John S. Sieman
Associate
John Sieman practices patent litigation and prosecution, and client counseling. His work covers a wide range of technical areas including databases, computer programming, cryptography, spatial databases and location-based technologies, artificial intelligence, telecommunications, Internet technologies, and open source software. Mr. Sieman also has experience working with business method patents in the insurance and financial industries.
Mr. Sieman has worked on patent litigation cases at numerous U.S. district courts, the U.S. Court of Appeals for the Federal Circuit, and the U.S. International Trade Commission (ITC). He has experience taking and defending depositions, drafting briefs, and assisting in negotiating discovery disputes.
In addition to his litigation practice, Mr. Sieman is involved with post-grant proceedings such as ex parte and inter partes reexaminations. He has prosecuted original patent applications, advised both patent owners and third-party requesters on matters before the U.S. Patent and Trademark Office (USPTO), filed numerous reexamination requests, and developed extensive experience using reexaminations in conjunction with ongoing litigation.
In his counseling work, Mr. Sieman advises clients regarding infringement, invalidity, and false marking issues. He has worked with clients to develop internal intellectual property management policies. He also assists clients in negotiations with patent assertion companies to avoid litigation.
Mr. Sieman maintains an active pro bono practice, and has successfully represented WWII and Vietnam veterans in disputes over disability benefits before the U.S. Court of Appeals for Veterans Claims.
Highlights
- Involved in representing a client accused of infringement in a multi-patent suit in D. Delaware involving Internet protocols and e-commerce; client prevailed after obtaining a dismissal of the case with prejudice.
- Member of team defending a client accused of infringing a patent related to bar codes in E.D. Texas, in a parallel inter partes reexamination, and in a later Federal Circuit appeal. The client prevailed in all three proceedings based on the invalidity of the asserted patent.
- Studied a large software company's portfolio of user interface and data processing patents for leverage and potential assertion against competitor and presented recommendations to the company.
- Prepared noninfringement opinion in the field of Internet systems for mobile banking.
- Prepared a reexamination request that successfully invalidated an
e-commerce patent that had previously earned the patentee millions of dollars in licensing fees.
- Served as president of the Carolina IP Law Association during law school, 2005-2006.
Professional Recognition
Professional Activities
- American Bar Association
- Virginia Bar Association
Select Publications
- "Using the Implied License to Inject Common Sense into Digital Copyright," North Carolina Law Review, Spring 2007.