Bar Admissions

  • New York
  • U.S. Patent and Trademark Office

Court Admissions

  • U.S. Supreme Court
  • U.S. Court of Appeals for the First Circuit
  • U.S. Court of Appeals for the Fourth Circuit
  • U.S. Court of Appeals for the Seventh 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 Eastern District of New York
  • U.S. District Court for the Northern District of New York
  • U.S. Court of Claims

Education

  • The George Washington University, 1979
  • University of Notre Dame, 1975
T +1 212.218.2527
F +1 212.218.2200
 

John D. Murnane

Partner

John Murnane has over 35 years 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 complex litigations involving patents in a variety of fields. Since the early 1990’s, he has advised and represented pharmaceutical and biotechnology companies in numerous matters, including litigations involving doxycycline, mutated enzymes, hormone replacement therapy, Abilify®, Sensipar®, and Plavix®. He has also been lead counsel in cases involving patents in the fields of aramid fiber products, catalyzed reactions, cellulose processing, permanent press resins, truck tires, hydrocarbon processing and building materials.

In addition to litigation, John 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. 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.

Representative Clients

  • Amgen
  • Bristol-Myers Squibb
  • GAF
  • Lenzing AG
  • Michelin
  • Ortloff Engineers
  • Otsuka Pharmaceuticals
  • Sanofi

Significant Matters

  • Represented JVL Ventures as Intellectual Property advisor in connection with mobile commerce agreements and patent litigations
  • Represented Amgen and Brigham & Women's Hospital against Teva and Barr in litigation on patents covering the calcimimetic Sensipar® for treating hyperparathyroid and carcinoma conditions
  • Represented Otsuka against Apotex, Teva, Barr, Sandoz, Sun and Synthon in litigation on patent covering the antipsychotic Abilify®
  • Represented Sanofi-Aventis and Bristol-Myers Squibb against Apotex, Dr. Reddy's, Teva, Watson and Cobalt in litigation on patents covering Plavix®, a leading anti-thrombotic agent
  • Defended Elk Corporation against CertainTeed in case involving roofing products patents
  • Defended NovoNordisk against American Home Products in case involving patent on hormone replacement therapy
  • Represented NovoNordisk against Genencor in litigation on patent covering mutated subtilysin enzymes in detergents
  • Represented Elk Corporation against GAF in litigation on patent covering roofing products Represented Michelin against Kumho Tire in litigation on patent covering truck tires
  • Represented Lenzing AG against Courtaulds in litigation on patent covering process for making Lyocell fibers
  • Defended C.H. Patrick Co. against Sequa Chemicals in case involving permanent press resin patent
  • Defended Carrier Corporation against J.T. Falk & Co. in case involving commercial air conditioning patent
  • Defended Laboratoires Sarget against Pfizer in case involving doxycycline patent
  • Represented Elcor Corporation against Enron in litigation on patent covering hydrocarbon gas processing
  • Defended Dillards Department Stores against Randolph Rand Corporation in cases involving patent license dispute
  • Represented Elcor Corporation against Union Texas Petroleum in litigation on patent covering hydrocarbon gas processing
  • Represented Elcor Corporation against Oxy Inc. in litigation on patent covering hydrocarbon gas processing
  • Represented Elcor Corporation against Transok in litigation on patent covering hydrocarbon gas processing
  • Represented Hexcel against EuroComposites in trade secret case involving aramid fiber products
  • Represented Elk Corporation against Owens Corning Fiberglas in litigation on patent covering roofing products
  • Represented Pratt & Whitney Canada against the United States in litigation on patent covering helicopter engines
  • Represented Ortloff Corporation against Tenneco and Gulsby in litigation on patent covering hydrocarbon gas processing
  • Represented United Technologies Corporation against General Electric in litigation on patent covering jet aircraft engines
  • Represented Masco Corporation against Baldwin Hardware in unfair competition case involving home furnishings
  • Represented Masco Corporation against Globe Union Industrial Corporation in unfair competition case involving Delta® faucets
  • Defended Thompson-Hayward Company against Rohm & Haas in case involving propanil patent
  • Defended University of South Carolina against Great Basins Petroleum Company in case involving patent covering catalyzed hydrogenation reactions

REPRESENTATIVE USPTO APPEALS
  • Ex parte Kiik et al.; Appeal 2012 – 010859; P.T.A.B. June 2, 2015
  • Ex parte Pitman et al.; Appeal 2012 – 005866; P.T.A.B. August 1, 2014
  • Ex parte Ahluwalia et al.; Appeal 2010 – 003182; B.P.A.I. January 25, 2011
  • Ex parte Ahluwalia et al.; Appeal 2010 – 004933; B.P.A.I. January 25, 2011

Honors

  • Received the Charles Carroll Award from the Catholic Lawyers Guild of the Archdiocese of New York in 2018.
  • Selected as a top intellectual property law practitioner for Euromoney Magazine's Guide to the World's Leading Patent Law Experts, each year since 1997
  • Super Lawyers: New York Metro Edition, 2006-2018
  • Who’s Who of Patent Lawyers, 2010-2015
  • Legal 500 for Patent litigation: full coverage, 2012 and 2013
  • LMG Life Sciences 2012-2018
  • IP Star, Managing Intellectual Property, 2013-2018
  • Intellectual Asset Management’s IAM 1000 -- The World’s Leading Patent Practitioners, 2013-2018
  • Best Lawyers in America for Litigation - Intellectual Property, 2014-2019