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John M. Mulcahy
+1 571 203 2751
john.mulcahy@finnegan.com

Two Freedom Square
11955 Freedom Drive
Reston, VA 20190-5675

+1 571 203 2700
Fax +1 202 408 4400

Bar and Court Admissions

  • Virginia
  • U.S. Patent and Trademark Office

Education

  • Georgetown University Law Center
    J.D., magna cum laude, Order of the Coif, 2005
  • Pennsylvania State University
    B.S., Electrical Engineering, 1993

John M. Mulcahy

Partner

John Mulcahy focuses on patent litigation before both the U.S. International Trade Commission (ITC) and federal district courts. His litigation experience includes examining expert witnesses at deposition and trial; preparing Markman, summary judgment, and various post-trial motions; conducting pre-litigation investigations; and participating in settlement negotiations. He also has extensive experience in the strategic use of reexaminations in litigation and has filed numerous successful requests.

Mr. Mulcahy also has broad knowledge of patent prosecution matters. A former primary examiner at the U.S. Patent and Trademark Office (USPTO), he has successfully argued before the Patent Trial and Appeal Board (PTAB) (formerly the U.S. Board of Patent Appeals and Interferences), and he has filed and prosecuted numerous applications in the areas of cellular telephony, computer networking, cryptography, digital video, and business methods.

Highlights

  • Certain Computing Devices with Associated Instruction Sets and Software, 337-TA-812 (ITC). Presented the testimony of the complainants' technical expert at trial. The technology under investigation included microprocessors used in Apple's iPhone products.
  • F5 Networks v. A10 Networks (W.D. Wash.). Deposed the plaintiff's technical expert in a case involving Internet load balancers, gaining key admissions that directly led to the district court's adoption of a claim construction that precluded infringement of 28 of the 31 claims asserted against client A10 Networks. Filed a request for reexamination, which resulted in the remaining claims being rejected by the USPTO; the case settled.
  • Certain CCFL Inverter Circuits and Products Containing Same, 337-TA-666 (ITC). Worked with technical experts to develop noninfringement positions for defendants Monolithic Power Systems, ASUSTeK, and Asus; the case resulted in a final determination of noninfringement.
  • Monolithic Power Systems, Inc. v. O2 Micro (N.D. Cal.). Worked with technical expert in preparation for trial following the victory in the concurrent ITC case (337-TA-666). Case was settled before trial and our client was awarded its attorneys' fees.
  • Lighting Ballast Control v. Philips (N.D. Tex.). Deposed the inventor in a case involving fluorescent lighting ballasts, gaining key admissions that led the court to rule that the asserted claims were invalid for lack of disclosure of any structure corresponding to a claimed means-plus-function element.
  • O2 Micro International v. Rohm Co. (E.D. Tex.). Prepared invalidity and noninfringement cases against the holder of five patents asserted against our client, one of the top manufacturers of LCD televisions. Filed requests for the reexamination of four of the patents. All four requests were granted by the USPTO, and the litigation settled before trial.
  • Certain 3G Mobile Handsets and Components Thereof, 337-TA-613 (ITC). Coordinated pre-trial discovery in an investigation involving multiple patents and respondents. Successfully opposed motion to terminate the investigation due to an alleged right to arbitrate the complainant's infringement claims. The technology under investigation involved 3G WCDMA cellular telephone standards.
  • Worked as a primary examiner at the USPTO, examining U.S. and international patent applications in various technologies, including medical endoscopy, ultrasonic imaging, weapons and flight simulators, and exercise devices, 1998-2004.
  • Served on the editorial staff of the Manual of Patent Examining Procedure, editing portions of the manual to conform to the latest decisions of the Federal Circuit, 2003.
  • Worked as a student-engineer at the Naval Air Warfare Center, designing electronic hardware, computer software, and antennas used in flight tests of U.S. Navy electronic warfare systems, 1990-1992.

Professional Activities

  • American Intellectual Property Law Association
  • American Bar Association, Intellectual Property Law Section
  • Virginia Bar Association, Intellectual Property Section