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John M. Skenyon

Senior Principal


617-521-7831
  •  
 

John M. Skenyon is a senior principal in Fish & Richardson's Boston office. He joined the firm in 1977, and for over 35 years, he has specialized in patent litigation. He has been lead counsel in more than 120 intellectual property (IP) lawsuits. He has tried patent jury cases around the country, and he has successfully handled IP cases in California, Delaware, Florida, Georgia, Illinois, Indiana, Massachusetts, Minnesota, New Hampshire, New Jersey, New York, Ohio, Oregon, Pennsylvania, Rhode Island, Tennessee, Texas, Utah, Vermont, Virginia and Wisconsin. He has obtained a number of large patent damages verdicts, and he has successfully defended clients from damages claims totaling hundreds of millions of dollars. He has also successfully disposed of many cases as a result of Markman proceedings. He has been selected to and has conducted mock patent trials as a teaching tool for both the American Intellectual Property Law Association ("AIPLA") and the Practicing Law Institute since 2001.

Mr. Skenyon has been a member of the bar of the Court of Appeals for the Federal Circuit since it was first created in 1982. To date, he has briefed and argued over 30 successful Federal Circuit appeals. One recent appeal resulted in the Federal Circuit's reinstatement of an $84 million dollar jury verdict (Smith & Nephew, Inc. v Arthrex, Inc., 502 Fed. Appx. 384 (Fed. Cir. 2013)). In another, he obtained a reversal of a jury verdict of infringement and a $60 million dollar damages award (Becton, Dickinson and Company v. Tyco Healthcare Group, LP, 616 F.3d 1249 (Fed. Cir. 2010). He also handles pro bono appeals for veterans before the U.S. Court of Appeals for Veterans Claims.

Mr. Skenyon has written and lectured extensively on patent litigation practice, particularly in the areas of patent damages and claim construction. He is the co-author of the book "Patent Damages Law and Practice" which has been published annually by Thomson Reuters (West) since 1999. It has been cited by numerous courts, including by the Federal Circuit in its seminal damages decision in Lucent Technologies, Inc. v. Gateway, Inc., 580 F.3rd 1301 (Fed. Cir. 2009). He is also the co-author of the book "Patent Litigation" published annually by the Practicing Law Institute since 2001.

Mr. Skenyon helped draft the AIPLA model jury instructions in 1997, 2005, 2008 and 2012, and he is currently on the subcommittee to re-draft them for 2014. At the request of the Florida district court in 2004, he revised the 11th Circuit's patent jury instructions. He was also a member of the Boston Patent Law Association Task Force which revised the rules for patent cases in the District of Massachusetts.

Mr. Skenyon is a past president of the Boston Patent Law Association and a past chairman of the AIPLA's Committee on Patent Litigation. He is also an AIPLA Fellow and a former board member of the American Intellectual Property Law Educational Foundation, which awards scholarships to minority law students interested in IP practice. He is a current member of the Board of the Catholic University Law School in Washington D.C.

Admissions

  • Rhode Island 1973
  • Connecticut 1974
  • Massachusetts 1978
  • United States Patent and Trademark Office 1974
  • Supreme Court of the United States 1983
  • United States District Court for the District of Rhode Island 1973
  • United States District Court for the District of Connecticut 1974
  • United States District Court for the District of Massachusetts 1978
  • United States District Court for the Northern District of California 1994
  • United States Court of Appeals for the First Circuit 1979
  • United States Court of Appeals for the Federal Circuit 1982
  • United States Court of Appeals for the Ninth Circuit 1995
  • United States Court of Appeals for Veterans Claims 2008

Memberships and Affiliations

ABA (Patent Section); American Intellectual Property Law Association; Boston Patent Law Association; Connecticut Patent Law Association; Federal Circuit Bar Association

Other Distinctions

Leading 500 Lawyers in America (Law Dragon 2012); Patent Lawyer of the Year (Best Lawyers Boston Litigation 2013); Boston Top Rated Lawyers (2014); Super Lawyer (2009-2013); Best Lawyers in America (2012-2014); Top Attorneys in Massachusetts (2012); Top Attorneys Intellectual Property Litigation (2011); Top Attorneys in New England (2014); Marquis Who's Who's Who's of Patent Lawyers (20th Anniversary); Who's Who Legal: Patents (2014); Who's Who International Business Lawyers (2010); Martindale & Hubbell AV® Preeminent Rating (1994-2014).

Books & Published Articles

Books

"Patent Damages Law And Practice" Thomson Reuters (West) (1999-2014) (updated annually).

"Patent Litigation" Practicing Law Institute (2001-2014) (updated annually).

Published Articles

"Patent Damages" Journal of the Patent and Trademarks Office Society, Vol. 70, No. 11, (1988) (cited as authority by the Court in its damages opinion in Polaroid v. Eastman Kodak Co., 16 USPQ2d 1481 (D. Mass. 1990).

"Increased Damages for Willful Infringement" AIPLA Selected Papers, Vol. VII, No. 2 (1989).

"Patent Damages – Life in the 'But For' World" American Bar Association Legal Papers, PTC Section (1991).

"Patent Damages" Corporate Counsel Review, Vol. XVII, No. 1 (May, 1998).

"Proving Patent Damages To A Jury" Technology Law Alert, Vol. 28, No. 2 (October, 2001).

"Law of Patent Damages" Federal Circuit Court Symposium (May, 1987).

"Patent Damages: Properly Evaluating The Potential Risk & Gain, And Handling The Damages Case At Trial" Intellectual Property Institute Seminar (March, 1994).

"Proving Patent Damages" Business Development Associates IP Litigation Management Seminar (February, 1996).

"The Practical Impact of Markman v. Westview On Jury Trials In Patent Cases" AIPLA Selected Papers (1997).

"Maximizing the Use of Intrinsic Evidence in Claim Construction" IP Litigator, Vol. 14, No. 3, May/June, 2008.

"Litigation Strategies To Maximize The Patent Case" IP Litigator, Vol. 3, No. 3 (May/June 1997).

"Effective Cost Control in Patent Litigation" IP Litigator, Vol. 7, No. 7 (September, 2001).

Education

  • BS, Catholic University of America 1969
    Electrical Engineering
  • JD, Catholic University of America, Columbus School of Law 1973
    Law Review