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

ITC Trial Lawyers 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.). 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).

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

Oblon Spivak's Arthur Neustadt Quoted in Law360 Regarding the Federal Circuit's Decision in Medtronic IP Case
Tuesday, September 18, 2012

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

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 Rules On Petitions For Reconsideration In Certain Automated Media Library Devices (337-TA-746)
Wednesday, December 12, 2012

On December 11, 2012, the International Trade Commission ("Commission") issued a notice and order granting petitions for reconsideration filed by Complainant Overland Storage, Inc. ("Overland") and Respondents BDT AG, BDT Automation Technology (Zhuhai FTZ),...

ALJ Essex Grants Joint Motion To Terminate Investigation In Certain Consumer Electronics And Display Devices (337-TA-836)
Tuesday, December 11, 2012

On December 11, 2012, ALJ Theodore R. Essex issued Order No. 29 granting Complainant Graphics Properties Holdings, Inc. ("GPH") and Respondent Apple, Inc.'s ("Apple") joint motion to terminate the investigation on the basis of a...

ALJ Gildea Grants-In-Part Motions To Compel In Certain Electronic Devices For Capturing And Transmitting Images (337-TA-831)
Tuesday, December 11, 2012

On December 7, 2012, ALJ James E. Gildea issued the public versions of Order No. 42 and Order No. 43 (dated November 14, 2012) and...

ALJ Rogers Rules On Motions To Compel In Certain Incremental Dental Positioning Adjustment Appliances (337-TA-562)
Tuesday, December 11, 2012

On December 6, 2012, ALJ Robert K. Rogers, Jr. issued the public version of Order No. 54 and Order No. 55 (both dated November 21, 2012) in Certain Incremental Dental Positioning...

ALJ Gildea Orders Clarification Regarding Motion To Terminate In Certain Blu-Ray Disc Players (337-TA-824)
Tuesday, December 11, 2012

On December 10, 2012, ALJ E. James Gildea issued Order No. 37 in Certain Blu-Ray Disc Players, Components Thereof and Products Containing the Same (Inv. No. 337-TA-824).

ALJ Essex Sets Target Date In Certain Optoelectronic Devices For Fiber Optic Communications (337-TA-860)
Monday, December 10, 2012

On December 6, 2012, ALJ Theodore R. Essex issued Order No. 6 in Certain Optoelectronic Devices for Fiber Optic Communications, Components Thereof, and Products Containing Same (Inv. No. 337-TA-860).

ALJ Gildea Grants Unopposed Motion For Summary Determination Regarding Economic Prong Of Domestic Industry Requirement in Certain Semiconductor Chips With DRAM Circuitry (337-TA-819)
Monday, December 10, 2012

On December 6, 2012, ALJ E. James Gildea issued the public version of Order No. 9 (dated October 24, 2012) granting Complainants Elpida Memory, Inc. and Elpida Memory (USA) Inc.'s ("EMUSA") (collectively, "Elpida") unopposed motion for...

ALJ Bullock Grants Motion To Terminate-In-Part Investigation In Certain Products Containing Interactive Program Guide And Parental Controls Technology (337-TA-820)
Friday, December 07, 2012

On December 5, 2012, Chief ALJ Charles E. Bullock issued Order No. 52 granting Respondent Vizio, Inc.'s ("Vizio") unopposed renewed motion to terminate-in-part this investigation as to U.S. Patent No. RE41,993 (the '993 patent) in ...

ALJ Shaw Issues Public Version Of Enforcement Initial Determination In Certain DC-DC Controllers (337-TA-698)
Friday, December 07, 2012

On November 30, 2012, ALJ David P. Shaw issued the public version of the Enforcement Initial Determination ("EID") (dated June 8, 2012) in Certain DC-DC Controllers and Products Containing Same (Inv. No. 337-TA-698).

