John Murray, J.D.; Ph.D.

Dr. John Murray has extensive experience in complex life sciences patent litigation, prosecution and opinion work, as well as due diligence. John conducts prosecution both domestically and internationally for a wide range of clients, including start-ups and academic clients, as well as larger corporations. He has substantial experience in life sciences, in areas such as biotechnology, chemistry/organic chemistry, medical devices, molecular biology, and pharmaceuticals, as well as other diverse fields such as software and acoustic technology.

John has significant experience in patent infringement litigation, Hatch-Waxman and ITC 337 litigation. He has particular experience in motion practice, claim construction, discovery work and oral argument. In addition to life sciences litigation, John has also handled litigation involving software, mechanical devices, commercial packaging, and contractual disputes related to IP ownership.

John has handled inter partes review, including oral argument before the USPTO Patent Trial and Appeal Board, as well as appeal to the Federal Circuit. He also provides advice and strategic overview regarding management and development of trademark and copyright portfolios, including advice on filing and prosecution of trademarks or copyrights.

John received his PhD in molecular genetics under the supervision of Professor Sir Alec J. Jeffreys from the University of Leicester, England. He completed a Post-Doctoral Fellowship at Columbia University, after finishing a Post-Doctoral Fellowship at Mt. Sinai School of Medicine in New York. His post-doctoral research investigated the structural biology of cell membrane proteins through use of x-ray crystallography.

SELECTED EXPERIENCE

• Genetic Technologies, Ltd. V. Histogenetics, LLC, (D. Del.) – Represented diagnostics innovator in patent infringement litigation to secure dismissal on summary judgment of patent infringement claims by patent troll.
• Hypoxico Inc. v. Colorado Altitude et al. (S.D.N.Y.) – Represented oxygen tent manufacturer in trial team to obtain million dollar damage award in patent infringement litigation jury trial.
• Certain Products Having Laminated Packaging, and Components Thereof (I.T.C.) – Represented major distiller, including conduct and co-ordination of discovery, in landmark ITC case to establish failure to meet domestic industry requirement by patent troll.
• AstraZeneca Ab et al. v. IVAX Corporation et al., (D.N.J.) – Represented generic against brand name in ANDA litigation to secure settlement before trial.
• Oral argument before the United States Patent Trial and Appeal Board during IPR proceedings.

AWARDS AND RECOGNITION

• New York Rising Star in Intellectual Property Litigation, Super Lawyers

MEMBERSHIPS AND PROFESSIONAL ASSOCIATIONS

• New York Intellectual Property Law Association
• New York Academy of Sciences

PUBLICATIONS

• Coronavirus Drug Shows Global Hurdles to Patent Protection, Co-Author, Law360, February 2020
• Gene Therapy Policies Can Strike an Ethical Balance, Co-Author, Law360, May 2019
• New USPTO Guidance May Help Diagnostics Patents, Co-Author, Law360, April 2019
• New Proposed Rules Regarding Government Rights in Federally Funded Research: Bayh-Dole Act, Co-Author, The National Law Review, February 21, 2017
• Federal Circuit Clarifies the Steps in Biosimilars Dance, Co-Author, The National Law Review, July 24, 2015
• Presumption of Validity Triumphs over a Good-Faith Belief of Invalidity, Co-Author, The National Law Review, May 28, 2015
• Post Exclusivity Issues For Biologics, Co-Author, The National Law Review, January 3, 2015
• Winning the Battle But Losing The War? – New Considerations For File Wrapper Estoppel, December 22, 2014
• The Supreme Court Takes on Patent Trolls, Technophilic Magazine, February 12, 2014
• Provisionally Protecting Your Next Genius Idea, October 2013
• Be Quick or You’ll Lose: The New First-to-File Patent Application Rule, December 2012
• The New Post-Grant Patent Review: Just When You Thought You Were Out, They Pull You Back In, July 2012
• Challenges to Stem Cell Patents in Europe and the U.S., The Intellectual Property Strategist, December 2007
• Podcast: Lab Bench Meets Federal Bench: The Supreme Court and Stem Cell Research,February 15, 2013, The New York Academy of Science (NYAS)

SCIENCE PUBLICATIONS

• Titus J Boggon, John Murray, Sophie Chappuis-Flament, Ellen Wong, Barry M Gumbiner, Lawrence Shapiro. C-cadherin ectodomain structure and implications for cell adhesion mechanisms. Science. 2002 May 17;296(5571):1308-13.
• Murray J, Buard J, Neil DL, Yeramian E, Tamaki K, Hollies C, Jeffreys AJ. Comparative sequence analysis of human minisatellites showing meiotic repeat instability. Genome Res. 1999 Feb;9(2):130-6.
• A J Jeffreys, J Murray, R Neumann. High-resolution mapping of crossovers in human sperm defines a minisatellite-associated recombination hotspot. Mol Cell. 1998 Aug;2(2):267-73.
• Jeffreys AJ, Bois P, Buard J, Collick A, Dubrova Y, Hollies CR, May CA, Murray J, Neil DL, Neumann R, Stead JD, Tamaki K, Yardley J. Spontaneous and induced minisatellite instability. Electrophoresis. 1997 Aug;18(9):1501-11.