John T. Gutkoski

John T. Gutkoski

John Gutkoski is a patent trial attorney with Foley & Lardner LLP and the Boston Office Chairman of the firm's Intellectual Property Department. He is a member of the Intellectual Property Litigation Practice, and the Emerging Technologies and Medical Devices Industry Teams. Mr. Gutkoski's patent infringement and technology cases have spanned multiple disciplines, including optics, nanotechnology, pharmaceuticals, laser and tissue interaction, financial services, check processing, computer and network architecture, medical devices, digital cameras, electronic circuits, sound waves, semiconductors, telecommunications, vibration control, and Internet data.

Mr. Gutkoski recently obtained a rare jury verdict of non-infringement and invalidity in the United States District Court for the Eastern District of Texas. In returning the invalidity verdict in favor of the defendant medical device manufacturer, the jury found the asserted patent claims both anticipated and rendered obvious by four separate combinations of prior art.

Mr. Gutkoski's intellectual property practice has included several first impression issues. In particular, he represented ProCD in obtaining the landmark decision from the U.S. Court of Appeals for the Seventh Circuit in ProCD v. Zeidenberg, 86 F.3d 1447, the first case in the country to support the validity and enforceability of "shrink-wrap," "click-on," and "web-wrap" licenses, contracts and warranties for protecting software and electronic data.

Before joining Foley, Mr. Gutkoski was a partner with Day Pitney LLP and headed its Intellectual Property Litigation practice in Boston. He served as a special assistant district attorney for the Commonwealth of Massachusetts, Middlesex County in 2000. Previously, he was a partner at Hale and Dorr LLP.

Mr. Gutkoski earned his J.D. at the New York University School of Law, where he was elected to the Order of the Barristers and was a member of the National Moot Court Team, the Moot Court Board and the Journal of Law and Social Change. He graduated magna cum laude, with distinction, from Boston University.

Mr. Gutkoski is admitted to practice in the Commonwealth of Massachusetts and before the U.S. Court of Appeals for the Federal, First, Seventh, and Ninth Circuits, and before multiple U.S. District Courts. He is a member of the American, Massachusetts, and Boston Bar Associations. He is also a member of the Intellectual Property Owners Association, the American Intellectual Property Law Association, and the Boston Patent Law Association.

Representative Patent and Intellectual Property Trials and Litigations:

· Co-lead trial counsel for one of the country's largest banks in defending against multiple computer architecture patents directed to document and check processing pending in the U.S. District Court for the Eastern District of Texas

· Lead counsel currently defending one of the world's largest retailers in multiple cases in the U.S. District Court for the District of Delaware against allegations of infringing nine separate digital camera patents

· Co-trial counsel for Section 337 investigation before the United States International Trade Commission involving seven photolithography and nanotechnology patents together with complex domestic industry trade issues; prevailed on all asserted claims after month-long trial preserving almost $2 billion in annual sales. Related litigation involving an additional five patents in the U.S. District Court for the Northern District of California then settled favorably

· Lead counsel for computer data storage leader defending patent infringement claims pending in the U.S. District Court for the Eastern District of Texas

· Lead trial counsel for arbitration plaintiff in dispute over use and installation of digital scanning technology; recovered both actual and multiple damages for unfair and deceptive trade practices in Boston, Massachusetts

· Co-lead trial counsel in multi-patent litigation in the U.S. District Court for the Eastern District of Texas concerning light and tissue interaction; jury found that none of the defendant's accused products infringed and that the asserted patent claims were both anticipated and obvious

· Trial counsel for computer chip designer and manufacturer suing a former key employee and a competitor for the theft of confidential semiconductor schematics and additional trade secrets. Following an initial trial in North Carolina State Court, an appeal, and extensive discovery, the case settled favorably

· Obtained summary judgments of validity, enforceability, and infringement for a patentee in the U.S. District Court for the Central District of California in a bet-the-company case involving electronic temperature monitors

· Lead counsel representing pharmaceutical research and development company and its manufacturer of a wound treatment product against claims of trade secret misappropriation, breach of contract and related claims in the U.S. District Court for the District of Massachusetts

· Prevailed in a Markman hearing defending a major hand tool manufacturer against patent infringement and trade secret misappropriation claims in the U.S. District Court for the District of Connecticut resulting in dismissal with prejudice of all claims

· Represented major pharmaceutical company in asserting claims against a competitor for the breach of a settlement agreement resolving rights from an ANDA patent litigation and related patent-based antitrust litigation

· Secured the voluntary dismissal of patent infringement claims concerning power management circuits brought in the U.S. District Court for the Northern District of California; dismissal obtained after extensive discovery, claim construction proceedings and the defeat of plaintiff's summary judgment efforts

· Represented owner of laser eye surgery patents in separate matters leading to a $17 million plaintiff's jury verdict in one case and the competitor defendant forced into bankruptcy and going out of business in the second

· Prosecuted patent infringement action in the U.S. District Court for the District of Massachusetts involving digital to analog converter circuits

· Defended against patent infringement action in the U.S. District Court for the Eastern District of New York related to semiconductor wafer fabrication processes

· Prosecuted trademark action in the U.S. District Court for the Central District of California for false advertising and grey market sales of discarded materials as functional semiconductor components, securing on the eve of trial a favorable settlement and the seizure of all offending materials

· Represented leading acoustic design company in enforcing its patent rights in the U.S. District Court for District of Massachusetts against a Japanese company competitor, its domestic subsidiary, and its OEM distributor, achieving a favorable settlement

Additional Representative Litigations:

· Co-trial counsel for successful defense of all New England electric utilities in electricity supply dispute exceeding $100 million (10 F. Supp.2d 53)

· Defended technology company in suit by stockholders of acquired company; successfully mediated after extensive discovery

· Successful appeal establishing the First Circuit's seminal opinion against trial by ambush (156 F.3d 255)

Recent Writings and Presentations:

· "A Year In Review: Converging Forces That Will Impact Your Business In 2010 And Beyond," November 2009, Panel Moderator and Speaker

· "Managing IP Smarter Not Harder," What's Your Next Move? IP in the New Business Reality, October 2009, Panel Moderator and Speaker

· "Changing IP Strategies in Lean Budget Times," Foley's Emerging Technologies Conference - Navigating a New World, October 2009, Panel Moderator and Speaker

· "Getting the Most from Your IP Budget: Strategies for IP Portfolio Management and Litigation Avoidance," February 4, 2009, Speaker

· "Texas Eastern District: IP Equipoise?" IP Law 360, January 5, 2009

· "Patent verdicts in Eastern Texas no longer a slam dunk," Mass High Tech, December 5, 2008

· "Finding Value in the Most Overlooked Elements of the Due Diligence Process," Exploring Under the Surface: Yielding Higher Value from Life Science Transactions, October 2008, Panelist

· "Major Changes for Patent Lawyers and Litigators," MCLE June 2007, Speaker

· "Calling and Challenging Expert Witnesses at Trial," 2006, Speaker

· "Proposals for Reducing the Costs of Intellectual Property Litigation," Intellectual Property Owner ' s Association (IPO) 2004 Annual Meeting, Presentation and Panel Discussion