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.
InterMetro Industries Corp. v. Howard Industries, Inc.
3:13-cv-02856, M.D. Pa., Judge Mariani
InterDigital Communications Corp. v. Nokia; 3G Mobile Handsets and Components Thereof
10-1093, Fed. Cir., Judges Newman, Mayer, Bryson
337-TA-613, ITC, Judges Essex, Luckern
Certain Computing Devices with Associated Instruction Sets and Software
337-TA-812, ITC, Judge Pender
F5 Networks, Inc. v A10 Networks, Inc.
2:10-cv-00654, W.D. Wash., Judge Pechman
Lighting Ballast Control v. Philips North America
7:09-cv-00029, N.D. Tex., Judge O'Connor
Monolithic Power Systems, Inc. v. O2 Micro International Ltd.
4:08-cv-04567, N.D. Cal., Judges Wilken, Laporte, Larson
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
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
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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