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Brian Murphy Partner

Prior to joining Haug Partners LLP, Brian Murphy presided over nearly 200 America Invents Act (AIA) post grant review proceedings as a Lead Administrative Patent Judge at the PTAB.

LOCATION

New York

+1.212.588.0800

745 Fifth Avenue, 10th Floor,
New York, NY 10151

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  • Brian Murphy is a partner at Haug Partners in New York City.
  • From September 2013 through September 2017, Mr. Murphy served as an Administrative Patent Judge at the Patent Trial and Appeal Board (“PTAB”) of the U.S. Patent & Trademark Office in Alexandria, Virginia. During that time he presided over nearly 200 post grant review trial proceedings (Inter Partes Review, Post Grant Review, and Covered Business Method Review. As a PTAB trial judge he presided over interlocutory discovery and motion proceedings, heard oral argument, and drafted numerous substantive decisions. For three years he also served as a Lead Judge on the PTAB leadership team, which included management, supervision, and mentoring of Administrative Patent Judges trained in the biotechnology, pharmaceutical, and chemical arts. He was a regular speaker at industry conferences on behalf of the PTAB. Prior to joining the PTAB, Mr. Murphy was a patent attorney in New York City with nearly 30 years of experience trying and litigating major patent cases in federal district courts and the International Trade Commission.
  • Mr. Murphy’s practice includes acting as counsel or as a consultant with clients and counsel involved in PTAB post grant trial proceedings, district court litigation and trials (jury and non-jury), and appeals for clients in the pharmaceutical, biotechnology, medical device, consumer products, telecommunications, and electronics industries. He has particular expertise in Hatch-Waxman patent litigation for branded pharmaceutical companies. His practice also includes providing intellectual property counsel and strategic advice in connection with transactional due diligence, mediation services, and opinions.
  • IPR2013-00582 Baxter Int'l v. Millenium Biologix, FWD Paper 48 (PTAB March 18, 2015). All challenged claims to synthetic, Si-substituted bone repair material unpatentable for inherent anticipation. No appeal filed.
  • CBM2014-00149 (-150, -151, -153) Par Pharm., Inc. v. Jazz Pharms., Inc., DI Paper 12 (PTAB January 13, 2015). U.S. Patent Nos. 7,668,730, 7,895,059, 8,457,988, and 8,589,182 for "Sensitive Drug Distribution System and Method." Denied Institution. Failure to satisfy "financial product or service" requirement under AIA Section 18(d)(l ). Consistent with later Federal Circuit precedential decisions in Unwired Planet, LLC v. Google Inc., 841 F.3d 1376 (Fed. Cir. 2016) and Secure Access, LLC v. PNC Bank National Assoc., 848 F.3d 1370 (Fed. Cir. 2017) (decision denying institution cited with approval in per curiam Order denying en banc review in Secure Access (Fed. Cir. June 2, 2017)).
  • IPR2014-00510 STATS LLC v. Hockeyline, Inc., FWD Paper 33 (PTAB September 15, 2015). All challenged claims to electronic scorekeeping device unpatentable as anticipated or obvious. Claim construction dispositive issue. Federal Circuit Rule 36 Affirmance (11/4/16).
