Sunstein LLP

KEY FACTS

Managing Partner: Kerry L. Timbers

Founding Partner: Bruce D. Sunstein

Attorneys: 29

Primary Practices: Litigation, Patent, Trademark, Business

Location: Boston, Massachusetts

OVERVIEW

Sunstein LLP is a premier boutique intellectual property firm that provides high-quality patent and trademark counseling, prosecution, and enforcement services with a focus on implementing legal strategies that advance clients’ business goals. For decades, the firm has developed and managed the IP portfolios of innovative companies spanning robotics, technology, pharmaceuticals, medical devices, chemicals, energy, manufacturing, logistics, education, apparel, and more.

Sunstein’s core practices include:

• Litigation: Sunstein’s trial lawyers are unwavering in advocating the interests of clients.

• Patent: Sunstein’s Patent Practice Group helps clients create valuable patent portfolios with an eye toward advancing their business objectives.

• Trademark: Sunstein’s Trademark Group counsels clients in brand selection and protection, tailoring brand strategies to fit clients’ business needs.

• Business: Sunstein’s Business Group offers a variety of corporate legal services, working to help clients develop business structures that achieve the long-term goals of investors and management.

PROFESSIONALS

Sunstein’s experienced attorneys have notched countless victories at trial and USPTO proceedings and contributed to the body of law through published opinions. The firm’s experienced and knowledgeable attorneys work in close-knit teams to assist organizations ranging from start-ups to Fortune 100 companies with their domestic and international patent and trademark matters, beginning with prosecution and extending through enforcement and litigation. The attorneys consult on long-term IP strategy, and draft, file, and negotiate with the USPTO to secure patents and register trademarks. The firm enforces IP rights through patent, counterfeit, and trademark monitoring, acting against infringers by working closely with regulatory agencies and law enforcement globally.

RECENT RESULTS

• Exergen Corporation vs. Kaz, USA, Inc.

Sunstein’s litigation team won a jury verdict for our client Exergen, resulting in a $16 million judgment against Kaz, the maker of consumer products sold under the Vicks and Braun brands. Despite Kaz’s multiple challenges to the twelve patent claims asserted by Exergen, the jury upheld the validity of all of them, and found that the forehead thermometers sold by Kaz infringed those claims. Exergen is a Watertown, MA-based manufacturer and seller of thermometers for both the professional and consumer markets.

• Ingenico Inc. v. IOENGINE, LLC

Sunstein obtained a sweeping jury verdict win in a patent infringement lawsuit for Ingenico Inc., a global provider of point of sale payment terminals, software, and services. Sunstein also filed multiple petitions for IPR, successfully invalidating over 150 of the patent claims in IOENGINE’s three asserted patents. The exhaustive discovery process included tens of thousands of documents, 20-plus depositions (including multiple depositions of third parties in Israel), and significant third-party discovery. Notably, Sunstein challenged the methodology by which IOENGINE’s damages expert calculated reasonable royalty damages, prompting the court to exclude the expert’s testimony. After four days of testimony, the jury found that all claims were either not infringed or were invalid.

• KPM Analytics North America Corp. v. Blue Sun Scientific LLC et al.

Sunstein received a jury verdict for $5 million in a trade secret lawsuit for client KPM Analytics. After a rigorous two week trial, the jury agreed that KPM, a scientific equipment supplier, was owed $4.9 million for trade secret misappropriation, unfair and deceptive trade practices, and contract breaches. The jury found that Blue Sun unlawfully used KPM information and that it and the four former KPM employees stole trade secrets and violated non-disclosure agreements and good faith covenants.

• Sage Therapeutics, Inc. v. Sage Naturals, Inc.

On behalf of client Sage Therapeutics, Sunstein brought suit against a medical marijuana dispensary using the name Sage Naturals. Sage Therapeutics is committed to developing novel medicines to treat patients suffering from depression and other CNS disorders. Sage Naturals subsequently changed its name to Sira Naturals.

FUTURE GENERATIONS

Since 2018, Sunstein attorneys have been teaching a pro bono course in partnership with New England Law | Boston and Perspectives in Law: CHHEP Law Firm “Practicum.” Through this unique course, underrepresented law school students earn law school credit while also learning a crucial skill they may not ascertain from traditional law school courses: the real nuts and bolts of how to succeed at a law firm. While submerged in law firm culture, Practicum students are mentored by leaders at Sunstein and discuss topics from how to develop a professional identity to trial preparation and how to draft trademark applications. Since the program’s launch, nearly 30 students have participated, one of whom is now an associate at the firm.