John F. Presper: Lawyer with Oblon, McClelland, Maier & Neustadt, L.L.P.

John F. Presper

Senior Associate
Alexandria,  VA  U.S.A.
Phone(703)412-3536

Peer Rating
 4.9/5.0
AV® Preeminent

Client Rating

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Experience & Credentials Ratings & Reviews
 

Practice Areas

  • Litigation
  • PTAB Proceedings
  • Electronics & Software
  • Chemicals
 
Contact InfoTelephone: (703)412-3536
Facsimile: 703-413-2220
http://www.oblon.com/professional/john-f-presper
 
University Bucknell University, B.S., Chemical Engineering
 
Law SchoolUniversity of Connecticut School of Law(J.D.; Certificate in Intellectual Property) Executive Editor, Connecticut Journal of International Law
 
AdmittedConnecticut; District of Columbia; New York; Registered to practice before the U.S. Patent and Trademark Office; Supreme Court of the United States; U.S. District Court for the District of Connecticut; U.S. District Court for the Western District of Michigan; U.S. District Court for the Eastern District of New York; U.S. District Court for the Southern District of New York; U.S. Court of Appeals for the Federal Circuit. (Not admitted in Virginia)
 
Memberships 

Professional Affiliations

•American Bar Association
•American Intellectual Property Law Association (AIPLA)
•Federal Circuit Bar Association
•ITC Trial Lawyers Association
•Intellectual Property Owners Association

 
Biography

John F. Presper is a patent attorney and senior associate in the firm's Litigation and ITC Litigation practice groups. Mr. Presper represents and advises clients involved in patent and other intellectual property disputes in federal court, the ITC, and the USPTO. He also provides patentability, infringement and validity opinions. Mr. Presper's litigation experience and opinion work covers a broad range of technologies in the chemical, electrical, and mechanical arts. Additionally, Mr. Presper has litigated trademark, copyright, and software license disputes in federal district court. Mr. Presper's practice also includes representing clients in post-grant proceedings (e.g., inter partes review proceedings) at the USPTO.

Mr. Presper actively contributes to the firm's ITC 337 Law Blog, reporting on developments in new and pending investigations, litigation trends and statistics. He also provides practical insights into the Administrative Law Judges and commentary on important ITC decisions.

Prior to joining the firm, Mr. Presper was a law clerk to the Honorable Thomas P. Smith of the United States District Court for the District of Connecticut. He previously worked as an Intellectual Property and Strategic Business Analyst for Pratt & Whitney. While in law school, Mr. Presper interned at United Technologies Corporation and studied European Union law and economics at the Universiteit Leiden in the Netherlands.

Mr. Presper is a named inventor on three U.S. patents directed to wireless diagnostic monitoring.

Accolades

•Martindale-Hubbell AV Preeminent 4.9 out of 5

Publications

August 2013 - Article The Burdens of Proof and Persuasion in a 35 USC 146 Action Intellectual property Today

August 2012 - Article The U.S. International Trade Commission and Intellectual Property Litigation E-Commerce Law Reports, Vol 12 Issue 03

2002 - Article Copyright Restoration Under 104A: Rethinking Copyright Law's First Amendment Immunity 18 Conn. J. Int'l L. 431

News

October 20, 2014 - Firm News
Valeo Tells ITC Rival Ripped Off Windshield Wiper Patents
Law360

January 31, 2014 - Firm News
Trend In Limiting E-Discovery Cost Recovery Continues
Law360

October 1, 2013 - Firm News
Request Rehearing! (Take Two)
IP Today

June 7, 2013 - In The News
Arthur Neustadt Quoted in Law360 Regarding Decision of U.S. Supreme Court to Hear Case on Burden of Proof
Law360, New York (May 20, 2013)

September 18, 2012 - In The News
Oblon Spivak's Arthur Neustadt Quoted in Law360 Regarding the Federal Circuit's Decision in Medtronic IP Case
Law360, New York (September 18, 2012)

June 16, 2012 - Blog Post
CAFC Rules That Objective Recklessness Prong Of Willful Infringement Is For Judges To Decide

