Surinder (Sach) Sachar is a partner and electrical technology patent attorney.

A former Patent Examiner with the United States Patent and Trademark Office (USPTO), Mr. Sachar handles patents from application through prosecution and has extensive experience in all aspects of patent prosecution, including bringing cases before the Patent Trial and Appeal Board (PTAB).

An electrical engineer by training, he has worked with high-technology inventions, including high-density optical recording devices and systems, semiconductors, displays, medical instruments, ultrasound devices, mobile communications systems, computers, TVs, consumer electronics, image forming equipment, and telecommunications devices.

For the past 33 years, Mr. Sachar has represented several leading global electronics companies headquartered in Japan helping to protect the intellectual property portfolios of their diverse technologies.

Mr. Sachar also offers opinions and counsels clients on the full range of patent issues, including the interplay of patents, methods to garner strategic and broad patent portfolio protection, and how to avoid infringement of competitor patents. With experience at the USPTO, where he specialized in the fields of magnetic and optical recording systems, Mr. Sachar understands its inner workings and possesses the depth of knowledge, experience, and success to craft the broadest enforceable patents to serve his clients’ business needs.

Michael R. Casey, Ph.D., is a partner with more than 25 years of experience in patent law including patent litigation, patent prosecution, post grant proceedings, and patent interferences. His practice focuses on all aspects of computer hardware and software, as well as circuit design and telecommunications.

Dr. Casey is experienced representing and counseling electronics and computer-technology clients — both foreign and domestic — on intellectual property law and related issues, including procurement, valuation, licensing and enforcement of intellectual property. His representations include patent litigations before a number of Federal District Courts; appellate arguments before the Federal Circuit; International Arbitrations; post-grant proceedings (including IPRs and CBMs); preparation of patent opinions relating to invalidity, non-infringement, and product clearances; patent preparation and prosecution (U.S. and foreign); and patent interferences.

Dr. Casey earned advanced degrees based on his research in Electrical and/or Computer Engineering, and is a co-author on numerous papers in the areas of distributed, heterogeneous, and mobile computing systems and operating system designs.

Dr. Casey’s technical background covers a variety computer-related technologies and medical device equipment. In the computer field, Dr. Casey’s experience includes circuit design (including parallel processing architectures and field programmable gate arrays); computational intelligence systems (including artificial intelligence (AI), neural networks, bioinformatics, and fuzzy logic), encryption software and applications (including blockchain, digital rights management (DRM) and PKI), computer networking software, hardware and algorithms, electronic commerce, computer graphics and animation, communications algorithms and hardware, and programming languages and methodologies. In the medical device field, Dr. Casey has represented clients in the fields of IV pumps and catheters for guidewires.

Mr. Kunin is a Partner at Maier & Maier PLLC, where he specializes in all areas of patent practice. His expertise includes post-issuance proceedings at the United States Patent Office, opinions of counsel, advising attorneys and our clients on complex patent prosecution matters, patent litigation strategy, and United States Patent Office patent policy, practice and procedure, for which he is highly sought after for expert testimony. Mr. Kunin has presented expert testimony covering numerous subjects, including:

1. Duty of candor and good faith (inequitable conduct)
2. Subject matter eligibility and utility
3. Restriction practice and double patenting
4. Inventorship
5. Declaration/affidavit practice
6. Certificates of correction
7. Petitions practice
8. Reexamination and reissue
9. Interferences
10. Ownership
11. Statutory disclaimers
12. Written description
13. Date of public availability of abandoned applications referenced in prior art publications
14. Prosecution laches
15. Right of priority under Paris Convention

In addition to serving as an expert witness, Mr. Kunin has vast experience in providing lectures on recent US patent law developments across the USA, Europe and the Far East.  He has more than 48 years of experience in the patent profession.

