Tim’s extensive experience includes patent office litigation matters such as patent interference proceedings, Inter Partes Review and reexamination proceedings. He has shaped and executed winning strategies in patent litigations. In helping clients achieve their business goals, Tim devises strategies for maximizing the value of patent portfolios for litigation, licensing or acquisition. He develops and implements strategies for protecting his clients’ key technologies and for avoiding allegations of infringement.
By working closely with clients to understand their business goals and inventions, Tim has developed intellectual property portfolios that have provided significant value to our clients. Tim has worked with clients of all sizes, and he takes a special interest in protecting the intellectual property portfolios of our clients as they grow.
The technologies that Tim has handled are wide-ranging and include: mechanical and electromechanical devices, such as electric motors, scanners and plotters, printing press technology, IV delivery systems, blood-processing equipment, surgical instruments, diagnostic equipment, HVAC, and clean room systems; hardware and software inventions, such as image-processing systems, sound-processing systems, magnetic-resonance imaging, various types of tracking devices, remote-control devices, file servers, and web-based business methods; as well as recombinant proteins, antisense oligonucleotides, and a variety of pharmaceutical matters.
Tim has also worked with clients to help ensure their products do not infringe third-party patents. He has decades of experience conducting clearance studies where the competitor’s patent was determined to be invalid, or where the client’s product was determined not to infringe.
In other situations, Tim has provided guidance to clients to successfully design around competitors’ patents. Tim also has a great deal of experience preparing clearance opinions, when necessary for protecting clients from charges of willful patent infringement.
Representative cases include:
Prior to joining Sunstein, Tim worked in New York and California in the legal department of a large, multinational computer manufacturer.
Selected by peers for inclusion in Best Lawyers in America® 2019-2021 for Intellectual Property Litigation.