John B. Conklin

Member

Mr. Conklin practices law exclusively in the field of intellectual property, including litigation, legal opinion, and prosecution matters, with specific concentration in the areas of computer architecture, computer networks, software, telecommunications, related Internet technologies, telephony systems, lasers, digital and analog control systems, power electronics, alarm and signaling systems and computer-based imaging systems.

Mr. Conklin has served as trial counsel in many patent lawsuits, including jury trials before the U.S. district courts and appeals before the U.S. Courts of Appeal for the Federal Circuit.  In addition, he has served as counsel in several interference proceedings before the U.S. Patent and Trademark Office, as well as in opposition proceedings before foreign patent offices.

With extensive experience in formulating patent strategies and in managing patent portfolios, Mr. Conklin counsels and renders opinions on patent validity, patent infringement, technology licensing, and the protection of trade secrets and other proprietary information. He also prepares and prosecutes patent applications in the U.S. and foreign countries.

Prior to joining the firm in 1983, Mr. Conklin was a practicing electrical engineer, an examiner for the U.S. Patent and Trademark Office and Division Patent Counsel for Motorola. While at Motorola, he was responsible for all intellectual property matters involving products such as base stations for mobile radio systems and trunked radio systems. While at the U.S. Patent and Trademark Office, he examined patent applications in the art of motor control systems.

Professional Affiliations

• American Bar Association
• American Intellectual Property Law Association (AIPLA)
• Intellectual Property Law Association of Chicago (IPLAC)
• Institute of Electrical and Electronic Engineers (IEEE)
• Intellectual Property Owners Association (IPO)

Honors

• AV^® Preeminent™ Peer Review Rated (Highest Rating) – Martindale-Hubbell
• Selected by peers as a Leading Lawyer in Intellectual Property Law – Leading Lawyers Network
• Listed among the Top Lawyers in Illinois in Intellectual Property Law – Chicago Lawyer

Representative Matters

• FL .Smidth A/S. et al. v. Jeffco, Civil Action No. 08 215 (N.D. Okla.) (Lead counsel in action for trademark infringement)
• Koppolu et al. v Doyle et al., Interference no. 105,563 (U.S. Patent and Trademark Office Board of Patent Appeals and Interferences) (Co-counsel representing Microsoft in patent interference proceeding between Microsoft and Eolas Corp., concerning software technology for linking objects)
• LeRoy Hagenbuch v. 3B6 Sistemi Elettronici Industriali S.R. I. and 3B6 Technologies LLC, Civil Action No. 1:04-3109 (N.D. Ill.) (Co-counsel in action for patent infringement)
• LeRoy Hagenbuch v. Euclid Hitachi Heavy Equipment Co., Civil Action No. 1:04-3109 (N.D. Ill) (Lead counsel in action for patent infringement)
• LeRoy Hagenbuch v. Unit Rig, a division of Terex Corporation, Civil Action 1:00-01779 (N.D. Ill) (Lead counsel in action for patent infringement)
• David R. Blazevic v. Severstol North America, Inc. and Alstom Power Conversion, Inc., Civil Action No. 1:05-01413, (N.D. Ill.) (Lead counsel in action for patent Infringement)
• Lucas Aerospace Ltd. v. Unison Industries LP, Civil Action 93-525 MMS (D. Del.) (Trial counsel for jury trial in action for patent infringement based on patents written and prosecuted by Mr. Conklin)
• Floyd Minks v. Unison Industries, Inc., (Case No. CI-89-2939) (Circuit Court of the Ninth Judicial Circuit, Osceola County, Florida) (Co-counsel in action for breach of contract, misappropriation of trade secrets)
• Public Safety Equipment v. Federal Signal Corp., Civil Action No. 91-0785-C-3, (E.D. Mo.) (Lead counsel in action defending against charges of patent infringement)
• New Idea Farm Equipment Corporation v. Sperry Corporation and New Holland, Inc., Civil Action 84-10665, (N.D. Ill.) (Co-counsel in action defending against charge of patent infringement through jury trial)
• Hedlund Manufacturing Co., Inc. v. Sperry Corporation and New Holland, Inc., Civil Action No. 85-7391 (E.D. Pa.) (Co-counsel in action defending against charge of patent infringement)

Speaking Engagements and Presentations

Mr. Conklin has participated in panels pertaining to intellectual property and has been quoted in news articles. He also has spoken at conferences and at seminars sponsored by professional organizations, clients, and the United States government.

Mr. Conklin’s recent public speaking engagements and presentations include the following:

• Moderator for panel discussion at Lexis/Nexis 2nd Annual Conference on Corporate Intellectual Property in China - April 2007
• Monthly presentations concerning different aspects of Intellectual Property Law in 2006-07 as part of the Illinois Technology Association’s "Legal Luncheon" series
• Panelist for United States Commerce Department Webinar: Tips for Small and Medium-Sized Enterprises on Protecting Intellectual Property; May 31, 2007
• Hour-long live radio interview with David Inge, host of “Focus 580” regarding current issues in Intellectual Property Law, which was broadcast by WILL-AM radio station, Urbana Illinois, (affiliated with University of Illinois and National Public Radio) on June 11, 2007

Bar Admissions and Registrations

• Illinois, 1983
• Registered to practice before the U.S. Patent and Trademark Office
• Ohio, 1978

Courts

• U.S. Court of Appeals for the Federal Circuit
• U.S. District Court for the Northern District of Illinois
• Illinois State Courts

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