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John P. Schnurer

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Office: Southern California
Phone: 858 678-4706
Email: schnurer@fr.com



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Practice areas
Patent Litigation
ITC Proceedings
Intellectual Property Litigation
Business Litigation
Patents
Licensing
Reexamination
 
Technology areas
Analog Circuitry
Digital Circuitry
Bioinformatics
Computer Hardware
Internet
Medical Devices
Optics
Software
Semiconductors
Telecommunications
Wireless Services
 
Education
Harvey Mudd College B.S. Electrical Engineering with Minor in Economics 1993
University of California, Berkeley, School of Law J.D. 1996
Articles Editor, Berkeley Technology Law Journal (1995-1996)

Professional experience
John Schnurer is a principal of Fish & Richardson P.C. in the firm’s Southern California office. He litigates and tries cases in courts throughout the country, including Section 337 investigations before the United States International Trade Commission. He is recognized as a premiere intellectual property strategist, particularly with respect to the development and execution of global patent litigation strategies. John also prepares, prosecutes and secures patent protection for his clients’ innovations, and provides strategic intellectual property counseling including advice on patent infringement, validity, re-examinations, and large portfolio due diligence studies, whether for acquisitions, licensing, or pre-suit purposes. Clients rely on John not only for his legal expertise, but also his economic and business acumen. He achieves optimum results by partnering with his clients to devise and execute customized legal strategies that are consistent with his clients' tactical and strategic business objectives. John was named by his peers as a "Top Intellectual Property Attorney" in the San Diego Daily Transcript in 2007 and 2008. He was also selected as a California Super Lawyer in the area of intellectual property litigation by Super Lawyers Corporate Counsel Edition in both the July/August 2009 and January/February 2010 editions.

John previously served as an attorney with the United States Air Force and as a special assistant United States attorney with the United States Department of Justice representing the United States on a wide range of matters including criminal, government contracts, procurement, environmental, real estate, health care, medical malpractice, taxation and international matters. John also supervised criminal trial attorneys and first chaired numerous felony jury and bench trials and civil lawsuits involving environmental, medical malpractice, and other tort causes of action.

Prior to the law, John worked as an electrical engineer with Advanced Linear Devices on low-voltage high-speed analog integrated circuits.

Litigation examples

DISTRICT & STATE COURT ACTIONS

Fujinon Corporation v. HTC Corp. and HTC America Inc. (S.D. TX) (lead counsel for HTC in patent litigation concerning optical lens structures found in cellular phones; pending)

ATEN International Co., Ltd., and ATEN Technology Inc. v. Emine Technology Co., Ltd., Belkin International, Inc., and Belkin, Inc. (C.D. Cal) (lead counsel for ATEN in patent litigation concerning KVM switches; pending)

Powertech Association LLC v. O2 Micro Int’l Ltd., O2 Micro Inc., Toshiba Corp., Toshiba America Inc., Viewsonic Corp, Sumida Corp., Taiwan Sumida, Sumida Electronic Components Co. Ltd. and Sumida America Components Inc. (E.D. NY) (lead counsel for Powertech in patent litigation concerning apparatus and techniques to strike fluorescent lamps, such as cold cathode fluorescent lamps, using inverter controllers and inverter circuits; pending).

Innovative Patented Technology LLC v. HTC Corp. and HTC America Inc. (S.D. FL and S.D. Cal) (lead counsel for HTC in patent litigation concerning cellular phones; settled favorably).

Monolithic Power Systems, Inc. v. O2Micro International Ltd (N.D. Cal) (lead counsel for declaratory judgment plaintiff MPS in patent litigation concerning inverter circuits for backlighting applications; subsequently withdrew as counsel).

ASUSTeK Computer, Inc. v. IBM (S.D. Cal) (lead counsel for ASUSTeK in patent litigation concerning storage area network, servers, wired and wireless routers, gigabit switches, and personal navigation devices; obtained favorable Markman order and case subsequently settled favorably just prior to exchange of initial expert reports).

ASUSTeK Computer, Inc. and ASUS Computer International v. IBM (N.D. Cal) (lead counsel for ASUS in patent litigation concerning products implementing power supplies, variable speed fans, and Network Address Port Translation; successfully obtained stay of case after a year into litigation, and case subsequently settled favorably.)

Monolithic Power Systems, Inc. v. Chip Advanced Technologies, Inc. (C.D. Cal) (lead counsel for MPS in patent litigation concerning DC-DC converters having bootstrap power supplies; settled favorably)

Wrapsidy LLC v. Nielsen Media Research, Inc. (Santa Clara County Superior Court) (engaged as trial counsel for Wrapsidy three months before trial in state action concerning trade secret misappropriation, unfair competition, tortious interference and breach of contract actions related to Wrapsidy’s ratings data analysis software).

IBM Corp. v. Amazon.com, Inc. (E.D. TX- Tyler Division) (counsel for Amazon.com leading the litigation team handling the development of the offensive litigation strategy, the analysis of Amazon’s patent portfolio to locate e-Commerce and database technology related patents being infringed by IBM, and the assertion and litigation of those patents against IBM; settled favorably).

