John Augustyn

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John Augustyn

Overview

John Augustyn represents clients in high stakes intellectual property litigation, client counseling, and prosecution.  Leveraging his prior experience in management and as an engineer at Fortune 100 companies, John understands that business issues require creative and cost effective legal solutions.

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Litigation
John has been lead counsel in patent and trade secret litigations throughout the country at the trial and appellate levels. He also has been lead counsel in Post Grant proceedings at the USPTO and coordinated post grant proceedings in other countries.  In addition, he has litigated cases at the International Trade Commission. His litigation experience has involved several areas, including electronics, magnetics, sensors, control systems, medical devices, printing processes, agricultural equipment, manufacturing equipment, automotive equipment, fuel storage, and consumer products. Representative matters are provided below. John has presented over 10 CLE programs on litigation to hundreds of corporate and outside counsel.

Opinions
John counsels and renders opinions on patent infringement and invalidity including major product launches in competitive patent landscapes. These opinions often involve large patent families with multiple US patents and with existing litigations and patent office proceedings throughout the world. Representative matters are provided below.

Patent Prosecution
He has extensive experience in formulating patent strategies and managing patent portfolios. John manages the US and non-US patent prosecution for several international corporations. He has prepared or supervised the preparation of over 1000 US original patent applications and oversaw the prosecution of over 3000 non-US patent applications.  In addition, John has presented over 15 CLE programs on patent prosecution to thousands of corporate and outside counsel.

Due Diligence
John performs due diligence for mergers and acquisitions involving various technologies. The due diligence often involves an analysis of the patents, trademarks, trade secrets, licenses, agreements, software, marketing, manufacturing processes, and standards by standard setting organizations. Representative matters are provided below.

IP Agreements
He successfully negotiates and prepares agreements relating to well-known products and brands for both the seller/ licensor and the buyer/ licensee, including patent licenses, technology licenses, trade secret agreements, joint venture agreements, trademark agreements, and research and development agreements. John has presented over 5 CLE programs on IP Agreements to hundreds of corporate and outside counsel.

Trade Secrets
John advises clients on trade secret matters including: litigating trade secret cases, negotiating trade secret agreements, advising clients on the best techniques for protecting their trade secrets, and helping clients decide whether to use trade secret versus patent protection.  In addition, John has presented over 5 CLE programs on trade secrets to hundreds of corporate and outside counsel.

Education
John Augustyn received a B.S. in Engineering, with honors, from the Illinois Institute of Technology and attended on an athletic scholarship for soccer. He received a J.D. degree from Loyola University Chicago, where he graduated at the top 10% of his class. In law school, he received several awards for scholarship and writing, and was on the National Moot Court Team.

Articles and Lectures
He has authored several articles and chapters for books, has appeared on multiple television and radio programs, and has provided over 30 CLE programs to thousands of attorneys.

Teaching
In the evenings, he was an instructor at Loyola University Chicago School of Law for over five years. In addition, he was the advisor of the Intellectual Property Moot Court Team at Loyola University Chicago for over fifteen years. John has also been a guest instructor at Northwestern University School of Law.

Corporate Experience
Prior to attending law school, he worked as an engineer at a Fortune 100 company in the areas of Design Engineering, Manufacturing Engineering, and Test Engineering. He is an inventor on several US patents. He also was the Simulation and Logistics Manager at a 1000 person facility for a Fortune 100 company.

Law Firm Leadership
John has served several terms as a member of the board of the firm and serves on various committees of the board.

 

