Gerald M. Murphy, Jr.
Suite 100 East
8110 Gatehouse Road
Falls Church, VA 22042
Gerald Murphy has practiced in the intellectual property field for over 36 years, and has prosecuted numerous patent applications in the areas of biotechnology, biopharmaceuticals, therapeutic antibodies, organic chemistry, biochemistry and pharmaceuticals. Mr. Murphy has also handled a number of Post-Grant Review matters and appeals within the U.S. Patent and Trademark Office. He has presented oral arguments before the U.S. Board of Patent Appeals and Interferences and the Patent Trial and Appeal Board on a number of occasions and has represented clients in a variety of post grant matters, including inter partes reviews, interferences and reexaminations. He has personally participated in over 35 patent interferences and trials before the PTAB, including related appeals to the Court of Appeals for the Federal Circuit.
Mr. Murphy has counseled clients and prepared numerous opinions analyzing patent validity and infringement issues, managed worldwide patent portfolios and lectured before international audiences on U.S. patent law and case law developments. Mr. Murphy served as the sole arbitrator in two arbitrations involving patent and licensing issues in the fields of DNA diagnostics and therapeutic monoclonal antibodies and has served as an expert witness in patent infringement litigations and an arbitration involving a patent license agreement.
Mr. Murphy chairs BSKB's annual Post Grant Bootcamp.
Articles & Presentations
- Estoppel Arising From PTAB Trials, Corporate Counsel, January 27, 2016
- Evidentiary Considerations in PTAB Trials, Corporate Counsel, January 26, 2016
- Getting The Last Word In PTAB Trials, Law360, November 25, 2015
- Supplementing the Record in PTAB Trials by Filing Supplemental Information, Bloomberg BNA's Patent, Trademark, & Copyright Journal, September 2015
- In re Cuozzo and the Broadest Reasonable Interpretation Standard – Should the Ability to Amend Be Relevant or Is It a Convenient Excuse?
- Pitfalls in the Second Phase of Post Grant Trials, Managing IP Webinar, May 2015
- Pitfalls in the First Phase of Post Grant Proceedings, Managing IP Webinar, April 2015
- Inter Partes Review and Limited Discovery: Garmin v. Cuozzo, BSKB's PostGrantProceedings.com
- Should You Use A Patent Practitioner Or Litigator For IPR?, Law360, March 25, 2013
- In re Yamazaki –Terminal Disclaimers and Reissue Applications, BSKB's PostGrantProceedings.com
- Case Study: In re Youman, Law360, May 11, 2012
- Inventorship and Ownership Considerations and Pitfalls with Collaborative Research, ACS Med. Chem. Lett., 2012, 3(5), pp 349-351.
- Teva v. AstraZeneca – Does an Inventor Need to Understand How a Prior Invention Works in Order to Have that Prior Invention Defeat Another’s Patent?, PLI Patent Law Practice Center, December 12, 2011
- Centocor v. Abbott Labs: When Is A Biotech Invention Complete And Ready For Filing?, PLI Patent Law Practice Center, February 28, 2011
- Goeddel v. Sugano: What's The Difference Between "Envisioning" An Invention And Being "In Possession" Of The Invention?, PLI Patent Law Practice Center, October 8, 2010
Speaking Engagements & Recognitions
- Speaking Engagement: Howard University's Institute for Intellectual Property and Social Justice Program, March 2017
- Speaking Engagement: PLI Patent Law Institute, 2009-2017
- Speaking Engagement: Japan Intellectual Property Association (JIPA) F8 Course, October 2016
- Speaking Engagement: WIPR Webinar, Obviousness in PTAB Trials for Chem/Pharma/Bio Patents, October 13, 2016
- Recognized by Legal 500 U.S. 2015 and 2016
- Speaking Engagement: Howard University Law School's 13th Annual IP Law Seminar
- Speaking Engagement: Innography Patent Masterminds Webinar, "Cuozzo Challenges Inter Partes Review: So What?", February 4, 2016
- Speaking Engagement: Managing IP Webinar, Pitfalls in Post Grant Trials, May 12, 2015
- Speaking Engagement: Managing IP Webinar, Pitfalls in the First Phase of Post Grant Proceedings, April 16, 2015
- Speaking Engagement: PLI Post-Grant USPTO Proceedings Seminar 2012
- Speaking Engagement: PLI "Reissue and Reexamination Strategies and Tactics with Concurrent Litigation" Seminar 2010 and 2011
- Genzyme Therapeutic Products Ltd. v. BioMarin Pharmaceutical Inc. [IPR Nos.
2013-00534 and -00537] 119 USPQ2d 1022 (Fed. Cir. 2016) – Enzyme Replacement
Therapy for Pompe Disease
- BioMarin Pharmaceutical, Inc. v. Duke University, IPR2013-00535 (PTAB 2015) –
Enzyme Replacement Therapy for Pompe Disease
- Chen (Mayo) v. Freeman (Dana-Farber) and Chen (Mayo) v. Kingsbury (Dana-Farber),
Interference Nos. 105,872, 105,884, 105,885, 105,887 and 105,901, Decision on Priority,
February 19, 2014 (PTAB 2014) – DNA, Protein and Antibodies related to Progammed
Death-Ligand 1 (PD-L1)