Sanjay K. Murthy

Sanjay has successfully tried cases across the country on behalf of Fortune 500 companies. In addition to his trial court experience, he has handled numerous matters before the US Courts of Appeals for the Ninth and Federal Circuits and the ITC. Sanjay has also represented a number of high-profile clients in inter partes review proceedings, which resulted in the complete invalidation of patents asserted in litigation, as well as European opposition proceedings and German nullity actions.

Sanjay has worked on a wide array of technologies, such as pharmaceuticals (e.g., small molecules and antibodies), medical devices (e.g., dialysis machines, drug infusion pumps, and stent grafts), methods for manufacturing recombinant proteins (e.g., Factor VIII and alpha-1 antitrypsin), cell-based therapeutics (CAR-T cells and stem cells), organic/polymer chemistry, power tools, oil drilling fluids, digital cameras, smart phones, and automotive components.

From 2007 to 2010, Sanjay served as an adjunct professor at DePaul University College of Law, where he taught an advanced course in patent law. While attending law school, he served as a judicial extern to Judge James F. Stiven of the US District Court for the Southern District of California. Prior to attending law school, Sanjay worked for a large environmental engineering consulting firm.

Sanjay has an active pro bono practice working with teams to reunite children separated from their parents by Immigration Customs Enforcement (ICE), force the release of numerous families detained under inhumane conditions by ICE, and obtain significant monetary settlements for prisoners detained under inhumane conditions by the State of Illinois.

• Trial and appellate counsel for Praxair, Inc. in two-week ANDA case against Mallinckrodt Pharmaceuticals involving 11 patents related to pharmaceutical product (INOMAX) and associated delivery system, a product with revenue of over $400 million. The district court ruled that five of the asserted patents were invalid and the other six asserted patents were not infringed, resulting in a complete victory. The judgment was affirmed on appeal in 2019 and Sanjay, and other team members, was recognized as a “Litigator of the Week” by The American Lawyer. The firm received “Hatch-Waxman Impact Case of the Year” for this victory at the 2020 LMG Life Sciences Awards.
• Trial counsel for Milwaukee Electric Tool Corp. in a two-week jury trial regarding lithium-ion battery technology in the Eastern District of Wisconsin. The jury returned a verdict finding entirely in Milwaukee Tool’s favor, awarding damages of $27.8 million and finding defendant’s infringement was willful. This was identified as one of the “Top 100 Verdicts of 2017” by ALM.
• Appellate counsel for Praxair, Inc. before the Federal Circuit in an appeal from an inter partes review proceeding involving an Orange Book listed patent on methods of use for INOMAX. In a precedential opinion, the Federal Circuit ruled entirely in Praxair’s favor on its appeal and rejected Mallinckrodt’s cross-appeal.
• Trial counsel representing Baxalta, Inc. (a Shire/Takeda subsidiary) in the ITC in dispute regarding method of manufacturing recombinant factor VIII (ADVATE), a billion dollar pharmaceutical product. Successfully obtained summary determination of infringement before the final hearing. The case settled favorably after the ITC ruled in client’s favor on domestic industry on appeal.
• 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 plaintiff’s patent infringement complaint for lack of standing with prejudice. The plaintiff, StemCells, Inc., was seeking an injunction and $60 million in damages and recovered nothing.
• 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 noninfringement of a patent relating to intravenous infusion pump technology. The plaintiff, CareFusion 303, Inc., was seeking more than $170 million in damages and recovered nothing. During pretrial, 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.
• Lead appellate counsel for Neuralstem, Inc. before the US Court of Appeals for the Ninth Circuit. Obtained complete reversal of district court’s decision dismissing complaint for misappropriation of trade secrets and breach of contract. A favorable settlement requiring upfront 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. 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.

Representative USPTO/European Experience

• IPR2015-00529—Lead counsel for petitioner Praxair, Inc. related to Orange Book listed patent on methods of use related to INOMAX (inhaled nitric oxide) and invalidated 17 of 18 claims on a product with $400 million in annual sales revenue
• IPR2015-01722—Lead counsel for Petitioner Endologix, Inc. related to a patent on abdominal aortic stent.  Case settled favorably after trial was instituted.
• IPR2014-00899—Lead counsel for petitioner Kamada, Ltd resulting in complete invalidation of patent covering PROLASTIN®-C (alpha1-proteinase inhibitor [human]), a product with $500 million in sales. The patent owner chose not to pursue its appeal to the Federal Circuit.
• BTG International Ltd. v. Edwards Lifesciences Germany GmbH et al.—Advised the accused infringer in German nullity action obtaining complete cancellation of asserted patent claims.