Experience

U.S. Courts and International Trade Commission

  • Amgen, Inc. v. Sanofi, U.S. Supreme Court, Counsel for Amicus Curiae, Intellectual Property Law Association of Chicago.
  • Octane Fitness, LLC, v. Icon Health & Fitness, Inc., Counsel of Record in U.S. Supreme Court, Amicus Curiae for Intellectual Property Law Association of Chicago.
  • Expert Witness on US patent prosecution practice. Parties and subject matter are confidential.
  • D3 Enterprises v. EJOT Fastening Systems, lead counsel, successfully briefed and argued claim construction which led to settlement for client. Patent family involved 9 US Patents and 15 US patent applications for solar products.
  • United States Department of Justice, Antitrust Division, Intellectual Property Consultant and Expert Witness, parties and subject matters are confidential.
  • In the Matter of Certain Acousto-Magnetic Electronic Article Surveillance Systems, Components Thereof, And Products Containing Same, US International Trade Commission, obtained favorable settlement for the clients days before trial involving patents for electronic article surveillance devices. Concurrent proceedings involving patent infringement and invalidity in Europe and China.
  • Allwine v. Globe Motors, lead counsel, obtained a favorable settlement for the client shortly before trial involving patent infringement of electronics and sensors for vehicles.
  • U-Fuel, Inc. v. Highland Tank & Manufacturing Company, Inc. et al., lead counsel, after winning a several day hearing on a request for a preliminary injunction, obtained a favorable settlement for the client involving patent infringement for storage tank technology and standards by a standard setting organization.
  • Battat, Inc. v. Binney & Smith Inc. (Crayola), lead counsel, obtained favorable settlement for patent owner (Crayola), alleged infringer agreed to stop selling product and redesign product.
  • Senmed, Inc. and Ethicon, Inc. v. Richard-Allan Medical Industries, Inc., co-lead counsel, client obtained favorable settlement involving patents for medical devices.
  • Hoover Containment Systems v. Steel Tank Institute et al., co-lead counsel, represented over 50 defendants, obtained a favorable license for clients involving patents for storage tank technology.
  • Hallmark Cards, Inc. v. Noma International Inc. et al., co-lead counsel, obtained a favorable settlement for patent owner (Hallmark Cards) shortly before trial. Concurrent post grant proceedings.
  • Giftec Ltd. v. Hallmark Cards and Willitts Designs International, Inc., co-lead counsel, obtained favorable settlement for Hallmark Cards and Willitts.
  • Ethicon Endo-Surgery v. Richard-Allan Medical Industries, Inc., co-lead counsel, represented defendant at trial in district court and at Court of Appeals for the Federal Circuit, favorable settlement for client involving patents for medical devices.
  • In the Matter of Certain Power Transmission Chains, Chain Assemblies, Components Thereof, And Products Containing The Same, US International Trade Commission, involving patents and trade secrets for vehicle transmissions.
  • Fleischer Mfg. Co. v. Sukup Mfg. Co., co-lead counsel, obtained favorable settlement for client shortly before trial involving patent infringement of agriculture equipment.
  • Behn v. Sukup Manufacturing Co., co-lead counsel, obtained favorable settlement for client shortly before trial involving trade secrets for agriculture equipment.
  • Beatrice Foods Co. v. New England Printing and Lithographing Co., represented client at trial in district court and at Court of Appeals for the Federal Circuit involving patent infringement of printing technology.
  • Rockwell Graphic Systems, Inc. v. DEV Industries, Inc. et al., represented Rockwell in the district court and Court of Appeals for the Seventh Circuit involving trade secrets for printing industry.

Additional representative matters available upon request.

Opinions and Due Diligence

  • Control Systems and Software- Analyzed over 600 US and non-US patents and applications relating to control systems, software, chemical reactions, and product design for freedom to operate of a major product launch for a new technology
  • Semiconductor Manufacturing- Assessed over 450 US patents and applications relating to semiconductor manufacturing technology for acquisition due diligence and freedom to operate.
  • Fiber Optics- Analyzed over 200 US and non-US patents and applications relating to fiber optic technology for acquisition due diligence and freedom to operate.
  • Semiconductor Circuitry- Analyzed over 51 US and non-US patents and applications relating to semiconductor circuitry for freedom to operate. The patents were involved in 29 litigations and 16 reexamination proceedings.
  • Vehicle Technology- Prior to John’s involvement, the product was found to willfully infringe, and the damages were over $30 million. John was engaged by the company and led the redesign of the product which was acceptable to the market and did not violate the permanent injunction. The patent family included 17 US patents and 25 US patent applications. The claims were subject to three inconsistent claim construction orders from three different litigations.
  • Consumer Product- Analyzed over 67 US and non-US patents and applications for due diligence in a corporate acquisition valued at over $200 million. Also evaluated trademarks, trade secrets, licenses, agreements, software, marketing, and manufacturing processes.
  • Medical Devices – Performed IP Due Diligence in a corporate acquisition valued at over $100 million.  Evaluated patents, trademarks, trade secrets, licenses, agreements, IT, software, marketing, and manufacturing processes.