After graduating from Washington University (MO) with a Bachelor’s in Science in Electrical Engineering with honors in 1970, Mr. Kunin embarked on his lengthy career over nearly 35 years at the United States Patent Office. He received his JD in law degree with honors in 1975 from The National Law Center at George Washington University. He held many significant positions with the USPTO, which culminated with ten years of service as the Deputy Commissioner for Patent Examination Policy from 1994-2004. While at the USPTO, he was a leading voice in forming patent policy, in revising examination guidelines on subject matter eligibility, utility, non-obviousness and written description, and in establishing reissue and reexamination procedures. Mr. Kunin spearheaded revisions to the Rules of Practice and Manual of Patent Examining Procedure, making key changes to chapters on ex parte reexamination, reissue, and inter partes reexamination.

Since leaving the PTO, Mr. Kunin has been a practicing patent attorney for more than 13 years counseling clients in post-grant patent proceedings at the USPTO and routinely serves as an expert witness in patent litigation cases. He is a registered patent attorney with the USPTO, and admitted to practice in the Commonwealth of Virginia, before the U.S. Court of Appeals for the Federal Circuit, and before the United States Supreme Court. From 2005 through 2017, Mr. Kunin served as the Intellectual Property Program Director at the Antonin Scalia School of Law at George Mason University, while teaching patent and intellectual property law classes as an adjunct professor of law.

Over the course of his illustrious career, Mr. Kunin has received many notable awards, including the Meritorious Executive Presidential Rank Award, The Vice President’s Reinventing Government Hammer Award , four Gold Medals, three Silver Medals, and one Bronze Medal from the Department of Commerce, and a Career Achievement Award from the USPTO. He was named one of Intellectual Property Today’s most influential people in IP law, in May of 2018 he was named one of Managing Intellectual Property’s “IP stars,” and he was also recognized by IAM Patent 1000 in the field of Patent Law.

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Upcoming Speaking Engagements

• “Best Practices for Global Patent Protection: Prosecuting a Worldwide Portfolio” webinar scheduled for Thursday, November 15, 12:00pm EST.
• “Patent Eligibility Post-Alice: Navigating the Nuances, Guidance From the Federal Circuit, the PTAB, and the USPTO” webinar scheduled for Tuesday, December 11, 1:00pm-2:30pm EST.
• “2019 Leahy Institute of Advanced Patent Studies” at the Naples Roundtable on Tuesday, February 19, 9:00-10:00am.
• “Section 101 Updates: Technology” at UT Law CLE 14th Annual Advanced Patent Law Institute Thursday, March 21, 10:15-11:00am EST.
• “Patent Masters Symposium” with IPWatchdog on March 25-26, 2019 from 8:30am-5:00pm EST. Early Bird Registration available until December 31st, 2018.

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Representative Patent Expert Witness Engagements

