Partner
John focuses his practice on intellectual property litigation and counseling. He provides client counseling and advice related to technology and IP strategy, including investigations regarding trade secrets, advice on technical standards, economic exposure and freedom-to-operate analyses, and IP portfolio and landscape analyses. John also consults on licensing programs and conducts royalty audits related to IP license agreements.
John is an active member of the D.C.-area IP legal community. He serves as vice-chair of the Intellectual Property Owner's Association's (IPO) Trade Secrets Committee, and is a former president of the Pauline Newman IP Inn of Court in Alexandria, Virginia, and a former chair of the D.C. Bar Trade Secrets Committee. John taught a course on patent infringement litigation as an adjunct professor at the George Mason University Antonin Scalia Law School for nearly a decade, and clerked for Judge O'Grady at the U.S. District Court for the E.D. Virginia.
John has been recognized by The Legal 500 U.S. for trade secrets work and co-leads the firm's trade secret litigation group.
Represented intervenor SAP in litigation involving an Administrative Procedure Act claim against the U.S. Patent and Trademark Office (USPTO) based on the Patent Trial and Appeal Board's (PTAB's) institution of covered business method (CBM) review.
1:13-cv-00328, E.D. Va., Judges Davis, Lee
14-1145, Fed. Cir., Judges Hughes, Newman, Plager
Audio MPEG v. Action Electronics
Served as lead litigation counsel in breach of contract action regarding IP license agreement, obtaining favorable settlement.
CL12003829, 18th Judicial Circuit Court, Virginia
Ronald A. Katz Technology Licensing, L.P. v. FedEx Corp.
Represented FedEx in a complete defense victory in case involving claims of infringement of a large patent portfolio related to interactive voice response systems, following consolidation in multidistrict litigation (MDL), favorable summary judgment rulings, an appeal to the U.S. Court of Appeals for the Federal Circuit, and opinions from the Patent Trials and Appeal Board (PTAB) on reexamination requests, and after patent owner Ron Katz reportedly earned approximately $1 billion in license fees from over 150 companies.
2:06-cv-00334, E.D. Tex., Judges Folsom, Gilstrap
2:07-CV-02196, C.D. Cal., Judges Klausner, Mumm, Quinn
2:07-ml-01816, C.D. Cal., Judges Klausner, Mumm
CBM2015-00053, PTAB, Judges Busch, Cocks, Wormmeester
Ex Parte Reexamination No. 90/013,586, USPTO, Judge Ralis
2:15-cv-02329, W.D. Tenn., Judges McCalla, Pham
09-1450, -1451, -1452, -1468, -1469; 10-1017, Fed. Cir., Judges Bryson, Lourie, Newman
Cumberland Pharmaceuticals Inc. v. Mylan Institutional, LLC
Counsel for Cumberland in ANDA litigation and breach of contract arbitration. Successful verdict and outcome in bench trial, arbitration, arbitration fee award, and appeal.
16-1155, -1259, Fed. Cir., Judges Moore, Reyna, Taranto
1:12-cv-03846, N.D. Ill., Judge Pallmeyer
Represented Tenneco in suit involving various trade secrets, tort, and breach of contract claims relating to damping technology for vehicle shock absorbers.
1:17-cv-05369, N.D. Ill., Judge Kennelly
Nuance Communications Inc,. v. Abbyy USA Software House Inc.
Represented ABBYY and Lexmark in a jury trial for a patent and trade dress case involving optical character recognition technology, obtaining complete defense jury verdict on all issues, and client not liable for $260 million in alleged damages. The Federal Circuit affirmed the district court’s judgment.
3:08-cv-02912, N.D. Cal., Judge White
Articles
A Look at Ex Parte Seizures 8 Years Post-DTSA A Look at Ex Parte Seizures 8 Years Post-DTSA
April 17, 2024
Articles
How the FTC’s Proposed Ban of Non-compete Agreements Could Impact IP Litigation How the FTC’s Proposed Ban of Non-compete Agreements Could Impact IP Litigation
May 9, 2023
IP LitigatorEvent
Trade Secret Protection for AI Innovations Trade Secret Protection for AI Innovations
February 16, 2023
Webinar
Articles
Across the Border: Global Enforcement of Trade Secrets Across the Border: Global Enforcement of Trade Secrets
December 2022
World Intellectual Property ReviewCommentary
Q&A: Arbitrating Trade Secret Disputes Q&A: Arbitrating Trade Secret Disputes
January 2020
Financier WorldwideAnnouncement
Finnegan Congratulates Attorneys on Their 2017 Professional Appointments and Elections Finnegan Congratulates Attorneys on Their 2017 Professional Appointments and Elections
January 2, 2018
Award/Ranking
Top 20 Defense Results: Nuance Communications Inc. v. ABBYY Software House Inc. Top 20 Defense Results: Nuance Communications Inc. v. ABBYY Software House Inc.
February 12, 2014
Daily JournalMedia Mention
How They Won It: Finnegan Beats $260M IP Suit for ABBYY How They Won It: Finnegan Beats $260M IP Suit for ABBYY
September 19, 2013
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