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

John F. Presper

Phone(703)412-3536

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 4.9/5.0
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Practice Areas

  • ITC Litigation
  • Litigation
 
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
 
Admitted2003, Connecticut; 2004, New York; 2011, District of Columbia; U.S. Court of Appeals for the Federal Circuit; 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; Registered to practice before the U.S. Patent and Trademark Office. (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 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, copyright, and software license 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.

Resources

News

Trend In Limiting E-Discovery Cost Recovery Continues
Friday, January 31, 2014

Request Rehearing! (Take Two)
Tuesday, October 1, 2013

Arthur Neustadt Quoted in Law360 Regarding Decision of U.S. Supreme Court to Hear Case on Burden of Proof
Friday, June 7, 2013

Publications

The Burdens of Proof and Persuasion in a 35 USC 146 Action
Friday, August 23, 2013

The U.S. International Trade Commission and Intellectual Property Litigation
Tuesday, August 7, 2012

Copyright Restoration Under 104A: Rethinking Copyright Law's First Amendment Immunity
Tuesday, January 1, 2002

BLOG

ITC Issues General Exclusion Order And Terminates Investigation In Certain Cases For Portable Electronic Devices (337-TA-861/867)
Monday, June 30, 2014

On June 20, 2014 the International Trade Commission (the Commission) issued a notice in Certain Cases for Portable Electronic Devices (Inv. No. 337-TA-861/867).

ITC Vacates-In-Part Initial Determination Of Non-Infringement In Certain Multiple Mode Outdoor Grills (337-TA-895)
Friday, June 27, 2014

Further to our May 28, 2014 post , on June 25, 2014, the International Trade Commission (the Commission) issued a...

Federal Circuit Affirms Finding Of No Section 337 Violation In Industrial Technology Research Institute Appeal (2013-1480)
Thursday, June 26, 2014

On June 23, 2014, the U.S. Court of Appeals for the Federal Circuit issued a non-precedential opinion in Indus. Tech. Research Inst. v. ITC (2013-1480). This was an appeal from the International...

Sunlight Supply And IP Holdings File New 337 Complaint Regarding Certain Light Reflectors And Components
Wednesday, June 25, 2014

On June 20, 2014, Sunlight Supply, Inc. (Sunlight) and IP Holdings, LLC (collectively, Complainants) filed a complaint requesting that the ITC commence an investigation pursuant to Section 337.

ALJ Essex Denies Motion For Reconsideration, Motion For Leave To Supplement Production, And Motion For Respondent To Be Found In Default In Certain Windshield Wipers (337-TA-902)
Wednesday, June 25, 2014

On June 24, 2014, ALJ Theodore R. Essex issued the public versions of Order No. 12 (dated May 30, 2014), Order No. 14 (dated June 5, 2014) and...

ALJ Shaw Denies Motion To Quash Subpoenas In Certain Standard Cell Libraries (337-TA-906)
Tuesday, June 24, 2014

On June 18, 2014, ALJ David P. Shaw issued Order No. 21 denying non-parties Andrew B. Kahng and Puneet Gupta's (collectively, movants) motion to quash subpoenas duces tecum and ad testificandum issued by Respondents Taiwan...

Commission Rescinds Limited Exlcusion Order In Certain Encapsulated Integrated Circuit Devices (337-TA-501)
Monday, June 23, 2014

On June 19, 2014, the International Trade Commission (the Commission) issued a notice of its determination to rescind the limited exclusion order (LEO) in Certain Encapsulated Integrated Circuit...

ALJ Essex Rules On Motions For Summary Determination In Certain Wireless Devices With 3G And/Or 4G Capabilities (337-TA-868)
Wednesday, February 19, 2014

On February 11, 2014, ALJ Theodore R. Essex issued the public versions of Order Nos. 91 , 92 and 93 (...

ALJ Shaw Rules On Motions For Summary Determination In Certain Crawler Cranes (337-TA-887)
Wednesday, February 19, 2014

On February 12, 2014, ALJ David P. Shaw issued Order No. 17 and No. 18 in Certain Crawler Cranes and Components Thereof (Inv. No. 337-TA-887).

ITC Remands Investigation In Certain 3G Mobile Handsets (337-TA-613)
Tuesday, February 18, 2014

On February 12, 2014, the International Trade Commission (the Commission) issued an Order remanding the investigation in Certain 3G Mobile Handsets and Components Thereof (Inv. No. 337-TA-613).

 
Reported CasesRepresentative Matters: 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.). The case was remanded to the district court following a precedential decision by the Federal Circuit in Mirowski's favor on the burden of proof for licensees seeking a declaratory judgment of noninfringement. Case No. 2011-1313 (Fed. Cir. Sept. 18, 2012). The case is currently on appeal to the Supreme Court on the question of who has the burden of proof on claim coverage when a licensee challenges liability for royalties by filing a declaratory judgment action. Case No. 2012-1128. Representing 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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ITC Decides To Review-In-Part ALJ Bullock’s Initial Determination Finding A Violation Of Section 337 In Certain Windshield Wipers (337-TA-881)
John F. Presper,Eric W. Schweibenz, July 23, 2014
On July 9, 2014, the International Trade Commission (“the Commission”) issued a notice that it determined to review Chief ALJ Charles E. Bullock’s Initial Determination (“ID”) finding a violation of Section 337 in Certain Windshield Wiper Devices and Components Thereof...

ITC Issues General Exclusion Order And Terminates Investigation In Certain Cases For Portable Electronic Devices (337-TA-861/867)
John F. Presper,Thomas C. Yebernetsky, July 9, 2014
On June 20, 2014 the International Trade Commission (the “Commission”) issued a notice in Certain Cases for Portable Electronic Devices (Inv. No. 337-TA-861/867).

ALJ Essex Denies Motion For Reconsideration, Motion For Leave To Supplement Production, And Motion For Respondent To Be Found In Default In Certain Windshield Wipers (337-TA-902)
John F. Presper, July 3, 2014
On June 24, 2014, ALJ Theodore R. Essex issued the public versions of Order No. 12 (dated May 30, 2014), Order No. 14 (dated June 5, 2014) and Order No. 16 (dated June 18, 2014) in Certain Windshield Wipers and Components Thereof (Inv. No. 337-TA-902).



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Office Information

John F. Presper

1940 Duke Street
AlexandriaVA 22314




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