• Afilias PLC v. Architelos, Inc., et al.* (No. 1:15cv0014 (LMB/JFA)), United States District Court, Eastern District of Virginia [report, deposition & trial]
• American Sales Company, LLC, Rochester Drug Co-Operative, Inc. v. Pfizer, Inc., G.D. Searle LLC and Pfizer Asia Pacific PTE, Ltd.* (Civil Action Nos. 2 :14-cv-00361-AWA-DEM), United States District Court, Eastern District of Virginia [rebuttal report & deposition]
• Amgen Inc. et al. * v. Sanofi-Aventis et al. (Civil Action No. 1:14-CV-01317-SLR), United States District Court, District of Delaware [report & deposition]
• Amneal Pharmaceuticals, LLC v. Supernus Pharmaceuticals, LLC* (Case Nos. IPR2013-00368,00371 and 00372) USPTO PTAB [declarations and deposition]
• Bal Seal Engineering, Inc.* v. Nelson Products, Inc., Carl Nelson, and DOES 1-5 (Case No. SACV13-01880 JLS (KESx), United States District Court for the Central District of California [declaration & deposition]
• Cave Consulting Group, Inc.* v. OptumInsight, Inc. (Case No. 3:15-cv-03424). U.S. District Court for the Northern District of California, San Francisco Division [report, amended report, supplemental report & deposition]
• DRIT LP* v. Glaxo Group Limited and Human Genome Sciences, Inc. (C.A. No. N16C-07-218 WCC CCLD), Superior Court of the State of Delaware [report & depostion]
• Elbit Systems Land and C4I Ltd., et al.* v. Hughes Network Systems, LLC et al., (C.A. No. 2:15-cv-00037-RWS-RSP), United States District Court for the Eastern District of Texas, Marshall Division [report, rebuttal report & deposition]
• Eli Lilly & Company* v. Government of Canada, (Case No. UNCT/14/2), In the Arbitration under the Arbitration Rules of the United Nations Commission on International Trade Law and the North American Free Trade Agreement [report, reply report & arbitration]
• Energy Heating, LLC, and Rocky Mountain Oil Field Services, LLC and Marathon Oil Corporation and Marathon Oil Company* v. Heat-On-The Fly, LLC and Superheaters North Dakota, LLC (Case No. 4:13-cv-010-RRE-ARS), United States District Court for the District of North Dakota, Northwestern Division [report, deposition & trial]
• Enventure Global Technology, Inc.* v. Mohawk Energy Ltd., et al. (Civil Action No. 4:15-cv-1053), United States District Court for the Southern District of Texas [rebuttal report & declaration]
• Enzo Life Science, Inc. v. Abbott Laboratories et al.* (Civil Action No. 12-274-LPS), United States District Court for the District of Delaware [report, reply report & deposition]
• Ethox Chemicals, L.L.C. et al.* v. The Coca-Cola Company (Civil Action No. 6:12-cv-01682-TMC), United States District Court, District of South Carolina, Greenville Division [report, deposition, supplemental report & trial]
•  Fresenius Kabi USA, LLC v. Fera Pharmaceuticals, LLC, Oakwood Laboratories, LLC and Maia Pharmaceuticals, Inc.* (Civil Action No. 2:15-cv-3654-KM-MAH), United States District Court, District of New Jersey [report, reply report & deposition]
• Gilbert P. Hyatt v. Joseph Matal*, (Civil Action Nos.: 1:09-cv-1864 (RCL), 1:09-cv-1869 (RCL), 1:09-cv-1872 (RCL) and 1:05-cv-2310 (RCL)), United States District Court, District of Columbia [report, rebuttal report deposition & trial]
• Gilead Sciences, Inc. and Emory University v. Mylan Inc. and Mylan Pharmaceuticals Inc.*, (Case No. 1:14-cv-99-IMK-JSK), United States District Court, Northern District of West Virginia, Clarksburg [report]
• Greg Barela v. Brock USA, LLC, d/b/a Brock International*, JAG Arbitration No. 2015-1031A (The Honorable Boyd N. Boland) [report & declaration]
• IFM Therapeutics, Inc.* v. Lycera Corp., C.A. 17-cv-608 (LPS), United States District Court, District of Delaware [report]
• Immunex Corporation, Amgen Manufacturing, Limited and Hoffman-La Roche Inc.* v. Sandoz Inc., Sandoz International GMBH and Sandoz GMBH, (Civil Action No. 2:16-cv-01118-CCC-MF), United States District Court for the District of New Jersey [report & deposition]
• Immunomedics, Inc. v. Roger Williams Medical Center, Richard P. Junghans, M.D., Ph.D., and Steven C. Katz, M.D.* (Civil Action No. 2:15-cv-04526-JLL-SCM), United States District Court for the District Of New Jersey [report]
• In re Biogen ’755 Patent Litigation, Civil Action No. 2:10-cv-02734 (CCC)(JBC), United States District Court, District of New Jersey [report for EMD Serono, Inc. and Pfizer, Inc.* and deposition]
