Overview
Skilled advocacy. Technological insight. Strategic advantage. Sunstein LLP has an outstanding record of important wins for our technology and life sciences clients through litigation, patent and trademark prosecution, intellectual property portfolio development and business transactions. We emphasize early identification of business goals and strategic planning to achieve them. We have a long track record of success in protecting and enforcing our clients’ patent, trademark, copyright and other IP-related assets.
OUR PROFESSIONALS
Our professionals rely upon their technical and intellectual property knowledge in combination with business acumen and well-honed litigation skills to handle complex and demanding legal assignments. Whether the project is challenging litigation, a complex business transaction or sophisticated patent prosecution, our lawyers draw upon multi-disciplinary experience to achieve our clients’ objectives. Thus, our patent and trademark lawyers have experience in business matters and scientific and technical research, as well as patent and trademark prosecution. Our litigators bring to bear experience across a wide spectrum of technologies and deep understanding of intellectual property law, with skilled courtroom advocacy. This breadth of experience enhances our ability to assist clients in developing strategies for the protection of their technology. Our attorneys, many of whom have advanced degrees in challenging scientific disciplines, are comfortable working in the most sophisticated and advanced areas of science and technology. Representation by our attorneys has enabled many of our clients to establish dominant intellectual property positions in their markets. Senior members of our firm are national leaders in their practice areas. They are frequent speakers in continuing education programs for lawyers and are leaders in bar organizations.
OUR PRACTICE
IP Litigation
Aggressive representation in high-stakes intellectual property litigation is a hallmark of our firm’s trial practice. Our litigators have handled significant cases in courts throughout the United States and have achieved superior results by carefully tailoring litigation strategy to our clients’ business objectives and to the requirements of the case. The efforts of our trial lawyers have enforced important intellectual property rights in key markets, produced multi-million dollar recoveries, and secured emergency injunctive relief. By combining strong trial experience and sophisticated technical and patent expertise on the same litigation team, we provide highly effective representation in the most challenging of patent infringement cases. Our litigators pay careful attention to our clients’ business goals, and provide counsel on litigation avoidance and control, risk management and dispute resolution.
Patent and Trademark Prosecution
Our attorneys work strategically in building intellectual property portfolios for a wide range of clients. We prosecute patent and trademark applications in the United States and, working with our network of foreign associates, extensively in Europe and Japan, and throughout the world. Our attorneys are regularly involved in the licensing of patents, trademarks, and copyrights and related trade secrets and know-how. Technologies in which our firm has extensive experience include data communications and networking, computer hardware and software, electronic circuits and systems, electro-mechanical and microprocessor-controlled devices, pharmaceuticals, molecular biology, bioinformatics, biochemistry, biomedical devices, video, optics and imaging, x-ray systems, metallurgy, ceramics, magnetic recording, fluid control systems, and mechanical devices.
Business Transactions
We regularly handle a wide range of transactions involving technology-based companies and are accustomed to dealing with the special problems of forming and financing new business ventures. The firm also represents businesses in the full range of legal matters a company may encounter as it grows, including protection and licensing of its technology under the patent, trade secret, and copyright laws; selection, licensing, and protection of its trademarks; contracts with employees, customers and others; public and private offerings; labor, employment and benefit issues; securities law compliance; business acquisitions; and antitrust compliance.
OUR CLIENTS
We represent clients located throughout the United States and abroad, including public and private companies, major academic and research institutions, government agencies, and individuals. Our clients represent a broad range of key industries. Thus, we serve emerging and established companies in a wide range of technology-based enterprises, including telecommunications, electronics, computer hardware and software, network systems, life sciences, pharmaceuticals, medical instruments, media, finance, health care, education, insurance, advertising, publishing, and entertainment. Individual clients include inventors, artists, and authors who have an interest in protecting and commercializing their creative efforts.
Regardless of a client’s size, business, or location, the services we provide are individually fashioned to meet each client’s specific needs and wishes. We are aware of our clients’ concerns for efficiency and economy and make every effort to keep costs down consistent with proper representation. We are proud of the close personal relationships we have with our clients, which are built upon providing the highest standard of legal services.
