Biography

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

John has served as trial counsel in more than 125 patent infringement lawsuits nationally, including numerous cases in Delaware and the Marshall, Tyler and Texarkana Divisions of the Eastern District of Texas. John has tried two major patent infringement cases to a jury and has considerable experience with all aspects of the claim construction or Markman process in patent infringement lawsuits. John also has substantial experience obtaining and resisting temporary restraining orders, preliminary and permanent injunctions.

John also Co-Chairs Jackson Walker’s Cybersecurity Litigation Group and counsels clients concerning various data privacy issues. Prior to entering private practice, John clerked for the Honorable Jane J. Boyle, who was then U.S. Magistrate Judge (and currently a District Judge) for the U.S. District Court for the Northern District of Texas.

Practice Expertise

John has developed particular experience in the following areas:

  • Patent Litigation
  • Intellectual Property Litigation
  • Cybersecurity, Privacy and Data Security

John’s patent infringement lawsuits have involved a wide variety of technology, including:

  • Software
  • Internet applications
  • Consumer electronics
  • Oil drilling technology
  • Mechanical devices
  • Chemical compositions
  • Business methods

Career Highlights

Representative Patent Litigation

  • 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). On appeal, 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.
  • Obtained a dispositive claim construction ruling on behalf of Denon Electronics (USA) LLC in a patent infringement lawsuit in the Eastern District of Texas alleging infringement by DVD players. The Federal Circuit affirmed the district court’s ruling.
  • Served as lead counsel for Adam Carolla’s podcasting company, Lotzi Digital, Inc. in a patent lawsuit in the Eastern District of Texas involving alleged infringement by Lotzi Digital’s podcasts.  Negotiated a payment-free dismissal of Personal Audio’s claims.
  • Negotiated payment-free dismissals on behalf of clients in seven patent litigation matters.
  • 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.

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  3d 552 (5th Cir. 2002).

Community

  • State of Texas, American Bar Association Wine Community Director
  • City of Cedar Hill, Community Development Corporation Board, 2005-2015
  • Cedar Hill Human Relations Committee, 2003 – 2005
  • Dallas Bar Association, Judiciary Committee

News & Events

  • News & Publications
  • Speeches
  • Events

    John Jackson Hosts INTA Roundtable in July

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  • Client Results

    Jackson Walker Obtains Judgment Invalidating Design Patent

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  • Highlights

    US-EU Agree on Privacy Shield to Replace Invalidated Safe Harbor

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  • Events

    John Jackson to Participate in Cybersecurity Panel at Upcoming Security Symposium

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  • Publication

    Investment Adviser and SEC Agree to Settle Charges Arising out of Failure to Adopt Written Cybersecurity Policies Required by the Safeguards Rule

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  • Publication

    Laches Remains a Valid Defense to Patent Infringement Notwithstanding ‘Petrella v. Metro-Goldwyn-Mayer’

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  • Attorney News

    John Jackson and Sara Chelette Earn Certified Information Privacy Professional Certification

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  • Press release

    Jackson Walker Featured in ‘Law360’ as a Texas Powerhouse Firm

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  • Client Results

    Jackson Walker Invalidates Patent and Disposes of Associated Patent Litigation

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  • Attorney News

    John Jackson Appointed to ABA Wine Community Texas Director Position

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  • Press release

    Jackson Walker Obtains Dismissal of Patent Litigation Suit Involving Podcasting Patent

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  • Press release

    Jackson Walker Client Featured in ‘USA Today’ Article on Podcasting Patent Battle

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  • Press release

    Jackson Walker and KGBTexas Launch Contest for Women Entrepreneurs

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  • Highlights

    Eastern District of Texas Adopts Model Order for Focusing Patent Claims and Prior Art

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  • Publication

    Eastern District of Texas Adopts Model Order for Focusing Patent Claims and Prior Art

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  • Press release

    Jackson Walker Helps Client Secure Verdict in Jury Trial in the Eastern District of Texas, Marshall Division

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  • Publication

    The 10 Attorney Types in Joint Defense Groups

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  • Spotlight

    Qui Tam, Quo Vadis II

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  • Spotlight

    Qui Tam, Quo Vadis?

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  • Highlights

    Top Ten Things To Do While Waiting For The Bilski Decision

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  • Publication

    A Post-MedImmune Reference Guide to Declaratory Judgment Jurisdiction

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  • Highlights

    East Texas Court Releases Standard Protective Order for Patent Litigation Cases Involving Source Code

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  • Publication

    PATENT, TRADEMARK & COPYRIGHT JOURNAL – In re Volkswagen: Will It Impact the Filing of Patent Litigation in the Eastern

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  • Publication

    IPLAW360 — In Re VW: Patent Filing In Eastern District Of Texas

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  • Highlights

    In Re: Volkswagen Ends in Detour for Plaintiffs Who Filed Suit in the Eastern District of Texas

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  • Publication

    Cease-and-Desist Letters: Fraught With Peril

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  • Publication

    Federal Circuit Decision Strengthens Declaratory Judgment Plaintiff’s Arsenal

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  • Publication

    Post-eBay: Injunction Practice in Patent Litigation

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  • Publication

    Court Enters First Post-eBay Permanent Injunction Against Non-Competitor in Patent Infringement Case

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  • Publication

    Dallas Federal Court Authorizes Use of Patent Local Rules

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  • Highlights

    Litigation Post eBay

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  • Highlights

    The United States Supreme Court Rejects Federal Circuit’s General Rule That Permanent Injunctions Should Issue Following a Finding of Patent Infringement and Validity

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  • Highlights

    Protect Your Intellectual Property From Infringing Imports: Section 337 Investigations

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Network Security Symposium, December 16, 2015 (Dallas), Sponsored by Holmes Murphy

The Ten Attorneys You Meet In Your Joint Defense Group

IP Litigation Insider - March 2011

IP Litigation Insider - December 2010

Qui Tam, Quo Vadis II

IP Litigation Insider - September 2010

Qui Tam, Quo Vadis?

IP Litigation Insider - June 2010

Top Ten Things To Do While Waiting For The Bilski Decision

A Post-MedImmune Reference Guide to Declaratory Judgment Jurisdiction

IP Litigation Insider - March 2010

East Texas Court Releases Standard Protective Order for Patent Litigation Cases Involving Source Code

IP Litigation Insider - September 2009

Revisiting the Top Ten Restaurants in the Eastern District of Texas

IP Litigation Insider - March 2009

Top Ten Restaurants In The Eastern District of Texas

IP Litigation Insider - December 2008

INTELLECTUAL PROPERTY TODAY -- Will In Re: Volkswagen Drive Patent Litigation from the Eastern District of Texas?

PATENT, TRADEMARK & COPYRIGHT JOURNAL -- In re Volkswagen: Will It Impact the Filing of Patent Litigation in the Eastern

IPLAW360 -- In Re VW: Patent Filing In Eastern District Of Texas

In Re: Volkswagen Ends in Detour for Plaintiffs Who Filed Suit in the Eastern District of Texas

Cease-and-Desist Letters: Fraught With Peril

Federal Circuit Decision Strengthens Declaratory Judgment Plaintiff's Arsenal

Post-eBay: Injunction Practice in Patent Litigation

Court Enters First Post-eBay Permanent Injunction Against Non-Competitor in Patent Infringement Case

Dallas Federal Court Authorizes Use of Patent Local Rules

Litigation Post eBay

The United States Supreme Court Rejects Federal Circuit's General Rule That Permanent Injunctions Should Issue Following a Finding of Patent Infringement and Validity

Protect Your Intellectual Property From Infringing Imports: Section 337 Investigations