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Sanjay K. Murthy

Fax +1.312.827.8138

Sanjay K. Murthy is a PTO-registered patent litigator with extensive trial experience representing technology companies in United States District Courts, the Patent Trial and Appeal Board, and Section 337 investigations in the International Trade Commission.

He has successfully tried cases to juries on both coasts on behalf of Fortune 500 companies like Baxter and Pepsi. He has also first-chaired Markman hearings and argued numerous motions throughout the country.

In addition to his trial court experience, he also has significant appellate experience, having successfully handled matters before the United States Court of Appeals for the Federal Circuit, the United States Court of Appeals for the 9th Circuit and the International Trade Commission.

Mr. Murthy also has extensive experience working on contested Post-Grant proceedings at the U.S. Patent Office, including Inter-Partes Reviews and ex-parte reexaminations, as well as at the European Patent Office. His current IPR work involves serving as lead counsel for Baxter International Inc., Praxair, Inc, and Match.com in multiple pending matters. He has successfully advised Baxter in multiple European opposition proceedings and German nullity actions. He has also filed successful requests for reexamination, which resulted in the complete cancellation of patents asserted in litigation.

He has experience with a broad array of technologies and fields, including medical devices (e.g., dialysis machines, drug infusion pumps, and stent grafts), pharmaceuticals, methods for manufacturing recombinant proteins (e.g., Factor VIII and alpha-1 antitrypsin), stem cells, organic/polymer chemistry, food science, oil drilling fluids, digital cameras, software-based methods, automotive windshields, and flexible packaging.

Professional Background

From 2007 to 2010, he was an adjunct professor at DePaul University College of Law, teaching an advanced course in patent law. During law school, he served as a judicial extern to the Honorable James F. Stiven of the U.S. District Court for the Southern District of California. Prior to attending law school, he worked for a large environmental engineering consulting firm.

Professional/Civic Activities

  • American Intellectual Property Law Association
  • Intellectual Property Law Association of Chicago

Speaking Engagements

  • Section 101 Patent Eligibility: The New World of Patentable Subject Matter, Chicago-Kent College of Law, Invited Panelist (November 5, 2014)
  • AIA Post Grant Patent Practice Conference 2014, Bloomberg BNA; Fresenius USA v. Baxter Int’l and its Impact on Post-Grant Practice (invited speaker)
  • IPLAC Patent Law Symposium 2009, Discovery and Settlement Issues in Patent Cases

Representative Patent Litigation Experience

  • Lead trial counsel for Neuralstem, Inc. in a one-week bench trial on the issue of patent ownership and inventorship in a case involving six patents dealing with neural stem cells. The district court ruled in Neuralstem’s favor on both issues, ordered that an unnamed inventor be added to the patents-in-suit, and dismissed the complaint for lack of standing with prejudice. The plaintiff, StemCells, Inc., was seeking an injunction and $60 million in damages and recovered nothing.
  • Counsel for Baxter International Inc. in a patent infringement case brought by Becton, Dickinson and Co. in the Western District of Texas involving remote pharmacy systems and software. The district court granted Baxter’s motion for summary judgment of invalidity under 35 U.S.C. § 101 and dismissed the case.
  • Trial counsel for Sigma International (a Baxter Healthcare subsidiary) in a two-week jury trial in the Southern District of California resulting in a verdict of non-infringement of a patent relating to intravenous infusion pump technology. The plaintiff, CareFusion 303, Inc., was seeking over $170,000,000 in damages and recovered nothing. Pre-trial he successfully obtained summary judgment on CareFusion’s damages theories based on the entire market value rule. The case was named a 2012 top defense verdict in California by the Daily Journal.
  • In Certain Mobile Telephones and Wireless Communications Devices Featuring Digital Cameras (337-TA-703) represented Complainant, Eastman Kodak Co., in appeal before the International Trade Commission deciding whether claim construction could be resolved by summary determination. Obtained favorable decision that claim construction should not be decided by summary determination. After an unfavorable initial determination, he appealed the ALJ’s claim constructions and invalidity findings and obtained reversal of those rulings. The case settled on appeal.
  • Lead appellate counsel for Neuralstem, Inc. before the United States Court of Appeals for the 9th Circuit. Obtained complete reversal of district court's decision dismissing complaint for misappropriation of trade secrets and breach of contract. A favorable settlement requiring up-front payments and milestone payments for future products was obtained shortly before trial.
  • Trial counsel for Baxter International Inc. in a one-week jury trial in the Northern District of California resulting in a total damages award of almost $30 million for patent infringement. He also successfully prepared a motion for a permanent injunction against the best-selling hemodialysis machine in the United States (Fresenius Medical Care's 2008K). The liability judgment and permanent injunction were affirmed by the Federal Circuit on appeal.
  • Trial counsel for PepsiCo, Inc. and Rapak LLC in four-week jury trial in the Northern District of Georgia that resulted in a favorable verdict of non-infringement of three patents owned by The Coca-Cola Company relating to flexible packaging. The case was settled favorably without any appeal.

Representative USPTO/European Experience

  • Inter-Partes Review Case IPR2014-00698 -- Lead counsel for petitioner Match.com LLC and People Media, Inc. resulting in complete invalidation of all asserted claims
  • Inter-Partes Review Case IPR2014-00699 -- Lead counsel for petitioner Match.com LLC and People Media, Inc. resulting in complete invalidation of all asserted claims
  • Inter-Partes Review Case IPR2014-00899 -- Lead counsel for petitioner Kamada, Ltd resulting in complete invalidation of all asserted claims
  • Reexamination Control No. 90/010,073 -- Represented Requestor in reexamination resulting in complete cancellation of all claims relating to cosmetic compounds
  • Reexamination Control No. 90/011,511 -- Represented Requestor in reexamination resulting in complete cancellation of all claims relating to anti-seize compounds used in oil drilling operations
  • Reexamination Control No. 90/013,008 -- Representing Requestor in reexamination regarding methods for purifying α-1 proteinase inhibitor (pending)
  • BTG International Ltd. v. Edwards Lifesciences Germany GmbH et al., -- advised accused infringer in German Nullity action obtaining complete cancellation of asserted patent claims