  • IPR2014-00235 Apple, Inc. v. THX, Ltd., FWD Paper 39 (PTAB June 9, 2015). Denied institution on most claims challenged. Instituted on claims 1-3 directed to narrow profile audio speaker. Determined claims 1-2 unpatentable for obviousness, claim 3 not unpatentable for obviousness. Affirmed-in-part and Reversed-in-part in Slot Speaker Technologies, Inc. v. Apple Inc., 2017 WL 655440 (Fed. Cir. Feb. 17, 2017).
  • IPR2015-00085 Daifuku Co., Ltd. v. Murata Machinery, Ltd., FWD Paper 66 (PTAB May 3, 2016). All challenged claims to "Automated Material Handling System for Semiconductor Manufacturing" not unpatentable.
  • IPR2015-00545 and IPR2015-00551 Amneal Pharms., Inc. v. Jazz Pharms., Inc., FWD Paper 69 (-545) and Paper 70 (-551) (PTAB July 27, 2016). All challenged claims unpatentable for obviousness. Patented system for controlling distribution of a sensitive prescription drug (Xyrem(r)) was disclosed in connection with FDA Advisory Committee meeting more than one year before priority filing date. Exploration of public availability of a printed publication based on FDA Advisory Committee protocol and Wayback Machine evidence of Internet availability.
  • IPR2015-01723 Coalition for Affordable Drugs IX LLC v. Bristol Myers Squibb Co., DI Paper 10 (PTAB February 22, 2016). U.S. Patent No. 6,967,208 for "Lactam-Containing Compounds and Derivatives Thereof as Factor Xa Inhibitors." Denied institution of inter partes review petition challenging genus and species compound claims for apixaban, anticoagulant active ingredient in Eliquis(r). Failure to prove claimed species disclosed in prior art genus of compounds.
  • PGR2016-00018 B.R.A.HMS. GmbH v. Becton, Dickinson and Co., DI Paper 8 (PTAB November 2, 2016). Instituted post-grant review of claims to method for the early detection of sepsis by measuring an increase in the amount of a biomarker over a 24-hour interval. Written description, enablement, indefiniteness, and anticipation issues addressed.
  • PGR2017-00008 Grunenthal GmbH v. Antecip Bioventures II LLC, DI Paper 7 (PTAB July 7, 2017). Instituted post-grant review of claims to method of treating complex regional pain syndrome (CRPS), based on one ground of insufficient written description under 35 U.S.C. § 112(a). Denied grounds based on enablement, anticipation, and obviousness.
  • Roquette Freres v. SPI Pharma, Inc., CA No. 06-540 (GMS)(D. Del.)
  • DuPont Air Products Nanomaterials v. Cabot Microelecs., CV 06-2952-PHX (D. Ariz.)
  • Glaxo Group Ltd. v. Amneal Pharm., CA 2:08-CV-493-WJM-MF (D.N.J.)
  • Glaxo Group Ltd. v. Teva Pharms. USA, Inc., Civil Action No. 04-cv-171 (KAJ) (D. Del.)
  • Daiichi Pharm. Co. v. Apotex, Inc., 441 F. Supp. 2d 672 (D.N.J. 2006), rev 'd, 501 F.3d 1254 (Fed. Cir. 2007)
  • Daiichi Pharm. Co. v. Apotex, Inc., 380 F. Supp. 2d 478 (D.N.J. 2005)
  • Daiichi Pharm. Co. v. Bausch & Lomb Inc., Civil Action No. 02-6112 (SDW) (D.N.J.)
  • SmithKline Beecham Corp. v. Excel Pharms., Inc., 356 F.3d 1357 (Fed. Cir. 2004)
  • TAP Pharm. v. Atrix Labs, Inc. and Sanofi-Synthelabo, 2004 U.S. Dist. LEXIS 17118 (N.D. Ill. 2004)
  • Glaxo Wellcome Inc. v. Genentech, Inc., 136 F. Supp. 2d 316 (D. Del. 2001)
  • Glaxo Wellcome Inc. v. Genentech, Inc., 107 F. Supp. 2d 477 (D. Del. 2000)
  • IDEC Pharms., Inc. v. SmithKline Beecham Corp., Civil Action No. 01 CV 1638 JM (JAH) (S.D. Cal.)
  • Glaxo Wellcome Inc. v. Pharmadyne Corp., 32 F. Supp. 2d 265 (D. Md. 1998)
  • Glaxo Wellcome Inc. v. Ben Venue Laboratories, Inc., 1998 U.S. Dist. LEXIS 19774 (N.D. Ohio 1998)
