Vorys, Sater, Seymour and Pease LLP
John is a partner in the Vorys Pittsburgh office and a member of the technology and intellectual property group. He has significant experience in IP litigation and prosecution. He works closely with business owners to understand their concerns about protecting their major IP assets. John has counseled established national and international companies and startup companies on issues related to a broad range of IP issues including risk analysis, infringement/validity positions and opinions, ownership issues, due diligence investigations and agreements.
John has been lead counsel and argued in more than 25 cases and contested hearings, including both trial and appellate courts involving patent, trademark, trade secret, copyright and breach of contract cases. John’s practice also includes the preparation and prosecution of patents, copyrights and trademarks. He has prepared patents for clients in a number of technical areas including HVAC ventilation; builder’s hardware; dental and medical surgical devices; power generation; medical imaging; pharmaceuticals; coal and natural gas; drilling equipment; physical therapy devices; nanoparticles, novelty consumer goods; and lighting devices.
Notable experience includes:
- Obtaining a preliminary injunction for misappropriation of a trade secret for a recipe
- Defending a preliminary injunction at the Superior Court of Pennsylvania
- Lead trial counsel in Patent litigation for HVAC ductwork
- Lead trial counsel in Copyright litigation for computer software
- Lead trial counsel in Trademark litigation for a Financial institution
- Lead counsel in successful hearings at the Patent Trial and Appeal Board for both ex-parte appeals and inter-parte proceedings
- Arguing for an affirmance of a motion to dismiss based on 35 U.S.C. 101 invalidity of 5 Patents at the Court of Appeals for the Federal Circuit
- Lead counsel in successful proceedings at the Trademark Trial and Appeal Board for both ex-parte appeals and inter-parte proceedings
- Obtaining jury verdict and attorneys fees award totaling $10 million in patent infringement case
Throughout his career, John has helped clients with the drafting of licenses for intellectual property, assignments of intellectual property, covenants not to compete, non-solicitation agreements, settlement agreements, ownership agreements, likeness release, video production agreements and naming rights agreements.
John is an IP law professor at Carnegie Mellon University. He is also a member of the American Bar Association, the Pennsylvania Bar Association, the Allegheny County Bar Association and the Pittsburgh Intellectual Property Law Association.
John received his J.D. cum laude from Duquesne University School of Law and his B.S. in chemistry from Indiana University of Pennsylvania.