Search Tips:
1. Search Adjacent Words - Place quotes around the exact keyword phrase you want to search. Ex: "regulatory environments"
2. Search in Title Only - Type title: and surround the search terms in quotations to specifically search in titles. Ex: title:"regulatory environments" close
|
John
B.
Pegram
Senior Principal
212-641-2230
John B. Pegram is a Senior Principal in Fish & Richardson's New York office. He specializes in intellectual property litigation and opinion matters of all types. Pegram has successfully litigated cases in state and federal courts, and before the U.S. International Trade Commission in Washington, D.C. He also is registered to practice in patent matters before the U.S. Patent and Trademark Office.
Before joining Fish & Richardson P.C., Pegram was a partner and an associate with Davis Hoxie Faithfull & Hapgood LLP in New York City from 1966 to 1995, where he focused on patent and trademark matters.
Representative technical subjects of matters handled include: antibiotics; automobile components and systems; bar code reading and processing; 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; fabric and fiber technologies; 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; photoconductive printers; photocopiers; pollution control systems; PTFE products; pumps; semiconductor devices and manufacturing; television broadcasting & receiving equipment; thyristors; and vending machines and systems.
Admissions
-
New York
1965
-
United States Patent and Trademark Office
1969
- Numerous federal courts
Memberships and Affiliations
A frequent author and lecturer on patent, trademark, and federal court practice topics. Active as a bar association leader. Past President of the New York Patent, Trademark and Copyright Law Association, a past Director of the American Intellectual Property Law Association, and former Editor-in-Chief of The Trademark Reporter. Has served as an advocate, arbitrator, or mediator in intellectual property and business arbitrations and mediations, and as an expert witness on patent procedures.
Listed in Best Lawyers in America; Euromoney Guides to Leading Patent & Trademark Experts; Marquis Who's Who in America; Who's Who in American Law; Who's Who in the East; and Who'sWhoLegal: The International Who's Who of Business Lawyers. Other Distinctions
Recipient of the 2011 President's Outstanding Service Award from the American Intellectual Property Law Association (AIPLA). The award recognizes one individual's years of service to AIPLA as a member and committee leader.
Selected publications
"Adjusting the life of a US patent due to Patent Office delay," Cherylyn Esoy Mizzo, Jack Brennan, John B. Pegram, Industrial Biotechnology (February 2010), 6(1): 18-21. Education
-
BA,
Columbia University
1960
Physics
-
LLB,
New York University School of Law
1965
Experience
Litigation examples
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.
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 the 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.
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.
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.
|
|