John C. Paul

Partner

John Paul has more than 30 years of experience in intellectual property licensing, litigation, and prosecution. He currently focuses on strategic planning, complex transactions, due diligence investigations, and licensing and enforcement of IP portfolios to generate revenue. He leads the firm's IP management and transaction section.

Mr. Paul has analyzed numerous patent portfolios for a wide range of companies and industries, including multimedia electronics, aerospace, medical devices, and consumer products. He has developed strategies and created databases to help companies understand and effectively communicate the legal and commercial significance of IP portfolios, develop more robust portfolios aligned with their business objectives, and generate revenue by monetizing those portfolios. He has set up and directed licensing and enforcement programs that generated significant royalty revenue for leading technology companies; set up and conducted multiple-round private auctions to sell patent portfolios; led negotiations related to IP issues in business divestitures and other complex transactions; and conducted IP due diligence and negotiations for strategic acquisitions of patent portfolios.

Mr. Paul serves as counsel to the board of the Licensing Executives Society U.S.A. and Canada and has served as a trustee and vice president. He frequently lectures on patent law, licensing, and IP management, and writes weekly articles for LES Insights on recent U.S. cases affecting licensing.

Highlights

• Managed U.S. legal team for top multi-national patent management company with more than 1000 licensees and significant royalty revenue.
• Led IP due diligence investigations for acquisitions and investments in technology companies in electronics, materials, and life sciences with results that significantly changed the value of the underlying transactions.
• Coordinated defense for industry group and its members against major patent assertion programs.
• Taught patent law as a member of the adjunct faculty of the Catholic University of America Law School, 1999-2003.
• Coordinated Finnegan's implementation and management of pro bono lawyer referral service for Washington Area Lawyers for the Arts.
• Designated as a Certified Licensing Professional (CLP).

Professional Recognition

• Listed in Intellectual Asset Management (IAM) Magazine as one of 250 leading IP strategists, 2009 and 2011; and as one of 250 of the world's leading patent and technology licensing practitioners, 2010-2011, distinguished as "highly recommended" for licensing, 2011-2012.

Professional Activities

• Licensing Executives Society U.S.A. and Canada (counsel to the board, 2012-present; chairman, High Technology Committee 2012-present; vice president 2006-2012; trustee 2005-2012; chairman, Washington Chapter, 1994-2004; chairman and member of various committees, 1991-present)
• Licensing Executives Society International (chairman, Engineering Transportation and Physical Sciences Committee, 2009-2010; co-chairman Americas Committee, 2005-2009; and international delegate)
• American Intellectual Property Law Association (chairman, India Subcommittee, Foreign and International Law Committee, 1994-1995)
• American Society of Mechanical Engineers (chairman, Technology and Society Division, 1998-2000; chairman, Technology and Law Committee, 1998-1999; Industry/Laboratory Technology Transfer Committee, 1990’s)
• Washington Area Lawyers for the Arts (board of directors, 1997-present)

Select Publications

• Coauthor. "Price Erosion Damages for Patent Infringement May Be Supported by Evidence of Prenotice Infringing Activity Even When the Marking Statute Limits Recoverable Damages to Postnotice Infringement," LES Insights, May 14, 2013.
• Coauthor. "Washington District Court Establishes a Framework for Determining RAND Royalty Rates on Standard-Essential Patents," LES Insights, May 7, 2013.
• Coauthor. "Fifth Circuit Holds That Assignee of Deferred License Payments Can Enforce the Provisions of the Agreement, and That Fixed, Bargained-For Payments Do Not Generally Constitute a 'Royalty'," LES Insights, April 30, 2013.
• Coauthor. "Current Standard for Induced Infringement Allows for Liability Even Where No Single Party Performed All Steps of a Claimed Method," LES Insights, April 23, 2013.
• Coauthor. "Licensee's Former Subsidiary Retains a License Because the License Extends to Entities Who Were Subsidiaries as of the Effective Date of the Agreement," LES Insights, April 16, 2013.
• Coauthor. "Reissue Patents Are Treated as Licensed Patents Absent Explicit Exclusion," LES Insights, April 9, 2013.
• Coauthor. "Suppliers May Ask Courts to Rule that They Do Not Indirectly Infringe Patents When They Have Agreed to Supply an Allegedly Infringing Product Even Before Their Customers Have Had an Opportunity to Directly Infringe the Patents," LES Insights, April 2, 2013. 
• Coauthor. "U.S. Supreme Court Holds that Books Printed and Sold Abroad May Be Freely Resold in the U.S. Because the Copyrights Are Exhausted Under the First-Sale Doctrine," LES Insights, March 26, 2013.
• Coauthor. "Challenges to the Validity or Termination of a License Agreement Must Be Decided by an Arbitrator When Agreement Contains an Arbitration Clause," LES Insights, March 19, 2013.
• Coauthor. "Accused Activities Occurring Outside the United States Found Insufficient to Support a Finding of Infringement," LES Insights, March 12, 2013.