John is co-lead of the firm’s Intellectual Property practice group, and a high-stakes patent litigator whose experience has generated professional achievement awards and American Law Journal “Top Jury Verdict” recognition.

He combines 20 years’ patent litigation experience with nine years as a former New York City Assistant District Attorney to represent his clients in high-stakes battles in the ITC and district courts.

John also has developed particular skill in patent valuation by using his experience in litigation and in the negotiations of major portfolios to determine real world value, particularly focusing on the key patents that drive value. He has worked with global Fortune 500 companies on some of their major acquisitions of patent assets in the past few years.

John has built long-term relationships with sophisticated clients including Sony, Toyota, Lenovo and others. He has been lead outside counsel in global disputes, litigating in the U.S. and advising on patent strategy in Europe and Asia. 

John holds an undergraduate degree in physics and has significant experience designing and implementing computer programs, supervising computer programming staff, and serving as court-appointed receiver for a software company.

Independent publications whose rankings are based on evaluations from in-house counsel have recognized him for excellence in practice, including IAM 300 – The World’s Leading Strategists, The Legal 500 United States, Managing Intellectual Property and Benchmark Plaintiff.

Representative Experience

• Respondent Nidec Corporation and Nidec Automotive Motor Americas, LLC in a patent infringement action brought by Intellectual Ventures II LLC before the ITC, securing a termination of the investigation based on Plaintiff’s withdrawal of the complaint as it related to Nidec, in the middle of expert discovery, after a ruling by the judge in favor of Nidec concerning the meaning of a key patent claim term. This win eliminated the possibility of debilitating exclusion and cease and desist orders preventing Nidec and its customers from importing into and selling in the United States Nidec’s accused motors and vehicles containing those motors. Certain Thermoplastic-Encapsulated Electric Motors, Components Thereof, and Products and Vehicles Containing Same (337-TA-1073).
• Lenovo as respondent in an ITC patent infringement matter relating to optical disc drives. The case was successfully concluded for Lenovo with a complete dismissal based on showing that the petitioner did not have standing to bring the case. Optical Disc Drives, Components Thereof, and Products Containing the Same (337-TA-897, 2014).
• Sony as defendant in the District of Delaware defeated a patent assertion by L-3 Communications, obtaining summary judgment of non-infringement and a Judgment as a Matter of Law of invalidity. The case had accused Sony’s CMOS image sensors, a multi-billion dollar market. L-3 Communications v. Sony Corp., et al. (D. Del, 2014)
• Toyota in multiple ongoing cases district court cases originally involving 24 patents. As a result of a strategic use of motions and IPRs, multiple patents were dismissed before claim construction and some of the cases dismissed. Matter was successfully transferred on mandamus from the E.D. Tex to the E.D. Mich., and currently stayed pending resolution of 12 inter partes review petitions filed by Toyota, all of which were instituted by the Patent Trial and Appeal Board. American Vehicular Sciences v. Toyota, et al. (E.D. Tex, 2014).
• Sony in an ITC matter brought by Pragmatus Mobile alleging that certain Sony phones and tablets infringed patents related to smart phones and GPS location systems. On the eve of trial, the case settled on favorable terms for our clients. In Re Certain Wireless Devices including Mobile Phones and Tablets, II (337-TA-905, 2014).

• Toyota in a district court case brought by Affinity Labs of Texas. We persuaded the Court to hold a hearing on prior license agreements entered into by suppliers to Toyota of the accused components. Despite the fact that Affinity Labs had won prior jury verdicts against other car makers, soon after the Court’s ruling, Toyota reached a successful settlement. Affinity Labs of Texas v. Toyota (W.D. Tex, 2014).
• Lenovo in a case brought by Round Rock Research in the District of Delaware. Matter was resolved after Kenyon’s win at a Markman hearing, dismissal of the vast majority of accused products, and the pursuit of an intricate license defense based on licenses issued to Lenovo predecessor companies. Round Rock Research v. Lenovo (D. Del., 2014).
• Sony in a series of worldwide patent litigations against LG Electronics. Represented Sony on five US litigations (including two ITC cases) directed to telecommunications standards, cell phone features, Blu-ray DVD technology and televisions and computer monitors. Advised on parallel cases in Germany, the UK, the Netherlands, Spain, and Korea, resulting in a favorable resolution for our client. Sony Corp. v. LG Electronics U.S.A. Inc., et al. (Multiple jurisdictions, 2011).

Bar Admissions

Education
JD, Pace University School of Law, 1980BS, Physics, The Cooper Union, 1974

• IP Issues to Watch in 2013
• 2020 Retail Industry Year in Review
• 10 Years Of KSR: Using Secondary Considerations in IPR, Law360
• Not all audits are bad: Intellectual property audits can protect and create value in your retail business, Thomson Reuters Westlaw