Overview

John B. Pegram concentrates his practice on intellectual property litigation, licensing, opinion, and counseling matters of all types in a wide range of technologies.

John has successfully litigated cases in state and U.S. District Courts and before the U.S. International Trade Commission. He also is registered to practice in patent matters before the U.S. Patent and Trademark Office. He has served as an advocate, arbitrator, or mediator in IP and business arbitrations and mediations, and as an expert witness on patent procedures.

Representative technical subject matter that John has handled include antibiotics, automobile components and systems, bar code reading and processing, batteries, cameras and lens systems, cathode ray tubes, centrifuges, coin and material testing, computer disk drives and controllers, computer logic, data compression, diagnostic kits, DNA polymerases, electronic displays and display systems, EMI shielding, enzyme production methods, fabric and fiber technologies, fermentation methods and systems, fiber optics, filtration systems, footwear, impact printers, inkjet printers, lighting devices, magnetic and optical recording, medical implants and instruments, microprocessor control systems, optical disc technology, orthopedic devices, packaging, photoconductive printers, photocopiers, pollution control systems, PTFE products, pumps, semiconductor devices and manufacturing, television broadcasting and receiving equipment, thyristors, and vending machines and systems.

John is a member of Fish & Richardson's Europe and Japan teams, helping U.S. clients with IP issues in those jurisdictions, and representing foreign clients in U.S. IP matters. For over 30 years, he has met regularly with officials of the European and Japanese patent offices and IP courts, as well as IP association leaders in those jurisdictions.

John is a frequent author and lecturer on patent, trademark, and federal court practice topics. He was a co-author of Fish’s Patent Reform Updates, tracing the activity that led to the America Invents Act. Currently, he has written and periodically updates Fish’s EU Unitary Patent & Unified Patent Court webpages and Fish’s legal alerts on these subjects.

Experience

Atari v. Commodore (joystick for computer games) – Lead counsel for Commodore in defending against claims by Atari that Commodore’s joystick design infringed various design patent, utility patent and trade dress rights of Atari. Case settled.

Avrea v. Chrysler Corp. (automobile coolant recovery system) – Lead counsel for Chrysler and its supplier, Mitsubishi Motors, in a patent infringement litigation. Avera claimed that his patent covered the coolant recovery systems used in Mitsubishi automobiles sold by Chrysler in the United States. Case settled.

Ballantine Laboratories Inc. v. LaFrance Precision Casting Co. (electronic instrument case design) – Lead counsel in litigation by Ballantine against a supplier who copied Ballantine’s patented design for an electronics test instrument case. Case settled.

Bourne v. Sankyo Seki Co., (musical copyrights) – Lead defense of several foreign companies against charges that their music box movements, imported by others, infringed musical copyrights. Settled through mediation, by creating a new licensing program.

Deering Milliken Co. v. Courtaulds North America, Inc. (fiber dying apparatus) – Defended Courtaulds in a patent infringement litigation relating to apparatus used for dying fibers. Case settled.

Drori v. Kenwood Corp. (automobile alarms) – Lead counsel for Kenwood in defending against a patent infringement claim involving alarm systems for automobiles. Case settled during discovery.

Fontijn v. Okamoto (complex extruded fiber) – Successfully represented Akzona (Fontijn) in a patent interference and appeal. In one of the first cases of its type, the court granted priority to Akzona on the basis of a reissue application which was filed to obtain the priority of an earlier application.

General Electric Co. v. ASEA (power semiconductor devices) – Represented GE in patent infringement litigation against ASEA for infringement of GE patents on SCR semiconductor devices used in direct current power transmission systems. Case settled.

General Electric Co. v. ECC Corporation, and General Electric Co. v. Hutson Industries, Inc. (semiconductor switching devices) – Asserted GE patents relating to Triac-type semiconductor devices and Triac circuits used in electric light dimmers. Cases settled.

Goodman v. PhilcoFord Corp. (cathode ray tube) – Represented Philco successfully in a civil action by Goodman for review of a U.S. Patent Office patent interference decision awarding priority of invention to the Philco inventor.

Highland Industries v. Toyobo Co., Ltd. (air bag fabric manufacturing) – Led the defense of Toyobo in this patent dispute. After discussions between counsel, Highland voluntarily dismissed its complaint.

Howes v. Mars, Inc. (promotional devices and methods) – Lead counsel for Mars against claims that promotions of Mars’ M&Ms and Kudos products each infringed a Howes patent. Case settled during discovery.

