John M. Mulcahy
John Mulcahy has more than 20 years of experience in all phases of patent law. His practice includes litigation before federal district courts and the U.S. International Trade Commission (ITC), client counseling and opinions, and patent prosecution and post-grant proceedings in the U.S. Patent and Trademark Office (USPTO). He frequently lectures on topics at the intersection of these practice areas. He has worked with a broad range of technologies, including semiconductors, integrated circuits, optoelectronics, cellular telephony, computer networking, digital video, switching power supplies,
solid-state and fluorescent lighting, unmanned systems, and business methods.
Mr. Mulcahy has managed numerous litigations for multinational electronics manufacturers. His experience includes pre-litigation investigation and opinions; developing positions on claim construction, validity, enforceability, and infringement; organizing joint defense groups; preparing and examining expert witnesses; preparing Markman, summary judgment, and post-trial motions; and negotiating settlements. He has extensive experience in the strategic use of post-grant proceedings in conjunction with litigation and has filed and prosecuted numerous requests for reexamination and inter partes review (IPR).
A former primary examiner at the USPTO, Mr. Mulcahy has broad knowledge of patent prosecution matters and manages the prosecution of large portfolios, including the portfolio of a Fortune 100 company, in the United States and foreign jurisdictions. He has argued before the Patent Trial and Appeal Board (PTAB) on numerous occasions, during both prosecution and post-grant proceedings.
- Managed multiple district court litigations involving smartphones, consumer electronics, integrated circuits, and fluorescent lighting.
- 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. Filed requests 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.
- 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.
- American Intellectual Property Law Association
- American Bar Association, Intellectual Property Law Section
- Association of Unmanned Vehicle Systems International (AUVSI)