CounselTokyo, Washington, D.C.
John has experience handling matters involving a wide range of technologies, including semiconductor devices, consumer electronics, communications systems, computers and associated equipment, radar, optics (including fiber optics), medical and surgical devices, display systems, lighting devices, printing systems, electronic photography, energy storage devices and plastic molding technology.
John's legal practice spans patent litigation, interferences, validity and infringement investigations, and negotiations and licensing involving all aspects of intellectual property. Joint venture and research and development agreements in an international context are a particular area of his focus. He frequently counsels clients in both the United States and Japan on patent portfolio management and intellectual property strategies.
John currently teaches a course on International Intellectual Property Strategy at Hitotsubashi University in Tokyo. He previously served on the adjunct faculty of George Mason University School of Law, teaching courses on interference practice and other advanced areas of U.S. PTO practice. He also taught international intellectual property law at Temple University Law School’s Tokyo campus. He also was the longest-serving chairman of the Board of Directors of Yokohama International School, one of the world’s oldest and most prestigious institutions of secondary international education, and he currently chairs the school’s Board of Trustees. John regularly lectures throughout the Pacific Rim on intellectual property law topics. He is also a frequent lecturer on U.S. patent practice at public and in-house seminars in Japan.
Fujifilm Corp. v. Papst Licensing GmbH & Co. KG.: On behalf of Fujifilm, we won all eight IPRs filed against Papst Licensing. As part of ongoing litigation with Papst, our client joined forced with digital camera and mobile phone manufacturers to attack the validity of two patents concerning USB functionality. We took the lead on two of the eight IPRs, and were heavily involved in the other six. The PTAB ruled all instituted claims unpatentable. Moreover, since all the claims asserted against Fujifilm were ruled unpatentable on four separate, independent grounds, we have made significant headway towards defeating Papst in the remaining litigation.