  • Glaxo Inc. v. Geneva Pharms. Inc., 1995 U.S. Dist. LEXIS 21897 (D.N.J. 1995)
  • Hy-Ko Products Co. v. The Hillman Group, Inc., Case No. 5:08cv1961 (N.D. Ohio)
  • In the Matter of Certain Semiconductor Memory Devices and Products Containing Same, Investigation No. 337-TA-470 (ITC) (2002-2003)
  • In the Matter of Certain Erasable Programmable Read Only Memories, Inv. No. 337-TA- 276, USITC Pub. No. 2196 (March 16, 1989), affd in part, reversed in part and vacated in part, Intel Corp. v. U.S. ITC, 946 F.2d 821 (1991)
  • General Instrument Corp. v. Scientific-Atlanta, Inc., Civil Action No. 89-4624 (HAA) (D.N.J.)
  • General Instrument Corp. v. Intel Corp., Civil Action No. 87-1635 PHX-RGS (D. Az.)
  • General Instrument Corp. v. Intel Corp., Civil Action No. 88-0323 PHX RCB (D. Az.)
  • Novamedix Ltd. v. Kinetic Concepts Inc., Civil Action No. SA-92-CA-0177 (FB) (W.D. Tex.)
  • N.A.D., Inc. v. Johnson & Johnson, Civil Action No. 91-2241 (NLS) (E.D. Pa.)
  • Conopco, Inc. [Unilever] v. Princeton Biomeditech, Inc., Civil Action No. 97-6254 (KAH) (D.N.J.) (reported as Inverness Medical Switz. v. Princeton Biomeditech Corp., 309 F.3d 1365 (Fed. Cir. 2002))
  • Conopco, Inc. [Unilever] v. Warner-Lambert Co., Civil Action No. 97-CV-101 (KSH) (D.N.J.) (reported as Inverness Medical Switz. v. Warner Lambert, 309 F.3d 1373 (Fed. Cir. 2002))
  • Procter & Gamble Co. v. Lever Brothers Co., Civil Action No. C-1-98-390 (HJW)(W.D. Ohio)[MBP1]
  • "PTAB Proceedings in a Post-Aqua Landscape: What Patent Owners Need to Know", Speaker, The Knowledge Group, Webinar, July 26, 2018
  • "The PTAB Live: Thoughts on Practice, Procedure, IPRs and More in the World of Pharmaceutical Patent Validity Challenges", ACI Paragraph IV Disputes Conference, NYC, April 25, 2018
  • "Advanced Topics in PTAB Practice", NYIPLA Patent Litigation Committee, NYC, February, 28, 2018
  • "PTAB Patent Proceedings: Best Practices and Strategies You Must Know For 2018", The Knowledge Group, Webinar, February 20, 2018
  • "Hot Topics and Issues in the Biosimilars Space: Part Two", NYIPLA Patent Litigation and Women in IP Law committees, NYC, February 1, 2018
  • "The Interplay Between Litigation and Post Grant Trials at the PTO and Update on PTAB Practice", New York State Bar Association, NYC, January 23, 2018
  • ACI Paragraph IV Disputes PTAB panelist, 2015-2017
  • PLI PTAB Panelist, Spring 2017
  • AIPLA Bench and Bar PTAB panelist, 2015
  • New York Super Lawyer: Intellectual Property Litigation (2006-2008, 2013)
  • Fordham University School of Law, (J.D.)
  • University of Virginia (B.A. - Chemistry)
  • Intellectual Property Enforcement
  • Intellectual Property Procurement and Strategy
  • State Bar of New York
  • United States Patent and Trademark Office
  • United States Court of Appeals for the Federal Circuit
  • United States District Courts for the Southern and Eastern Districts of New York
  • Intellectual Property Owners Association, U.S. Post-Grant Patent Office Practice Committee (2018-2019)
  • Co-Chair: ACI Paragraph IV Disputes - American Conference Institute (2007-2011)
  • Vice-Chair: Hatch-Waxman Committee, Intellectual Property Owners Ass'n (2004-2007)
  • Past Member: American Intellectual Property Law Ass'n - Patent Litigation Comm.
  • Past Member: Fordham Univ. School of Law - Alumni Advisory Committee (1998-2003)
  • Member; Chair: Hastings-on-Hudson, N.Y. Zoning Board of Appeals (2003-2013)

