John Moehringer handles complex patent litigation, primarily in the electrical engineering, telecommunications, and computer science fields. In addition to representing clients in patent infringement suits in the U.S. district courts, John also has substantial experience representing clients in the U.S. International Trade Commission. He also counsels clients with respect to various Intellectual Property issues, including IP licensing and transactions, and rendering non-infringement and invalidity opinions.
Prior to joining Cadwalader, John was a partner with Morgan & Finnegan. Before graduating from law school, he worked as an electrical engineer for Grumman Aerospace Corporation. John is currently a Board Member of the New York Intellectual Property Law Association (NYIPLA) and is a member of the New York State Bar Association and the Conner Inn of Court.
John received his J.D. from Fordham University School of Law, where he was a member of the Intellectual Property Law Journal. He received his Bachelors Degree in Electrical Engineering, cum laude, and his Masters Degree in Engineering Management from Polytechnic University (now NYU-Poly).
• The Legal 500 Recognizes More than 15 Cadwalader Practices and 47 of the Firm's Lawyers Across U.S. Offices Jun 06, 2012
• Cadwalader Practitioners Lauded in Latest Edition of Benchmark Litigation Oct 08, 2009
• 2012 Legal 500 US Jun 06, 2012
•Convolve Inc. v. Compaq Computer Corp. : Represent plaintiffs Convolve, Inc. and Massachusetts Institute of Technology against Compaq Computer Corp. and Seagate Technology LLC. The case involves technology related to disk drive vibration control and input shaping and includes claims of patent infringement, trade secret misappropriation, breach of contract and other torts. This case is anticipated to be tried in 2011.
•Ganas v. IBM : Defending IBM against allegations of infringement in multi-defendant patent infringement suit in Eastern District of Texas (E.D. Tex.; 2:10-cb-320).
•Broadcom Corp. v. Qualcomm, Inc. : Substituted as counsel of record on the eve of the trial to defend Qualcomm against allegations of infringement by its 3rd Generation baseband processors and proprietary network software. Broadcom alleged that these products infringed telecommunications patents related to video encoding and network switching technologies. The case settled on favorable terms.
•In The Matter of Certain Computer Products, Computer Components And Products Containing Same : Represented complainant IBM before the International Trade Commission in an infringement proceeding involving several of IBM's patents related to cooling, power conservation and router technology against respondents ASUSTek Computer, Inc. and ASUS Computer International as well as in a parallel federal district court litigation. While on appeal to the Federal Circuit, the case settled on favorable terms.
•In the Matter of Certain Wireless Communication Devices, Components Thereof, And Products Containing The Same : Represented complainants Ericsson Inc. and Telefonaktiebolaget LM Ericsson in a patent infringement investigation before the International Trade Commission involving wireless telecommunication equipment. The investigation was successfully brought to conclusion through a stipulated dismissal and settlement resolved to the satisfaction of all parties.
•SCO v. IBM : Represented IBM in patent counterclaim involving three patents related to high availability and encoding.
•IBM v. Compuware (S.D.N.Y)/ Compuware v. IBM (E.D. Mich.) : Represented plaintiff IBM in the Southern District of New York in a patent infringement litigation involving several of IBM's patents related to database management, distributed computing and data processing. Also represented IBM in the Eastern District of Michigan defending against Compuware's claims of trade secret theft, copyright infringement and antitrust violations and in asserting counterclaims of infringement of six patents related to graphical user interfaces, fault detection and system monitoring. The cases were favorably settled.
•Lucent Technologies Inc. v. Micron Technology, Inc. : Represented Lucent in the District of Delaware in asserting several of Lucent's semiconductor device and fabrication technology patents as well as a breach of license/contract claim. Also represented Lucent in declaratory judgment action of invalidity and non-infringement of several Micron patents covering complex telecommunication technology. The team was successful in achieving a rare transfer of Micron's countersuit from Eastern District of Virginia to Delaware. The case settled favorably.
•TM Patents v. IBM : Represented IBM against allegations of infringement of four complex computer patents in the area of data storage, memory control and parallel processing data routing. In a case of first impression, the Court ruled that a patentee is collaterally estopped from challenging claim construction rulings obtained in a prior action that was settled before appeal. 72 F. Supp. 2d 370 (S.D.N.Y. 1999) (includes favorable Markman rulings). Our lawyers succeeded in obtaining a ruling that the patent holder lost his rights to the parallel processing data router patent for which he had received government funding when he failed to comply with the government-grant license requirements - resulting in the Government acquiring title. 121 F. Supp. 2d 349 (S.D.N.Y. 2000). IBM won summary judgment dismissing some of the patents following Markman ruling. 121 F. Supp. 2d 349 (S.D.N.Y. 2000). The case settled on the eve of trial on terms highly favorable for the client.
