John B. Pegram is a Senior Principal based in Fish & Richardson’s New York office. He specializes in intellectual property litigation, licensing, opinion and counseling 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.
John is a member of Fish’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 20 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.
Representative technical subjects of matters that John has 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; enzymes; 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; packaging; photoconductive printers; photocopiers; pollution control systems; PTFE products; pumps; semiconductor devices and manufacturing; television broadcasting & receiving equipment; thyristors; and vending machines and systems.
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.
Fish Patent Blog
March 2, 2017
Fish's John Pegram Authored WIPR Article, "UK and UPC: a test of compatibility"
Author: John B. Pegram
Fish Litigation Blog
January 24, 2017
Service of Process on Foreign Defendants
Author: John B. Pegram
January 17, 2017
Legal Alert: European Unified Patent Court & Unitary Patent to Open in 2017
Fish Patent Blog
November 29, 2016
United Kingdom Announces Intent to Ratify UPC Agreement
Author: John B. Pegram
September 19, 2016
Legal Alert: A Path to the UPC
July 15, 2016
Fish's John Pegram Quoted in Reuters Legal Article, "Brexit imperils European Unified Patent Court - experts"
June 27, 2016
Legal Alert: IP Rights & Brexit
June 23, 2016
Fish's John Pegram Quoted in WIPR Article, "IP and ‘Brexit’: too much uncertainty and the devil you know"
May 9, 2016
From Testimonial Evidence to Word Count: All Change at the PTAB
January 24, 2017
Fish's John Pegram Quoted in WIPR's “Trump removes US from TPP deal”
November 30, 2016
Fish's John Pegram quoted in World IP Review article "Greener pastures for US patents"
Fish Patent Blog
April 22, 2016
Legal Alert: Update on EU Unitary Patent and Unified Patent Court Developments
Authors: Herbert Kunz, Ph.D., John F. T. Conroy, Ph.D., John B. Pegram