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 135 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 California Consumer Privacy Act (CCPA), the General Data Protection Regulation (GDPR), incident response and ransomware demands. 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)
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
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:
- Internet applications
- Consumer electronics
- Oil drilling technology
- Mechanical devices
- Chemical compositions
- Business methods
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, 2022
- “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
- “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
December 12, 2022Podcasts
JW Fast Takes Podcast | ~7 minutes
In a global economy with personal data flowing between countries on a regular basis, President Biden in October 2022 signed an executive order directing the steps that the United States will take to implement its commitments under the EU-US Data Privacy Framework. In this Fast Takes episode, John Jackson and Manny Schoenhuber discuss the implications of this executive order.
October 7, 2022Attorney News
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.
November 19, 2021Client Results
A Jackson Walker team led by recent Fort Worth additions Evan Malloy, Kayla Matus, and Taylor Cummins represented Freedom Powersports in the sale of its business to Dallas-based RumbleON, Inc., the largest U.S. retailer of powersports vehicles. The transaction was announced on November 9, 2021, and is expected to close in late 2021 or the first quarter of 2022.
October 14, 2021Client Results
Digital Turbine, a public leading independent mobile advertising solutions provider, has completed more than $1 billion in cross-border deals in 2021 through the acquisitions of Fyber, AdColony, and Triapodi (d/b/a Appreciate).
July 28, 2021Mentions
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.
July 27, 2021Newsletters
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.
June 2, 2021Newsletters
David Folsom Recognized in Chambers USA Guide; Jackson Walker Delivers Complete Defense Jury Verdict for Roku in $228 Million WDTX Patent Trial; Wasif Qureshi and Leisa Talbert Peschel Reflect on Roku’s $228M Patent Trial Victory; Jackson Walker Helps Family Launch Comic Book Brand; Virtual Mediations and Patent Litigation: Lessons Learned and Best Practices; Chris Rouk Comments on Patent Litigation in Texas; Emilio Nicolas Moderates Panel on the New CASE Act and Copyright Claims Board
May 24, 2021Client Results
Before a series of new comic book adventures could be introduced to the world, budding entrepreneurs faced some legal questions. How should they set up their company? What about intellectual property rights? With these questions in mind, Chrystal Baeza turned to the team at Jackson Walker for help.
April 30, 2021Insights
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.
February 25, 2021Newsletters
Best Practices for Maintaining Confidentiality of Trade Secrets in Virtual Arbitration Proceedings; Violate My Patents? See You in Texas; Jackson Walker Earns Over 25 National and 100 Regional “Best Law Firms” Rankings; Coming Up: 17th Annual Symposium on Emerging Intellectual Property Issues: The America Invents Act @ 10 Years