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John M. Jackson

John M. Jackson

Partner, Dallas & Houston
214.953.6109
jjackson@jw.com
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Biography Practice Experience Recognition & Accolades Publications & Speeches Community Involvement Client Results News & Insights Areas of Focus
John M. Jackson

John M. Jackson

Partner, Dallas & Houston
214.953.6109
jjackson@jw.com
Email LinkedIn vCard Print
Practice Experience Recognition & Accolades Publications & Speeches Community Involvement Client Results Attorney News Areas of Focus

Practice Areas

  • Trial & Appellate Litigation
  • Intellectual Property

Experience

  • Business Litigation
  • Copyrights
  • Cybersecurity, Data Protection, & Privacy
  • Digital
  • Energy Litigation
  • Entertainment, Digital, & Sports
  • Intellectual Property Litigation
  • Technology
  • Trademarks
  • Workplace Privacy & Data Security

Biography

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 250 patent infringement lawsuits nationally. This experience consists of numerous cases in all four judicial districts in Texas (including the Waco Division of the Western District of Texas) as well as Delaware. 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 Chairs Jackson Walker’s Cybersecurity Litigation Group and counsels clients concerning various data privacy issues, including compliance with the Texas Data Privacy and Security Act (TXDPSA), the California Consumer Privacy Act (CCPA), the General Data Protection Regulation (GDPR), incident response and ransomware demands. John has earned certification as a Certified Information Privacy Professional (CIPP/US) and a Certified Information Privacy Manager (CIPM) through the International Association of Privacy Professionals.

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.

Education

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)

Bar Admissions

Texas

Court Admissions

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 Litigation Involving Data Breaches

  • Perlaki v. J.B. Poindexter & Co., Inc., No. 4:24-cv-01649 (Southern District of Texas). Represented a manufacturing company in a federal court data breach class action resulting from a cybercriminal attack on the company’s servers. Plaintiff voluntarily dismissed all claims against the company after the magistrate judge issued a memorandum and recommendation that all plaintiff’s claims should be dismissed for failure to state a claim.
  • In re OakBend Medical Center Data Breach Litigation, No. 4:22-CV-03740 (Southern District of Texas). Represented a medical center and a medical group in a federal court data breach class action resulting from a 2022 cybercriminal attack on the entities’ servers by a notorious ransomware group. The court dismissed all claims against the medical group on the grounds of governmental immunity, after previously dismissing all claims against the medical center on the same grounds.

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).

Lawdragon 500 Leading Litigators in America, 2023-2026

Publications

  • “CIPA Claims Surge: What Every Company with a California-Facing Website Must Know,” Jackson Walker Insights (December 2025)
  • “Cheers to That! Dallas Attorney Builds Wine Empire,” Texas Lawyer (June 10, 2025)
  • “Immediate Steps to Safeguard Your Genetic Data Amid 23andMe Bankruptcy Concerns,” Jackson Walker Insights (April 2025)
  • “With Looming Attack and Litigation Risk, Lawyers Say Every Business Should Buy Cybersecurity Insurance,” Texas Lawyer (July 8, 2021)
  • “Virtual Mediations and Patent Litigation: Lessons Learned and Best Practices,” The Texas Lawbook (April 2021)
  • “Brazil’s LGPD Data Privacy Law to Become Effective Any Day,” JD Supra (August 28, 2020)
  • “Privacy Shield Invalidated by European Union Court of Justice,” Jackson Walker Alert (July 16, 2020)
  • “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

Speaking Engagements

  • “IT & Data Protection Considerations,” Texas CPA Certification Program, (January 2026)
  • “Emerging Workplace Technologies: Opportunity, Oversight and Legal Exposure,” St. Mary’s Law School (January 2026)
  • “Cyber Security and Data Privacy,” Teacher Retirement System of Texas Legal Summit (November 10, 2020)
  • “Update on Global Data Privacy Regulations,” Jackson Walker Fast Takes Podcast (August 26, 2020)
  • “Litigating Patents in Texas: Trends, Best Practices, and Differences Between Districts,” IPWatchdog CON2020 (September 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

Jackson Walker Represents Westerman Ltd. in $860M Sale of J-W Power Company

Client Results • December 2, 2025

Jackson Walker Represents Cambridgeport Capital in Sale of Integrity Assessment Group

Client Results • October 27, 2025

Jackson Walker Advises Novaria Group on Acquisition of Bandy Manufacturing

Client Results • February 10, 2025

Jackson Walker Represents M1 Support Services in Sale of Controlling Interest to Cerberus Capital Management

Client Results • June 5, 2024

Jackson Walker Advises Freedom Powersports in Sale to RumbleON

Client Results • November 19, 2021

Jackson Walker Team Advises Digital Turbine on More Than $1B in Global Deals in 2021

Client Results • October 14, 2021

Natalie Kosydar Leads Jackson Walker Team in Helping Family Launch Comic Book Brand

Client Results • May 24, 2021

Southern District of Texas Grants Partial Summary Judgment for Jackson Walker Client Sentinel Manufacturing, Inc.

