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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 30 years, he has specialized in patent litigation. To date, he has been lead counsel in more than 100 intellectual property lawsuits around the country, including cases in so-called "rocket docket" jurisdictions and those known for large numbers of patent infringement trials, such as Delaware, Massachusetts, Texas, and California. He has obtained one of the largest patent jury verdicts ever awarded in Massachusetts, and he has successfully defended clients from damages claims totaling hundreds of millions of dollars. He has also conducted mock patent trials for both the AIPLA and the Practicing Law Institute.
He has briefed and handled a large number of Markman hearings, resulting in favorable claim construction rulings that successfully ended the cases. Mr. Skenyon has also briefed and argued many successful Federal Circuit appeals since the Court’s inception in 1982. He also handles pro bono appeals for veterans before the Court of Appeals for Veterans Claims.
He has written and lectured extensively on patent litigation practice, particularly in the areas of patent damages, claim construction and cost control in litigation. A book he co-authored entitled “Patent Damages Law & Practice,” published by West Publishing Company, has been cited by numerous courts, including by the Federal Circuit in its recent decision in Lucent Technologies, Inc. v. Gateway, Inc., 580 F.3d 1301 (Fed. Cir. 2009). He is also the co-author of the book “Patent Litigation” published by the Practicing Law Institute. He helped draft the damages portions of the AIPLA model jury instructions in 1997, 2005 and 2008 and revised the 11th Circuit’s patent jury instructions in 2004. He was a member of the Boston Patent Law Association Task Force for revising the patent rules for the District of Massachusetts.
Mr. Skenyon is an AIPLA Fellow and a board member of the American Intellectual Property Law Educational Foundation, which awards scholarships to minority law students interested in IP practice. 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 was named the Best Lawyers’ 2013 Boston Litigation - Patent "Lawyer of the Year," is listed as a Super Lawyer for Massachusetts and New England, and is listed in both the Who’s Who of Patent Lawyers and the Who’s Who of International Law.
Admissions
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Rhode Island
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Connecticut
1974
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United States Patent and Trademark Office
1974
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Massachusetts
1978
- United States District Court for the District of Massachusetts
- United States District Court for the District of Rhode Island
- United States District Court for the District of Connecticut
- United States District Court for the Northern District of California
- United States Court of Appeals for the First Circuit
- United States Court of Appeals for the Ninth Circuit
- United States Court of Appeals for the Federal Circuit
- Supreme Court of the United States
Other Distinctions
2013 Top Rated - AV® PreeminentTM Lawyers in Intellectual Property Law
Books & Published Articles
Books
"Patent Damages Law And Practice" West Publishing Co. (1999).
"Patent Litigation" Practicing Law Institute (2001).
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
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BS,
Catholic University of America
1969
Electrical Engineering
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JD,
Catholic University of America, Columbus School of Law
1973
Law Review
Experience
Litigation examples
Representative jury trials as lead counsel PPG Industries v. Avco and Textron (D. Mass.) Represented the patentee, PPG, in a patent case involving epoxy coatings used to protect steel in a fire. The jury found PPG’s patent valid and willfully infringed and awarded PPG almost $30 million dollars in damages. Federal Circuit appeal abandoned by Avco. Universal v. Sensormatic (S.D. Fla.) Represented the patentee, Sensormatic, in a patent case involving electronic article surveillance tags. The jury found Sensormatic’s patent valid and infringed and awarded damages. Affirmed by the Federal Circuit on appeal. Andersen v. Fiber Composites (D. Minn.) Represented the defendant, Fiber Composites, in a six patent case involving a polymer and wood composite material. Obtained summary judgment of non-infringement for four patents based on claim construction. After a jury trial on the remaining two patents, the Federal Circuit affirmed Fiber Composites’ claim construction and applied it to all six patents, resulting in a non-infringement finding for Fiber Composites on all six patents. SignTech v. Vutek (W.D. Tx.) Represented Vutek in a patent suit involving controls for large scale multi-color ink jet printing. Both parties sued for patent infringement. Vutek’s patent was found valid and willfully infringed. SignTech’s patent was found not infringed. Affirmed by the Federal Circuit on appeal. Smith & Nephew v. Arthrex (D. Ore.) Represented the patentee in a patent suit involving suture anchors for use in orthopedic surgery. The district court dismissed all of the invalidity defenses on summary judgment, and the jury found infringement and awarded $14 million in damages. Appeal pending. Eisenberg v. Questor (D. R.I.) Represented the patentee, Eisenberg, in a suit involving a patent for ski boots. Jury verdict in favor of Eisenberg on all the liability issues and defenses and an award of the full amount of damages sought. Questor did not appeal. Stryker v. Wright Medical (D. N.J.) Represented the defendant, Wright Medical, in a patent suit involving knee surgery instrumentation, in which the damages claim exceeded fifty million dollars. Wright Medical was found not to infringe. Affirmed by the Federal Circuit on appeal. Lane v. Bank of Boston (D. Mass.) Represented the defendant, Bank of Boston, in a suit involving trade secrets, copyrights and unfair competition, all relating to a method of financial accounting. Jury verdict on the copyright count with all other counts dismissed by the court. Lane did not appeal.