April 27, 2011 - Blog Post
Federal Circuit to Hear Akamai Appeal on Joint Infringement En Banc

October 13, 2010 - Firm News
Federal Circuit Rules for Solvay Against Honeywell in Patent Infringement Lawsuit
IP Today

January 12, 2010 - Firm News
Oblon, Spivak Elects New Partner and Names A New Senior Associate

 
Reported CasesRepresentative Matters: Representing patentee Valeo in Section 337 investigation at the ITC involving windshield wiper blade technology. Certain Windshield Wipers and Components Thereof (Inv. No. 337-TA-928).; Representing patentee Mirowski Family Ventures in an ongoing action against Medtronic involving patent for treatment of congestive heart failure. Medtronic Inc. v. Boston Scientific Corp., et al. , C.A. No. 07-823 (D. Del.). The case is currently on appeal to the Supreme Court. ; Represented Covance Inc. in a copyright infringement and software licensing dispute with Attachmate Corp. Covance Inc. v. Attachmate Corp ., C.A. No. 12-4088 (D.N.J.).; Representing Toyota and Subaru in an ongoing action involving RFID-based vehicle immobilization. Rydex, Ltd. v. General Motors Co. et al. , C.A. No. 11-122 (S.D. Tex.).; Represented defendant Optrex America in a multi-defendant action brought by Honeywell against the entire LCD industry involving a patent on a directional diffuser for an LCD. Optrex settled on favorable terms and the patent was subsequently held invalid on summary judgment. Honeywell Int'l Inc., et al. v. Apple Computer, et al. , C.A. No. 04-1337 (D. Del.).; Represented plaintiff ArcelorMittal in a case involving aluminum coated boron steel products and methods for making same. ArcelorMittal France, et. al. v. AK Steel Corp., et al. , C.A. No. 10-050 (D. Del.).; Represented plaintiff Solvay in an action involving a process for making a hydrofluorocarbon for use as a foam insulation blowing agent. Solvay S.A. v. Honeywell Int'l Inc. , C.A. No. 06-557 (D. Del.). The case was remanded to the district court following a seminal decision by the Federal Circuit in Solvay's favor on the applicability of Section 102(g). 622 F.3d 1367 (Fed. Cir. 2010).; Represented Hooker Furniture Corp. in a trademark dispute with construction company Opus Group involving Hooker Furniture's activities in connection with its OPUS DESIGNS mark, which Opus Group claimed violated its trademark rights. Hooker Furniture Corp. v. Opus Corp., et al. , C.A. No. 08-390 (E.D. Va.). The case settled on terms favorable to Hooker Furniture.
 
ISLN918755849
 

Documents by this lawyer on Martindale.com

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ALJ Shaw Denies Motion to Consolidate In Certain Network Devices (337-TA-944)
John F. Presper,Eric W. Schweibenz, March 19, 2015
On February 13, 2015, ALJ David P. Shaw issued Order No. 4 in Certain Network Devices, Related Software and Components Thereof (I) (Inv. No. 337-TA-944) denying Respondent Arista Networks, Inc.'s ("Arista") motion requesting consolidation of that investigation with Certain Network...

Federal Circuit Affirms ITC Final Determination of No Violation of Section 337 in InterDigital Appeal (2014-1176)
John F. Presper,Eric W. Schweibenz, March 19, 2015
On February 18, 2015, the U.S. Court of Appeals for the Federal Circuit issued a decision affirming the International Trade Commission's ("the Commission") final determination of no violation of Section 337 in InterDigital Commc'ns, Inc. et al. v. Int'l Trade Comm'n (2014-1176). This was...

ITC Issues Public Version Of Opinion In Certain Optical Disc Drives (337-TA-897)
John F. Presper,Eric W. Schweibenz, February 19, 2015
On January 7, 2015, the International Trade Commission ("the Commission") issued the public version of its opinion in Certain Optical Disc Drives, Components Thereof, and Products Containing the Same (Investigation No. 337-TA-897).



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Office Information

John F. Presper

1940 Duke Street
AlexandriaVA 22314




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