John is also responsible for the preparation and prosecution of U.S. and foreign trademark and chemical and biotech-related patent applications for a wide range of domestic clients, and manages their strategic patent and trademark portfolios and counsels them on budget control processes. He advises clients on matters of patent and trademark validity and renders opinions relating to infringement and right-to-use studies. John regularly counsels clients regarding the protection and transfer of technology, trade secret and unfair competition concerns, the drafting of license and joint venture agreements, and represents them in transactions.
In addition to being a member and former Director of the American Intellectual Property Law Association (AIPLA), John is also a Fellow of that association. The AIPLA criteria for being named a Fellow are outstanding service to the association, prominence within the intellectual property profession, learned contribution to the profession, and observation of the highest standards of ethical conduct. Before serving on the AIPLA Board of Directors, John chaired AIPLA’s Patent Law, Licensing, Trade Secret, and Public Information Committees. He recently completed a term as chair of AIPLA’s Fellows Committee.
Before joining Calfee, John was named one of California’s top patent lawyers in a poll taken by California Lawyer. More recently, John has been listed as one of The Best Lawyers in America in the area of biotechnology law since 2008. John has written and lectured on a wide variety of patent law and related litigation issues covering such topics as claim construction, the attorney-client privilege, willful infringement, and most recently, the U.S. Supreme Court and Subject Matter Eligibility after the Prometheus and Myriad cases. John is an active member of the California and Ohio State Bar Associations.
Prior to earning his bachelor of science degree in Chemistry, John studied and played football at the United States Air Force Academy. He was an associate with the law firm of Lyon & Lyon in Los Angeles before becoming in-house patent and licensing counsel for TRW Inc. where he was responsible for its Energy Division. John was a partner at Pretty, Schroeder, Brueggermann & Clark before beginning his tenure with Calfee as a partner in 1994.
- Obtained summary judgment for the defendant in a trade secret dispute concerning a manufacturing process brought by a former partner in a joint venture agreement.
- Obtained a favorable settlement on trade secret claims brought by a former employer against a number of former employees and their new employer that allowed the defendant to continue marketing and selling the disputed product.
- Negotiated favorable settlements on behalf of the patentee in a series of patent infringement lawsuits in which the accused infringers agreed to redesign the accused infringing products.
- Successfully revoked the entirety of a competitor’s European Patent in an Opposition proceeding in the European Patent Office, thereby cancelling all of its claims.
- Responded to several patent and trademark cease and desist letters by pointing out significant defenses, after which the patent and trademark owners took no action against our clients.
- Intellectual Property
- Intellectual Property Litigation
- The Ohio State University College of Law, J.D., cum laude, 1977
- University of Cincinnati, B.S. in Chemistry, cum laude, 1974
- States of Ohio and California
- U.S. Patent and Trademark Office
- U.S. Court of Appeals for the Federal District
- U.S. Supreme Court