John D. Carlin

Partner
Carlin John

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

Experience

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
  • Reckitt Benckiser
  • Tudor Investment Corporation
  • Virtec Bio

Insights

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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  • Recognized as an IP Star, Managing Intellectual Property, 2013 - 2019
  • Listed in Super Lawyers: New York Metro Edition, 2013 - 2018