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About Jon

Jonathan A. Marshall is of counsel in the New York office of Fish & Richardson P.C. He is one of the nation’s leading patent litigators and trial lawyers. Mr. Marshall has extensive experience in matters involving electronic, computer, biological, pharmaceutical, chemical, and mechanical technologies. He has successfully represented, among others, Agilent Technologies, American Cyanamid, BIC, Boehringer Ingelheim, Hewlett-Packard, and Microsoft, both at the trial court level and in various appellate courts.

Mr. Marshall has been quoted widely on various intellectual property issues in such publications as The Wall Street Journal, The New York Times, The San Francisco Chronicle, The San Francisco Recorder, The San Francisco Daily Journal, The Washington Journal, The National Law Journal, The American Lawyer, Business Week, and The Economist. He was also the subject of a recent profile in The National Law Journal.

Chiron Corp et. al. v. Roxane Laboratories, Inc. (D. Del.) – lead counsel for defendant in patent infringement action involving a method for treatment of cystic fibrosis.

Williamson v. AT&T Corp. (N.D. Cal.) – lead counsel for plaintiff in a patent infringement action involving broadband distribution and high-speed Internet backbone networks.

Plasma Physics Corp. v. National Semiconductor Corp. (E.D.N.Y.) – lead counsel for defendant in patent infringement action involving semiconductor fabrication processes.

Palomar Medical Technologies, Inc. v. Cutera, Inc. (D. Mass.) – lead counsel for defendant in patent infringement action involving laser hair removal.

Corning Incorporated and Astarte Fiber Networks, Inc., Tellium Inc., AFN LLC, Katz Family Limited Partnership (AAA.2002) – lead counsel for respondents Astarte Fiber Networks and Tellium, Inc. in an arbitration involving an agreement to acquire rights to all-optical switching technology. Received award dismissing all claims against Astarte and Tellium and awarding all costs after 28-day hearing.

GM Networks Ltd. v. E-Gold, et. al (S.D.N.Y.) – lead counsel for plaintiff in patent infringement action involving business methods for financial transactions on the internet.

Bic Corp. v. First Prominence Company, Ltd. (S.D.N.Y.) – lead counsel for plaintiff in patent infringement action involving lighter safety mechanisms; summary judgment for plaintiff.

United Epitaxy Company v. Hewlett-Packard Co. (N.D. Cal.) – lead counsel for defendant in declaratory judgment action for invalidity and non-infringement of a patent for light-emitting diodes.

ICT Pharmaceuticals v. Boehringer Ingelheim Pharmaceuticals, Inc. (D. Del.) – lead counsel for defendant in patent infringement action involving cell-based assay technology.

Novartis Corporation v. Ben Venue Laboratories (D.N.J.) – lead counsel for defendant in patent infringement action involving pharmaceutical for treating bone loss in cancer patients; summary judgment for defendant; affirmed by Federal Circuit.

Priceline.com v. Microsoft Corp. and Expedia, Inc. (D. Conn.) – lead counsel for defendants in patent infringement action involving internet business methods.

Amazon.com v. Barnesandnoble.com (W.D. Wash.) – lead counsel for defendant in patent infringement action involving “one-click” business method for processing on-line shopping orders; preliminary injunction vacated by Court of Appeals for the Federal Circuit.

Bic Corp. v. Thai Merry Co. (S.D.N.Y.) – lead counsel for plaintiff in patent infringement action involving lighter safety mechanisms.

Waters Corp. v. Hewlett-Packard Co. (D. Mass.) lead counsel for defendant in patent infringement action involving high-performance liquid chromatography.

Boehringer Ingelheim Vetmedica v. Schering-Plough Corp. (D.N.J.) – lead counsel for plaintiff in patent infringement action involving the production for veterinary vaccines; jury verdict for plaintiff.

C.S. Telecom v. Hewlett-Packard Co. (D.D.C.) – lead counsel for defendant in patent infringement action involving computer network architecture.

ALN Associates, Inc. v. Hewlett-Packard Co. (S.D. Ind.) – lead counsel for defendant in action for copyright infringement involving computer source code.

Hewlett-Packard Co. v. Genrad, Inc. (D. Mass) – lead counsel for plaintiff in patent infringement action involving in-circuit test equipment.

Hewlett-Packard Co. v. Nu-kote International, Inc. (N.D. Cal.) – lead counsel for plaintiff on the intellectual property issues in patent infringement, trademark infringement, unfair competition, and antitrust action involving ink-jet cartridge technology; jury verdict for plaintiff on all issues.

