John Dragseth is a Principal of Fish & Richardson, and has been named one of the top 50 IP attorneys in the country under the age of 45. He has also been named a Minnesota SuperLawyer multiple years. His practice centers on complex legal analysis and writing – in federal appeals, patent prosecution, reexamination, pre-suit and due diligence investigations, and patent opinions. His prosecution work centers on cloud computing, mobile computing, software, medical devices, and mechanical technologies (including HVAC). John has led the briefing on more than 50 appeals to the U.S. Supreme Court and U.S. Court of Appeals for the Federal Circuit, where he was previously a law clerk to the Honorable Raymond C. Clevenger III. He has extensive experience in taking over cases on appeal and framing them for the Federal Circuit, while working closely with trial counsel. He also enters cases frequently as a “fixer” — helping with tough and important issues. (The similarities with George Clooney’s “Michael Clayton” character end there.) John writes and lectures frequently on a variety of patent law topics. He is also an adjunct professor teaching IP litigation at the University of St. Thomas Law School, and has authored case books on patent law and IP litigation (very exciting reads). He was raised on a small grain and sugar beet farm in Northern Minnesota.
Software and electronics experience
Wireless mobile devices, videogames, AJAX techniques, search engines, e-commerce, CAD/CAM, communications protocols, databases, process control, fraud prevention, location-based services, ATM machine operation, product activation, digital signal processing, enterprise resource planning (ERP), various investment vehicles, GPS, computer hardware, networking, telecommunications, and semiconductor processing.
Medical device experience
Biopsy devices and methods, cryotreatment, defibrillators (implantable and external), blood centrifuges, infusion pumps, stents, surgical tools, endoscopic instruments, ultrasound, catheters, heart remodeling devices, implantable heart pumps, medical scanners, nucleic acid microarrays, telemetry systems, blood analysis chips, implantable sensors, and molecular modeling systems.
Green technologies experience
Wind generators and blade design, control systems, power supplies, thermal solar, semiconductor fabrication, hybrid vehicles, super-efficient HVAC systems, wave-powered and wind-powered systems, and green building techniques.
Recent Appellate examples
Obtained affirmance of district court ruling and dismissal of part of appeal on behalf of client Google Inc. in iLor LLC v. Google Inc., __ F.3d __ (Fed. Cir. Dec. 11, 2008).
Led appeal in obtaining full reversal of two independent claim construction issues in Predicate Logic, Inc. v. Distributive Software, Inc., __ F.3d __ (Fed. Cir. Oct. 9, 2008).
Represented Microsoft in separate successful appeals against Lucent, including one that zeroed out a $1.5 billion jury award – the largest patent defense victory ever on appeal in Lucent Technologies , Inc. v. Gateway, Inc. and Microsoft Corp., __ F.3d __ (Fed. Cir. Sept. 25, 2008) and __ F.3d __ (Fed. Cir. May 8, 2008).
Obtained complete reversal for our client (the patent owner) on 10 separate issues, and affirmance on all four issues raised by opponent. The technology related to computer architecture. Took over responsibility for appeal from another firm.
Was lead counsel at Supreme Court opposing petition for certiorari after obtaining full reversal of summary judgment entered against client 3M. On remand, 3M won a judgment of infringement after a jury trial. The Federal Circuit’s precedential opinion centered around claim construction. The technology was repositionable adhesive signage. 3M Innovative Properties Co. v. Avery Dennison Corp., 350 F.3d 1365 (Fed. Cir. Dec. 2, 2003).
Obtained full reversal of judgment previously entered against client R.E. Service Co. (and against company’s founder personally) before the en banc Federal Circuit, in a case that solidified the "disclosed but unclaimed subject matter" limitation to the doctrine of equivalents. Johnson & Johnston Associates v. R.E. Service Co., 285 F.3d 1046 (Fed. Cir. Mar. 28, 2002) (en banc). Took over responsibility for appeal from trial firm.
Obtained full reversal (on six separate issues) and reinstatement of jury verdict and damage award for client Mentor. The technology was use of ultrasonic technology in medical procedures. Mentor H/S, Inc. v. Medical Device Alliance, 244 F.3d 1365 (Fed. Cir. 2001). Took over responsibility for appeal from another firm.
