John North, Chair of Sutherland’s Intellectual Property Practice Group, focuses his practice on patent litigation and trade secret disputes. A significant number of John’s patent cases have involved unfair competition claims, including PRE and Walker Process claims as well as patent misuse and Lanham Act claims. Many international corporations have relied on John to take the lead counsel role in major patent litigations, including one of the world’s largest pharmaceutical corporations, a cutting-edge minerals technologies company and a major entertainment company.
John spends considerable time in court handling trials and hearings. He has handled cases involving a wide range of technologies including pharmaceuticals, interactive program guides, electronic coupons and other electronics issues, various chemical products, medical products, paint, textile dye processes and a variety of minerals.
REPRESENTATIVE EXPERIENCE
Lead Counsel Experience
- Takeda Pharmaceuticals v. Teva Pharmaceuticals (D. Del.), representing one of the world’s largest pharmaceutical companies (Teva) in the trial of a Hatch-Waxman case relating to Prevacid® with market at issue in excess of $1 billion.
- Minerals Technology v. Omya (S.D.N.Y.), representing an international minerals company (MTI) in a series of cases relating to wet-end papermaking technology and also including PRE and Walker Process antitrust claims. The trial focused on novel issues of acid-based chemistry.
- Takeda Pharmaceuticals et al. v. Teva Pharmaceuticals (D. Del.), representing one of the world’s largest pharmaceutical companies (Teva) in the trial of a Hatch-Waxman case relating to the ODT formulation of lansoprazole.
- AstraZeneca v. Impax Laboratories (S.D.N.Y.), representing a major Bay Area pharmaceutical Company (Impax) in the trial of a Hatch-Waxman case relating to Prilosec®, with market at issue in excess of $1 billion.
- In re Gemstar Litigation (N.D. Ga), representing a major international communications/entertainment company (Gemstar/T.V. Gudie), in a series of cases relating to set-top box technologies in which antitrust and patent misuse claims also were involved. The case was reported to be, at one stage, the largest set of patent matters in the country.
- Depomed v. Ivax (N.D. Cal.), representing a major pharmaceutical company (Ivax) in a case relating to polymer controlled release delivery systems. The case settled through mediation on the eve of trial.
- Softcard v. Target & Visa (N.D. Ga.), representing the developer of a novel “smart card” technology in a case that settled through mediation.
- Solvay v. OCI (D. Del.), representing one of the world’s largest chemical companies (Solvay) in a case involving sodium percarbonate. The case settled early in discovery.
Special Master and Other Pertinent Experience
- Issuing an order on claim construction as special master, which the district court adopted without modification. The case subsequently settled.
- Serving as an arbitrator in a matter involving mixed contract and patent issues, which settled before hearing.
- Submitting an expert declaration on attorney fees issues.
- Authoring an amicus curiae brief with the Intellectual Property Owners Association on a petition for a writ of certiorari to the United States Supreme Court of Appeals for the Second Circuit for Ferring B.V., et. al v. Meijer, Inc., et. al (2010).
PROFESSIONAL HONORS AND AWARDS
- Recognized by Chambers USA: Guide to Leading Business Lawyers in the area of intellectual property (2004–2010)
- Named to The Best Lawyers in America in the area of intellectual property law (2009, 2010)
- Selected for inclusion in Georgia Super Lawyers® (2008–2010)
PROFESSIONAL AND COMMUNITY INVOLVEMENT
- Member, Intellectual Property Law, Science & Technology and Litigation Sections, American Bar Association
- Member, The Fellows of the American Bar Foundation
- Founder and Master, Atlanta Intellectual Property Inn of Court
- Member, Board of Directors, Georgia Law Center for the Homeless
- Past President, Federal Bar Association, Atlanta Chapter
- Co-chairperson, Host Committee, 2010 Federal Circuit Court of Appeals Visit to Atlanta
- Member, United Way Tocqueville Society
- Former Council Member, Science & Technology Section; Vice Chair of the Section’s standing Committee on Scientific Evidence, Section Liaison of the American Bar Association’s standing Committee on Publishing Oversight, editor of the Section’s Scientific Evidence Review
- Past Editor-in-Chief, The SciTech Lawyer
PUBLICATIONS AND SPEAKING ENGAGEMENTS
- Moderator, “Effective Use of Experts in IP Litigation,” 6th Annual SpringPosium® Intellectual Property CLE Conference (May 7–8, 2010)
- Moderator, “Navigating Your Patent Prosecution Team Through Ethical, Conflict and Litigation Challenges on a Lean Budget,” Georgia State University Corporate IP Institute (November 4, 2009)
- Speaker, “Patent Litigation and Inequitable Conduct Defenses,” Strafford CLE Teleconference (September 1, 2009)
- Panelist, Intellectual Property Section of the Georgia Bar Patent Law Roundtable (June 9, 2005)
- Moderator, "Genetic Information in the Courts," Working at the Frontiers of Law and Science: Applications of the Human Genome (October 2-3, 2003)
- Moderator, "The Intersection of Antitrust and Patent Litigation," Georgia Bar, Intellectual Property Section Roundtable (summer 2002)
- Moderator, "The Non-Infringement Opinion," Georgia Bar, Intellectual Property Section Roundtable (August 2001)
- Featured, “Q&A With Sutherland’s John North,” IP Law 360 (August 11, 2009)
- Comment, “Picking The Wrong Expert Can Doom An IP Case,” IP Law 360 (August 3, 2009)
- Speaker, “Patent Claim Construction: Essential tools and information for proper claim construction,” Law Seminars International (April 25, 2008)
- Co-author of Chapter 11, “Expert Evidence in the Eleventh Circuit,” Scientific Evidence Review, Monograph No. 8, a publication of the American Bar Association (2008)
- Featured, “SciTech Profiles: John North,” The SciTech Lawyer (April 2007)
- Co-author, “Exploiting Expertise: Effective Use of Expert Witnesses in Patent Litigation,” IP Value (2005)
- Author, “Effective Use of Expert Witnesses in Patent Litigation,” Intellectual Asset Management (Winter 2004/2005)
- Co-author of Chapter 11, “Expert Evidence in the Eleventh Circuit,” Scientific Evidence Review, Monograph No. 6, a publication of the American Bar Association (2003)
- Speaker, “The Intersection of Antitrust and Patent Litigation,” Intellectual Property Section, State Bar of Georgia (2002)
© 2010 Sutherland Asbill & Brennan LLP