John E. McGlynn is a litigator and a patent attorney with a broad range of experience in patent matters. John has represented software companies, such as an innovative software-as-a-service company, in enforcing patents and defended companies such as Microsoft from patent infringement allegations. John has significant expertise in all phases of litigation ranging from formulating cases theories working with technical experts, drafting pleadings, managing discovery, and preparing cases for trial. One of John’s strengths is implementing the advocacy learned in obtaining his masters’ degree in trial advocacy and developing coherent trial strategies from the outset of a case that account for all aspects of litigation, including equitable, factual, and legal case theories.
John also has experience with contested proceedings at the Patent Office. For example, he handled one of the first proceedings at the Patent Office under the Covered Business Method Patent Review process that was created under the America Invents Act. In that mater, John represented the patent owner and was involved with all aspects of the proceedings, including preparing the patent owner’s initial response, preparing the patent owner’s post-institution response, participating in conferences with the Patent Trial and Appeal Board (PTAB), preparing expert declarations, preparing witnesses for deposition, defending depositions, preparing demonstrative exhibits for oral argument, and preparing for the oral argument.
John has also handled ex parte reexamination proceedings at the Patent Office as part of broader defense strategies for ongoing district court litigations. In those engagements, John identified prior art, formulated invalidity positions, and prepared reexamination requests which ultimately were found by the Patent Office to invalidate patent claims asserted in ongoing litigations.
John assists clients in planning and developing patent portfolios and counseling clients regarding patent matters. John relies upon his knowledge of patent litigation in order to prepare and prosecute patents that will survive challenge in court, as well as to counsel clients so as to anticipate and avoid legal conflicts. John works with clients in varied technology fields including, for example, telecommunications, software, Internet services, medical devices, mechanical devices, financial services, optics and electromechanical devices.
Prior to becoming a patent attorney, John was a member of the professional staff at Systems Research and Applications Corporation where he designed and developed large software systems and relational databases.