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About John

John B. Pegram is of counsel in the New York office of Fish & Richardson P.C. He specializes in intellectual property litigation, licensing, opinion and counseling matters of all types. John has successfully litigated cases in state and U.S. district 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.

Publications

John is a frequent author and lecturer on patent, trademark, and federal court practice topics. He was a co-author of Fish’s Patent Reform Updates, tracing the activity that led to the America Invents Act (AIA). Currently, he has written and periodically updates Fish’s EU Unitary Patent & Unified Patent Court webpages.

What Brexit Means for Non-EU IP Owners,” Managing Intellectual Property, March 22, 2019.

“Service of Process on Foreign Defendants,” Fish Litigation Blog, January 24, 2017

Greener pastures for US patents,” World Intellectual Property Review, November 2016.

Patent owners should not fear the Unified Patent Court,” World Intellectual Property Review, January 2016.

“U.S. Bar – JPO Liaison Council Meets with JPO,” co-author, NYIPLA Bulletin, August-September, 2014.

“From the US, progress towards creating Europe’s new unified patent system is looking good,” IAM Blog, August 14, 2014.

“Limiting Choice of Venue in Patent Litigation,” co-author, IP Law360, July 28, 2014.

“The future of attorneys’ fee awards in patent cases,” co-author, Fish Lit. Blog & AIPLA Newsstand (Lexology), July 11 2014.

“An equivalent to amendments during IPR proceedings,” Fish Lit. Blog & AIPLA Newsstand (Lexology), May 22 2014.

“The question of specificity in patent pleadings heats up,” Fish Lit. Blog & AIPLA Newsstand (Lexology), March 25 2014.

Adjusting the life of a US patent due to Patent Office delay,” co-author, Industrial Biotechnology (February 2010), 6(1): 18-21.

Speaking Engagements

“Patent Litigation in the United States,” Japan Intellectual Property Association Seminar, Tokyo, November 25, 2016.

“U.S. Supreme Court Patent Decisions,” U.S. Bar-EPO Liaison Council, New York, September 15, 2016.

“Brexit and Intellectual Property Issues,” IPO European Practice Committee, IPO Annual Meeting, New York, September 11, 2016.

“The New Reality in Patent Invalidation Procedures – Developments in Post-Grant Review,” IPO European Practice Committee Conference, Brussels, May 7, 2014.

Panelist, “Comparison of the New Inter Partes Review at the USPTO and Oppositions at the EPO,” Fordham International IP Conference, April 25, 2014.

“Evolving Standards for Disclosing and Claiming Inventions or What Can a Patentee Claim and What Does a Claim Mean?” Fordham International IP Conference, April 24, 2014.

“Update on Inter Partes Disputes and the PTAB,” AIPLA Japan Committee seminar for Japan Patent Attorney Association, Tokyo, April 8, 2014, and Osaka, April 10, 2014.

Author & Participant, “Mock Program – PTAB Inter Partes Proceeding Including a Hearing,” AIPLA Japan Committee seminar for Japan Patent Attorney Association, Tokyo, April 8, 2014, and Osaka, April 10, 2014.

“Current trends/effects of AIA on US patent practice,” AIPLA Europe Committee meeting with CNCPI (Compagnie Nationale Conseils Propriété Industrielle), Paris, March 11, 2014. With another speaker.

“Counseling Clients re New USPTO Post Grant Proceedings and Interplay with Litigation,” AIPLA Europe Committee meetings with Chartered Inst. of Patent Attorneys, London, March 10, 2014, and with German Patent Attorneys Ass’n, Munich, March 12, 2014, and with European Patent Institute, Munich, March 13, 2014.

“Unitary Patent and Unified Patent Court,” co-presenter, Japan Patent Attorney Ass’n seminars in Osaka and Tokyo, November 27 & 29, 2013.

“Patent Courts – The US System: What Can Be Done to Address Litigation Inefficiencies?” AIPLA Annual Meeting, October 25, 2013. With Federal Circuit Chief Judge Randall R. Rader.

