John M. Mulcahy has more than 20 years of experience in all phases of patent law. His practice includes litigation before federal district courts and the U.S. International Trade Commission (ITC), client counseling and opinions, and patent prosecution and post-grant proceedings in the U.S. Patent and Trademark Office (USPTO).
John frequently lectures on topics at the intersection of these practice areas. He has worked with a broad range of technologies, including semiconductors, integrated circuits, optoelectronics, cellular telephony, computer networking, digital video, switching power supplies, solid-state and fluorescent lighting, unmanned systems, and business methods.
John has managed numerous litigations for multinational electronics manufacturers and cases involving smartphones, consumer electronics, integrated circuits, and fluorescent lighting.
His experience includes pre-litigation investigation and opinions; developing positions on claim construction, validity, enforceability, and infringement; organizing joint defense groups; preparing and examining expert witnesses; preparing Markman, summary judgment, and post-trial motions; and negotiating settlements.
John has extensive experience in the strategic use of post-grant proceedings in conjunction with litigation and has filed and prosecuted numerous requests for reexamination and inter partes review (IPR).
A former primary examiner at the USPTO, John has broad knowledge of patent prosecution matters and manages the prosecution of large portfolios, including the portfolio of a Fortune 100 company, in the United States and foreign jurisdictions.
While at the USPTO, he examined U.S. and international patent applications in various technologies, including medical endoscopy, ultrasonic imaging, weapons and flight simulators, and exercise devices. He has argued before the Patent Trial and Appeal Board (PTAB) on numerous occasions, during both prosecution and post-grant proceedings.
- Georgetown University Law Center J.D., magna cum laude, 2005
- Pennsylvania State University B.S., Electrical Engineering, 1993
- U.S. Patent and Trademark Office
Professional Activities :
- American Intellectual Property Law Association
- American Bar Association, Intellectual Property Law Section
- Association of Unmanned Vehicle Systems International (AUVSI)
- Order of the Coif
Rate : $$$$