Kaneka Corporation v. Mitsubishi Gas Chemical (MGC) (Coenzyme Q10 manufacturing) – Led the Fish team defending MGC in a U.S. International Trade Commission (ITC) investigation and a parallel district court action. The ITC found that the MGC process did not infringe Kaneka’s patent and that decision was not appealed. MGC settled the district court action on favorable terms while other defendants continued to litigate with Kaneka.

Liu v. Kawase (compound semiconductor manufacturing) – Lead counsel for Kawase (Sumitomo Electric Industrial Co., Ltd.) in a patent interference and related infringement dispute with American Xtal Corp. Successfully settled.

Loral Fairchild Corp. v. Victor Co. of Japan et al. (charge coupled devices) – Successfully defended one of the lead manufacturing defendants, Sanyo Electric Co., Ltd. and its U.S. subsidiaries, as their lead counsel. Loral Fairchild had asserted multimillion dollar claims for infringement of two patents on charge coupled devices, used in camcorders and facsimile machines against Sanyo, and other Japanese and Korean owned companies. Sanyo defendants obtained a dismissal of all claims against them.

Mars, Inc. v. Coin Acceptors, Inc. (coin recognition and vending machine electronics) – Lead counsel for Mars in a multi-patent, non-jury case. The district court’s literal infringement and damages decisions were affirmed in separate appeals, and Mars collected over 27 million dollars damages and interest.

Mars, Inc. v. Conlux U.S.A. Corp. (electronic coin recognition) – Lead counsel for Mars in obtaining a jury infringement and damages verdict of 40% of Conlux’s sales. Conlux was enjoined from further infringement of Mars’ patent on comparing coin test data with values stored in a nonvolatile memory.

Memtech LLC v. Kionix, Inc. (micromechanical accelerometers) – Co-leader of Kionix’s defense in a multidefendant, EDTX patent infringement case. Kionix settled on favorable terms at an early stage.

Multimatic, Inc. v. Riken Kaki Co., Ltd. (auto components) – Lead counsel for Riken in a pending litigation involving components for Honda automobiles. Case settled following discovery and claim interpretation by a Special Master.

Nassau Tape Webbing Mills, Inc. v. Advance Thread (mattress edging tape) – Lead counsel defending Advance Thread against Nassau’s patent purporting to cover fire resistant tape used on most mattresses. Case settled favorably on the first day of trial.

Pactiv LLC v. Mitsubishi Gas Chemical (MGC) (oxygen absorbers and food packaging) – Co-leader of MGC’s defense in a five patent litigation. MGC obtained a dismissal without prejudice while an unrelated defendant continued to litigate in the courts and obtained reexamination in the USPTO.

Parker-Hannifin v. Zippertubing (Japan) – (fire retardant gaskets to prevent electromagnetic interference) – Lead counsel for Zippertubing in a four patent case. After a favorable claim construction by the court, Zippertubing obtained a very satisfactory settlement.

Quantum Corp. v. Tandon Corp. (disk drives) – Lead counsel defending Tandon against Quantum’s claims for infringement of two patents relating to signal processing and tracking in personal computer hard disk drives. This case involved complex issues of discovery and privilege, resulting in a leading Federal Circuit opinion on discovery relating to charges of willful infringement. Case settled following discovery.

Stratagene v. Takara Holdings, Inc. (DNA polymerases) – Lead counsel for Takara Bio in a civil action and a related patent interference involving inventorship, ownership, infringement, and validity issues. Settled by cross-licenses.

Professional associations

American Bar Association, Antitrust Law Section (past chair of the Patent, Trademark and Know-How Committee and past member of the Federal Litigation Committee) and Intellectual Property Law Section (past chair of several committees and past division chair).

American Intellectual Property Law Association (AIPLA) – past member of the Board of Directors; past chair of many committees, including International and Patent Litigation; current active member of the IP Practice in Europe and IP Practice in Japan Committees.

Intellectual Property Owners (IPO) – current active member of the European Practice Committee.

International Association for the Protection of Intellectual Property (AIPPI) – current member of the Committee on the Unified Patent Court.

New York Intellectual Property Law Association (NYIPLA) – past President, Secretary and member of the Board of Directors.

US Bar – EPO Liaison Council – past Chair and past Delegate of AIPLA, current member as a past Chair.

US Bar – JPO Liaison Council – current Delegate of NYIPLA