•Union Oil Company Of California v. Atlantic Richfield Company : Represented defendants Atlantic Richfield Company, Chevron U.S.A., Inc., Exxon Corporation, Mobil Oil Corporation, Shell Oil Products Company and Texaco Refining And Marketing, Inc. in bench trial in the Central District of California involving alleged inequitable conduct during prosecution of plaintiff Union Oil Company of California's patent directed to low-emission unleaded automotive gasoline and in a jury trial involving alleged infringement of the patent.
•United States Treasury - Chrysler : Retained by The United States Treasury in connection with Chrysler's Chapter 11 bankruptcy proceeding and related transactions such as merger agreements, sale agreements, and loan agreements. The effort included conducting IP due diligence and overseeing relevant filings of IP releases, assignments, name changes, and security interests in the United States and abroad, which is continuing. In re: Old Carco LLC (f/k/a/ Chrysler LLC), 09-50002 (Bankr. S.D.N.Y.)
•United States Treasury - GM : Retained by the United States Treasury in connection with GM's Chapter 11 bankruptcy proceeding and related loan agreements. The firm advised extensively on IP aspects of the bankruptcy, and is continuing to oversee relevant IP filings in the United States and abroad. In re Motors Liquidation Company, et a., f/k/a/ General Motors Corp., et a., 09-50026 (Bankr. S.D.N.Y.)
International Trade Commission
• ITC Proposed New Procedures for Electronic Filing Sep 26, 2011
• ITC Opinion Sets Standards for Analyzing Portfolio Licenses and the Domestic Industry Requirement Sep 26, 2011
• Electronic Discovery at the ITC: Current Challenges And Possible Improvements Sep 26, 2011
• ITC Chief Administrative Law Judge Paul J. Luckern Retires Sep 26, 2011
• ITC Delegating to ALJs Fact Finding Responsibilities on Public Interest May 09, 2011
• Federal Circuit Review of ITC Determinations: General Protecht Group, Inc. v. ITC and Vizio, Inc. v. ITC May 09, 2011
• Federal Circuit Decision in GE v. ITC re: Allocation of Argument Time in Favor of Intervenors Rather Than ITC May 09, 2011
• ITCTLA Trip to Beijing, Nanjing, Shanghai and Guangzhou, China on May 23-27, 2011 to Present a Program on Section 337 Proceedings Before The U.S. International Trade Commission May 09, 2011
• ITC Litigation & Enforcement Conference Held in New York on February 23-24, 2011 -- Summary of Judges' Panel on “The View from the Bench” May 09, 2011
• More Insight On ITC Claim Construction Procedures From The ITC Investigation of Certain Digital Set-Top Boxes And Components Thereof, Inv. No. 337-TA-712 Feb 14, 2011
• Federal Circuit Addresses Multiple Issues In Affirming The Commission's Final Determination In Spansion, Inc. v. International Trade Commission Feb 14, 2011
• ITC Publishes Study on Chinese Intellectual Property Infringement Feb 14, 2011
• ITC Proposes New Pleading Rules to Address Public Interest Issues Nov 22, 2010
• ITC Urges Federal Circuit to Refrain from Deciding Section 337 Appeals on Grounds “Not Presented” by the Parties Nov 22, 2010
• New ITC Procedure for Public Release of Final ITC Decisions on the Merits of Section 337 Cases Nov 22, 2010
• Review of SEB S.A. v. Montgomery Ward & Co. and Recent Section 337 Investigations Involving Inducement Nov 22, 2010
• Inaugural Quarterly Meeting with James Holbein, Supervisory Attorney-Advisor, and Lisa Barton, Attorney-Advisor, of ITC Docket Services, Office Of Information Technology Services Nov 22, 2010
• Important New Decision by United States International Trade Commission on the Procedure for Pretrial Claim Construction in Section 337 Investigations Nov 22, 2010
• ITC Investigations Not Subject To Bankruptcy Stays -- District Court Decisions Reverse Bankruptcy Court Stays Of ITC Investigations 648 And 685 Sep 24, 2010
• ITC Domestic Industry Requirement - ITC Opinion In Coaxial Cable Connectors Case Outlines Standard For Demonstrating A “Domestic Licensing Industry” By Non-Practicing Entities Sep 24, 2010
• ITC To Solicit Public Interest Comments Upon Receipt Of Complaint Sep 24, 2010
• ITC Judge E. James Gildea Joins The Ranks Of ITC Judges Holding Pre-Trial Markman Hearings Sep 24, 2010
• ITC's Mediation Program For Section 337 Investigations Gaining Momentum Sep 24, 2010
• ITC Reviews First Ever Markman Claim Construction Made By Summary Determination Sep 24, 2010
