As a transactional attorney, Jack brings his working knowledge of numerous technologies and the strategies for protecting technology developments to patent infringement matters. When competitors or other market participants fail to respect a client’s IP rights, Jack helps clients assess the infringement and prospect of litigation. If litigation aligns with the client’s business strategy, Jack works closely with IP litigators to assert IP rights in U.S. District Courts. When a client is accused of intellectual property infringement, Jack’s working knowledge of the client’s business and technology provides a basis for developing a business-oriented strategy for responding to such allegations.
For example, Jack recently assisted a client accused of infringement by a company that is both a competitor in some markets and a supplier in other markets. Jack recognized that his client could both design around the alleged infringement and remove the reliance on the company alleging infringement as a supplier by applying a single engineering solution across two business lines. The result was a very fast resolution to the dispute with favorable terms and minimal costs to the client.
Jack has experience with post-grant proceeding in the United States and in foreign countries. He has a deep understanding of traditional reexamination and reissue procedures, as well as current inter partes review (IPR) and covered-business method (CBM) review, as both the asserting and the defending party.