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Background

John Phillips is a Principal in Fish & Richardson’s Southern California office. He was previously with the firm from 1994-1999 and rejoined in 2001. His practice emphasizes inter partes and ex parte post-grant work, due diligence and freedom-to-operate investigations, patent opinions, and strategic patent prosecution. Mr. Phillips has extensive experience in post-grant proceedings, having appeared in over 120 proceedings at the Patent Trial and Appeal Board (PTAB). He is also a member of the Communications Committee and Publications Sub-Committee of the PTAB Bar Association.

Mr. Phillips represents a wide range of clients, from individuals and startups to mid-sized and large corporations. His areas of technical expertise include internet-related technologies, computer software, telecommunications, electronics, medical devices, e-commerce, computer graphics, advanced materials, oceanography, hydrocarbon recovery, enterprise software systems, 3D computer graphics, electronic imaging, user-interfaces, electronic messaging, digital rights protection, database technology, computer networking, and avionics.

Mr. Phillips is involved in many charitable causes. He currently serves on the Board of Advisors for Workshops for Warriors, a charitable organization whose mission is to train combat veterans for careers in advanced manufacturing, and he provides pro bono legal services for adoptive parents through the Alliance for Children’s Rights. He also routinely represents solo inventors on a pro bono basis, obtaining patents on inventions for magnetic shoelaces, a modified baby bottle, and an intelligent fertility thermometer, among others.

Mr. Phillips was previously general counsel for MercExchange LLC and Navlet.com, Inc. (2000-2001), an associate and law clerk with Fitzpatrick, Cella, Harper & Scinto (1990-1993), a Staff Electrical Engineer with Johns Hopkins University Applied Physics Laboratory (1988-1989) and a Research & Development Engineer with Scripps Institution of Oceanography (1985-1988).

Education

George Washington University Law School 1992
J.D.
Valedictorian, Order of the Coif


University of Michigan 1984
Electrical Engineering, B.S.
cum laude

Admissions

  • U.S. Patent and Trademark Office 1992
  • California 2003
  • U.S. Court of Appeals for the Federal Circuit 1994

Clerkships

United States Court of Appeals for the Federal Circuit, The Honorable Alvin A. Schall, 1993 - 1994

Memberships & Affiliations

Member, Communications Committee, PTAB Bar Association
Member, Publications Sub-Committee, PTAB Bar Association

Other Distinctions

Selected Publications and Presentations

Author, “Not Sure Which Products are Patentable? Create an IP Harvesting Program,” Bloomberg Law, October 24, 2019.

Author, “Patent Acquisition: A Due Diligence Checklist,” Fish & Richardson, February 2019

Speaker, IPO IP Chat Channel Webinar: BRI and Claim Drafting, December 9, 2016.

Author, “PTAB First! CBM Review Denied on Jurisdictional Grounds,” fishpostgrant.com, May 2014.

Media Coverage, “Being Philanthropic on the Job,” San Diego Metro magazine, March 2013.

Quoted, “Federal circuit and USPTO seek to clarify business method patents,” Managing Intellectual Property, January 2013.

Author, “Sui Generis Intellectual Property Protection for Computer Software,” 60 Geo. Wash. L. Rev. 997 (1992).

Co-author, “Modifications to the Sea Beam Bathymetric Survey System,” OCEANS ’88, October 1988.

Co-author, “Multiple Sound Source Synchronizer for Seafloor Surveying, Society of Petroleum Geologists,” Offshore Technology Conference, May 1988.

Awards

Winner, Patent Law – San Diego Business Journal “Leaders in Law” 2019
Named a “Leader in Patent Law” by San Diego Business Journal for 2019.
Named an “IP Star” by Managing Intellectual Property for 2013-2019.
“Top PTAB Practitioner” by Managing Intellectual Property for 2017-2018.
Named as one of Top 25 Leading Portfolio Managers in California by the Los Angeles Daily Journal.
Listed in The Southern California Super Lawyers, San Diego 2007 and 2010 surveys for Intellectual Property.
Listed as one of The Daily Transcript‘s “Top Influentials” for 2007 and 2008.
Listed in The Legal 500 US – IP survey of top law firms and lawyers in the area of patent reexamination

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