• IP Czar Aims At Enhancing Section 337 Enforcement Of IP Rights Sep 24, 2010
U.S. Federal Courts
• Supreme Court, in FTC v. Actavis, Rejects the “Scope of the Patent” Test, Holding that Antitrust Law's “Rule of Reason” Analysis Can Pierce the Shield of Patent Rights Jul 09, 2013
• Supreme Court Rules that a Naturally Occurring DNA Segment Is Not Patent Eligible, But cDNA May Be Patent Eligible Jul 09, 2013
• Federal Circuit Rules on Patentability of Business Method Patent Jul 09, 2013
• The Federal Circuit Has Jurisdiction over Appeals in Which Damages and Willfulness Remain Unresolved Jul 09, 2013
• Federal Circuit Clarifies Standards for a Clinical Trial to Be Public Use Jul 09, 2013
• Federal Circuit Opens Reissue Proceedings to Add New Claims to Hedge Against Patent Invalidity Sep 26, 2011
• Federal Circuit Holds Isolated DNA Is Statutory Subject Matter Under s101 Sep 26, 2011
• Prometheus Redux Sep 26, 2011
• In Section 145 Civil Actions, Patent Applicants Are Not Limited To The PTO Record and May Introduce New Evidence Jul 14, 2011
• En Banc Federal Circuit Overhauls Inequitable Conduct Law Jul 14, 2011
• Supreme Court Rules that Clear and Convincing Evidence Is Required to Establish the Invalidity of a Patent Jul 14, 2011
• En Banc Federal Circuit To Review Joint (Divided) Infringement Jul 14, 2011
• Supreme Court Rules that Induced Infringement Under Section 271(b) Requires Knowledge or 'Willful Blindness' that the Induced Acts Constitute Patent Infringement Jul 14, 2011
• Rule 9(b) Applies To The False Marking Statute May 09, 2011
• Largest Patent Infringement Verdict Ever Affirmed On Appeal Feb 14, 2011
• Federal Circuit Requires Principal/Agent Relationship or Contractual Obligation for Joint Infringement Feb 14, 2011
• Supreme Court To Review The 27 Year Old Clear and Convincing Evidence Requirement for Invalidity Feb 14, 2011
• Federal Circuit Applies Bilski And Reaffirms Decision That Methods Of Optimizing Drug Dosages Are Patentable Under 35 U.S.C. 101 Feb 14, 2011
• Federal Circuit Reverses Judgment that Insurance Companies Infringed Patent on Computerized Method for Administering Variable Annuities Nov 22, 2010
• Federal Circuit Approves Use Of Industry Standards To Prove Infringement Nov 22, 2010
• The Supreme Court Grants Certiorari to Determine the Intent Required for Inducement of Infringement - Its Tenth Patent Case Since 2005 Nov 22, 2010
• Supreme Court To Review Rights to Inventions Arising From Federally-Funded Research Nov 22, 2010
• En Banc Decision by Federal Circuit Addresses Scope of Patent Misuse Doctrine Nov 22, 2010
• Federal Circuit Addresses Definiteness Requirement For Means-Plus-Function Claims Nov 22, 2010
• The Federal Circuit Sets Forth Standards for Protective Orders Containing a Patent Prosecution Bar Sep 24, 2010
• Preserve Your Claims, or Else - The Federal Circuit Warns - You Will Not Get “A Second Bite” At The Apple Sep 24, 2010
• Plaintiffs in “Myriad Genetics” Case Move for Recusal of Chief Judge Rader Sep 24, 2010
• “Plain Errors” In Jury Instructions, Verdict Form, Require New Trial On Individual Liability For Corporation's Infringement; Damage Award Vacated As Product Of “Speculation Or Guesswork” Sep 24, 2010
• District Court Dismisses False Marking Actions Based On Plaintiff's Failure To Meet Heightened Pleading Standard of Federal Rule of Civil Procedure 9(b) Sep 24, 2010
• Federal Circuit Rejects Accused Infringer's “Divided Infringement” and Standing Defenses; Holds Claims Cover Patent-Eligible Subject Matter Sep 24, 2010
• Recent Federal Circuit Decision May Affect Inequitable Conduct Determinations Jul 13, 2010
• Applying Inwood to Online Market Place, Second Circuit Finds Generalized Knowledge of Counterfeiting Insufficient for Contributory Trademark Infringement Jul 13, 2010
• District Court Rules That Isolated Genes Are Unpatentable Products Of Nature Jul 13, 2010
• Without Affirmative Act By Patentee, Federal Circuit Rejects Declaratory Judgment Suit By Potential Infringer Jul 13, 2010
• Patent Held Unenforceable On Grounds Of Equitable Estoppel Jul 13, 2010
• Federal Circuit Affirms En Banc a Separate Written Description Requirement under 35 U.S.C. 112, Paragraph 1 Jul 13, 2010
• Implied Assertion of Rights by Patent Licensing Company Supports Declaratory Judgment Jurisdiction Jul 13, 2010