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 more than 30 years of intellectual property law experience to his role as lead counsel in complex IP disputes. He focuses on high-stakes district court and International Trade Commission (ITC) 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 U.S. Supreme Court victory (138 S. Ct. 1348) 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 (825 F.3d 1341) was named by IP Law360 as one of the top America Invents Act-related decisions of the year. Among other recent engagements, John has acted as lead PTAB counsel for R.J. Reynolds and Qualcomm in multiple inter partes reviews (IPRs).
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.
经验
其他出版物
- July 23, 2020
A Post-Nautilus Look at the “Reasonable Certainty” Standard for Indefiniteness, Practicing Law Institute, Patent Litigation 2020 - July 2019
A Nationwide Survey of District Court Local Patent Rules, Practicing Law Institute, Patent Litigation 2019 - November 2018
Drafting Patents for Litigation & Licensing, 3rd Edition, Chapter 5: Mechanical Patents, ABA Section of Intellectual Property Law & Bloomberg Law - October 2017
Multi-Party Patent Infringement: Recent Developments in the Law of Joint Infringement, Inducement, and Contributory Infringement, Practicing Law Institute, Patent Litigation 2017 - September 2017
Drafting Patents for Litigation and Licensing, Second Edition, 2017 Case Law Supplement, Bloomberg BNA and ABA Section of Intellectual Property Law - September 2016
Drafting Patents for Litigation and Licensing, Second Edition, 2016 Case Law Supplement, Bloomberg BNA and ABA Section of Intellectual Property Law - July 2016
Multi-Party Patent Infringement: Recent Developments in the Law of Joint Infringement, Inducement, and Contributory Infringement, Practicing Law Institute, Patent Litigation 2016 - September 2015
Drafting Patents for Litigation and Licensing Second Edition, 2015 Case Law Supplement, Bloomberg BNA and ABA Section of Intellectual Property Law - July 2015
Multi-Party Patent Infringement: Recent Developments in the Law of Joint Infringement, Inducement, and Contributory Infringement, Practicing Law Institute, Patent Litigation 2015 - September 2014
Drafting Patents for Litigation and Licensing, 2014 Case Law Supplement, Bloomberg BNA and ABA Section of Intellectual Property Law - December 2013
Drafting Patents for Litigation and Licensing, Second Edition, Bloomberg BNA and ABA Section of Intellectual Property Law - September 2012
Drafting Patents for Litigation and Licensing, 2011 Case Law Supplement, Bloomberg BNA and ABA Section of Intellectual Property Law - October 2011
Drafting Patents for Litigation and Licensing, 2010 Case Law Supplement, BNA Books and ABA Section of Intellectual Property Law - September 2011
Why Is Patent Litigation So Expensive? NPEs And Managing Multiple Co-Defendant Cases, Practicing Law Institute, Patent Litigation 2011 - October 2010
Drafting Patents for Litigation and Licensing, 2009 Case Law Supplement, BNA Books and ABA Section of Intellectual Property Law - October 2010
Non-Practicing Entities and Pre-Litigation Considerations, Practicing Law Institute, Patent Litigation 2010 - October 2009
Drafting Patents for Litigation and Licensing, 2008 Case Law Supplement, BNA Books and ABA Section of Intellectual Propery Law - November 2008
Drafting Patents for Litigation and Licensing, Chapter 5: Mechanical Patents, BNA Books and ABA Section of Intellectual Property Law
演讲
- October 15, 2019
Practicing Law Institute, Patent Litigation 2019: Twenty Plus Years After Markman - Claim Construction Today - 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
Practicing Law Institute, 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
Practicing Law Institute'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's 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 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 University) - October 8, 2011
Patent Litigation, Iowa Intellectual Property Law Association - May 19, 2011
Litigation With "Patent Trolls" (Jones Day University) - 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
"Technically and legally excellent."IAM Patent 1000
- The George Washington University (J.D. with high honors 1995; Order of the Coif; Moot Court Board); University of Illinois at Urbana-Champaign (B.S. in General Engineering 1990)
- Illinois; District of Columbia; Supreme Court of the United States; U.S. Court of Appeals for the Federal Circuit; Northern, Central, and Southern Districts of Illinois, Western District of Wisconsin, and various other U.S. District Courts; and registered to practice before the U.S. Patent and Trademark Office
- Patent Examiner, U.S. Patent and Trademark Office (1990-1993)
National Law Journal — "Intellectual Property Trailblazer" (2019)
The Best Lawyers in America for intellectual property litigation (2018-2022)
Illinois Super Lawyers for intellectual property litigation (2012-2021)
Intellectual Asset Management Patent 1000 — The World's Leading Patent Professionals where he has been lauded for "positioning cases to meet whatever commercial objectives [clients may] have"
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