Other representative cases as lead counsel
PGI v. Anderson (W.D. Tx.) Represented the defendant, Anderson, in a patent case involving valves for gas and oil pipelines. As a result of a favorable Markman ruling, the case was dismissed with prejudice.
DuPont v. BBA Nonwovens (W.D. Tn.) Represented the defendant, BBA, in a patent suit involving multi-layer spunblown fabrics. As a result of a favorable Markman ruling, the court granted summary judgment of non-infringement in favor of BBA. DuPont did not appeal.
Kimberly-Clark v. Tyco Healthcare (D. Wisc.) Represented the defendant, Tyco Healthcare, in a patent suit involving the material used in internal flaps for diapers. The patents asserted by Kimberly-Clark were the Enloe patents, which it had successfully asserted against the rest of the diaper industry, and the damages claim against Tyco Healthcare exceeded 100 million dollars. As a result of a favorable Markman ruling, judgment of non-infringement was entered on the eve of trial. Affirmed by the Federal Circuit on appeal. Petition for Cert. denied.
Polymer Solvents v. PPG (E.D. Tx.) Represented the defendant, PPG, in a multiple patent suit involving solvents and coatings, in which hundreds of PPG’s products were accused of infringement. After submission of PPG’s claim constructions, Polymer Solvents dismissed the case with prejudice.
Air Measurement Technologies v. Scott Technologies (W.D. Tx.) Represented the defendant Scott Technologies in a multiple patent case involving circuitry for firefighters’ air breathing apparatus. As a result of Scott Technologies’ Markman briefing, the patentee dismissed the case and then successfully sued its prosecution counsel for malpractice.
Kimberly-Clark v. Clopay (D. Del.) Represented the defendant Clopay in a patent case involving multi-layer nonwoven materials. As a result of Clopay’s Markman briefing, the patentee dismissed the case with prejudice.
Pulsecom v. DSC Communications (E.D. Va.) Represented the defendant, DSC, in a patent suit involving a circuit for remotely testing telephones. DSC was granted summary judgment of non-infringement on the eve of trial. Affirmed by the Federal Circuit on appeal.
Thermalloy v. Aavid Engineering (D. N.H.) Represented the defendant, Aavid, in a patent case involving heat sinks, in which most of Aavid’s product line was accused of infringement. Summary judgment of invalidity was affirmed by the Federal Circuit on appeal.
Rhodia Chimie v. PPG Industries (D. Del.) Represented the defendant, PPG, in a patent case involving silicas. As a result of a favorable Markman ruling, summary judgment of non-infringement was entered just before trial. Affirmed by the Federal Circuit on appeal except for one product. Rhodia conceded non-infringement of that remaining product on remand.
Apple Computer v. Articulate Systems (N.D. Cal.) Represented the defendant, Articulate, in a patent suit involving Apple’s operating software. Summary judgment of non-infringement and invalidity granted as to all four Apple patents. Apple appealed as to only one patent, and the Federal Circuit affirmed.
Representative Federal Circuit Appeals
MBO Laboratories, Inc. v. Becton, Dickinson (D. Mass.) Represented the patentee and appellant, MBO Laboratories in a case involving safety needles. The district court made six claim construction rulings adverse to MBO Laboratories and entered judgment of non-infringement. On appeal, the Federal Circuit reversed five of the six constructions and vacated the non-infringement judgment. On remand, Becton, Dickinson admitted infringement of several claims. Case pending.
Roper v. Raytheon (D. Mass.) Represented the patentee and appellant, Roper, in a case involving microwave ovens. The district court found the patent infringed but invalid. On appeal, the Federal Circuit affirmed the finding of infringement and reversed the finding of invalidity. The case was remanded for a determination of damages, and the full amount of the damages sought was awarded Roper.
Smith & Nephew v. Ethicon (D. Ore.) Represented the patentee and appellant, Smith & Nephew in a case involving suture anchors. Judgment of non-infringement, and the claim construction on which it depended, reversed on appeal. On remand, infringement was admitted, and the case settled.
Wright Medical v. Osteonics (D. Mass.) Represented the patentee, Wright Medical, in a patent suit involving surgical instruments for knee replacement. Jury verdict of non-infringement vacated in a first appeal for lack of any claim construction. On remand, the district court made a claim construction adverse to Wright Medical and granted summary judgment of non-infringement. On appeal, the Federal Circuit adopted Wright Medical’s construction, vacated the judgment of non-infringement, and remanded. Case settled very favorably to Wright Medical thereafter.
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