+1.212.588.0800
bmurphy@haugpartners.com

RELATED SERVICES

  • Intellectual Property Enforcement
  • Intellectual Property Procurement and Strategy

BAR ADMISSIONS

  • State Bar of New York
  • United States Patent and Trademark Office
  • United States Court of Appeals for the Federal Circuit
  • United States District Courts for the Southern and Eastern Districts of New York

Haug Partners LLP
745 Fifth Avenue, 10th Floor,
New York, NY 10151
+1.212.588.0800
haugpartners.com

Brian Murphy

Partner

HIGHLIGHT

Prior to joining Haug Partners LLP, Brian Murphy presided over nearly 200 America Invents Act (AIA) post grant review proceedings as a Lead Administrative Patent Judge at the PTAB.

OVERVIEW

Brian Murphy is a partner at Haug Partners in New York City.

From September 2013 through September 2017, Mr. Murphy served as an Administrative Patent Judge at the Patent Trial and Appeal Board (“PTAB”) of the U.S. Patent & Trademark Office in Alexandria, Virginia. During that time he presided over nearly 200 post grant review trial proceedings (Inter Partes Review, Post Grant Review, and Covered Business Method Review. As a PTAB trial judge he presided over interlocutory discovery and motion proceedings, heard oral argument, and drafted numerous substantive decisions. For three years he also served as a Lead Judge on the PTAB leadership team, which included management, supervision, and mentoring of Administrative Patent Judges trained in the biotechnology, pharmaceutical, and chemical arts. He was a regular speaker at industry conferences on behalf of the PTAB. Prior to joining the PTAB, Mr. Murphy was a patent attorney in New York City with nearly 30 years of experience trying and litigating major patent cases in federal district courts and the International Trade Commission.

Mr. Murphy’s practice includes acting as counsel or as a consultant with clients and counsel involved in PTAB post grant trial proceedings, district court litigation and trials (jury and non-jury), and appeals for clients in the pharmaceutical, biotechnology, medical device, consumer products, telecommunications, and electronics industries. He has particular expertise in Hatch-Waxman patent litigation for branded pharmaceutical companies. His practice also includes providing intellectual property counsel and strategic advice in connection with transactional due diligence, mediation services, and opinions.

NOTABLE PTAB DECISIONS

  • IPR2013-00582 Baxter Int'l v. Millenium Biologix, FWD Paper 48 (PTAB March 18, 2015). All challenged claims to synthetic, Si-substituted bone repair material unpatentable for inherent anticipation. No appeal filed.
  • CBM2014-00149 (-150, -151, -153) Par Pharm., Inc. v. Jazz Pharms., Inc., DI Paper 12 (PTAB January 13, 2015). U.S. Patent Nos. 7,668,730, 7,895,059, 8,457,988, and 8,589,182 for "Sensitive Drug Distribution System and Method." Denied Institution. Failure to satisfy "financial product or service" requirement under AIA Section 18(d)(l ). Consistent with later Federal Circuit precedential decisions in Unwired Planet, LLC v. Google Inc., 841 F.3d 1376 (Fed. Cir. 2016) and Secure Access, LLC v. PNC Bank National Assoc., 848 F.3d 1370 (Fed. Cir. 2017) (decision denying institution cited with approval in per curiam Order denying en banc review in Secure Access (Fed. Cir. June 2, 2017)).
  • IPR2014-00510 STATS LLC v. Hockeyline, Inc., FWD Paper 33 (PTAB September 15, 2015). All challenged claims to electronic scorekeeping device unpatentable as anticipated or obvious. Claim construction dispositive issue. Federal Circuit Rule 36 Affirmance (11/4/16).
  • IPR2014-00235 Apple, Inc. v. THX, Ltd., FWD Paper 39 (PTAB June 9, 2015). Denied institution on most claims challenged. Instituted on claims 1-3 directed to narrow profile audio speaker. Determined claims 1-2 unpatentable for obviousness, claim 3 not unpatentable for obviousness. Affirmed-in-part and Reversed-in-part in Slot Speaker Technologies, Inc. v. Apple Inc., 2017 WL 655440 (Fed. Cir. Feb. 17, 2017).
  • IPR2015-00085 Daifuku Co., Ltd. v. Murata Machinery, Ltd., FWD Paper 66 (PTAB May 3, 2016). All challenged claims to "Automated Material Handling System for Semiconductor Manufacturing" not unpatentable.
  • IPR2015-00545 and IPR2015-00551 Amneal Pharms., Inc. v. Jazz Pharms., Inc., FWD Paper 69 (-545) and Paper 70 (-551) (PTAB July 27, 2016). All challenged claims unpatentable for obviousness. Patented system for controlling distribution of a sensitive prescription drug (Xyrem(r)) was disclosed in connection with FDA Advisory Committee meeting more than one year before priority filing date. Exploration of public availability of a printed publication based on FDA Advisory Committee protocol and Wayback Machine evidence of Internet availability.
  • IPR2015-01723 Coalition for Affordable Drugs IX LLC v. Bristol Myers Squibb Co., DI Paper 10 (PTAB February 22, 2016). U.S. Patent No. 6,967,208 for "Lactam-Containing Compounds and Derivatives Thereof as Factor Xa Inhibitors." Denied institution of inter partes review petition challenging genus and species compound claims for apixaban, anticoagulant active ingredient in Eliquis(r). Failure to prove claimed species disclosed in prior art genus of compounds.
  • PGR2016-00018 B.R.A.HMS. GmbH v. Becton, Dickinson and Co., DI Paper 8 (PTAB November 2, 2016). Instituted post-grant review of claims to method for the early detection of sepsis by measuring an increase in the amount of a biomarker over a 24-hour interval. Written description, enablement, indefiniteness, and anticipation issues addressed.
  • PGR2017-00008 Grunenthal GmbH v. Antecip Bioventures II LLC, DI Paper 7 (PTAB July 7, 2017). Instituted post-grant review of claims to method of treating complex regional pain syndrome (CRPS), based on one ground of insufficient written description under 35 U.S.C. § 112(a). Denied grounds based on enablement, anticipation, and obviousness.