ALJ Pender Grants Motion For Partial Termination In Certain Food Waste Disposers (337-TA-838)
Friday, December 07, 2012

On December 4, 2012, ALJ Thomas B. Pender issued Order No. 6 in Certain Food Waste Disposers and Components and Packaging Thereof (Inv. No. 337-TA-838).

ALJ Bullock Grants Complainants' Motion To Compel In Certain Ink Application Devices (337-TA-832)
Thursday, December 06, 2012

On December 4, 2012, Chief ALJ Charles E. Bullock issued Order No. 15 granting Complainants MT.Derm GmbH and Nouveau Cosmetique USA, Inc. ("Complainants") motion to compel Respondent T-Tech Tattoo Device, Inc. ("T-Tech") to respond to Complainants' first set of...

ITC Decides To Review In Part Initial Determination In Certain Coenzyme Q10 Products (337-TA-790)
Wednesday, December 05, 2012

On November 29, 2012, the International Trade Commission ("the Commission") issued a notice in Certain Coenzyme Q10 Products and Methods of Making Same (Inv. No. 337-TA-790). In the notice, the Commission determined to review in part ALJ Robert K. Rogers,...

ALJ Bullock Sets Target Date For Enforcement Proceeding In Certain Ground Fault Circuit Interrupters (337-TA-739)
Wednesday, December 05, 2012

On December 3, 2012, Chief ALJ Charles E. Bullock issued Order No. 72 (dated November 30, 2012) in Certain Ground Fault Circuit Interrupters and Products Containing Same (Inv. No. 337-TA-739).

ALJ Bullock Denies Summary Determination Motion For Failure To Include A Separate Memorandum Of Points And Authorities In Certain Ink Application Devices (337-TA-832)
Wednesday, December 05, 2012

On December 3, 2012, Chief ALJ Charles E. Bullock issued Order No. 14 in Certain Ink Application Devices and Components Thereof and Methods of Using The Same (Inv. No. 337-TA-832).

ALJ Pender Grants Motion To Terminate Investigation In Certain Computing Devices With Associated Instruction Sets And Software (337-TA-812)
Wednesday, December 05, 2012

On November 30, 2012, ALJ Thomas B. Pender issued Order No. 18 in Certain Computing Devices With Associated Instruction Sets and Software (Inv. No. 337-TA-812).

Ericsson Files New 337 Complaint Regarding Certain Electronic Devices And Components Thereof
Tuesday, December 04, 2012

On November 30, 2012, Ericsson Inc. of Plano, Texas and Telefonaktiebolaget LM Ericsson of Sweden (collectively, "Ericsson") filed a complaint requesting that the ITC commence an investigation pursuant to Section 337. Due to its size, we have broken the complaint into...

ALJ Essex Denies Motion To Compel De-Designation Of Expert Reports In Certain Computers And Computer Peripheral Devices (337-TA-841)
Tuesday, December 04, 2012

On November 21, 2012, ALJ Theodore R. Essex issued Order No. 30 (dated November 20, 2012) in Certain Computers and Computer Peripheral Devices and Components Thereof and Products Containing the Same (Inv. No. 337-TA-841).

ALJ Pender Sets Procedural Schedule In Certain Cases For Portable Electronic Devices (337-TA-861)
Friday, November 30, 2012

Further to our November 16, 2012 post, on November 28, 2012, ALJ Thomas B. Pender issued Order No. 3 in Certain Cases...

ITC Issues Public Version Of Opinion In Certain Automated Media Library Devices (337-TA-746)
Wednesday, November 28, 2012

On November 19, 2012, the International Trade Commission (the "Commission") issued the public version of its opinion with respect to U.S. Patent Nos. 6,328,766 (the '766 patent) and 6,353,581 (the '581 patent) in Certain Automated Media Library Devices (...

CAFC Rules That Objective Recklessness Prong Of Willful Infringement Is For Judges To Decide
Monday, June 18, 2012

On June 14, 2012, the Federal Circuit granted a limited en banc rehearing in Bard Peripheral Vascular, Inc. et. al. v. W.L. Gore & Assocs. Inc., No.

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:...