Celebrating 125 Years
 

John M. Jackson

Biography

For more than seventeen years, John M. Jackson has represented a wide variety of clients in intellectual property and complex commercial litigation matters in federal and state courts throughout the country, and in the International Trade Commission.

Mr. Jackson has served as trial counsel in more than 100 patent infringement lawsuits, including numerous cases in the Tyler, Marshall and Texarkana Divisions of the Eastern District of Texas, and in Delaware. Mr. Jackson has tried a major patent infringement case to a jury and has considerable experience with all aspects of the claim construction or Markman process in patent infringement lawsuits. Mr. Jackson's patent infringement lawsuits have involved a wide variety of technology including software, internet applications, consumer electronics, oil drilling technology, mechanical devices, chemical compositions and business methods. Mr. Jackson also has substantial experience obtaining and resisting temporary restraining orders, preliminary and permanent injunctions.

Prior to entering private practice, Mr. Jackson clerked for the Honorable Jane J. Boyle, U.S. Magistrate Judge for the U.S. District Court, Northern District of Texas.


More about John M. Jackson: Experience | Involvement | Speeches / Publications | News

Representative Matters

  • REPRESENTATIVE PATENT LITIGATION MATTERS

  • Orion IP, LLC v. Hyundai Motor America (E.D. Tex. [Tyler] and Fed. Cir). Counsel for Hyundai in patent infringement lawsuit alleging that Hyundai's website infringed business methods patents involving a computer assisted parts sales method and an electronic proposal preparation system. At trial, we obtained a jury verdict of non-infringement with regard to the allegations against Hyundai's "Build Your Own" software (Plaintiff's damages model claimed entitlement to $595 million). In Orion IP, LLC v. Hyundai Motor America, 605 F.3d 967 (Fed. Cir. 2010), the Federal Circuit invalidated the computer assisted parts sales method patent finding that the evidence was so "overwhelming" that "a reasonable jury would not have a legally sufficient evidentiary basis to find that the claims at issue were not anticipated." The result was a complete victory for Hyundai.

  • Patent Harbor, LLC v. Audiovox Corporation, et al. (E.D. Tex. [Tyler]; Fed. Cir.). Lead counsel for Denon Electronics (USA) LLC in a patent infringement lawsuit alleging infringement by DVD players. During the scheduling portion of the case, we successfully lobbied the Court to obtain an early claim construction hearing and to defer discovery until after a Markman ruling was entered. We subsequently obtained a claim construction ruling from Magistrate Judge Love that was dispositive as to the claims against our client. After Judge Davis affirmed Magistrate Judge Love's ruling, the court entered a Stipulated Judgment of Non-infringement as to its claims against Denon and pursued an appeal to the Federal Circuit. The Federal Circuit subsequently affirmed the district court's ruling.

  • Personal Audio, LLC v. Lotzi Digital, Inc. et al., (E.D. Tex.). Lead counsel for Adam Carolla's podcasting company, Lotzi Digital, Inc. in a case involving alleged infringement by Lotzi Digital's podcasts. Obtained a payment-free dismissal of Personal Audio's claims shortly before the pre-trial conference.

  • Norman IP Holdings, LLC v. Denon Electronics (USA) LLC (E.D. Tex). Lead counsel for Denon Electronics in case involving alleged willful infringement of two patents by Denon's wireless audio devices. Obtained a payment-free dismissal with prejudice of Plaintiff's claims prior to the claim construction hearing.

  • Magnum Oil Tools International, Ltd. v. Tony D. McClinton, et al. (S.D. Tex.; Fed. Cir.) (pending). Lead counsel for Plaintiff Magnum Oil Tools in a patent infringement lawsuit alleging infringement of three patents directed to bridge and frac plugs by a competitor.

  • Mobility Electronics, Inc. v. Formosa Electronics Industries, Inc. et al., (E.D. Tex. and ITC). Counsel for Mobility Electronics in a patent and trade secret misappropriation lawsuit involving power adapter technology. Following a Markman hearing, the district court issued a claim construction order construing the vast majority of disputed claim terms in Mobility's favor. Mobility settled its claims against all five defendants on favorable terms.

  • Fowler Woods, LLC. v. Accuradio, Inc., et al. (E.D. Tex.). Lead counsel for a publicly traded media company defendant in a patent infringement lawsuit concerning the display of advertising on websites. Obtained informal dismissal of the claims against our client prior to the deadline for responding to the Complaint.

  • Uniloc USA, Inc., et al. v. BCL Technologies, et al. (E.D. Tex.). Represented a publicly traded software company in a patent infringement lawsuit concerning health care software. The Plaintiff dismissed its claims against our client following an informal demonstration of our client's product.

  • DR Systems, Inc. v. Merge Technologies, Inc., et al., (S.D. Cal.). Counsel for two defendants in patent suit involving alleged infringement of patents concerning automated medical imaging and archival systems. Case settled on very favorable terms shortly after Defendants served their invalidity contentions.

  • Balthaser Online, Inc. v. Network Solutions, LLC, et al. (E.D. Tex. and N.D. Cal.); Balthaser Online, Inc. v. Kimberly-Clark Corporation, et al. (E.D. Tex. ). Counsel for six defendants in two lawsuits alleging that various web sites infringe the plaintiff's patent. Obtained a transfer to the Northern District of California in Network Solutions and negotiated an early, favorable global settlement for all our clients prior to the claim construction hearings in both cases.

