John A.Marlott

Partner

(T) 1.312.269.4236

Praised by Jones Day clients as "technically and legally excellent," John Marlott has been recognized as an "Intellectual Property Trailblazer" (National Law Journal) and one of the world's leading patent professionals (IAM). John brings nearly 30 years of intellectual property law experience to his role as lead counsel in complex IP disputes. He focuses on high-stakes district court patent litigation, post-grant patent proceedings before the Patent Trial & Appeal Board (PTAB), and appeals to the Federal Circuit.

John was part of the team representing SAS Institute in its 2018 win at the U.S. Supreme Court, in a case that fundamentally transformed the way patents are litigated before the PTAB. Acting for SAS in that same case, John's earlier win at the Federal Circuit was named by IP Law360 as one of the top America Invents Act-related decisions of 2016. In another recent engagement, John acted as lead PTAB counsel for Qualcomm in eight IPRs challenging patents being asserted by Apple.

John is particularly valued by clients for his strategic thinking and his ability to identify strengths and weaknesses in patents and patent portfolios. He has been recognized by The Best Lawyers in America© and Illinois Super Lawyers for his intellectual property litigation experience.

John is a member of the Northern District of Illinois Trial Bar. He is a registered patent attorney and a former patent examiner at the U.S. Patent and Trademark Office.

