My Education and Recognition
John Donohue concentrates his practice on litigation and counseling in the areas of patents, trademarks and copyrights. John has litigated and resolved high-stakes, multi-party disputes in federal district courts, the International Trade Commission, and the International Court of Arbitration in London. John has worked as an assistant public defender, corporate patent attorney, and as a partner at Woodcock Washburn and Baker Hostetler. John’s technology background includes computers, software, telecommunications, electronics, and robotics. As listed below, John has been recognized by Chambers USA: America’s Leading Lawyers for Business, by Best Lawyers in America and by Pennsylvania Super Lawyers. John is currently semi-retired focusing his time on litigation and licensing projects. John has lectured on various topics in the areas of patent litigation and professional responsibility.
Over the course of his career, John has studied and evaluated numerous engineering projects and developed strategies for directing and protecting R&D investments. He has also studied and evaluated numerous patents in relation to questions of infringement and validity.
Since January 1, 2019, John has been semi-retired and engaged in legal projects related to patent litigation, including PTAB appeals, district court litigation, patent licensing, and resolving patent disputes (ADR including mediation).
John was a partner at the IP boutique Woodcock Washburn in Philadelphia for 26 years. Woodcock merged with Baker Hostetler in January 2014 where he remained until the end of 2018.
Work Experience
John’s select duties and accomplishments have included the following:
- Lead Counsel representing a SaaS company asserting claims of patent infringement over the Internet implementation of a novel shared database architecture. The litigation was stayed to permit the defendant to pursue post grant review of the subject patent. The matter was ultimately settled.
- Lead Counsel defending a manufacturer of consumer products in a patent infringement action brought by an arch competitor. The case ended after court-ordered mediation with a walkaway dismissal.
- Lead Counsel defending a manufacturer of active optical cables for high-speed data transmission before the International Trade Commission. Following a favorable decision, the matter was ultimately settled.
- Lead Counsel defending a manufacturer of high voltage leakage detection equipment in a patent infringement action. Upon replacement of the trial judge, the case was stayed pending the outcome of a co-pending Inter Partes review. The PTAB determined the claims of the patents in suit to be invalid. The U.S. Court of Appeals for the Federal Circuit affirmed the PTAB decision.
Recognitions
- Chambers USA: Intellectual Property in Pennsylvania (2003 to 2019)
- Band 4 (2018), Band 3 (2016 to 2017), Band 2 (2013 to 2015)
- The Legal 500 United States (2016)
- Recommended in Intellectual Property: Patent Litigation – Full Coverage
- The Best Lawyers in America© (2006 to 2019)
- Pennsylvania: Litigation – Intellectual Property
- Pennsylvania: Litigation – Patent
- Pennsylvania "Super Lawyer" (2004 to present)
- Martindale-Hubbell: AV Preeminent
Admissions
- U.S. Court of Appeals, Federal Circuit
- U.S. Court of Appeals, Third Circuit
- U.S. District Court, Eastern District of Pennsylvania
- U.S. Patent and Trademark Office, Registration No. 29,916
- Commonwealth of Pennsylvania
Education
- LL.M., Trial Advocacy, Temple University Beasley School of Law, 1997
- J.D., New England School of Law, 1977
- B.E.E., University of Dayton, 1974