• In re Certain Dental Implants, (Investigation No. 337-TA-934), United States International Trade Commission, Washington, D.C. [report for Nobel Biocare*, deposition, rebuttal witness statement]
• In re Certain Recombinant Factor VIII Products (Investigation No. 337-TA-956), United States International Trade Commission Washington, D.C. [report, rebuttal witness statement for Baxter* & deposition]
• iRadar SDN BHD v. Nuctech Company Limited and Tsinghua University*, (Guaman Sivil Ni. 22IP-61-11/2015), Dalam Mahkamah Tinggi Malaya Di Kuala Lumpur [affidavit]
•  Janssen Biotech, Inc. & New York University* v. Celltrion Healthcare Co., LTD., Celltrion, Inc. and Hospira, (Civil Action No. 1:15-cv-10698). United States District Court, District of Massachusetts [declaration]
• Legacy Separators, LLC v. Halliburton Energy Services, Inc. and J. Wayne Richards*, Civil Action No. 4-14-cv-02081 (Lead Case), United States District Court, Southern District of Texas [report]
• LEO Pharma A/S, LEO Laboratories Limited, and LEO Pharma, Inc., v. Actavis Laboratories UT, Inc.*, (C.A. No. 16-333-JFB-SRF), United States District Court for the District of Delaware [report]
• LifeNet Health* v. LifeCell Corporation, (Civil Action No. 2:13cv486-HCM-DEM), United States District Court, Eastern District of Virginia, Norfolk Division [report, deposition & trial]
• Lifetime Products, Inc. v. Maxchief Investments, Ltd. et al.*, (American Arbitration Association Case No. 01-15-0003-4448), AAA International Centre for Dispute Resolution [ report ]
• MacroPoint, LLC* v. FourKites, Inc, (Civil Action No. 1:15-cv-1002), United States District Court for the Northern District of Ohio [declaration]
• Masimo Corporation* v. Mindray DS USA, INC. and Shenzhen Mindray Bio-Medical Electronics Co., LTD, (Civil Action No. 2:15-cv-0457 (SDW)(SCM)), United States District Court, Central District of California, Southern Division [rebuttal report and deposition]
•  Nalco Company, LLC* v. Baker Hughes Incorporated and Baker Petrolite Corporation, (Civil Action No. 4:09-cv-01885), United States District Court, Southern District of Texas [report]
• Nalu Kai Incorporated, dba “Naish Sails Hawait”* v. Hawaii Airboards, LLC, (Case No. 1:14-cv-112-LEK-RLP), United States District Court, District of Hawaii [report]
• Nippon Steel & Sumitomo Metal Corporation* v. POSCO and POSCO America Corporation, (Civil Action No. 2:12-cv-02429-DMC-MF), United States District Court, District of New Jersey [report & deposition]
• ORBCOMM, Inc.* v. CalAmp Corp., (Civil Action No. 3:16-cv-208), United States District Court, Eastern District of Virginia [report & deposition]
• Papst Licensing GmbH & Co. KG v. LG Electronics, Inc. et al., Samsung Electronics Co., Ltd., et al., ZTE (USA), Inc., Lenovo (United States) Inc. and Motorola Mobility, Inc.,* (Case Nos. 6:15-cv-1099-RWS, 6:15-cv-1102-RWS, 6:15-cv-1100-RWS and 6:15-cv-1111-RWS), United States District Court for the Eastern District of Texas [report]
• Sanofi-Aventis U.S. LLC, Genzyme Corp., and Regeneron Pharmaceuticals, Inc. v. Immunex Corporation* (Case IPR2017-01879), United States Patent and Trademark Office, before the Patent Trial and Appeal Board [declaration]
• Sanofi-Aventis U.S. LLC, Genzyme Corp., and Regeneron Pharmaceuticals, Inc. v. Immunex Corporation* (Case IPR2017-01884), United States Patent and Trademark Office, before the Patent Trial and Appeal Board [declaration]
• Separation Design Group IP Holdings, LLC v. Inogen, Inc.*, Case No. 2:15-cv-08323-JAK-(JPRx), United States District Court, Central District of California [report, declaration]
• Shire LLC* v. Amerigen Pharmaceuticals Limited, (Civil Action No. 14-6095 (RMB/JS)), United States District Court, District of New Jersey [report, & deposition]
• TAS Energy Inc.* v. Stellar Energy Americas, Inc. (Case No. 8:14-cv-3145-T-30MAP), United States District Court, Middle District of Florida [declaration & counter-declaration]
• The University of Utah v. Max-Planck-Gesellschaft E.V., Max-Planck-Innovation GmbH, Whitehead Institute for Biomedical Research, Massachusetts Institute of Technology, Alnylam Pharmaceuticals, Inc., Robert L. Caret, James R. Julian, Christina M. Wilda and James P. McNamara*, (Civil Action No. 1:11-cv-10484), United States District Court, District of Massachusetts [report & deposition]
•  Wisconsin Alumni Research Foundation* v. Apple Inc., (Case No. 14-cv-00062-WMC), United States District Court, Western Division of Wisconsin [report & deposition]

