John M. Jackson
For more than 20 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 three 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. John has earned certification as a Certified Information Privacy Professional (CIPP/US) and a Certified Information Privacy Manager through the International Association of Privacy Professionals.
B.B.A., Davenport College
J.D., University of Illinois Urbana-Champaign College of Law
Certified Information Privacy Professional (CIPP/US)
Certified Information Privacy Manager (CIPM)
Texas, 1997
United States Court of Appeals for the Federal Circuit
United States Court of Appeals for the Fifth Circuit
United States District Court for the Northern, Southern, Eastern and Western Districts of Texas
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.
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).
“Mr. Zuckerberg Goes to Washington: Facebook Founder Faces Congress,” Jackson Walker & International Association of Privacy Professionals, May 2018
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
- 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
Jackson Walker Obtains Federal Circuit Win in Cronos Patent Suit
Jackson Walker Attorneys Win Summary Judgment on Patent Infringement
Jackson Walker Obtains Dismissal of Patent Litigation Suit Involving Podcasting Patent
Jackson Walker Client Featured in 'USA Today' Article on Podcasting Patent Battle
Jackson Walker and KGBTexas Launch Contest for Women Entrepreneurs
Jackson Walker Prevails with Federal Circuit Victory, Reverses PTAB in IPR Appeal
Law360 Ranks Jackson Walker Patent Case Among “Top AIA-Related Decisions Of 2016”
John Jackson and Sara Chelette Obtain Certified Information Privacy Manager Certification
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
Practice Experience
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.
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).
Publications & Speeches
“Mr. Zuckerberg Goes to Washington: Facebook Founder Faces Congress,” Jackson Walker & International Association of Privacy Professionals, May 2018
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
Community Involvement
- 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
Areas of Focus
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