IBM Corp. v. Amazon.com, Inc. (E.D. TX- Lufkin Division) (counsel for Amazon.com leading the litigation team handling the development of the offensive litigation strategy, the analysis of Amazon’s patent portfolio locating wrapper and search refinement patents being infringed by IBM, and the assertion and litigation of those patents against IBM; settled favorably).

TVI Interactive Data Corp. v. Microsoft Corporation (N.D. Cal) (counsel for Microsoft in patent litigation concerning autoplay technologies; settled favorably. Moreover, many of the asserted claims were subsequently rejected in concurrent reexamination proceedings before the USPTO).

Teknowledge Corp. v. Yahoo!, Inc., Microsoft Corporation, America Online, Inc., and Netscape Communications Corporation (N.D. Cal) (counsel for Microsoft in patent litigation concerning notification and alerts using intelligent software agents, electronic bill payment and presentment systems and information aggregation systems; settled favorably).

Vongrabe v. Sprint Corp., et al (S.D. Cal) (counsel for Sprint entities in business litigation concerning breach of contract, Lanham Act, and other tort actions; win).

Immersion Corp. v. Sony Computer Entertainment America, Inc., Sony Computer Entertainment, Inc., and Microsoft Corp. (N.D. Cal) (counsel for Microsoft in patent litigation concerning tactile feedback features in Xbox video game system; settled favorably).

Intel Corporation v. Broadcom (D. Del.) (counsel for Intel in litigation involving semiconductors, integrated circuits, networking, and video compression; win resulting in favorable settlement).

Omnivision Technologies, Inc., v. Photobit Corp and California Institute of Technology (N.D. Cal) (counsel for Photobit and Caltech in patent litigation concerning CMOS active pixel sensors, settled favorably).

SECTION 337 PROCEEDINGS BEFORE THE INTERNATIONAL TRADE COMMISSION

O2 Micro International Ltd. adv. Monolithic Power Systems Inc., ASUSTeK Computer, Inc., ASUS Computer International, etc. (ITC proceeding 337-TA-666) (counsel for MPS and ASUS in patent litigation concerning products implementing inverter circuits; subsequently withdrew as counsel.)

Rambus Inc. adv. nVidia Corp., ASUSTeK Computer, Inc., ASUS Computer International, etc. (ITC proceeding 337-TA-661) (lead counsel for ASUS in patent litigation concerning products incorporating nVidia memory controllers and DDR2 and DDR3 memory)

IBM adv. ASUSTeK Computer, Inc. and ASUS Computer International (ITC proceeding 337-TA-628) (lead counsel for ASUS in patent litigation concerning products implementing power supplies, variable speed fans, and Network Address Port Translation; win at trial and initial ID, Commission decided not to review initial ID which became the final ID, and case subsequently settled favorably.)

Samsung Electronics Co. Ltd. adv. Renesas Technology Corp. (ITC proceeding 337-TA-595) (counsel for Samsung in patent litigation concerning on-die termination and driver circuits for DDR2 SDRAM memory devices and phase-shift masks used in the fabrication of DDR1 and DDR2 SDRAM memory devices; Staff concurred with non-infringement and invalidity of asserted patents; settled favorably 2 days before the initial ID was to issue).

Hynix Semiconductor, Inc. adv. Toshiba Corporation (ITC proceeding 337-TA-592) (counsel for Hynix in patent litigation concerning flash memory devices; settled favorably).

Hynix Semiconductor, Inc. adv. Toshiba Corporation (ITC proceeding 337-TA-552) (trial counsel for Hynix in patent litigation concerning circuit and process related patents allegedly involving flash memory device; win at trial and initial ID, and then case subsequently settled favorably).

Gemstar-TV Guide International, Inc., et al adv. Scientific-Atlanta, Inc., et al (ITC proceeding 337-TA-454) (counsel for Gemstar in patent litigation concerning core television technologies, including interactive program guides and set-top box electronics; adverse final ID reversed on appeal to Federal Circuit, case subsequently settled favorably).

Photobit Corp., et al adv. Omnivision Technologies, Inc. (ITC proceeding 337-TA-451) (counsel for Photobit and Caltech in patent litigation concerning CMOS active pixel sensors; settled favorably prior to trial).

Publications
"Winning Global Patent Litigation Strategies for the 21st Century," ACC Docket (October 2009).

"Global Patent Litigation Strategies for the 21st Century," AsiaLaw (July/August 2007).

"Drafting a Document Retention Policy is Necessary," San Diego Business Journal (November 17, 2003).

Presentations
"ITC Practice from a Litigator’s Perspective," Presented at the 33rd Annual Intellectual Property Institute, State Bar of California (2008).

Bar admissions
Admitted to the bar in California, the Supreme Court of California, U.S. Court of Appeals for Federal Circuit, and U.S. District Courts throughout the United States.
Registered to practice before the United States Patent and Trademark Office.

Additional information
Member: American Intellectual Property Law Association, ITC Trial Lawyers Association, San Diego County Bar Association, and San Diego Intellectual Property Law Association. Attended the Trial and Defense Advocacy Course (USAF, 1997); the Advanced Trial Advocacy Course (USAF, 1999); the National Institute of Trial Advocacy, Developing Deposition Skills and Expert Depositions Courses (2001); and the National Institute of Trial Advocacy, Building Trial Skills Program (2002).