Mr. Pandit’s practice focuses on patent litigation, where his experience includes jury trials, mediations, International Trade Commission Investigations, and Federal Circuit appeals.  Mr. Pandit has litigated cases on a diverse range of technologies, including telecommunications, E-911, location based services, board games, children’s tricycles, credit card systems, do-not-call lists, vehicle tracking systems, snake anti-venoms, and wireless power management and interference.  While Mr. Pandit has litigated in a number of venues around the country, he appears most frequently in the Eastern District of Texas, District of Delaware, and the Eastern District of Virginia.

Mr. Pandit is registered to practice before the U.S. Patent and Trademark Office, and has filed post-grant requests (including ex parte reexaminations and Inter Partes Reviews) of patents asserted in litigation matters in which he represents alleged infringers.  Earlier in his career, Mr. Pandit used his background in Electrical Engineering to prepare and prosecute patent applications and draft opinions of counsel.

Outside the context of litigation, Mr. Pandit has represented clients with intellectual property issues related to bankruptcy proceedings and mergers and acquisitions.  Most notably, in a prior position, Mr. Pandit represented a client in a $500 million acquisition of an open-source virtualization company.  Through this and other representations, Mr. Pandit has acquired substantial experience with open-source copyright issues, trade secrets, standards setting bodies, and FRAND issues.  Mr. Pandit also represented Grand Central Communications until it was purchased by Google, where its services are now known as Google Voice.

Mr. Pandit has also served as the de facto in-house IP counsel for a telecommunications company, where he supervised outside counsel for both patent prosecution and litigation.  In doing so, Mr. Pandit worked directly with the General Counsel and Chief Technology Officer to supervise and guide strategy related to the company’s patent prosecution and litigation.  Additionally, Mr. Pandit handled typical in-house duties, including reviewing intellectual property related contract issues, billing issues, press-releases, and best practices.

Mr. Pandit enjoys mentoring younger attorneys and law students, and has served as a Clinical Adjunct Professor at the University of Maryland Law School, where he taught a Patent Law Clinic.

Mr. Pandit currently serves on the Advisory Board of a health care technology company.

Prior to entering the legal field, Mr. Pandit worked at the National Institutes of Health in the Laboratory of Cellular and Molecular Neurophysiology, where he researched and wrote on signaling modalities between neurons and glial cells in the nervous system.  In 2002, Mr. Pandit co-authored the article, “Astrocytes in Adult Rat Brain Express Type 2 Inositol 1,4,5-Trisphosphorate Receptors.” (Glia, May 10, 2002).

Mr. Pandit received his B.S.E.E. from the George Washington University in 2001 and his J.D. from the Catholic University of America Columbus School of Law in 2006. Mr. Pandit is admitted to practice in the District of Columbia, Virginia, the U.S. District Court for the Eastern District of Texas, the U.S. District Court for the Eastern District of Virginia, and the U.S. Court of Appeals for the Federal Circuit.  He is also registered to practice before the United States Patent and Trademark Office.

