John M. Williamson
Partner
Experience
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., Judges Addy, Brazil, James, Vegas, White
14-1629, -1630, Fed. Cir., Judges Chen, Dyk, Prost
Insights
Articles
Across the Border: Global Enforcement of Trade Secrets
December 2022
World Intellectual Property ReviewEvent
March 16, 2022
Webinar
Upcoming Events
News
Announcement
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.
February 12, 2014
Daily JournalMedia Mention
How They Won It: Finnegan Beats $260M IP Suit for ABBYY
September 19, 2013
Law360Press Release
Finnegan Trial Team Defeats $260 Million Patent and Trade Dress Suit for ABBYY Software and Lexmark
August 28, 2013
Professional Activities
- Intellectual Property Owners Association (IPO)
(vice chair, Trade Secrets Committee, 2019-present) - Pauline Newman IP American Inn of Court
(president, 2017-2018; board member, 2013-present) - District of Columbia Bar
(vice-chair and chair of Trade Secrets Committee, Intellectual Property Section, 2000-2006) - American Bar Association, IP Section
- American Intellectual Property Law Association
Admissions
- Colorado
- District of Columbia
- U.S. Court of Appeals, Federal Circuit
- U.S. Patent and Trademark Office
Education
- University of Colorado
- M.S., Telecommunications, 2003
- University of Colorado School of Law
- J.D., 2000
- University of Colorado
- B.A., Economics, 1997
Clerkships
- U.S. District Court, E.D. Virginia, Hon. Liam O'Grady
John's Practices
- Copyright
- Patent Litigation
- ITC Section 337
- Patent Trial
- Pre-Trial Strategy
- Patent Portfolio Management, Monetization, and Transactions
- Licensing, Pooling, and Other Transactions
- Opinions and Counseling
- Post-Grant Proceedings
- Appeals of PTAB Trial Decisions
- Trade Secrets
- Trademark
John's Industries
- Communications
- Financial Services and Business Systems
- Electronics and Information Technology
- Electrical and Computer Technology
- Life Sciences
- Medical Device and Diagnostics
- Pharmaceutical