Client Results • December 11, 2019

Jackson Walker Partners With Advitam IP to Secure Federal Appellate Victory for Tenax S.p.A.

Client Results • April 10, 2019

Jackson Walker Obtains Federal Circuit Win in Cronos Patent Suit

Client Results • August 21, 2017

Jackson Walker Attorneys Win Summary Judgment on Patent Infringement

Client Results • August 17, 2016

Jackson Walker Prevails with Federal Circuit Victory, Reverses PTAB in IPR Appeal

Client Results • July 27, 2016

Oil and Gas Patent Law Case Featured in “Texas Lawyer” and “Law360”

Client Results • March 10, 2016

Jackson Walker Obtains Judgment Invalidating Design Patent

Client Results • March 3, 2016

Jackson Walker Obtains Dismissal of Patent Litigation Suit Involving Podcasting Patent

Client Results • October 1, 2014

More Client Results

JW Belonging & Inclusion Newsletter – December 2025

View Jackson Walker’s December 2025 Belonging & Inclusion Newsletter, Perspectives.

Newsletters • December 17, 2025

CIPA Claims Surge: What Every Company with a California-Facing Website Must Know

By John M. Jackson and Shannon Wright

Data privacy and compliance professionals navigate an increasing number of U.S. and international regulations related to consumer data privacy and data security. Nearly 20 U.S. states now have comprehensive consumer data privacy laws, with three more states’ laws set to take effect on January 1, 2026.

 

Insights • December 3, 2025

Lawdragon 500 Litigators 2024
Jackson Walker Congratulates 36 Attorneys Named Among the Lawdragon 500 Leading Litigators in America for 2026

Jackson Walker is pleased to announce the selection of 36 attorneys to Lawdragon’s 2026 list of the 500 leading litigators in America. This is Lawdragon’s fourth edition of its leading litigators list, recognizing some of America’s top litigation talent.

Attorney News • September 5, 2025

John Jackson
Cheers to That! Dallas Attorney Builds Wine Empire | Texas Lawyer

In this article from the Texas Lawyer, John Jackson discusses his extensive wine expertise, which has earned him a significant following as @AttorneySomm. He explains how his passion for wine not only enriches his personal life but also positively impacts his legal career by strengthening client relationships and creating distinctive networking opportunities.

Mentions • June 11, 2025

Immediate Steps to Safeguard Your Genetic Data Amid 23andMe Bankruptcy Concerns

By Jeffery P. Drummond, Lee B. Hunt, and John M. Jackson

Since its 2006 founding, 23andMe’s service of collecting, analyzing, and reporting customers’ genetic information has raised privacy concerns among many. Worsening those concerns, the company filed for bankruptcy protection in late March 2025. A statement posted to its website confirmed the Company’s intent to sell “substantially all of its assets” through the bankruptcy process.

Insights • April 11, 2025

Jackson Walker Shortlisted for Managing IP’s Firm of the Year Awards for Patent and Trademark Disputes

Jackson Walker is honored to be shortlisted for the 2025 Managing IP Awards in the U.S. Regional Categories, including “Firm of the Year” for Patent and Trademark Disputes in the South!

Spotlight • March 24, 2025

Lawdragon 500 Litigators 2024
Jackson Walker Congratulates 36 Attorneys Named Among the Lawdragon 500 Leading Litigators in America

Jackson Walker is pleased to announce the selection of 36 attorneys to Lawdragon’s 2025 list of the 500 leading litigators in America. The third edition of this list recognizes America’s top talent in antitrust, financial and securities litigation, intellectual property, commercial litigation, real estate, mergers and acquisitions, cybersecurity, and white collar and investigations.

