J. Donald McCarthy

J. Donald McCarthy

Mr. McCarthy has made numerous appellate arguments in more than ten of the circuit courts of appeal, most frequently in the Federal Circuit Courts of Appeal. He has recently concentrated on patent cases and has also tried trademark, copyright and trade secret cases and has counseled clients in all aspects of intellectual property.

Mr. McCarthy has represented both plaintiffs and accused infringers, serving as lead trial and appellate counsel in district court and International Trade Commission patent cases. He has handled a wide variety of trademark matters, from complex trade name-service mark cases in which both sides had more than 25 years of use to routine trademark cases for famous marks such as Honda, Acura and General Motors. Mr. McCarthy also has extensive experience with franchise and antitrust matters in federal and state courts and administrative agencies, and has served as an expert witness in patent, trademark and copyright cases.

Mr. McCarthy has been named a Southern California Super Lawyer in Intellectual Property.

Mr. McCarthy is a 1968 graduate of Harvard Law School and graduate of Cornell University (B.S., M.E.).

Areas Of Practice

· Intellectual Property Law

· Patents

· Trademarks, Copyrights and Trade Secrets

Representative Matters

Intellectual Property Litigation

· Technology Licensing v. Gennum - N.D. California. Reduced potential recovery in patent case from $77 million to less than $1 million in pretrial motions; eliminated jury trial when opposition withdrew damages claim; successfully defeated mandamus on jury issue in Federal Circuit and Supreme Courts; and successfully tried the matter to the Court on remand, on video processing chips, to a defense judgment.

· Good Technology v. Research In Motion - N.D. California. Represented patentee on basic patent on handheld wireless technology.

· Panoram v. 3D Perception (patent). Three-dimensional video processing circuitry.

· Orion v. Toyota - E.D. Texas. Defendant patent case involving business method for handling parts orders.

· Ingersoll Rand v. Wilden - D.N.J. Defended patent case involving air-actuated diaphragm pumps.

· In the Matter of Certain Laminated Floor Panels - ITC. Defended patent case before the International Trade Commission involving laminated flooring.

· EAS Sensorsense v. Universal Surveillance Corp. - C.D. California. Defended patent case on RFID garment tags.

· Gale Banks v. Edelbrock Corp. - C.D. California. Represented defendant in trademark case.

· Link New Tech v. Wynn Oil Company - C.D. California. Represented defendant in patent case on lubrication equipment until indemnitor responsibility.

Patent and Trade Secret Litigation

· PGS v. Mycogen Plant Sciences (patent). Transgenic corn.

· Aptix v. Quickturn, 269 F.3d 1369 (Fed. Cir. 2001). Lead trial and appellate counsel.

· Panoram v. 3D Perception - C.D. California. Defended patent case involving three-dimensional video processing circuitry.

· Wilden v. Pressed & Welded Products, inter alia (patent). Air-actuated, double-diaphragm pumps.

· Oakley v. Smith Sport Optics; Oakley v. J. T. Racing (patent, trademark). High-end sunglasses.

· Cell Genesys v. Genpharm (trade secret). Transgenic mice.

· Berg v. Hon Hai (patent). PMCIA (Personal Computer Memory Card International Association) connectors.

Trademark Litigation

· Represented both plaintiffs and defendants in a wide variety of trademark matters, from complex trade name-service mark cases where both sides had more than 25 years of use, to routine trademark cases for famous marks such as Honda, Acura and General Motors.

Franchise and Antitrust

· Represented worldwide automaker in several hundred franchise and antitrust cases in federal and state courts and administrative agencies in 33 states.

· Fifteen plus years of automobile franchise cases for American Honda involving several hundred cases in 33 states, in both litigation and counseling roles. Issues included antitrust, franchise, dealer law and trademark regulation.

· Boston Car v. American Honda, 971 F.2d 811 (1st Cir 1992).

Appellate Advocacy

· In re Technology Licensing Corporation, 423 F.3d 1286 (Fed. Cir. 2005), reh. den. Nov. 18, 2005, cert. den. June 5, 2006. Successfully defended mandamus petition on jury issue.

· Aptix v. Quickturn (patent). Integrated circuit emulation equipment.

Professional Activities

· American Bar Association
- Litigation, Intellectual Property and Antitrust Sections

· American Intellectual Property Law Association

· Los Angeles Intellectual Property Law Association

· California Bar Association

Experience

· Duane Morris LLP
- Partner, 2008-present

· Jones Day
- Partner, 2002-2008

· Lyon & Lyon
- Senior Associate, Partner, 1976-2002

·Office of the Special Prosecutor, Philadelphia
- Assistant Attorney General, 1974-1976

· Chittick & Pfund, Boston; Synnestvedt & Lechner, Philadelphia
- Associate, Partner, 1968-1974

Board Memberships

· Big Brothers/Big Sisters
- Director, Former Chair

Honors and Awards

· Named a Southern California Super Lawyer in Intellectual Property

Selected Publications

· Featured in Intellectual Property Today, April 15, 2008