Michael R. McGurk

Partner

Mike McGurk has over 25 years of experience in IP matters involving all aspects of patent law, primarily in the pharmaceutical, chemical, medical devices, mechanical, and alternative energy technologies. Mr. McGurk works with a range of clients including small start-ups and large Fortune 100 companies.

Mr. McGurk’s current practice includes a mix of due diligence matters, opinion work, global portfolio strategy, management and guidance, as well as client counseling on interference, reexamination, and reissue matters. He has substantial due diligence experience in pre-litigation, acquisition, in-license, freedom to operate product and/or process clearance, design around, and validity and patentability matters. Mr. McGurk has been responsible for handling over a dozen patent interferences before the Board of Patent Appeals & Interferences and has argued numerous appeals to the Board in ex parte appeals. In addition to his mediation and arbitration experience, he has represented clients in patent litigations filed in numerous district courts, including the E.D. N.Y., D. Del., E.D. Texas., D. D.C., and E.D. Wash.

Highlights

• Representing Vertex Pharmaceuticals, Energy Sciences, Cubist Pharmaceuticals, Shell Oil, Paradigm Spine, Spine Wave, Otsuka America Pharmaceuticals, Otsuka, and Anulex in multi-million dollar due diligence transactions and other matters.
• Representing Mannington Mills, Duratek, Global Payment Technologies, and Arkema in district court litigations involving diverse technologies covering flooring products, radioactive waste disposal, gaming equipment, and stabilizer chemistry for vinyl halide resins - all cases favorably resolved.
• Successfully argued in Toxgon v. Duratek litigation in E.D. Wash. that Toxgon’s $690 million dollar patent infringement claim against Duratek should be dismissed with prejudice on summary judgment.
• Submission to Senator Leahy on behalf of Boston Patent Law Association on certain provisions of S1145, Patent Reform Act of 2007.
• Served as an adjunct professor at George Mason University Law School teaching patent litigation and dispute resolution (1998-2000).
• Served at the U.S. Patent and Trademark Office as a patent examiner in the chemical arts (1983).

Professional Activities

• Boston Bar Association
• Boston Patent Law Association
• District of Columbia Bar Association (Sections on Patent, Trademark, and Copyright Law)
• Pennsylvania Bar Association
• Federal Circuit Bar Association
• American Bar Association (Sections on Litigation, Patent, Trademark, and Copyright Law)
• American Intellectual Property Law Association (Chair, Public Information Committee, 1996-1998)
• American Chemical Society

Select Publications

• "High Court's Ruling in Patent Case Could Hit Hub Hard," Boston Business Journal, Nov. 21-27, 2008.
• "Lack of Patent Due Diligence can be a Deal-Killer," Mass High Tech, March 2007.
• Coauthor. "Electronic Discovery," IP Law Update 2004, 2004.
• "On the Paperless Trail: Evidentiary Value of Electronic Lab Notebooks," IP Law Update 2004, 2004.
• Coauthor. Report: The American Inventors Protection Act of 1999, Dec. 1999.
• "Developing An Effective Patent Strategy: A Brief Overview," INDA-TEC, 1998.
• "Licensors Hate Them, Licensees Adore Them: The Most Favored Licensee Provision," Les Nouvelles, 1997.