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National
Regional
Boston
Firm Leadership
Highlighted Client Comments
Rankings
National
Regional
Boston
Practice Areas
- Bet-the-Company Litigation
- Biotechnology and Life Sciences Practice
- Business Organizations (including LLCs and Partnerships)
- Copyright Law
- Litigation - Intellectual Property
- Litigation - Patent
- Patent
- Patent Law
- Trade Secrets Law
- Trademark
- Trademark Law
Individuals Recognized in The Best Lawyers in America®
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Offices & Contacts
Significant Matters
Representative Patent Litigation Cases
Exergen Corp. v. Kaz (USA), Inc. United States District Court for the District of Massachusetts
Sunstein’s trial team won a jury verdict for our client Exergen, resulting in a $16 million judgment against Kaz, the maker of consumer products sold under the Vicks and Braun brands. Despite Kaz’s multiple challenges to the twelve patent claims asserted by Exergen, the jury upheld the validity of all of them, and found that the forehead thermometers sold by Kaz infringed those claims. Exergen is a Watertown, MA-based manufacturer and seller of thermometers for both the professional and consumer markets.
Softspikes, LLC et al. v. MacNeill Engineering Company, Inc. Trisport, Ltd. et al. v. MacNeill Engineering Company, Inc. et al. United States District Court for the District of Delaware
In this pair of patent litigations, Sunstein defended MacNeill Engineering against claims of infringing five patents owned by related companies Softspikes and Trisport. In the first litigation Sunstein obtained favorable claim construction rulings that forced Softspikes to drop one of the two patents it had asserted against MacNeill. Faced with these setbacks and a counterclaim for infringement of three of MacNeill’s own patents with a substantial claim for damages, the plaintiffs agreed to a settlement and dismissed their cases.
Patent Office Litigation REPRESENTATIVE INTER PARTES REVIEWS AND REEXAMINATIONS
Samsung Electronics Co., Ltd. v. Arendi S.A.R.L. (IPR2014-00214.) Samsung attacked our client’s patent in the Patent Trial and Appeal Board (PTAB) on grounds of obviousness. We persuaded the PTAB that an element of the claims was not disclosed by the cited references and thus prevented the inter partes review from even being instituted.
Motorola Mobility LLC, Google Inc., and Apple Inc. v. Arendi S.A.R.L. (IPR2014-00203.) Motorola, Google and Apple attacked the same patent as Samsung raising several additional grounds. Our arguments carried the day and the inter partes review was not instituted, freeing our client’s patent for unfettered assertion in court.
Arendi S.A.R.L. v. Apple Inc., Google Inc., Motorola Mobility LLC (Federal Circuit 15-2073, appeal of IPR2014-00208.) Sunstein scored a victory on behalf of its client Arendi by obtaining a reversal of a PTAB decision that had invalidated Arendi’s patent. The court warned against using so-called common sense as a wholesale substitute for reasoned analysis to show how prior art combined with extraneous knowledge or insight might invalidate a patent claim. The Federal Circuit reversed the PTAB’s finding of unpatentability outright rather than remand the case for further consideration because it found no evidence in the record to suggest that Arendi’s technique was obvious.
Representative Trademark Cases Sage Therapeutics, Inc. v. Sage Naturals, Inc. United States District Court for the District of Massachusetts
Sunstein brought suit in federal district court in Massachusetts against a medical marijuana dispensary using the name Sage Naturals (formerly Sage Biotech) on behalf of Sage Therapeutics, a biopharmaceutical company based in Cambridge, Massachusetts, with global activities committed to developing novel medicines to treat patients suffering from CNS disorders. Sage Naturals promoted use of its medical marijuana products to treat the same types of CNS disorders that Sage Therapeutics’ investigational medicines were intended to treat. Sage Naturals subsequently changed its name to Sira Naturals.
’47 Brand, LLC v. Contrast Imports, Inc. USPTO, Trademark Trial and Appeal Board Sunstein successfully represented ’47 in trademark litigation before the USPTO Trademark Trial and Appeal Board. ’47 opposed Contrast Imports’ application to register a 47 in a circle based on likelihood of confusion with its 47-formative marks. After TTAB trial proceedings, the Board agreed that there was a likelihood of confusion between ’47’s strong 47 marks used for apparel and headwear and Contrast Imports’ 47 mark used for silver jewelry, and held that consumers would likely mistakenly believe that Contrast Imports’ originated from or were associated with or sponsored by ’47. Accordingly, the TTAB sustained ‘47’s opposition.
Vertex Pharmaceuticals Inc. v. Hercules Brand Corp. USPTO, Trademark Trial and Appeal Board Sunstein successfully represented Vertex in its opposition to the mark VERTOX in trial proceedings before the USPTO Trademark Trial and Appeal Board. After the submission of trial briefs, the Board agreed with Vertex that there was a likelihood of confusion between Vertex’s VERTEX marks registered for pharmaceutical preparations and pharmaceutical research services, and Hercules Brand’s VERTOX mark for vitamin and multivitamins. Among other factors, the Board considered the issue of public safety in cases involving confusingly similar trademarks for pharmaceuticals and closely related products like vitamins or nutritional supplements.