John is a trial lawyer practicing in the areas of intellectual property and commercial litigation. He has extensive experience in all aspects of litigation, including trial, discovery, law and motion, and claim construction. John has been selected as one of the Top Intellectual Property Litigators in California by the Daily Journal and has been named to the Northern California Super Lawyers list. John is a former member of Reed Smith’s Executive Committee, the firm’s global governing board.
Experience
Representative matters
Representative matters
Uber v. Phunware et. al., (San Francisco Superior Court 2020). Lead counsel for plaintiff Uber on claims of fraud resulting from a 3-year multi-million dollar mobile advertising campaign. After extensive discovery, argued and prevailed on a motion for terminating sanctions after the Court found that defendant had engaged in a pattern of egregious discovery abuse.
Open Text S.A. v. Box, Inc., (N.D. Cal 2015) Lead trial counsel for defendant Box, Inc., in $270M patent infringement suit involving 12 patents relating to collaborative software and file synchronization. Prevailed on motion to transfer the case from the Eastern District of Virginia. Defeated plaintiff’s motion for preliminary injunction. Invalidated 5 asserted patents on a motion to dismiss. Prevailed on summary judgment of no willfulness. Prevailed on motion to strike plaintiff’s damages expert. After a 2-week jury trial, the jury awarded plaintiff less than 2% of its original damages claim. Case settled on appeal.
Fujitsu Ltd. v. NETGEAR (N.D. Cal 2012) Lead trial counsel for defendant NETGEAR in patent infringement suit relating to network cards. After a 3-week jury trial, obtained verdict of patent invalidity on a patent which had been re-examined by PTO 3 times. Jury also found non-infringement and no willfulness. (Named to the San Francisco and Los Angeles Daily Journal’s list of California Top Defense Verdicts of 2012)
Uber v. Phunware et. al., (San Francisco Superior Court 2020). Lead counsel for plaintiff Uber on claims of fraud resulting from a 3-year multi-million dollar mobile advertising campaign. After extensive discovery, argued and prevailed on a motion for terminating sanctions after the Court found that defendant had engaged in a pattern of egregious discovery abuse.
Open Text S.A. v. Box, Inc., (N.D. Cal 2015) Lead trial counsel for defendant Box, Inc., in $270M patent infringement suit involving 12 patents relating to collaborative software and file synchronization. Prevailed on motion to transfer the case from the Eastern District of Virginia. Defeated plaintiff’s motion for preliminary injunction. Invalidated 5 asserted patents on a motion to dismiss. Prevailed on summary judgment of no willfulness. Prevailed on motion to strike plaintiff’s damages expert. After a 2-week jury trial, the jury awarded plaintiff less than 2% of its original damages claim. Case settled on appeal.
Fujitsu Ltd. v. NETGEAR (N.D. Cal 2012) Lead trial counsel for defendant NETGEAR in patent infringement suit relating to network cards. After a 3-week jury trial, obtained verdict of patent invalidity on a patent which had been re-examined by PTO 3 times. Jury also found non-infringement and no willfulness. (Named to the San Francisco and Los Angeles Daily Journal’s list of California Top Defense Verdicts of 2012)
Protegrity Corp. v. Informatica LLC., (N.D. Cal 2016) Lead trial counsel for defendant Informatica in patent infringement suit involving patents on database and encryption technology. Prevailed on motion to transfer the case from the District of Connecticut. Prevailed on motion to stay case pending Covered Business Method (“CBM”) review of patents. Invalidated all claims of both patents in CBM trial before the Patent Trial and Appeal Board. Obtained judgment of invalidity in district court.
White Knuckle IP LLC v. Electronic Arts, (D. Utah 2016) Lead trial counsel for defendant Electronic Arts in patent infringement suit relating to video game updates. Invalidated patent in IPR trial before the Patent Trial and Appeal Board.
Data Retrieval Technology v. Sybase and Informatica (N.D. Cal. 2010) Lead counsel for defendants in patent infringement action relating to database software. Obtained four independent summary judgment rulings of non-infringement and invalidity.
University of Nebraska v. Siemens Healthcare Diagnostics (D. Neb. 2010) Lead counsel for defendant in patent infringement action relating to automated lab processing systems. Obtained summary judgment of non-infringement.
Juxtacomm-Texas Software v. Axway et. al. (E.D. Tex 2012). Represented TIBCO Software in patent infringement action relating to data integration. Obtained summary judgment of invalidity.
