77 West Wacker Dr.\\Chicago, IL 60601-5094\\United States
Sanjay K. Murthy is a trial attorney with experience representing technology companies in US District Courts, before the Patent Trial and Appeal Board, and in Section 337 investigations in the US International Trade Commission (ITC). Because of his extensive trial experience, Sanjay also works with clients on contested post grant proceedings at the US Patent and Trademark Office and at the European Patent Office, freedom-to-operate matters, due diligence investigations, and licensing transactions.
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 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, power tools, oil drilling fluids, digital cameras, 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.
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 for Praxair, Inc. in two-week ANDA trial 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 for Praxair.
Trial counsel representing Baxalta, Inc. (a Shire 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.
Awards and Affiliations
Named, "Most Influential Minority Lawyers in Chicago" by Crain’s Chicago Business (2017)
Member, American Intellectual Property Law Association
Member, Intellectual Property Law Association of Chicago
Member, Patent Trial and Appeal Board Bar Association
US Supreme Court
US Court of Appeals for the Ninth Circuit
US Court of Appeals for the Federal Circuit
US District Courts for the Northern, Central, and Southern Districts of California
US District Court for the Eastern District of Michigan
US District Court for the Eastern District of Texas
US District Court for the Northern District of Illinois
US Patent and Trademark Office
The George Washington University Law School, 2003, LL.M.
California Western School of Law, 2000, J.D.
Loyola University New Orleans, 1997, B.S., Biology; minor in Chemistry