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John M. Mulcahy
Partner
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vCard
  • 1875 Explorer Street
  • Suite 800
  • Reston, VA 20190-6023
+1 571 203 2751
john.mulcahy@finnegan.com john.mulcahy@finnegan.com

John M. Mulcahy

Partner

  • +1 571 203 2751 +1 571 203 2751
  • john.mulcahy@finnegan.com john.mulcahy@finnegan.com
  • 1875 Explorer Street
  • Suite 800
  • Reston, VA 20190-6023
  • vCard

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.

Et Cetera

  • 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.

Experience

InterMetro Industries Corp. v. Howard Industries, Inc.

Represented Howard in patent-infringement action relating to mobile medical workstations.

3:13-cv-02856, M.D. Pa., Judge Mariani

InterDigital Communications Corp. v. Nokia; 3G Mobile Handsets and Components Thereof

Represented complainant InterDigital in an investigation, related district court proceedings, and Federal Circuit appeal involving 3G WCDMA cellular telephone technologies, including 2G and 3G wireless handsets and 3GPP standards. The Federal Circuit reversed and remanded for further proceedings.

10-1093, Fed. Cir., Judges Newman, Mayer, Bryson
337-TA-613, ITC, Judges Essex, Luckern

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. The case settled favorably prior to an initial determination.

337-TA-812, ITC, Judge Pender

F5 Networks, Inc. v A10 Networks, Inc.

Member of team that represented A10 in a matter regarding network load balancing and successfully obtained rejections of all of F5’s asserted patents on reexamination.

2:10-cv-00654, W.D. Wash., Judge Pechman

Lighting Ballast Control v. Philips North America

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.

7:09-cv-00029, N.D. Tex., Judge O'Connor

Monolithic Power Systems, Inc. v. O2 Micro International Ltd.

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.

4:08-cv-04567, N.D. Cal., Judges Wilken, Laporte, Larson

More

Insights

Seminar

AIPLA - Japan Patent Attorneys Association Seminar - Osaka AIPLA - Japan Patent Attorneys Association Seminar - Osaka

April 10, 2025

Tokyo

Seminar

AIPLA - Japan Patent Attorneys Association Seminar

AIPLA - Japan Patent Attorneys Association Seminar AIPLA - Japan Patent Attorneys Association Seminar

April 8, 2025

Tokyo

Webinar

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 Trending at the PTAB: Changes to Director Review, Hearings

October 4, 2023

Law360

Conference

Patents & IP Summit 2022 Patents & IP Summit 2022

December 7-8, 2022

Arlington

Articles

The Risks and Rewards of Adding NFTs to Your IP Portfolio

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

Landslide
More

News

Media Mention

Strategies for Protecting Artificial Intelligence Intellectual Property in U.S. Strategies for Protecting Artificial Intelligence Intellectual Property in U.S.

June 2019

Faren Magazine

Media Mention

As Blockchain Grows, Companies Look to Avert a Patent War As Blockchain Grows, Companies Look to Avert a Patent War

June 19, 2018

Fortune

Media Mention

Analysing PTAB First-Quarter Petitions Analysing PTAB First-Quarter Petitions

April 19, 2016

Managing Intellectual Property

Press Release

Finnegan Announces New Partners for 2014 Finnegan Announces New Partners for 2014

December 10, 2013

Professional Activities

  • American Bar Association, Intellectual Property Law Section
  • American Intellectual Property Law Association
  • Association of Unmanned Vehicle Systems International (AUVSI)
  • Order of the Coif
Admissions and Education

Admissions

  • U.S. Patent and Trademark Office
  • Virginia
  • U.S. District Court, E.D. Texas

Education

Georgetown University Law Center
J.D., magna cum laude, 2005
Pennsylvania State University
B.S., Electrical Engineering, 1993

John's Practices

AI + Finnegan
AI + Patent
Global IP Enforcement, Litigation, and Trials
ITC Section 337 Investigations and Trials
Patent Litigation and Trials
Pretrial Strategies
Patent Office Invalidation Proceedings
Ex Parte Reexamination (EPR)
PTAB Invalidation Proceedings: IPR and PGR
Prosecution and Portfolio Management
Appeals to the PTAB
Ex Parte Reexamination (EPR)
Opinions and Counseling
Patent Drafting and Prosecution
Patent Reissues

John's Industries

AI, Electronics, and Information Technology
Artificial Intelligence (AI) and Machine Learning (ML)
Augmented Reality/Virtual Reality (AR/VR)
Electrical and Computer Technology
Electronic Devices and Components
Robotics
Web3
Communications
Financial Services and Business Systems
Internet of Things (IoT)
Hospitality, Gaming, and Leisure
Sports, Fitness, and Outdoor Recreation
Life Sciences
Digital Health
Medical Device and Diagnostics
Transportation and Logistics
Aerospace, Aviation, and Unmanned Aerial Systems (UAS)

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