Patent Prosecution

  • Extensive experience in formulating patent strategies and managing patent portfolios.
  • Manages the US and non-US patent prosecution for several international corporations.
  • Prepared or supervised the preparation of over 1000 US original patent applications for several different technologies for numerous clients.
  • Oversaw the prosecution of over 3000 non-US patent applications related to the US applications.

Additional representative matters available upon request.

Education

  • Loyola University Chicago, J.D.
    • National Moot Court Team
    • First Place Intra-School Moot Court Competition
    • Five American Jurisprudence Awards for highest grade in five classes
    • First Place in ASCAP Legal Writing Competition
    • Jessup International Law Moot Court Team
  • Illinois Institute of Technology, B.S. in Engineering, with honors
    • Tau Beta Pi Engineering Honor Society
    • Athletic Scholarship for soccer

Admissions

  • Illinois
  • Registered to practice before the U.S. Patent and Trademark Office

Courts

  • U.S. Supreme Court
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. Court of Appeals for the Seventh Circuit
  • U.S. District Court for the Northern District of Illinois
  • U.S. District Court for the District of Colorado

Honors

  • Selected by Intellectual Asset Management to IAM Patent 1000
  • Named in the Illinois Super Lawyers list (Top 5%), Intellectual Property (member of Advisory Panel)
  • Selected to Best Lawyers by U.S. News and World Report
  • Selected as America’s Top 100 High Stakes Litigators in Illinois
  • Selected as a Fellow to Litigation Counsel of America
  • Selected by his peers as a Top Rated Lawyer in Litigation (Top 5%) – Martindale-Hubbell
  • Recognized as America’s Most Honored Professionals (Top 1%)
  • AV® Preeminent™ Peer Review Rated (Highest Rating) – Martindale-Hubbell
  • Selected by peers as a Leading Lawyer in Intellectual Property Law – Leading Lawyers Network (member of Advisory Board)
  • Listed among the Top Lawyers in Illinois in Intellectual Property Law (Top 5%) – Chicago Lawyer
  • Selected as a Top Rated Lawyer in “Commercial Litigation” (Top 5%) by American Lawyer Media
  • Recognized as a Top Attorney (Top 5%) in Illinois in Chicago Magazine
  • Selected as a member of 7 Figure Litigators
  • Recognized as Legal Leader (Top 5%) in National Law Journal

Professional Affiliations

  • The Richard Linn American Inn of Court
    • Review Board, Mark T. Banner Scholarship which Promotes Diversity in IP Law
    • Chair – Mock Trial CLE Program
  • Illinois State Bar Association: Intellectual Property Section
    • Former Chair
    • Former Vice Chair
    • Former Secretary
  • American Intellectual Property Law Association (AIPLA)
  • American Bar Association (ABA)
    • ABA Advisory Counsel
    • Intellectual Property Section
  • Intellectual Property Law Association of Chicago (IPLAC)
    • Amicus Committee
  • Intellectual Property Owners Association (IPO)

Community Involvement

  • Volunteer for two local food pantries
  • Volunteer at neighborhood homeless shelter
  • Judge for State Science Fair
  • Coach and volunteer for youth sport teams
  • Volunteer for school events
  • Volunteer for Girl Scout STEM Projects
  • Mentor to over 30 law school students
  • Member of the Scholarship Committee for the Linn Inn Scholarship which promotes diversity in IP law