Attorney News • September 9, 2024

Lawdragon 500 Leading Litigators
Jackson Walker Congratulates 35 Attorneys Named Among the Lawdragon 500 Leading Litigators in America

Jackson Walker announces the selection of 35 attorneys to Lawdragon’s 2024 list of the 500 leading litigators in America.

Attorney News • September 14, 2023

Jackson Walker Congratulates 36 Attorneys Named Among the Lawdragon 500 Leading Litigators in America

Jackson Walker announces the selection of 36 attorneys to Lawdragon’s inaugural list of the 500 leading litigators in America.

Attorney News • October 7, 2022

John Jackson with Jackson Walker logo
John Jackson Discusses the Costly Business of Ransomware Attacks and the Need for Cybersecurity Insurance

In a Texas Lawyer article discussing the rising number of cybersecurity incidents and the costly results, John Jackson shared how ransomware attacks are growing increasingly common—and what companies can do to protect themselves.

Mentions • July 28, 2021

Office space image with Jackson Walker logo
Labor & Employment Dispatch: July 2021

The June 2021 issue of Jackson Walker’s Labor & Employment Dispatch features insights on President Biden’s antitrust executive order, the COVID-19 Hate Crimes Act, the 87th Texas Legislature, new guidance on PrEP coverage and retirement plans, the EB-5 Immigrant Investor Regional Center Program, ransomware attacks, and more.

Newsletters • July 27, 2021

Laptop computer and notebook
Virtual Mediations and Patent Litigation: Lessons Learned and Best Practices

By Hon. David Folsom & John M. Jackson

Mediation has always been an important part of patent litigation – especially in the Eastern District of Texas. Because of the COVID-19 pandemic, virtual mediations have become an important and successful way to resolve patent disputes.

Insights • April 30, 2021

John Jackson with Jackson Walker logo
Violate My Patents? See You in Texas | The Texas Lawbook

With an estimated 1,500 patent infringement lawsuits expected to be filed in 2020 in U.S. district courts in Texas, John Jackson spoke with The Texas Lawbook about the COVID-19 pandemic and its impact on patent disputes as hearings have moved to an online forum.

Mentions • December 8, 2020

John Jackson and Kathryn Walt Hall dduring Globalaw virtual wine tasting event
Globalaw Virtual Wine Tasting Event Featuring Ambassador Kathryn Walt Hall and Attorney Somm

Join Ambassador Kathryn Walt Hall, proprietor of HALL, WALT, and BACA Wines and the former U.S. Ambassador to Austria, and JW partner John Jackson (AKA Attorney Somm) as they discuss HALL wines and the current industry.

Webinars • October 22, 2020

International technology connection data privacy with Jackson Walker logo
Brazil’s LGPD Data Privacy Law to Become Effective Any Day

While it appeared that Brazil’s LGPD, which was inspired by the GDPR, was going to be postponed until 2021, that is no longer the case.

Insights • August 27, 2020

John Jackson with Jackson Walker logo
John Jackson to Speak at IPWatchdog CON2020 on “Litigating Patents in Texas”

During the IPWatchdog CON2020, John Jackson will join a panel discussing the realities of litigating in Texas after TC Heartland, including trends, best practices, and the differences between the districts.

Speaking Engagements • August 27, 2020

Fast Takes - John Jackson
Update on Global Data Privacy Regulations

John Jackson discusses the alphabet soup of data security regulations involving Brazil’s LGPD, the European Union’s GDPR, and California’s CCPA amid the COVID-19 pandemic.

Podcasts • August 26, 2020

International technology connection data privacy with Jackson Walker logo
Privacy Shield Invalidated by European Union Court of Justice

According to the European Union Court of Justice, the United States approach to data privacy is not “essentially equivalent” to what is required in the EU due to surveillance programs utilized by US public authorities which are “not limited to what is strictly necessary.”

Insights • July 16, 2020

John Jackson with Jackson Walker logo
Let Your Red Wines Sparkle This Season | Forbes

To introduce sparkling wine newbies, or sparkling wine lovers in need of a refresher, to the category, attorney and sommelier John M. Jackson (you can see his work at @AttorneySomm) answered a few questions about the wines. And suggested some (reasonably priced) bottles to make your seasonal really sparkle.

Mentions • November 13, 2019

Labor & Employment Dispatch: August 2019

Featuring insights on the U.S. National Women’s Soccer Team’s lawsuit against the U.S. Soccer Federation to close the gender pay gap; the labor and employment and ERISA attorneys recognized in The Best Lawyers in America 2020 edition; and more.

