields. He also has an extensive practice in patent counseling, opinion work, patent reexaminations, and licensing and has been responsible for supervising the patent prosecution of several major corporations.
John has also been active in public service and pro bono work. In 1997, Governor George E. Pataki appointed him to the New York State Task Force on Life and the Law, where he continues to serve.
He was an adjunct professor of law at Fordham University from 1989 to 1993 and at Hofstra University from 1986 to 1989. He is a past president of the New York Intellectual Property Law Association.
Experience :
- Representing Amgen in litigations against more than 20 generic companies involving a patent covering the Sensipar® pharmaceutical composition for treating hyperparathyroidism and carcinoma
- Represented Amgen against Complex Innovations in a USPTO inter partes review proceeding on a patent covering cinacalcet pharmaceutical formulations in Sensipar® for treating hyperparathyroidism and carcinoma
- Represented JVL Ventures as an intellectual property advisor in mobile commerce agreements and patent litigations
- Represented Sanofi-Aventis and Bristol-Myers Squibb against Apotex, Dr. Reddy’s, Teva, Watson, and Cobalt in litigation concerning patents covering Plavix®, a leading anti-thrombotic agent
- Defended NovoNordisk against American Home Products in a case involving a patent on hormone replacement therapy
- Represented NovoNordisk against Genencor in litigation concerning a patent covering mutated subtilysin enzymes in detergents
- Represented Lenzing AG against Courtaulds in litigation concerning a patent covering the process for making Lyocell fibers
- Defended Dillards Department Stores against Randolph Rand Corporation in cases involving a patent license dispute
- Represented Elcor Corporation against Transok in litigation concerning a patent covering hydrocarbon gas processing
- Represented Pratt & Whitney Canada against the United States in litigation concerning a patent covering helicopter engines
- Represented Masco Corporation against Globe Union Industrial Corporation in an unfair competition case involving Delta® faucets
- Defended University of South Carolina against Great Basins Petroleum Company in a case involving a patent covering catalyzed hydrogenation reactions.
Education :
- J.D. The George Washington University Law School 1979
- B.S. cum laude University of Notre Dame 1975
Bar Admissions : New York, U.S. Patent and Trademark Office
Court Admissions :
- U.S. Supreme Court
- U.S. Court of Appeals for the Fourth Circuit
- U.S. Court of Appeals for the Federal Circuit
- U.S. District Court for the Southern District of New York
- U.S. District Court for the Northern District of New York
- U.S. Court of Federal Claims
Cost
Rate : $$$