Experience

  • SAS Institute win in Supreme Court is a game-changer for PTAB casesJones Day represented SAS Institute Inc. in its recent 5-4 win before the U.S. Supreme Court, which will fundamentally transform the way that patents are litigated before the Patent Trial and Appeal Board of the U.S. Patent Office.
  • IBM resolves patent infringement claims brought by UTRF and St. Matthew ResearchJones Day successfully resolved a patent infringement action on behalf of International Business Machines Corporation (IBM) relating to database search and retrieval functionality brought by the University of Tennessee Research Foundation (UTRF) and Saint Matthew Research, LLC.
  • Outpac Designs defends against patent infringement claims relating to carrying bags in Illinois district courtJones Day represents Outpac Designs Limited in a multi-patent infringement action involving security features in carrying bags.
  • Manufacturer of medical equipment obtains dismissal of False Claims Act qui tam action related to patent applicationsA manufacturer of medical equipment represented by Jones Day obtained dismissal of a False Claims Act qui tam action in which the relator alleged that the manufacturer lied on the patent applications for one of its medical products, making the patents invalid and unenforceable.
  • Texas Instruments resolves series of disputes with Hyundai Electronics over semiconductor patentsJones Day represented Texas Instruments in proceedings enforcing various semiconductor manufacturing patents and defending against others in a multiple-forum dispute with Hyundai Electronics.
  • IBM successfully resolves copyright infringement and software licensing disputeJones Day successfully represented International Business Machines Corporation (IBM) in a copyright infringement and software breach of license case involving IBM’s Informix software.
  • SAS Institute wins stay of patent infringement litigation pending inter partes review of asserted patent in U.S. Patent & Trademark OfficeOn behalf of SAS Institute Inc. ("SAS"), Jones Day successfully obtained a stay of ongoing patent infringement litigation pending completion of a parallel inter partes review of the asserted patent in the U.S. Patent & Trademark Office ("USPTO"), with Magistrate Judge Jeffrey Gilbert of the U.S. District Court for the Northern District of Illinois issuing a stay order on May 8, 2013.
  • IBM successfully resolves patent infringement claims brought by Auburn University involving semiconductor testing technologiesJones Day defended International Business Machines Corporation (IBM) against a suit filed by Auburn University in 2009 in the Opelika division of the Middle District of Alabama.
  • PCS settles patent infringement suit after favorable Markman rulingJones Day represented Potash Corporation of Saskatchewan, Inc. and obtained a favorable settlement in a patent licensing dispute concerning chemical processing technologies.
  • SAS and IBM challenge patentability of third party patent claims in USPTO reexamination proceedingsJones Day represents SAS Institute, Inc. and International Business Machines Corporation (IBM) in two patent reexamination proceedings before the USPTO Patent Trial & Appeal Board challenging a software-related patent that had been asserted in a lawsuit filed by InvestPic, LLC.
  • IBM defends against patent infringement claims in E.D. Texas involving flash technologyJones Day represents IBM in a multi-patent, multi-defendant infringement case in the Eastern District of Texas generally relating to self-aligned split gate flash technology.
  • Nordex USA seeks IP counseling regarding renewable energy technologiesJones Day provides strategic counseling to wind energy company Nordex USA regarding patents and other IP issues.
  • Eastman Kodak settles patent infringement case involving online image storage technology and data management systemsJones Day represented Eastman Kodak Company and its subsidiary Ofoto in a patent infringement case against on-line photosharing and photofinishing websites involving patents relating to data management, order delivery systems, uploading, storing, and printing of digital images using the Ofoto.com web site.
  • Abbott pursues several Hatch-Waxman patent infringement cases over blood pressure drug TRICOR®On behalf of Abbott Laboratories, Jones Day prosecuted several Hatch-Waxman patent infringement cases against generic manufacturers seeking FDA approval to market a version of Abbott's drug TRICOR®, which is used to treat high blood pressure.
  • IBM defends against patent infringement claims concerning electronic credit card transactionsJones Day represented IBM in defending against claims of infringement of several patents directed to the processing of credit card transactions over the internet.
  • Orban obtains TRO and injunctive relief in trademark infringement suit involving audio signal processorsJones Day obtained a temporary restraining order and preliminary injunction for Orban, Inc., a subsidiary of Harman International Industries, preventing infringement of trademark and trade dress rights in OPTIMOD® audio signal processors.
  • GM et al. defeat patent infringement claim involving internet operationsOn behalf of a group of automobile, car rental, airline, hotel, and electronic companies, Jones Day successfully defended a patent infringement case filed against more than 35 of the largest companies in the United States.
  • Audio DigitalImaging wins restraining order against Samsung for misappropriation of trade secretsOn behalf of Audio DigitalImaging, Inc., Jones Day obtained a temporary restraining order preventing Samsung Electronics and its U.S. subsidiary from further misappropriation of trade secrets involving MPEG-compatible semiconductor chip products.
  • Scotts Company settles patent infringement action over fertilizer formulationsJones Day obtained settlements in two separate claims of patent infringement of fertilizer formulations owned by The Scotts Company.
  • FACIT.org seeks counseling to protect IP rights in the health care industryJones Day provided strategic counseling to health care company FACIT.org regarding copyrights, trademarks and other IP issues.
  • Motorola defends against patent infringement charges involving digital video recordersJones Day obtained a settlement for Motorola, Inc. in a patent infringement lawsuit concerning television set-top boxes and digital video recorder (DVR) technology.
  • Abbott settles patent infringement action involving crystal form of terazosin hydrochlorideJones Day obtained a mutually agreeable settlement on behalf of Abbott Laboratories in a patent infringement action involving a new crystal form of terazosin hydrochloride.
  • Motorola defends against patent infringement charges over RAZR® cell phonesJones Day represented Motorola in defending against patent infringement claims relating to RAZR® and other Motorola cellular telephones.
  • IBM defends against patent infringement charges over detectors for defective floppy diskette controllersJones Day defended IBM in a patent litigation relating to systems and methods for detecting defective floppy diskette controllers.
  • Additional Publications