“EU Unified Patent Court,” joint meeting of the Giles Rich and Pauline Newman Inns of Court, Washington, DC, October 23, 2013.

“Report on US law – Written description requirements,” US Bar – EPO Liaison Council, Munich, October 10, 2013.

“Global Harmonization in Patent Law,” IPO European Practice Committee Conference, Brussels, May 27, 2013.

“Comparing Patent Enforcement Across Multiple Foreign Jurisdictions,” NYIPLA Annual Meeting workshop, May 21, 2013.

Panelist, “Recent Developments in U.S. Patent Law” and “Administrative & Substantive Patent Office Harmonization,” Fordham International IP Conference, New York, April 4-5, 2013.

“Interplay between Litigation and the AIA,” AIPLA Europe Committee meetings with the Chartered Institute of Patent Attorneys (London), IP Lawyers Association (London), and the European Patent Institute (Munich), March 11-14, 2013.

“European Unitary Patent and Unified Patent Court,” co-presenter, West LegalEdcenter Webinar, February 12, 2013.

“European Unitary Patent: An Update,” co-presenter, IPO Chat Channel Webinar, January 10, 2013.

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.

Listed as “Best Lawyer in Litigation – Patent, Litigation – Intellectual Property, and Patent Law” by the Best Lawyers in America since 1995.

Received Lifetime Achievement Award from the New York Intellectual Property Law Association (NYIPLA) in 2019.

Recognized as a 2013 Top Rated – AV® PreeminentTM Lawyers in Intellectual Property Law and a 2013-2018 “IP Star” by Managing Intellectual Property.

Listed in 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.

Recipient of the President’s Outstanding Service Award from the American Intellectual Property Law Association (AIPLA) for 2011.

Focus Areas
Education

LL.B., New York University School of Law (1965)


B.A., Physics, Columbia University (1960)

Admissions
  • U.S. Patent and Trademark Office 1969
  • New York 1965
  • Supreme Court of the United States
  • U.S. Court of Appeals for the Federal Circuit
Memberships & Affiliations

John is active as a bar association leader, including Past President of the New York IP Law Association (NYIPLA), a past Director of the American Intellectual Property Law Association (AIPLA), and former Editor-in-Chief of The Trademark Reporter. He is currently AIPLA delegate to the US Bar - EPO Liaison Council and NYIPLA delegate to the US Bar - JPO Liaison Council, and has served as an advocate, arbitrator, or mediator in intellectual property and business arbitrations and mediations, and as an expert witness on patent procedures.

What's trending with John

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News
March 4, 2020
Legal Alert: EU Unified Patent Court and Unitary Patent Update
Legal Alerts
News
News
August 14, 2019
EPO Developments—Summer 2019
Legal Alerts
News
News
August 14, 2019
German Justice Ministry to Await Brexit before Proceeding with UPC
Legal Alerts
News
Event
June 3rd, 2019
AIPLA Seminar with Chartered Institute of Patent Attorneys (CIPA)
Speaking Engagement
News
May 15, 2019
Fish & Richardson’s John B. Pegram Receives Lifetime Achievement Award from New York IPLA
Press Release
Recognition
News
Event
May 14th, 2019
New York Intellectual Property Law Association (NYIPLA) Annual Meeting
Speaking Engagement
Event
April 25th, 2019
2019 Fordham IP Conference
Speaking Engagement
Sponsorship
News
August 15, 2018
47 Fish Attorneys Named to The Best Lawyers in America® 2019 List
Press Release
News
News
May 29, 2018
John Pegram Quoted in World Intellectual Property Review Article, "Mixed Fortunes for the Appeals Boards."
Media Mention
News
News
May 21, 2018
Fish & Richardson Announces 39 Attorneys Named “IP Stars” by Managing Intellectual Property Magazine
Press Release
News
Event
May 3rd, 2018
Intellectual Property Owners Association’s European Practice Committee Conference
Speaking Engagement
Conference/Convention
Event
November 14th, 2017 | 8:30 am EST
IPO Education Foundation EPO Day
Speaking Engagement
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