Michael R. McGurk
Mike McGurk has over 25 years of experience in IP matters involving all aspects of patent law, primarily in pharmaceutical, chemical, medical device, and mechanical technologies, including robotics. Mr. McGurk works with a range of clients including small startups and large Fortune 100 companies.
Mr. McGurk's practice includes due diligence matters; opinion work; global portfolio development, strategy, and management; as well as adversarial proceedings, including litigation, interferences and reexaminations. 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 represented clients in patent litigations filed in numerous U.S. district courts, including E.D. New York, D. Delaware, E.D. Texas, D. District of Columbia, and E.D. Washington. He has also been responsible for handling over a dozen patent interferences before the Patent Trial and Appeal Board of the U.S. Patent Trademark Office (PTAB) (formerly the U.S. Board of Patent Appeals and Interferences), and he has argued numerous appeals to the Board in ex parte matters.
- Pro bono work on behalf of veterans that contributed to Finnegan donation of $75,000 to Homes for Our Troops, 2011.
- Served as an adjunct professor at George Mason University Law School teaching patent litigation and dispute resolution, 1998-2000.
- Successfully argued in Toxgon v. Duratek litigation in E.D. Washington that Toxgon's $690 million dollar patent infringement claim against Duratek should be dismissed with prejudice on summary judgment.
- Served as managing partner of the firm's Boston, Mass., office,
- Submission to Senator Leahy on behalf of Boston Patent Law Association on certain provisions of S1145, Patent Reform Act of 2007.
- Served at the USPTO as a patent examiner in the chemical arts, 1983.
- Recognized as a leader in the field of intellectual property law by Chambers USA, 2013-2014.
- Boston Bar Association (co-chair, IP Law Committee, 2011-present)
- Boston Patent Law Association (co-chair, Licensing Committee, 2014; co-chair, Contested Matters Committee, 2005-2011)
- 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
- Coauthor. "Building a Strong Robotics IP Portfolio," Managing Intellectual Property, Chinese Edition, Dec. 2014.
- Coauthor. "IP Due Diligence," The Corporate Counselor, July 2014.
- Coauthor. "Patents or Trade Secrets: The Choice Is Yours," Robotics Business Review, May 1, 2014.
- Coauthor. "Presenting Due Diligence Results without Revealing Confidential Information—Is It Possible?" China IP News, April 9, 2014.
- Coauthor. "IDS Practice After Therasense and the AIA: Decoupling the Link Between Information Disclosure and Inequitable Conduct," Santa Clara Computer & High Technology Law Journal, May 23, 2013.
- Coauthor. "Deciding Whether to Institute a Litigation Hold," Law360, April 10, 2013.
- Coauthor. "Correcting Inventorship During Litigation: When, Why, How," Law360, July 31, 2012.
- "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.