John D. Carlin
Partner
John also provides strategic counseling to build, manage, and monetize intellectual property portfolios. He frequently advises on IP licensing matters and IP-related aspects of corporate transactions and has led IP due diligence teams in support of dozens of corporate mergers, acquisitions, and private equity investments.
John also has experience litigating and counseling on matters involving standard essential patents, and currently serves as the lead independent evaluator for multiple standard essential patent pools. In this capacity, he oversees an international team of attorneys responsible for evaluating patent submissions and making standard essentiality determinations.
John has been named an IP Star by Managing Intellectual Property and a Top New York City Intellectual Property Litigator by Super Lawyers every year since 2013.
Related Practices
Experience
Experience
Representative Matters
- Represents Signify (f/k/a Philips Lighting) as lead counsel in ongoing litigation against Menard Inc., and over a dozen of suppliers on multiple patents relating to LED lighting technology
- Represented Signify as lead counsel in litigation against CAO Lighting Inc. on patents relating to semiconductor LED chip technology. Successfully negotiated a settlement and release for no payment after briefing motion for judgment of non-infringement and obtaining institution of inter partes review proceeding challenging all asserted claims
- Represented Koninklijke Philips N.V. and U.S. Philips Corp. as lead counsel in litigation against several major corporations in the technology sector on patents relating to graphical user interface, streaming, and digital content protection technology implemented by Windows and Android operating systems in smartphones and tablets, including patents essential to AMR-WB and HDCP 2.x standards and specifications. After winning the vast majority of claim construction issues and successfully defeating multiple summary judgments motions and collateral proceedings in the U.S. Patent and Trademark Office, secured a series of settlements that recognized the value of Philips' intellectual property rights
- Represented Koninklijke Philips N.V. in connection with a global enforcement and licensing campaign for Philips' portfolio of UMTS/LTE patents essential to 3G/4G telecommunications standards and Philips' Touch-Enabled Devices portfolio. Successfully negotiated multiple settlements and license agreements across multiple patent portfolios with a cumulative value in excess of $200 million
- Represented Geotab as lead counsel in litigation against PerdiemCo on patents relating to GPS technology and fleet management software. Won summary judgment of noninfringement on divided infringement grounds in E.D. TX, which led to a favorable settlement
- Represented MindGeek as lead counsel in litigation against Relevant Holdings over patents relating to methods of ranking documents associated with persons or categories of content in a database. Won judgment of invalidity on the pleadings of all asserted claims under 35 U.S.C. § 101
- Represented Dentsply Sirona as lead counsel in litigation against 3Shape, Dental Wings, and Anatomage on patent relating to CAD/CAM software for designing and fabricating drill guides for use in dental implant surgery. Favorable settlements were reached after asserted claim survived three separate IPRs
- Represented Sirona Dental Systems against Danaher and others in the dental imaging field on patents relating to CMOS image sensors. Successfully negotiated numerous royalty-bearing licensing arrangements, including a favorable litigation settlement with Danaher after Sirona prevailed in claim construction proceedings and defeated Danaher's bid for summary judgment
- Represented AstraZeneca against multiple generic pharmaceutical companies on patents relating to the blockbuster drug Prilosec®. After a lengthy trial, the court found that defendants Andrx, Genpharm, and Dr. Reddy's had infringed AstraZeneca's formulation patent and enjoined them from marketing generic versions of Prilosec®
- Represented Intelidata in patent litigation brought by Portel Data Services, relating to Intelidata's desktop telephones. Won summary judgment of non-infringement of all asserted claims
Representative Clients
- Koninklijke Philips N.V.
- Reckitt Benckiser
- Signify N.V.
- Via LA (and MPEG LA)
- Securitas Biosciences
- VirTech Bio, Inc.
Insights
Insights
Credentials
Credentials
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
Recognition
- Super Lawyers, New York Metro, 2013 – 2025
- Managing Intellectual Property, IP Star, 2013 – 2024