REPRESENTATIVE CASES

  • Roquette Freres v. SPI Pharma, Inc., CA No. 06-540 (GMS)(D. Del.)
  • DuPont Air Products Nanomaterials v. Cabot Microelecs., CV 06-2952-PHX (D. Ariz.)
  • Glaxo Group Ltd. v. Amneal Pharm., CA 2:08-CV-493-WJM-MF (D.N.J.)
  • Glaxo Group Ltd. v. Teva Pharms. USA, Inc., Civil Action No. 04-cv-171 (KAJ) (D. Del.)
  • Daiichi Pharm. Co. v. Apotex, Inc., 441 F. Supp. 2d 672 (D.N.J. 2006), rev 'd, 501 F.3d 1254 (Fed. Cir. 2007)
  • Daiichi Pharm. Co. v. Apotex, Inc., 380 F. Supp. 2d 478 (D.N.J. 2005)
  • Daiichi Pharm. Co. v. Bausch & Lomb Inc., Civil Action No. 02-6112 (SDW) (D.N.J.)
  • SmithKline Beecham Corp. v. Excel Pharms., Inc., 356 F.3d 1357 (Fed. Cir. 2004)
  • TAP Pharm. v. Atrix Labs, Inc. and Sanofi-Synthelabo, 2004 U.S. Dist. LEXIS 17118 (N.D. Ill. 2004)
  • Glaxo Wellcome Inc. v. Genentech, Inc., 136 F. Supp. 2d 316 (D. Del. 2001)
  • Glaxo Wellcome Inc. v. Genentech, Inc., 107 F. Supp. 2d 477 (D. Del. 2000)
  • IDEC Pharms., Inc. v. SmithKline Beecham Corp., Civil Action No. 01 CV 1638 JM (JAH) (S.D. Cal.)
  • Glaxo Wellcome Inc. v. Pharmadyne Corp., 32 F. Supp. 2d 265 (D. Md. 1998)
  • Glaxo Wellcome Inc. v. Ben Venue Laboratories, Inc., 1998 U.S. Dist. LEXIS 19774 (N.D. Ohio 1998)
  • Glaxo Inc. v. Geneva Pharms. Inc., 1995 U.S. Dist. LEXIS 21897 (D.N.J. 1995)
  • Hy-Ko Products Co. v. The Hillman Group, Inc., Case No. 5:08cv1961 (N.D. Ohio)
  • In the Matter of Certain Semiconductor Memory Devices and Products Containing Same, Investigation No. 337-TA-470 (ITC) (2002-2003)
  • In the Matter of Certain Erasable Programmable Read Only Memories, Inv. No. 337-TA- 276, USITC Pub. No. 2196 (March 16, 1989), affd in part, reversed in part and vacated in part, Intel Corp. v. U.S. ITC, 946 F.2d 821 (1991)
  • General Instrument Corp. v. Scientific-Atlanta, Inc., Civil Action No. 89-4624 (HAA) (D.N.J.)
  • General Instrument Corp. v. Intel Corp., Civil Action No. 87-1635 PHX-RGS (D. Az.)
  • General Instrument Corp. v. Intel Corp., Civil Action No. 88-0323 PHX RCB (D. Az.)
  • Novamedix Ltd. v. Kinetic Concepts Inc., Civil Action No. SA-92-CA-0177 (FB) (W.D. Tex.)
  • N.A.D., Inc. v. Johnson & Johnson, Civil Action No. 91-2241 (NLS) (E.D. Pa.)
  • Conopco, Inc. [Unilever] v. Princeton Biomeditech, Inc., Civil Action No. 97-6254 (KAH) (D.N.J.) (reported as Inverness Medical Switz. v. Princeton Biomeditech Corp., 309 F.3d 1365 (Fed. Cir. 2002))
  • Conopco, Inc. [Unilever] v. Warner-Lambert Co., Civil Action No. 97-CV-101 (KSH) (D.N.J.) (reported as Inverness Medical Switz. v. Warner Lambert, 309 F.3d 1373 (Fed. Cir. 2002))
  • Procter & Gamble Co. v. Lever Brothers Co., Civil Action No. C-1-98-390 (HJW)(W.D. Ohio)[MBP1]

