Partner
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).
John 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.
John has managed numerous litigations for multinational electronics manufacturers and cases involving smartphones, consumer electronics, integrated circuits, and fluorescent lighting. 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. John 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, John 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. While at the USPTO, he examined U.S. and international patent applications in various technologies, including medical endoscopy, ultrasonic imaging, weapons and flight simulators, and exercise devices. He has argued before the Patent Trial and Appeal Board (PTAB) on numerous occasions, during both prosecution and post-grant proceedings.
Certain Computing Devices with Associated Instruction Sets and Software
Represented VIA Technologies and Centaur in ITC investigation against Apple asserting infringement of microprocessor architectures and the instruction sets associated with microprocessors. Presented the testimony of the complainants' technical expert at trial. The case settled favorably prior to an initial determination.
337-TA-812, ITC, Judge Pender
F5 Networks, Inc. v A10 Networks, Inc.
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.
2:10-cv-00654, W.D. Wash., Judge Pechman
Certain Cold Cathode Fluorescent Lamp ("CCFL") Inverter Circuits
Successfully represented Monolithic Power Systems in a patent infringement investigation relating to power inverter technology. Worked with technical experts to develop noninfringement positions for defendants Monolithic Power Systems, ASUSTeK, and Asus.
337-TA-666, ITC, Judge Gildea
Monolithic Power Systems, Inc. v. O2 Micro International Ltd.
4:08-cv-04567, N.D. Cal., Judges Wilken, Laporte, Larson
Lighting Ballast Control v. Philips North America
7:09-cv-00029, N.D. Tex., Judge O'Connor
InterDigital Communications Corp. v. Nokia; 3G Mobile Handsets and Components Thereof
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.
10-1093, Fed. Cir., Judges Newman, Mayer, Bryson
337-TA-613, ITC, Judges Essex, Luckern
Event
Information Disclosure in Patent Prosecution: IDS Filings, Key Considerations, Strategies for Disclosure Information Disclosure in Patent Prosecution: IDS Filings, Key Considerations, Strategies for Disclosure
November 2, 2023
Webinar
Articles
Trending at the PTAB: Changes to Director Review, Hearings Trending at the PTAB: Changes to Director Review, Hearings
October 4, 2023
Law360Articles
The Risks and Rewards of Adding NFTs to Your IP Portfolio The Risks and Rewards of Adding NFTs to Your IP Portfolio
June/July 2022
LandslideMedia Mention
Strategies for Protecting Artificial Intelligence Intellectual Property in U.S. Strategies for Protecting Artificial Intelligence Intellectual Property in U.S.
June 2019
Faren MagazineMedia Mention
As Blockchain Grows, Companies Look to Avert a Patent War As Blockchain Grows, Companies Look to Avert a Patent War
June 19, 2018
FortuneMedia Mention
Analysing PTAB First-Quarter Petitions Analysing PTAB First-Quarter Petitions
April 19, 2016
Managing Intellectual PropertyPress Release
Finnegan Announces New Partners for 2014 Finnegan Announces New Partners for 2014
December 10, 2013
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