John D. Murnane

Partner
Murnane John
John Murnane has decades 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 significant, complex litigations involving patents in a variety of fields. He also 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.

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.

Experience

Representative Matters

  • Representing Amgen in litigations against more than 20 generic companies involving a patent covering the Sensipar® pharmaceutical composition for treating hyperparathyroidism and carcinoma
  • Representing 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 Michelin against Kumho Tire in litigation concerning a patent covering truck tires
  • 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 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
  • Bristol-Myers Squibb
  • Columbia University
  • GAF
  • Lenzing AG
  • Michelin
  • Ortloff Engineers, GPH, Honeywell UOP
  • Otsuka Pharmaceuticals
  • Sanofi
     

Insights

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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  • Recognized by Best Lawyers in America for Litigation – Intellectual Property, 2014 - 2020
  • Recognized as an IP Star in Managing Intellectual Property, 2019
  • Named to Super Lawyers: New York Metro Edition, 2006 - 2019
  • Selected as a top intellectual property law practitioner, Euromoney Magazine's Guide to the World's Leading Patent Law Experts, 1997 - present
  • Listed among Intellectual Asset Management's IAM 1000 – The World’s Leading Patent Practitioners, 2013 - 2019
  • Recognized in LMG Life Sciences, 2012 - 2019
  • Named an IP Star, Managing Intellectual Property, 2013 - 2018
  • Recognized in Who's Who of Patent Lawyers, 2010 - 2015
  • Named to the Legal 500 for Patent litigation: full coverage, 2012, 2013
  • Recipient, Charles Carroll Award from the Catholic Lawyers Guild of the Archdiocese of New York, 2018 – in recognition of more than 30 years of pro bono work