    • October 2017Multi-Party Patent Infringement: Recent Developments in the Law of Joint Infringement, Inducement, and Contributory Infringement, Practicing Law Institute, Patent Litigation 2017
    • September 2017Drafting Patents for Litigation and Licensing, Second Edition, 2017 Case Law Supplement, Bloomberg BNA and ABA Section of Intellectual Property Law
    • September 2016Drafting Patents for Litigation and Licensing, Second Edition, 2016 Case Law Supplement, Bloomberg BNA and ABA Section of Intellectual Property Law
    • July 2016Multi-Party Patent Infringement: Recent Developments in the Law of Joint Infringement, Inducement, and Contributory Infringement, Practicing Law Institute, Patent Litigation 2016
    • September 2015Drafting Patents for Litigation and Licensing Second Edition, 2015 Case Law Supplement, Bloomberg BNA and ABA Section of Intellectual Property Law
    • July 2015Multi-Party Patent Infringement: Recent Developments in the Law of Joint Infringement, Inducement, and Contributory Infringement, Practicing Law Institute, Patent Litigation 2015
    • September 2014Drafting Patents for Litigation and Licensing, 2014 Case Law Supplement, Bloomberg BNA and ABA Section of Intellectual Property Law
    • December 2013Drafting Patents for Litigation and Licensing, Second Edition, Bloomberg BNA and ABA Section of Intellectual Property Law
    • September 2012Drafting Patents for Litigation and Licensing, 2011 Case Law Supplement, Bloomberg BNA and ABA Section of Intellectual Property Law
    • October 2011Drafting Patents for Litigation and Licensing, 2010 Case Law Supplement, BNA Books and ABA Section of Intellectual Property Law
    • September 2011Why Is Patent Litigation So Expensive? NPEs And Managing Multiple Co-Defendant Cases, Practicing Law Institute, Patent Litigation 2011
    • October 2010Drafting Patents for Litigation and Licensing, 2009 Case Law Supplement, BNA Books and ABA Section of Intellectual Property Law
    • October 2010Non-Practicing Entities and Pre-Litigation Considerations, Practicing Law Institute, Patent Litigation 2010
    • October 2009Drafting Patents for Litigation and Licensing, 2008 Case Law Supplement, BNA Books and ABA Section of Intellectual Propery Law
    • November 2008Drafting Patents for Litigation and Licensing, Chapter 5: Mechanical Patents, BNA Books and ABA Section of Intellectual Property Law

    Speaking Engagements

    • June 6, 2019
      Intellectual Property & The Shape Of Things To Come (Jones Day University)
    • November 14, 2018
      AIA Trials Seminar: The Evolving Administration of the PTAB, Intellectual Property Law Association of Chicago, John Marshall Law School
    • October 17, 2018
      Practicing Law Institute Patent Litigation 2018: Advanced Techniques & Best Practices
    • October 3, 2018
      Federal Circuit Bar Association Bench & Bar Conference: Supreme Court & Federal Circuit Roundup
    • June 7, 2018
      IP Right Now: Hot Topics in Patent & Trademark Law (Jones Day University)
    • December 7, 2017
      PTAB Bar Association, Chicago Regional IPR Seminar
    • October 12-13, 2017
      PLI's Patent Litigation 2017: Advanced Techniques & Best Practices
    • March 2017
      Federal Circuit Bar Association Intellectual Property Law Symposium, Patent Case Management in N.D. Illinois
    • October 13-14, 2016
      PLI's Patent Litigation 2016
    • June 9, 2016
      IP News You Can Use: What's New For Patents, Trademarks, Copyrights and Trade Secrets, Jones Day 2016 MCLE University
    • October 8-9, 2015
      Practicing Law Institute Patent Litigation 2015
    • September 11, 2014
      How Can IPRs Affect Your Business Objectives?
    • September 26, 2013
      Post Grant Review Under The America Invents Act: Strategies, Trends & Observations
    • September 19, 2013
      The America Invents Act Turns Two
    • June 6, 2013
      The New USPTO Post-Grant Proceedings For Challenging Patent Validity Under The AIA: A Review Of The First Nine Months, Jones Day 2013 MCLE University
    • June 12, 2012
      American Conference Institute, The IP Litigator's Advanced Summit on NPE Litigation: How to Successfully Defend Against Complex IP Infringement Claims & Litigation Involving "Patent Trolls"
    • June 7, 2012
      How will The America Invents Act of 2011 affect U.S. Patent Litigation and U.S. Patent Office Proceedings? Jones Day 2012 MCLE University
    • October 8, 2011
      Patent Litigation, Iowa Intellectual Property Law Association
    • May 19, 2011
      Jones Day MCLE University - Chicago
    • October 2010
      Follow the Money: NPEs and Pre-Litigation Considerations, Practicing Law Institute Patent Litigation 2010
    • April 2010
      The Current State Of The Law Of Multi-Party Patent Infringement
    • September 2004
      Taking And Defending Depositions, Chicago Bar Association, Young Lawyers Section
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