Led briefing in appeal that secured full affirmance of a jury verdict of noninfringement in favor of client Sunny Fresh Foods. (a Cargill company). The plaintiff had sought over $100 million in damages but ultimately obtained none; it instead paid substantial costs to Sunny Fresh. The technology was liquid egg pasteurization techniques. Sunny Fresh Foods, Inc. v. Michael Foods, Inc., 2005 WL 858015 (Fed. Cir. Apr 15, 2005). Took over responsibility for appeal from another firm.
Obtained affirmance of substantial attorney fees award to client Acorn Mobility in case announcing that a patent applicant must explain a failure to disclose highly material information to the Patent Office when the applicant is charged with inequitable conduct. Technology was home stairlifts for handicapped individuals. Bruno Independent Living Aids, Inc. v. Acorn Mobility Services, Ltd., 394 F.3d 1348 (Fed. Cir. Jan. 11, 2005).
AT&T v. Microsoft Corp. – filed amicus brief with Supreme Court on behalf of Autodesk Corp., arguing that 35 U.S.C. § 271(f) does not apply to copies of computer programs made outside the United States.
KSR Int’l Co. v. Teleflex, Inc. – drafted Supreme Court amicus brief that was filed by 3M, General Electric, Proctor & Gamble, DuPont, and Johnson & Johnson, relating to the "motivation to combine" requirement of 35 U.S.C. § 103.
Medimmune, Inc. v. Genentech, Inc. – drafted Supreme Court amicus brief that was filed by 3M, General Electric, Proctor & Gamble, and DuPont, relating to the predicates for declaratory judgment jurisdiction in the context of patent license agreements.
Knorr-Bremse Systeme Fuer Nutzfahrzeuge GmbH v. Dana Corp. – filed amicus brief with the en banc Federal Circuit on behalf of Microsoft, advocating more restrained application in certain circumstance of the inference that a patent defendant’s infringement has been willful.
J.E.M. Ag-Supply v. Pioneer Hi-Bred Int’l, Inc. – filed amicus brief with Supreme Court for Cargill in support of victorious party Pioneer. The appeal addressed whether sexually-reproducing plants should be eligible for utility patent protection.
Schism v. United States – was lead counsel for Disabled American Veterans (DAV) and the National Organization for Veterans Advocates (NOVA), pro bono before Federal Circuit and Supreme Court. The appeal centered around governmental refusal to pay promised benefits to thousands of career soldiers.
Has consulted on numerous other litigations – before, during, and after appeals – for Fish & Richardson litigation teams and teams from other firms.
September 28, 2016
Fish's John Dragseth Quoted in Law360 Article "PTAB Appeals Face Tough Road After Latest Fed. Circ. Ruling"
August 16, 2016
Fish's John Dragseth Quoted in Law360 Article, "AIA Appeals To Watch At The Federal Circuit"
Fish Litigation Blog
July 27, 2016
Federal Circuit Explains Burden Shifting in IPRs
Author: John A. Dragseth
June 22, 2016
Fish's John Dragseth Quoted in Law360 Article, "What Attys Need To Know About The High Court's 3 IP Rulings"
Fish Litigation Blog
June 21, 2016
Supreme Court Affirms the Federal Circuit’s Very Limited Review of Post-Grant Institution Decisions and the Patent Office’s “Broadest Reasonable Interpretation” Claim Construction Standard
Author: John A. Dragseth
June 13, 2016
Fish & Richardson Wins Major U.S. Supreme Court Victory for Halo Electronics in Patent Suit Over Enhanced Damages
May 31, 2016
The First Wave of Post-Grant Appeals
April 8, 2016
Fish & Richardson Obtains Full Federal Circuit Reversal for Cutsforth, Inc. After Faulty Inter Partes Review
October 5, 2016
Fish's John Dragseth Quoted in Law360 Article "Fed. Circ. Judge's Proposed Software Patent Ban Is A Reach"
June 15, 2016
Fish & Richardson Named to IAM Patent 1000 for National Patent Litigation and Prosecution Practices
Fish Litigation Blog
June 14, 2016
Enhanced Damages in Patent Cases to Depend on All Relevant Circumstances for "Egregious" Behavior
Authors: William R. Woodford, John A. Dragseth
June 2, 2016
Fish & Richardson Announces 37 Attorneys Named “IP Stars” by Managing Intellectual Property Magazine