Stephen Kunin

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.

Upcoming Speaking Engagements

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]
  • Education
    • BS, Electrical Engineering, Washington University (MO)
    • JD, George Washington University Law School
    • John F. Kennedy School of Government, Harvard University
      • Senior Managers in Government Program
  • Admission
    • Commonwealth of Virginia
    • US Court of Appeals for the Federal Circuit
    • Supreme Court of the United States
    • United States Patent and Trademark Office
  • Membership
    • American Intellectual Property Law Association (AIPLA), Patent Cooperation Treaty Committee, Vice-Chair (2011-present), Industry Trilateral Working Group member (2008-present), Quarterly Law Journal, Editorial Board Member (2005-2007)
    • The Center for the Advanced Studies Research on Intellectual Property at the University of Washington's School of Law in Seattle, Washington, Advisory Committee Member (2005-2017)
    • Intellectual Property Owners Association, Patent Office Practice (U.S.) Committee (2005-2008); U.S. Patent Law Committee, Member (2011 - current)
    • IP Law360, Editorial Advisory Board (2010)
    • Licensing Executives Society
    • Federal Circuit Bar Association
    • American Bar Association