John D. Carlin

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jcarlin@venable.com

New York, NY

T +1 212.218.2210

John Carlin is an intellectual property attorney who focuses on patents – primarily with regard to patent litigation, licensing and technology transfers, intellectual property due diligence investigations, and client counseling. John has litigated cases, negotiated agreements, and counseled clients on matters involving a wide range of technologies, and various pharmaceutical chemistries, formulations, and manufacturing processes.

John assists clients with matters involving the following technologies:

Computer software and hardware
Electronic transaction processing
Flat panel displays
Medical devices
Medical records management
Network architecture and security
Organ care and transport
Polymer chemistry
Semiconductor devices
Switching systems
Telephony and signal processing

Related Practices

Related Industries

Blockchain and Digital Currencies

Experience

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Representative Matters

Represented Adams Respiratory against Mutual Pharmaceuticals on patents related to Adams' highly successful Mucinex® product
Represented Otsuka Pharmaceuticals against Teva Pharmaceuticals, Barr Laboratories, Apotex, Sandoz, and Sun Pharmaceuticals on patents related to Otsuka’s Abilify® anti-psychotic product
Represented Sirona Dental Systems against Danaher on patents related to CMOS image sensors
Represented IBM against Fair Isaac on claims of patent infringement, trade secret misappropriation, breach of contract, and copyright infringement involving IBM’s launch of its next-generation business process management software
Defended IBM against allegations of patent infringement, trade secret misappropriation, breach of contract, conversion, and unjust enrichment brought by Sky Technologies, related to IBM’s WebSphere® Commerce software products
Represented AstraZeneca against Andrx, Genpharm, Dr. Reddy, and Schwartz Pharma on patents related to omeprazole and its formulations
Represented Donnelly against Gentex on patents related to electrochromic rearview mirrors and associated electronics
Defended Combe against allegations of misappropriation of trade secrets, unfair competition, trademark infringement, false designation of origin, breach of express and implied contracts, and fraud, brought by Brandwynne
Defended Intelidata against an allegation of patent infringement, brought by Portel Data Services, related to Intelidata’s desktop telephones
Defended Mars against accusations of trade dress infringement and dilution, brought by Hershey Foods, related to the color orange, as used for candy packaging
Defended Canon against an allegation of infringement brought by Solarex, related to solar panels

Representative Clients

Dentsply Sirona
Koninklijke Philips N.V.
Reckitt Benckiser
Signify N.V.
Tudor Investment Corporation
Virtec Bio

Insights

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Thought Leadership

Credentials

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Education

J.D. New York University School of Law 1992
B.S.E.E. magna cum laude University of Michigan 1989
Tau Beta Pi, Eta Kappa Nu

Bar Admissions

New York
U.S. Patent and Trademark Office

Court Admissions

U.S. District Court for the Southern District of New York
U.S. District Court for the Eastern District of New York
U.S. Court of Appeals for the Federal Circuit

Recognition

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Super Lawyers, New York Metro, 2013 – 2023
Managing Intellectual Property, IP Star, 2013 – 2020, 2022 – 2023