Articles, Publications & Lectures

  • Co-host and Speaker, An Analysis of Patent Enablement in Amgen v. Sanofi (US Supreme Court 2023), Chicago Bar Association, January 24, 2023. John is Counsel on the Supreme Court brief for Amicus Curiae, Intellectual Property Law Association of Chicago.
  • Co-host and Speaker, Structuring Agreements to Preserve Trade Secrets: Employment Agreements, Non-Disclosure Agreements, and Trade Secret Licenses, Strafford CLE Webinar, January 10, 2023.
  • Co-host and speaker, “IP License Compliance Reviews and Audits: How to Protect IP Rights, Double Royalty Income or Pay No Royalties” Strafford CLE Webinar, December 14, 2022.
  • Co-host and speaker, “Structuring Patent Licensing Agreements: Avoiding Litigation, Allocating Risk and Maximizing Patent Value,” Strafford Webinar, October 25, 2022.
  • Co-host and speaker, “Patent Licensing: A Deep Dive Into Licensing Landmines,” Strafford Publications webinar, February 24, 2022.
  • Co-host and speaker, “Licensing Trade Secrets:  Risks, Benefits, and Best Practices for License Terms,” Strafford Publications webinar, August 26, 2021.
  • Co-host and speaker, “Structuring Patent Licensing Agreements: Maximizing Patent Value,” Strafford Publications webinar, November 19, 2020
  • Co-Chair, “Mock Trial: Closing Arguments and Jury Deliberations,” presented by the Richard Linn American Inn of Court on October 22, 2020.  The Honorable Richard Linn, US Court of Appeals for the Federal Circuit, presided over the mock trial.
  • Co-host and speaker, “Structuring Patent Licensing Agreements: Avoiding Litigation, Allocating Risk and Maximizing Patent Value,” Strafford Publications webinar, May 21, 2019
  • Co-Chair, “Mock Trial: Closing Arguments and Jury Deliberations,” jointly presented by the Richard Linn American Inn of Court and the Intellectual Property Law Association of Chicago on May 16, 2019.  The Honorable Richard Linn, US Court of Appeals for the Federal Circuit, presided over the mock trial.
  • “Local patent rules see some changes,” Chicago Daily Law Bulletin, January 4, 2019
  • Speaker, “Negotiating Patent and Technology License Agreements” for the Certified Patent Valuation webinar on September 28, 2018
  • Speaker, “Best Practices in Patent Prosecution,” AIPLA Annual Meeting, October 25, 2018, Washington D.C.
  • Speaker, “Patent Prosecution and Portfolio Management,” IP Defense Summit, May 17, 2017. The program focused on strategies and best practices for developing a strong portfolio in a cost effective manner which is aligned with business goals.
  • Moderated a panel of in-house counsel on “Global IP Protection and Enforcement” at the In-House Innovates Super Conference on November 16, 2016. The program provided recommendations on protecting and enforcing a cost-effective IP program globally including discussion of patent, trademark, copyright, trade secret protection and litigation.
  • Co-host and speaker, “Wearable Technology: Protecting IP Rights and Minimizing Infringement Risks” (Utility Patents, Design Patents, Trademarks, Trade Dress, Trade Secrets, Copyrights, Internet of Things, Data Security and Privacy) Strafford Publications webinar, August 23, 2016
  • “New Trade Secrets Act Expands Owner’s Right to Pursue Thieves,” Chicago Daily Law Bulletin, August 18, 2016
  • Co-host and speaker, “The Defend Trade Secrets Act of 2016: Leveraging the New Federal Framework to Protect IP,” Strafford Publications webinar, July 26, 2016
  • Speaker, “Patent Prosecution: How to develop Cost Effective & Winning Prosecution Strategies,” The Knowledge Group webinar, May 13, 2016
  • Co-host and speaker, “Structuring Patent Licensing Agreements: Avoiding Litigation, Allocating Risk and Maximizing Patent Value,” Strafford Publications webinar, March 24, 2016
  • Speaker, “Significant IP Strategies for Wearable Technology in 2016” (Internet of Things, Data Security and Privacy, Utility and Design Patents, Trademarks, and Trade Secrets), The Knowledge Group webinar, February 5, 2016
  • “Crowdsourcing Innovation Requires Care,” Chicago Daily Law Bulletin, January 19, 2016
  • Speaker, “How to Prove Damages in Patent, Trademark and Copyright Cases,” The Knowledge Group webinar, September 2, 2015
  • “International Trade Commission May Yield Quick Results for Patent Owners,” Chicago Daily Law Bulletin, June 10, 2015
