John M. Jackson

Representative Patent Litigation

• Appealed and successfully reversed a decision of the Patent Trial and Appeal Board in In re Magnum Oil Tools International, Ltd., 829 F.3rd 1364 (Fed. Cir. 2016).  In that case, the Federal Circuit held that the Board’s decision, holding Magnum’s patent  (U.S. Patent No. 8,079,413) invalid as obvious, was in error because the petitioner failed to articulate a valid reason why the patent was obvious.  In so doing, the Federal Circuit agreed with Magnum that the Board improperly shifted the burden of proof to the patentee and that the petitioner failed to articulate a motivation to combine the cited prior art.
• Obtained summary judgment on behalf of three on-line travel companies in a patent infringement lawsuit in the District of Delaware in which the Plaintiff sought more than $20 million in damages arising out of the alleged infringement of a patent describing a “remote ordering system.” On appeal, the Federal Circuit affirmed the district court’s ruling.
• 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.
• Obtained a dispositive claim construction ruling in a design patent litigation matter between competitors in the Southern District of Texas involving alleged infringement of a design patent concerning downhole oil drilling tools.
• 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.
• Asset Guard Prods. Inc. v. Sentinel Manufacturing, Inc., S.D. Tex. (2017-19). Jackson Walker represented a manufacturing company in this patent infringement lawsuit. The court granted the motion for summary judgment that the client’s current products do not infringe.

Representative Litigation Involving Copyright, Trademark, and Trade Secrets

• Wuhan Keda Marble Co., Ltd. v. Tenax S.p.A., Appeal No. 18-1900 (Fed. Cir. 2019). Defended an appeal from the Trademark Trial and Appeal Board blocking a trademark application. The U.S. Court of Appeals for the Federal Circuit summarily affirmed the Board’s findings, granting the client victory.
• 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).

Publications

• “AttorneySomm’s Strategies to Maximize Wine Enjoyment at Business Dinners” (August 7, 2019)
• “The 10 Attorney Types at IP Conferences,” IP Litigation Insider (April 12, 2018)
• “Eastern District of Texas Adopts Model Order for Focusing Patent Claims and Prior Art,” Jackson Walker Alert (February 6, 2014)
• “The 10 Attorney Types in Joint Defense Groups,” Texas Lawyer (May 30, 2011)
• IP Litigation Insider, Jackson Walker Newsletter (March 2011, December 2010, September 2010, June 2010, March 2010, September 2009, March 2009, December 2008)
• “Qui Tam, Quo Vadis II,” Jackson Walker Insights (December 16, 2010)
• “Qui Tam, Quo Vadis?” Jackson Walker Insights (September 27, 2010)
• “Top Ten Things To Do While Waiting For The Bilski Decision,” Jackson Walker Insights (June 3, 2010)
• “A Post-MedImmune Reference Guide to Declaratory Judgment Jurisdiction” Jackson Walker Insights (March 23, 2010)
• “East Texas Court Releases Standard Protective Order for Patent Litigation Cases Involving Source Code,” Jackson Walker Alert (December 22, 2009)
• “In re Volkswagen: Will It Impact the Filing of Patent Litigation in the Eastern District of Texas?” Bloomberg BNA’s Patent, Trademark  & Copyright Journal, Vol. 77, No. 1891 (November 7, 2008)
• “In Re VW: Patent Filing In Eastern District Of Texas,” Law360 (October 27, 2008)
• “In Re: Volkswagen Ends in Detour for Plaintiffs Who Filed Suit in the Eastern District of Texas,” Jackson Walker Alert (October 14, 2008)
• “Will In Re: Volkswagen Drive Patent Litigation from the Eastern District of Texas?” Intellectual Property Today (October 2008)
• “Cease-and-Desist Letters: Fraught With Peril,” Dallas Bar Association Headnotes (July 1, 2008)
• “Federal Circuit Decision Strengthens Declaratory Judgment Plaintiff’s Arsenal,” Jackson Walker Alert (March 7, 2008)
• “Post-eBay: Injunction Practice in Patent Litigation,” IP Law360 (August 20, 2007)
• “Court Enters First Post-eBay Permanent Injunction Against Non-Competitor in Patent Infringement Case,” Jackson Walker Alert (August 6, 2007)
• “Dallas Federal Court Authorizes Use of Patent Local Rules,” Jackson Walker Alert (April 4, 2007)
• “Litigation Post eBay,” IP Law360 (October 18, 2006)
• “The United States Supreme Court Rejects Federal Circuit’s General Rule That Permanent Injunctions Should Issue Following a Finding of Patent Infringement and Validity,” Jackson Walker Insights (September 28, 2006)
• “Protect Your Intellectual Property From Infringing Imports: Section 337 Investigations,” WorldTrade Executive Global Intellectual Property Asset Management Report (March 2005)
• “Revisiting the Top Ten Restaurants in the Eastern District of Texas,” Jackson Walker Insights
• “Top Ten Restaurants In The Eastern District of Texas,” Jackson Walker Insights

Speeches

• “Litigating Patents in Texas: Trends, Best Practices, and Differences Between Districts,” IPWatchdog CON2020 (March 2020)
• “Mr. Zuckerberg Goes to Washington: Facebook Founder Faces Congress,” Jackson Walker & International Association of Privacy Professionals (May 2018)
• “Faster Than a Speeding Bullet – USITC as a Forum for Trademark Cases,” Roundtable for the International Trademark Association (July 2016)
• Panelist, Holmes Murphy Network Security Symposium and Open House (December 16, 2015)

• The Hon. Barbara M.G. Lynn American Inn of Court, Master, 2019-2020
• State of Texas, American Bar Association Wine Community Director, 2015-2016
• City of Cedar Hill, Community Development Corporation Board, 2005-2015
• Cedar Hill Human Relations Committee, 2003-2005
• Texas Bar Foundation, Fellow

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