Sean McCarthy is an experienced litigator who focuses on technology-related patent disputes in U.S. district courts, the U.S. International Trade Commission (ITC), and the U.S. Patent and Trademark Office (USPTO). He has comprehensive experience managing all phases of litigation, including pre-suit investigation, discovery (including third-party discovery), dispositive motions, pretrial proceedings, and appeals. He also represents both patent owners and petitioners in Inter Partes Review proceedings before the Patent Trial and Appeal Board and has argued before the U.S. Court of Appeals for the Federal Circuit.

Beyond litigation, Sean advises clients on patent strategy, with expertise in conducting freedom-to-operate analyses and preparing legal opinions on non-infringement and invalidity.

Sean’s strong technical background in mechanical engineering enables him to bring deep knowledge to a wide range of industries and technologies, including: consumer products, industrial equipment, laser toner cartridges, LED lighting, medical devices and imaging systems, and smartphone devices, among others.

Before joining RJLF, Sean spent over a decade at Venable LLP, following its acquisition of Fitzpatrick, Cella, Harper & Scinto. During that time, he handled general case management, took and defended dozens of depositions (both fact and expert witnesses), argued discovery and summary judgment motions, and served as lead drafter for a broad range of substantive briefs. He also authored appellate briefs and presented oral arguments before appellate courts.

Sean also shares his knowledge as an adjunct professor in the Mechanical Engineering Department at Manhattan University (formerly Manhattan College), where he teaches Legal Aspects of Engineering to senior and graduate engineering students. During law school, Sean participated in the Brooklyn Law Incubator & Policy Clinic, assisting entrepreneurs with copyright, patent, and trademark matters. He also interned with the Honorable Denis R. Hurley of the United States District Court for the Eastern District of New York and served as associate managing editor of the Brooklyn Journal of International Law.

Representative Matters

• Successfully represented Koninklijke Philips, a global leader in health technology, on appeal before the Federal Circuit. This included drafting the appellate brief and delivering oral arguments to defend the PTAB’s decision, which found all challenged claims of a health monitoring and alert system unpatentable as obvious. The decision was affirmed.

• Represented Canon, a leading global imaging and optical products company, in enforcing its patents on laser toner cartridge and container technology before the International Trade Commission, resulting in issuance of three General Exclusion Orders.

• Represented Tristar Products, an industry-recognized worldwide leader in direct-to-consumer products, in a breach of contract case involving an exclusive licensing agreement to patents relating to expandable garden hoses. Representation led to a favorable settlement on the eve of trial.

• Defended a national railroad company in patent litigation relating to remote safety control systems. Presented opening statements to magistrate judge and party representatives at a settlement conference. Representation led to a favorable settlement.

• Defended Prudential in a trade secret case in which it was accused of wrongly acquiring and using alleged trade secrets to develop its annuity products. Summary judgment awarded and affirmed on appeal.

• Defended Candid against a patent infringement assertion by its competitor, SmileDirectClub on patents relating to teleorthodontics. Successfully invalidated the asserted patent on a Rule 12(b) motion arguing that the claims were directed to patent-ineligible subject matter under Section 101. Represented Candid on appeal, and the decision was affirmed. Represented Candid in a follow-on litigation involving a family-member patent brought in the Western District of Texas following the initial 101 ruling in the District of Delaware. Successfully obtained transfer of the follow-on case from Texas to Delaware under the “first-to-file” rule after Judge Albright found “blatant forum shopping” by SDC. Based on the initial 101 ruling, the Federal Circuit affirmance, and Judge Albright’s transfer, SDC unilaterally granted Candid a covenant not to sue to divest the Delaware court of jurisdiction.

• Represented Signify (f/k/a Philips Lighting) in litigation against CAO Lighting Inc. on patents relating to semiconductor LED chip technology. Representation led to a settlement and release for no payment.

• Represented Koninklijke Philips in federal district court in enforcing its patent portfolio relating to touch-enabled devices; the representation resulted in favorable licenses to its portfolio; also successfully defended Philips at the PTAB against inter partes review challenges.

• Defended Geotab, a leader in commercial telematics, in the Eastern District of Texas against a patent infringement claim involving vehicle tracking devices and geofencing features. The case concluded with a favorable settlement on the eve of trial. Additionally, successfully represented Geotab in invalidating all asserted patents through inter partes review at the PTAB, with invalidity granted post-settlement.

• Defended an oilfield services and equipment company against a patent infringement assertion brought by its competitor involving its concentric expandable reamer and stabilizer products. The representation resulted in a favorable settlement.

• Represented Dentsply Sirona against numerous competitors on patents relating to CAD/CAM software for designing and fabricating drill guides for use in dental implant surgery. Favorable settlements were reached after asserted claim survived three separate IPRs.

• Represented Federal Credit Unions (FCUs) in challenging the constitutionality of a statute that retroactively reduces the post-judgment interest rate on consumer debt judgments from 9% to 2%.

• Represented creditors in a post-bankruptcy adversary proceeding seeking to void transfers of money as fraudulent conveyances. The representation resulted in a favorable settlement.

Rankings & Honors Rankings & Honors

• The Best Lawyers in America: Ones to Watch (2023-2025)