Representative Engagements

• Cassidian Communications, Inc. v. microDATA GIS, Inc., et al., E.D.Tex., 2:12-cv-162 (before Judge Gilstrap, on behalf of microDATA GIS, Inc. and TeleCommunication Systems, Inc.) – After a five day trial, obtained a jury verdict of invalidity and non-infringement in a case involving 9-1-1 call routing technology.
• TracBeam, L.L.C. v. T-Mobile US, Inc., E.D.Tex., 6:14-cv-678 (on behalf of Defendant) – Represent Defendant in suit involving commercial and 9-1-1 location based services technology.  The case is currently pending.
• Certain Antivenom Compositions and Products Containing the Same, 337-TA-903 (on behalf of one of the Respondents) – settled favorably before trial.
• TracBeam, L.L.C. v. AT&T Inc. et al., E.D.Tex., 6:14-cv-680 (on behalf of MetroPCS Communications, Inc. and MetroPCS Wireless, Inc.) – Represented defendants in a suit involving commercial and 9-1-1 location based services technology.  The case was dismissed without prejudice.
• Levine v. Samsung Telecommunications America, LLC, et al., E.D.Tex., 2:09-cv-372 (on behalf of Cellco Partnership d/b/a Verizon Wireless) – Represented one of several defendants in a suit involving navigation technology on mobile devices.  Settled favorably before trial.
• TeleCommunication Systems, Inc. v. Alfred B. Levine, E.D.Tex., 2:11-cv-430 (before Judge Gilstrap) – Represented the Declaratory Judgment Plaintiff in a suit involving navigation technology on mobile devices.  Settled favorably before trial.
• Tendler Cellular of Texas, LLC v. MetroPCS Communications, Inc., et al., E.D.Tex., 6:11-cv-178 and 6:11-cv-619 (on behalf of MetroPCS Communications, Inc. and MetroPCS Wireless, Inc.) – Represented defendants in a patent case involving navigation functionality of mobile devices. Settled favorably before trial.
• Traffic Information, LLC v. Yahoo! Inc. et al., E.D.Tex., 2:09-cv-246 (on behalf of The American Automobile Association, Inc. and RM Acquisition, LLC d/b/a Rand McNally & Company) – Represented defendants in a patent case involving location based services related to mobile devices.  Settled favorably before trial on behalf of six defendants.
• Traffic Information, LLC v. Huawei Technologies, Co., Ltd. et al., E.D.Tex., 2:10-cv-145 (on behalf of MetroPCS Wireless, Inc. and Cellular USA Inc.) – Represented defendants in a patent case involving location based services related to mobile devices.  Settled favorably before trial on behalf of six defendants.
• Traffic Information, LLC v. Cricket Communications, Inc. et al., E.D.Tex., 2:10-cv-226 (on behalf of Cricket Communications, Inc. and Networks In Motion, Inc.) – Represented defendants in a patent case involving location based services related to mobile devices.  Settled favorably before trial on behalf of six defendants.
• Smart Trike USA, LLC v. Heinz Kettler GmbH, et al., New Jersey, Civil Action No. 2:10-cv-02063 (FSH) (on behalf of Plaintiff / Counterclaim-Defendant) – Representing U.S. tricycle distributor in declaratory judgment action for non-infringement, invalidity, and unenforceability against patent holder of four patents related to the steering mechanisms in tricycles.  Case settled favorably after four days of trial.
• In re Certain Modified Vaccinia Ankara (MVA) Viruses and Vaccinations made therefrom, ITC, Inv. No. 337-TA-550 (on behalf of Complainant) – Provided litigation support in this hotly contested patent infringement case brought in the International Trade Commission, which ultimately led to a settlement with the accused infringers, who agreed to vacate the market for the patented small pox vaccines.
• Gryphon Networks Corp. v Contact Center Compliance Corp., D. Mass., 1:10-cv-10258 (on behalf of Contact Center Compliance Corp.) – Represented defendant in a suit involving a national do-not-call list.

Other Publications

Lecturer, Patent Prosecution And Litigation, University of Maryland Technology Development Center (November 2008).

Chris Ohslund is a registered patent attorney and practices all aspects of patent prosecution and patent litigation, including post-grant proceedings at the USPTO, patent portfolio landscape analysis, management, and development, and opinion work. Chris has experience prosecuting patents in a variety of technological fields, including mechanical engineering, robotics and mechatronics, electrical and computer engineering, software, computer-implemented business methods, and medical device technologies.

Prior to becoming a patent attorney, Chris clerked for Maier and Maier as a technical advisor.