JOHN F. PRESPER is a patent litigation lawyer and senior associate in the firm's Litigation and ITC Litigation practice groups. He handles a broad range of patent litigation across many technologies, including electrical devices, chemicals, and various mechanical arts. He also provides patentability, infringement and validity opinions. Additionally, Mr. Presper has litigated trademark disputes in federal district court.
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.
Professional Affiliations
American Bar Association
American Intellectual Property Law Association (AIPLA)
Federal Circuit Bar Association
Experience
Representative Matters
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.).
Representing plaintiff Solvay in an ongoing 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).
Representing patentee Mirowski Family Ventures in an ongoing action against Medtronic involving Mirowski's patent for treatment of congestive heart failure. Medtronic Inc. v. Boston Scientific Corp., et al., C.A. No. 07-823 (D. Del.).
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.
Accolades
Martindale-Hubbell® AV® Preeminent™ 4.9 out of 5
Resources
News
Federal Circuit Rules for Solvay Against Honeywell in Patent Infringement Lawsuit
Wednesday, October 13, 2010
Oblon, Spivak Elects New Partner and Names A New Senior Associate
Tuesday, January 12, 2010
Publications
Copyright Restoration Under § 104A: Rethinking Copyright Law's First Amendment Immunity
Tuesday, January 1, 2002
Blog
Federal Circuit to Hear Akamai Appeal on Joint Infringement En Banc
Wednesday, April 27, 2011
On April 20, 2011, the Federal Circuit ordered an en banc rehearing in Akamai Technologies, Inc. v. Limelight Networks, Inc. (2009-1372, -1380, -1416, -1417). The question posed by the Court is:...