  • Comarco Wireless Technologies v. Mobility Electronics, Inc. et al., (D. Ariz.). Counsel for Mobility Electronics in lawsuit involving alleged infringement of patents relating to power adapters. Following an evidentiary hearing, after which the court gave credence to Mobility's invalidity defense, the court denied Comarco's request for injunctive relief. The lawsuit settled shortly thereafter. The denial of the injunction allowed Mobility's flagship product, a combination AC/DC power adapter, to stay on the market.

  • REPRESENTATIVE LITIGATION INVOLVING COPYRIGHT, TRADEMARK AND TRADE SECRETS

  • Avaya, Inc. v. Chris Williams, (N.D. Tex.). Obtained a temporary restraining order, preliminary and permanent injunctions to prevent the disclosure of trade secrets by a former employee.

  • KBR, Inc. et al v. KBR Equity Partners, LLC, Case No. 4:10-cv-02776 (S. D. of Tex). Co-counsel for Defendant in a trademark infringement lawsuit. After filing a motion to dismiss or, in the alternative, transfer to a more convenient forum the Plaintiff filed a motion to compel additional discovery. We defeated the discovery motion and the Plaintiff dismissed its claims against our client.

  • Served as co-counsel for Motion Picture Association of America in numerous copyright infringement cases involving the reproduction of motion pictures, television programs and other copyrighted works via the BitTorrent network. Cases either settled on favorable terms or resulted in a judgment and permanent injunction.

  • REPRESENTATIVE COMMERCIAL LITIGATION

  • Luv n' care, Ltd., et al. v. Royal King Infant Products, Ltd., et al. (E.D. Tex. [Marshall]). Co–counsel for Plaintiffs in a lawsuit in which Luv n' care, which sells baby products under its Nuby brand, sued Royal King Infant Products, Ltd. ("Royal King"), alleging that the Thailand–based manufacturer violated a previous settlement agreement between the two parties by underreporting sales, underpaying royalties, and continuing to make and sell products that were confusingly similar to Luv n' care's designs. At the conclusion of a three–day trial, an eight–person jury unanimously found in favor of Luv n' care and awarded $10 million in damages against Royal King. Following a later bench trial concerning Royal King's affirmative defenses and counterclaims, Judge Gilstrap entered judgment in Luv n' care's favor.

  • ASD Specialty Healthcare, Inc. v. Massachusetts Biologic Laboratories, (State District Court, Dallas, Texas). Counsel for MBL in suit to rescind $34 million contract. The court granted MBL's motion to dismiss and enforced a forum selection clause in the contract.

  • Shawne Fielding, et al. v. Hubert Burda Media, Inc., et al., 415 F.3d 419 (5th Cir. 2005). Counsel for Bertelsmann in libel suit filed by the former Swiss Ambassador to Germany and his wife, a former Mrs. Texas. The district court granted Bertelsmann's motion to dismiss for lack of personal jurisdiction. In a published decision, the Fifth Circuit affirmed.

  • Herrmann Holdings Ltd. et al. v. Lucent Technologies, Inc., (N.D. Tex. and Fifth Circuit). Counsel for Lucent in dispute arising out of merger agreement. Published decision: 302 F.3d 552 (5th Cir. 2002).


More about John M. Jackson: Biography | Involvement | Speeches / Publications | News

Organization Membership

Mr. Jackson has served multiple terms on the Judiciary Committee for the Dallas Bar Association.

Community Involvement

The Cedar Hill City Council recently reappointed Mr. Jackson to the Community Development Corporation Board for the City of Cedar Hill. The Board administers the half-cent community development sales tax and sets programs and policies for the use of the funds. Mr. Jackson has served on the Community Development Corporation Board since 2005. From 2003 through 2005, Mr. Jackson served on the Cedar Hill Human Relations Committee.


More about John M. Jackson: Biography | Experience | Speeches / Publications | News

Speeches / Publications

Mr. Jackson frequently writes articles relating to patent infringement litigation. Several of Mr. Jackson's articles are available below:

Links to Publications


More about John M. Jackson: Biography | Experience | Involvement | News

  • John M. Jackson
Partner
Dallas Office
T: 214.953.6109
F: 214.661.6645

Houston Office
T: 713.752.4529

jjackson@jw.com
Practice Areas
Education

B.B.A., with high honors, Davenport College

J.D., magna cum laude, University of Illinois College of Law
  • Author, Recent Decisions Section of the Illinois Bar Journal
Bar Admissions

  • 1997, Texas

  • Mr. Jackson has been specially admitted in state or federal courts in Arizona, California, Delaware, Florida, Georgia, Idaho, Massachusetts, New Jersey, South Carolina, Utah and Virginia. He has also been specially admitted to participate in Inter Partes Review proceedings before the Patent Trial and Appeal Board.

Court Admissions

  • United States Court of Appeals for the Fifth Circuit
  • United States Court of Appeals for the Federal Circuit
  • United States District Courts for the Northern, Eastern, and Southern Districts of Texas
 
 
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