Newsletters • August 20, 2019

AttorneySomm’s Strategies to Maximize Wine Enjoyment at Business Dinners

With restaurant markups on wine between 300-400% or more, John M. Jackson shares five strategies to maximize wine enjoyment at business dinners while staying within budget.

Insights • August 6, 2019

IP Litigation Insider—August 2019

Featuring Sean Jordan’s confirmation as a U.S. District Judge, Jackson Walker’s representation of Tenax S.p.A. and Packers Plus Energy Services Inc., and two Supreme Court decisions that alter the landscape for litigating copyright infringement cases.

Newsletters • August 1, 2019

John Jackson and Blake Dietrich Nominated to the Barbara M.G. Lynn Inn of Court

Jackson Walker is pleased to congratulate John Jackson and Blake Dietrich on their respective nominations as Master and Associate of The Honorable Barbara M.G. Lynn American Inn of Court, effective August 6, 2019.

Attorney News • July 30, 2019

IP Litigation Insider—April 2018

Featuring “The Facts in the ‘Abstract'”; “Absolute Intervening Rights: Maximizing the Impact of Post-Grant Challenges”; and “The 10 Attorney Types at IP Conferences.”

Newsletters • April 17, 2018

The 10 Attorney Types at IP Conferences

Having worked the intellectual property conference circuit for more than 12 years, I am frequently reminded of the apt Bon Jovi lyrics: “It’s all the same. Only the names are changed.” 

Insights • April 12, 2018

More Attorney News

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 Litigation Involving Data Breaches

  • Perlaki v. J.B. Poindexter & Co., Inc., No. 4:24-cv-01649 (Southern District of Texas). Represented a manufacturing company in a federal court data breach class action resulting from a cybercriminal attack on the company’s servers. Plaintiff voluntarily dismissed all claims against the company after the magistrate judge issued a memorandum and recommendation that all plaintiff’s claims should be dismissed for failure to state a claim.
  • In re OakBend Medical Center Data Breach Litigation, No. 4:22-CV-03740 (Southern District of Texas). Represented a medical center and a medical group in a federal court data breach class action resulting from a 2022 cybercriminal attack on the entities’ servers by a notorious ransomware group. The court dismissed all claims against the medical group on the grounds of governmental immunity, after previously dismissing all claims against the medical center on the same grounds.

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).

Recognition & Accolades

Lawdragon 500 Leading Litigators in America, 2023-2026

Publications & Speeches

Publications

  • “CIPA Claims Surge: What Every Company with a California-Facing Website Must Know,” Jackson Walker Insights (December 2025)
  • “Cheers to That! Dallas Attorney Builds Wine Empire,” Texas Lawyer (June 10, 2025)
  • “Immediate Steps to Safeguard Your Genetic Data Amid 23andMe Bankruptcy Concerns,” Jackson Walker Insights (April 2025)
  • “With Looming Attack and Litigation Risk, Lawyers Say Every Business Should Buy Cybersecurity Insurance,” Texas Lawyer (July 8, 2021)
  • “Virtual Mediations and Patent Litigation: Lessons Learned and Best Practices,” The Texas Lawbook (April 2021)
  • “Brazil’s LGPD Data Privacy Law to Become Effective Any Day,” JD Supra (August 28, 2020)
  • “Privacy Shield Invalidated by European Union Court of Justice,” Jackson Walker Alert (July 16, 2020)
  • “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

Speaking Engagements

  • “IT & Data Protection Considerations,” Texas CPA Certification Program, (January 2026)
  • “Emerging Workplace Technologies: Opportunity, Oversight and Legal Exposure,” St. Mary’s Law School (January 2026)
  • “Cyber Security and Data Privacy,” Teacher Retirement System of Texas Legal Summit (November 10, 2020)
  • “Update on Global Data Privacy Regulations,” Jackson Walker Fast Takes Podcast (August 26, 2020)
  • “Litigating Patents in Texas: Trends, Best Practices, and Differences Between Districts,” IPWatchdog CON2020 (September 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)

Community Involvement

  • 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

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

Practice Areas

  • Intellectual Property
  • Trial & Appellate Litigation

Experience

  • Business Litigation
  • Copyrights
  • Cybersecurity, Data Protection, & Privacy
  • Digital
  • Energy Litigation
  • Entertainment, Digital, & Sports
  • Intellectual Property Litigation
  • Technology
  • Trademarks
  • Workplace Privacy & Data Security

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