Digital Impact v. Bigfoot Interactive, 2007 WL 2729568 (N.D. Cal. 2007) Represented defendant in patent infringement action relating to e-mail distribution system. Obtained summary judgment of non-infringement.
Asyst Technologies Inc. v. Jenoptik (N.D. Cal.) Obtained summary judgment of non-infringement for defendant in patent lawsuit relating to semiconductor manufacturing equipment.
E-Pass Technologies, Inc. v. 3Com Corp., 222 F.Supp.2d 1157 (N.D. Cal. 2002) Obtained summary judgment of non-infringement in patent infringement case relating to “electronic multifunction card.”
Network-1 v. D-Link (E.D. Texas) Represented defendant in patent infringement action relating to "power over ethernet" technology. Argued claim construction and summary judgment motions. Case settled on eve of trial.
Intergraph v. Toshiba (N.D. Cal.) Represented plaintiff in patent infringement lawsuit relating to cache memory technology. Case resolved by confidential settlement.
ATI v. Samsung (N.D. Cal.) Represented plaintiff in patent infringement action relating to semiconductor fabrication and design.
Wi-Lan v. Atheros/D-Link (E.D. Texas) Represented multiple defendants in patent infringement case relating to wireless technology.
Fujitsu v. Netgear (W.D. Wis.) Represented third-party defendant in patent infringement case relating to wireless technology.
3DFX v. nVidia (N.D. Cal) Obtained favorable claim construction for defendant in patent lawsuit involving 3D computer graphics chips. Case resolved by confidential settlement.
Stephen Key Design, L.L.C. v. Lego Systems, Inc., 261 F.Supp.2d 1196 (N.D. Cal. 2003) Claim construction ruling in patent infringement case
Sunrise Telecom v. Acterna (N.D. Cal) Represented defendant in patent infringement action relating to telecommunications test equipment. Case settled shortly after claim construction.
Stratos v. Infineon (N.D. Cal.) Represented defendant in patent infringement action relating to optoelectronic transceivers.
DR Systems v. Siemens, et al. – Represented Siemens AG and Siemens Medical in patent litigation involving four patents relating to medical imaging software. Other defendants included GE Medical, Phillips, and McKesson. Case settled following claim construction.
Inamed v. Medicis (ITC) - Represented defendant in ITC Section 337 investigation relating to injectable implant patent.
Sharper Image v. Honeywell (N.D. Cal.) Represented defendant in patent infringement lawsuit relating to air purifiers.
T.A. Engineering v. Moore Products (N.D. Cal.) Represented defendant in copyright infringement/ breach of license lawsuit relating to software code. Defeated plaintiff's motion for preliminary injunction.
Sportvision v. SportsMEDIA Technology (N.D. Cal.) Represented defendant in patent infringement/ trademark lawsuit relating to "yellow line" football broadcast technology. Obtained summary judgment invalidating plaintiff’s trademark.
Sunrise Telecom v. VeEx (CA State Court) Represented defendant in trade secret lawsuit relating to telecom test equipment. Defeated plaintiff’s motion for preliminary injunction.
ANDA v. Adtran (CA State Court) Represented plaintiff in breach of contract lawsuit concerning DSL technology.
FutureNext v. Silterra (CA State Court) Represented defendant in lawsuit relating to web-based order tracking software.
StarSight/Gemstar v. General Instrument (AAA Arbitration) Represented defendant in lawsuit relating to joint development agreement for cable TV set-top boxes
Recognitions
- Selected through peer review for inclusion in The Best Lawyers in America© for Litigation - Intellectual Property, 2019-2025 and Litigation - Patent, 2021-2025
- Selected through peer review for inclusion on the Northern California Super Lawyers list for IP Litigation, 2014-2020
- Named by the Daily Journal as one of California's Top Intellectual Property Litigators for 2013
Credentials
Education
Education
- University of Wisconsin - Madison, 1990, J.D., Dean's List, Extern, Hon. John Coffey, U.S. Court of Appeals for the Seventh Circuit
- University of Michigan at Ann Arbor, 1987, B.A.
Professional admissions & qualifications
Professional admissions & qualifications
- California
- Wisconsin
Professional affiliations
Professional affiliations
- Intellectual Property Owners Association
- State Bar of California - Intellectual Property Section