  • “Two Paths to Invalidate a U.S. Patent,” Chicago Daily Law Bulletin, December 3, 2013
  • “Federal Court Amends Local Patent Rules for Electronically Stored Information,” Chicago Daily Law Bulletin, May 16, 2013
  • “Federal Circuit Expands Scope of Method Claims in U.S. Patents,” Chicago Daily Law Bulletin, February 11, 2013
  • Moderated panel on “Patent Claims and Infringement,” Corporate Intellectual Property Law Conference, 2013
  • “Patent Cases May Require Different Evidence to Prove Damages,” Chicago Daily Law Bulletin, August 20, 2012
  • “Patent Office Publishes Proposed Rules, Fees for Changes to U.S. Law,” Chicago Daily Law Bulletin, April 13, 2012
  • Speaker on panel with Chief Judge James Holderman (USDC, ND IL), “Trends from the Courts and the USPTO,” Corporate Intellectual Property Law Conference, 2012
  • “Sweeping Changes Come to U.S. Patent Law,” Chicago Daily Law Bulletin, November 15, 2011
  • Author of Chapter 12, Antitrust and Unfair Competition, IICLE
  • Speaker on panel, “Protecting Trade Secrets,” Corporate Intellectual Property Law Conference, 2011
  • Speaker on panel with Chief Judge James Holderman (USDC, ND IL), “Patent Case Law Update,” Corporate Intellectual Property Law Conference, 2010
  • “Recent Patent Decisions And Their Impact On Your Company,” Corporate Counsel, February 2009
  • Speaker on panel with Chief Judge James Holderman (USDC, ND IL), “Business Implications of Recent Major Patent Cases,” Corporate Intellectual Property Law Conference, 2009
  • Speaker on panel, “Patent Reform,” Corporate Intellectual Property Law Conference, 2008
  • Speaker, Intellectual Property Law, MSNBC, 2007
  • Speaker, “What is a Patent”, a one hour cable television program by the Illinois State Bar Association, August 2001
  • Speaker, “How to Obtain a Patent”, a one hour cable television program by the Illinois State Bar Association, August 2001
  • Speaker, “Best Practices in Web-Enabled Collaborative Product Design”, IQPC Conference, July 2001, San Francisco, CA
  • Speaker, “Establishing a Presence on the World Wide Web: An Internet Primer”, Illinois State Bar Association CLE Program, April 2001
  • Speaker, “Corporate Compliance/Voluntary Disclosure, Intellectual Property”, Illinois State Bar Association CLE Program, January 2001
  • Speaker, “Technology and Competition”, Illinois State Bar Association CLE Program, April 1998
  • Contributor to Chapters 40-42, Negotiations Involving Intellectual Property, Attorney’s Practice Guide to Negotiations
  • “Rule Changes at the U.S. Patent Office,” Intellectual Property Newsletter, Vol. 37, No. 3, March 1998
  • Speaker, “How to Prevent Competitors from Stealing Your Clients’ Products and Services”, Illinois State Bar Association CLE Program, March 1997
  • “Who Would Own The Mona Lisa? Work Made for Hire under present Copyright Law,” CBA Record
  • “High Technology and International Affairs: Export Restrictions, Intellectual Property and Import Restrictions,” 81 Am. Soc’y Int’l L. Proc. 1-26
  • Speaker, “Avoiding Intellectual Property Pitfalls: A Program for the General Practitioner,” Illinois State Bar Association Midyear Meeting
  • Speaker, “Recent Developments in Copyright Law,” American Intellectual Property Law Association Spring Meeting
  • Speaker, “Copyright Registration and Licensing of Computer Technology,” American Intellectual Property Law Association Mid-Winter Meeting

Additional articles, publications & lectures available upon request.

Insights

Education

  • Loyola University Chicago, J.D.
  • National Moot Court Team
  • First Place Intra-School Moot Court Competition
  • Five American Jurisprudence Awards for highest grade in five classes
  • First Place in ASCAP Legal Writing Competition
  • Jessup International Law Moot Court Team
  • Illinois Institute of Technology, B.S. in Engineering, with honors
  • Tau Beta Pi Engineering Honor Society
  • Athletic Scholarship for soccer

Admissions

  • Illinois
  • Registered to practice before the U.S. Patent and Trademark Office

Courts

  • U.S. Supreme Court
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. Court of Appeals for the Seventh Circuit
  • U.S. District Court for the Northern District of Illinois
  • U.S. District Court for the District of Colorado