John D. Murnane

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jmurnane@Venable.com

New York, NY

T +1 212.218.2527

John Murnane has decades of experience as a litigator in patent and trade secret cases. John has appeared as lead counsel in such matters since 1986, representing clients in federal trial courts throughout the United States and before the International Trade Commission (ITC), the Federal Circuit Court of Appeals, and the U.S. Patent and Trademark Office (USPTO) Patent Trial and Appeal Board (PTAB).

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, inter partes proceedings, 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.

Related Practices

Related Industries

Experience

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Representative Matters

Representing Otsuka against generic companies in litigations concerning patents related to the kidney disease treatment JYNARQUE^®
Defended Columbia University by obtaining dismissal of a case against the university involving anti-amyloid antibodies
Represented Amgen in litigations against more than 20 generic companies involving a patent covering the Sensipar® pharmaceutical composition for treating hyperparathyroidism and carcinoma
Represented Columbia University against Illumina in a patent litigation involving DNA sequencing products
Defended GAF against Roof N Box in design patent litigation
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 Amgen and Brigham & Women's Hospital against Teva and Barr in litigation on patents covering the calcimimetic Sensipar^®, for treating hyperparathyroidism and carcinoma
Represented Otsuka against Apotex, Teva, Barr, Sandoz, Sun, and Synthon in litigation concerning the patent covering the antipsychotic drug Abilify^®
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 Elk Corporation against CertainTeed in a case involving roofing products patents
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 Elk Corporation against GAF in litigation concerning a patent covering roofing products
Represented Lenzing AG against Courtaulds in litigation concerning a patent covering the process for making Lyocell fibers
Defended C.H. Patrick Co. against Sequa Chemicals in a case involving a permanent press resin patent
Defended Carrier Corporation against J.T. Falk & Co. in a case involving a commercial air conditioning patent
Defended Laboratoires Sarget against Pfizer in a case involving a doxycycline patent
Represented Elcor Corporation against Enron in litigation concerning a patent covering hydrocarbon gas processing
Defended Dillards Department Stores against Randolph Rand Corporation in cases involving a patent license dispute
Represented Elcor Corporation against Union Texas Petroleum in litigation concerning a patent covering hydrocarbon gas processing
Represented Elcor Corporation against Oxy Inc. in litigation concerning a patent covering hydrocarbon gas processing
Represented Elcor Corporation against Transok in litigation concerning a patent covering hydrocarbon gas processing
Represented Hexcel against EuroComposites in a trade secret case involving aramid fiber products
Represented Elk Corporation against Owens Corning Fiberglas in litigation concerning a patent covering roofing products
Represented Pratt & Whitney Canada against the United States in litigation concerning a patent covering helicopter engines
Represented Ortloff Corporation against Tenneco and Gulsby in litigation concerning trade secrets and a patent covering hydrocarbon gas processing
Represented United Technologies Corporation against General Electric in litigation concerning a patent covering jet aircraft engines
Represented Masco Corporation against Baldwin Hardware in an unfair competition case involving home furnishings
Represented Masco Corporation against Globe Union Industrial Corporation in an unfair competition case involving Delta^® faucets
Defended Thompson-Hayward Company against Rohm & Haas in a case involving a propanil patent
Defended University of South Carolina against Great Basins Petroleum Company in a case involving a patent covering catalyzed hydrogenation reactions

Representative Clients

Amgen
Columbia University
GAF
Lenzing AG
Michelin
Otsuka Pharmaceuticals

Insights

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Thought Leadership

Credentials

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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 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 Federal Claims

Recognition

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The Best Lawyers in America, Litigation – Intellectual Property, 2014 – 2022
Managing Intellectual Property, IP Star, 2013 – 2020, 2023
Super Lawyers, New York Metro, 2006 – 2024
Euromoney Magazine’s Guide to the World’s Leading Patent Law Experts, 1997 – 2020 (Selected as a top intellectual property law practitioner)
IAM Patent 1000, The World’s Leading Patent Professionals, 2013 – 2019
LMG Life Sciences, 2012 – 2020
Who’s Who Legal, Who’s Who of Patent Lawyers, 2010 – 2015
Legal 500, Patent Litigation: Full Coverage, 2012 – 2013
Guild of Catholic Lawyers of the Archdiocese of New York, Charles Carroll Award, 2018 (Received in recognition of more than 30 years of pro bono work)