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John is an IP attorney; he is not just a patent litigator or patent prosecutor. Over his career, John has handled matters from all aspects of IP law, including taking cases to trial. Generally, this is what he does:
•Ordinary Patent Preparation and Prosecution
•Litigation-Oriented Patent Prosecution (i.e., Reissues and Reexaminations)
•Proceedings before the PTAB
•Portfolio Mining and Analysis
•Trademark Prosecution
•Trade-Secret Claims
•Licensing
•IP Transactions
•Patent Cases
•Trade-Secret Claims
•Copyright Claims
To give you a little background on John, just prior to law school, he spent a year working as a patent examiner in Art Unit 2878, evaluating the patentability of applications relating to CRT circuits, wave/beam correction circuits, mass spectrometers, ion beam devices, PET/SPECT devices, gamma/X-ray cameras, IR devices, and bolometers. After law school, John worked at IP boutiques, where he prosecuted patents and litigated different IP matters (including almost single-handedly working up matters before the International Trade Commission).
For the last seven years, John has overseen patent acquisition and litigation activities for a major semiconductor manufacturer - Texas Instruments. While overseeing IP litigation activities at TI, his responsibilities included: managing day-to-day intellectual property litigation activities, managing outside counsel, developing and implementing strategies for each case, drafting and editing motions and pleadings, developing non-infringement arguments, developing prior art and drafting invalidity contentions, preparing witnesses for deposition, defending depositions, and prosecuting adverse matters in the U.S. Patent and Trademark Office, including Inter Partes Reviews. As patent counsel overseeing patent acquisition at TI, John oversaw patent acquisition activities, primarily for analog and research organizations. His responsibilities in that capacity included managing several patent committees which reviewed and approved disclosures for filing, drafting and prosecuting patent applications, and managing outside.
Over his career, John has personally drafted several hundred applications and prosecuted applications across various technologies, including, but not limited to, CMOS and BiCMOS processes, analog and mixed signal circuits and systems, RF circuits and system, microprocessor architecture, integrated circuit packaging, software, manufacturing equipment, mechanical tooling (e.g., wear hardened equipment and earth boring tools), and consumer products. To date, there are about 500 patents bearing his name as counsel of record.
Be it prosecution or litigation, he can handle whatever technology you have.
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Chat withState: Texas
Acquired: 2003
No misconduct found
5001 Spring Valley Rd, Dallas, TX, 75244-3946
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Intellectual property lawyer
Intellectual property lawyer
Intellectual property lawyer
2015 - Present
Partner, Miller Patti Pershern, PLLC
2008 - 2015
Senior Patent Counsel, Texas Instruments Incorporated
2005 - 2008
Associate, Storm LLP
2003 - 2005
Associate, Carr LLP
1999 - 2000
Patent Examiner, US Patent & Trademark Office
Collateral Estoppel on Invalidity/Affirmance Federal Circuit
Settled
Settled
Settled
Settled
Settled
settled
Summary Judgement / Appeal pending
Summary Judgement of Noninfringment/Affirmance at Federal Circuit
Dismissed
Settled
Dismissed
Settled
Dismissed
Summary Judgement of Noninfringment/Affirmed at Federal Circuit
Settled
Settled
Dismissed
Settled
Settled
Settled
Infringment of 1 claim/reversal at Federal Circuti
Settled
Settled
Settled and Dismissed
2003
Doctor of Jurisprudence/Juris Doctor (J.D.)
1999
BS - Bachelor of Science
English