SPEAKING ENGAGEMENTS

  • "PTAB Proceedings in a Post-Aqua Landscape: What Patent Owners Need to Know", Speaker, The Knowledge Group, Webinar, July 26, 2018
  • "The PTAB Live: Thoughts on Practice, Procedure, IPRs and More in the World of Pharmaceutical Patent Validity Challenges", ACI Paragraph IV Disputes Conference, NYC, April 25, 2018
  • "Advanced Topics in PTAB Practice", NYIPLA Patent Litigation Committee, NYC, February, 28, 2018
  • "PTAB Patent Proceedings: Best Practices and Strategies You Must Know For 2018", The Knowledge Group, Webinar, February 20, 2018
  • "Hot Topics and Issues in the Biosimilars Space: Part Two", NYIPLA Patent Litigation and Women in IP Law committees, NYC, February 1, 2018
  • "The Interplay Between Litigation and Post Grant Trials at the PTO and Update on PTAB Practice", New York State Bar Association, NYC, January 23, 2018
  • ACI Paragraph IV Disputes PTAB panelist, 2015-2017
  • PLI PTAB Panelist, Spring 2017
  • AIPLA Bench and Bar PTAB panelist, 2015

AWARDS

  • New York Super Lawyer: Intellectual Property Litigation (2006-2008, 2013)

EDUCATION

  • Fordham University School of Law, (J.D.)
  • University of Virginia (B.A. - Chemistry)

BAR ADMISSIONS

  • State Bar of New York
  • United States Patent and Trademark Office
  • United States Court of Appeals for the Federal Circuit
  • United States District Courts for the Southern and Eastern Districts of New York

MEMBERSHIPS

  • Intellectual Property Owners Association, U.S. Post-Grant Patent Office Practice Committee (2018-2019)
  • Co-Chair: ACI Paragraph IV Disputes - American Conference Institute (2007-2011)
  • Vice-Chair: Hatch-Waxman Committee, Intellectual Property Owners Ass'n (2004-2007)
  • Past Member: American Intellectual Property Law Ass'n - Patent Litigation Comm.
  • Past Member: Fordham Univ. School of Law - Alumni Advisory Committee (1998-2003)
  • Member; Chair: Hastings-on-Hudson, N.Y. Zoning Board of Appeals (2003-2013)