Turhan F. Sarwar

Overview

Turhan Sarwar is an experienced intellectual property attorney with a practice encompassing litigation and post-grant proceedings at the trial and appellate levels, IP portfolio development and licensing, and counseling regarding the prosecution of domestic and international patent and trademark applications.

Turhan has extensive experience with litigation strategy and procedure in federal and state courts, proceedings before the Patent Trial and Appeal Board (PTAB), and investigations before the US International Trade Commission (ITC). His litigation skillset covers cases from start to finish—including complaint and answer drafting, managing discovery, taking and defending depositions, working with expert witnesses to develop technical arguments, managing parallel PTO proceedings such as inter partes review (IPR), claim construction and summary judgment strategy, drafting and arguing motions, trial witness preparation, settlement negotiations, drafting licensing agreements, and appellate briefing.

Clients regularly turn to Turhan for advice related to patent prosecution, including analyzing office actions and applicant responses, drafting claims, and identifying areas for IP development within portfolios to align existing patent families with market shifts and evolving business strategies. He also oversees development of trademark portfolios for small businesses and start-ups, including through registrations, supplemental registrations, and oppositions.

Prior to practicing law, Turhan was a consultant at a biometrics consulting and integration firm conducting technology research for individual biometric modalities (fingerprint, iris, etc.), industry research for identity management and security applications, and feasibility and vulnerability analysis of specific biometric deployments for government and commercial clients.

Experience

Litigation and Post-Grant Proceedings

• Persuaded the Patent Trial and Appeal Board (PTAB) to (a) construe key claim terms favorably for potential non-infringement arguments in concurrent litigation and (b) cancel all claims asserted by Patent Owner's licensee against our client Infineon's smart card customers.  Leveraged IPR petitions to negotiate early pre-institution stays in concurrent litigations.  Patent Owner dismissed appeals of the final IPR decisions with prejudice.
• Represents Google in litigation and inter partes review proceedings concerning a variety of technology areas, including GPS, location services, face recognition, and consumer electronics.
• Represented Smith & Nephew before the United States District Court for the Eastern District of Texas in a twelve-patent litigation concerning orthopedic medical devices, and in related inter partes review and appellate proceedings.
• Represented ACTIV Financial Systems in inter partes review proceeding concerning distributed data pre-processing.
• Represented BTG International before the United States International Trade Commission in investigation involving antibody-based snake antivenom compositions.
• Represented Sony before the United States International Trade Commission in investigation involving telecommunications technology.
• Represented DEKA before the United States International Trade Commission in investigation relating to personal transporter devices in which client secured a General Exclusion Order.
• Represented plaintiff in seven-figure enforcement campaign concerning product photography that included copyright and DMCA litigation before the United States District Court for the District of Massachusetts.
• Aided in representing international advertising company in patent infringement and trade secret case concerning software for tracking advertising effectiveness.

Prior IP Experience

• Drafted office action responses and helped prosecute patents for major developer of wireless communication technology; aided in management, licensing, and enforcement of standards-essential IP portfolio.
• Aided in developing infringement theories for enforcement campaign for microprocessor manufacturer.
• Aided in representing sports equipment manufacturer in appellate litigation for patent and Lanham Act matter concerning bicycle components.
• Aided in management of international patent portfolio of manufacturer of discrete semiconductor devices and passive electronic components.

Prior Consulting Experience

• Conducted vulnerability and accuracy analysis for optical- and capacitance-based fingerprint sensors, iris scanners, face recognition scanners, and speaker/speech recognition technologies.

Recognition

• Repeatedly recognized on the Best Lawyers: Ones to Watch list by The Best Lawyers in America®
• Repeatedly named to the list of Massachusetts Rising Stars by Super Lawyers
• Ranked among the top 4% of best performing attorneys practicing before the PTAB by Patexia
• Earned Honors for excellence in Legal Writing and received the Exemplary Pro Bono Service Award in law school

Interests

Turhan enjoys writing fiction and is a proponent of cats and hats.