Hewlett-Packard Co. v. Calcomp (N.D. Cal.) – lead counsel for plaintiff in patent infringement action involving digital plotters.

Windsurfing International v. BIC Leisure Products, Inc. (Fed. Cir.) – lead counsel for BIC in appeal on damages issues in action for patent infringement involving sailboards; judgment for BIC.

Advanced Technology Laboratories v. Hewlett-Packard Co. (W.D. Wash.) – lead counsel for defendant in patent infringement action involving endoscopes.

Teradyne, Inc. v. Hewlett-Packard Co. (N.D.Cal.) – lead counsel for defendant and counterclaim-plaintiff in patent infringement action involving integrated circuit test equipment.

Laitram Corp. v. Hewlett-Packard Co. (E.D. La.) – lead counsel for defendant in patent infringement action involving hand-held calculator user interfaces.

GAF Corp. v. Georgia-Pacific Corp. (E.D. Tex.) – lead counsel for plaintiff in patent infringement action involving roofing shingles.

Hewlett-Packard Company v. Bausch & Lomb, Inc. (N.D. Cal.) – lead counsel for plaintiff in patent infringement action involving digital plotters; judgment for plaintiff, including award of attorney fees, after 28-day bench trial.

Refac International v. IBM Corp. et al. (D.N.J.) – lead counsel for defendant, Manufacturers Hanover Trust Co., in patent infringement action involving automatic teller machines; summary judgment for defendants, including award of attorney fees.

Interface Biomedical Laboratories Corp. v. Axiom Medical Inc. (E.D.N.Y.) – lead counsel for plaintiff in action for breach of contract involving positively-charged collagenous hemostatic agents.

Dimetrics, Inc. v. Welding Services, Inc. (N.D. Ga.) – lead counsel for plaintiffin action for misappropriation of trade secrets involving automated welding systems.

Essex Chemical Corp. v. Peugeot Motors of America, Inc. (D.N.J.) – lead counsel for plaintiff in action for patent infringement involving polyurethane sealants.

Sterling Drug, Inc. v. Scott Paper Co. (E.D. Pa.) – lead counsel for plaintiff in patent infringement action involving moist tissue dispensing device.

Mima Machine Corp. v. Lantech, Inc. (E.D.N.Y.) – lead counsel for plaintiff in declaratory judgment action for invalidity and non-infringement of patent involving stretch-wrap packaging machinery.

World Dryer Corp. v. General Time Corp. (Cir. Ct. Cook County Ill.) – lead counsel for defendant in action for product liability and breach of contract involving electronic timing controls.

Shell Oil Co. v. America Cyanamid Co. (S.D. Tex.) – counsel for defendant in patent infringement action involving synthetic pyrethroid insecticides.

Products Research & Chemical Corp. v. Morton Thiokol, Inc. (C.D. Cal.) – counsel for plaintiff in antitrust action involving mercaptan-terminated polymers for the manufacture of insulating glass formulations.

Ethicon, Inc. v. American Cyanamid Co. (D.N.J.) – trial counsel for defendant patent owner in declaratory judgment action for invalidity and non-infringement of patent involving synthetic absorbable surgical sutures; favorable settlement for patent owner after a 76-day bench trial.

Dart Industries, Inc. v. DuPont Co. (N.D. Ill.) – trial counsel for plaintiff in action for patent infringement involving glass-reinforced injection molding compounds; judgment for plaintiff after a 44-day bench trial.

Valley Metallurgical Processing Co. v. Stone & Webster, et al. (S.D.N.Y.) – counsel for plaintiff in action for misappropriation of trade secrets involving the production of spherical metallic powders.

Recognized as a 2013 Top Rated – AV® PreeminentTM Lawyers in Intellectual Property Law and is listed in the 2010 Super Lawyers Corporate Counsel Edition.

Focus Areas
Education

J.D., New York University School of Law (1964)


B.S., Mechanical Engineering, Lehigh University (1961)

Admissions
  • U.S. Patent and Trademark Office 1967
  • New York 1964
  • Supreme Court of the United States
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. Court of Appeals for the Second Circuit
  • U.S. Court of Appeals for the Third Circuit
  • U.S. Court of Appeals for the Seventh Circuit
  • U.S. Court of Appeals for the Ninth Circuit
  • U.S. District Court for the Northern District of California
  • U.S. District Court for the District of Colorado
  • U.S. District Court for the Eastern District of New York
  • U.S. District Court for the Southern District of New York

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