|
John W. Schlicher Summary Resume Professional Experience Luce, Forward, Hamilton & Scripps, 2006-2007 Gray Cary Ware & Freidenrich, 1997-2004 Fish & Neave, 1973-1976 and 1994-1997 Genentech, Inc., Associate General Counsel, 1980-1982 Townsend and Townsend, 1976-1980, 1982-1993 Bar Admissions California, New York, U.S. District Courts for the Northern, Central, Eastern, and Southern Districts of California, U.S. Court of Appeals for the Federal Circuit, U.S. Court of Appeals for the Ninth Circuit, U.S. Supreme Court, U.S. Patent & Trademark Office Patent Litigation Experience John Schlicher has represented companies in patent infringement actions and many other patent disputes for thirty-five years. Those actions involving polymers, diagnostic methods and reagents, molecular sieves, microbial production processes, biotechnology products, medical devices and instruments, analytical and research instruments, image-based document processing systems, computer systems, computer components, video signal processing, digital data recording and processing, data storage media, semiconductor devices, semiconductor processing and equipment, instant photography, office copiers, optometric instruments, and many other areas. Patent Experience He has provided advice and opinions on patents, prepared and prosecuted patent applications, and handled appeals and interferences in the United States Patent and Trademark Office. He has provided advice and opinions for a wide variety of industries and technologies. His work in the Patent and Trademark Office has largely related to matters involving chemistry, biotechnology, pharmaceuticals, and diagnostics. Patent Expert Experience Mr. Schlicher has been retained as a consulting or testifying expert on patents, patent damages, and patent licensing by major law firms. Patent Dispute Resolution and Settlement Experience He has participated in settlement of many patent infringement actions and resolution of many other potential infringement actions. He has served as a mediator in many other infringement actions. He has been appointed by the United States District Court for the Northern District of California to mediate patent disputes. He developed and has used for many years a system to help patent owners and potential patent infringers make economically sensible decisions about settlement of patent litigation and licensing. The system is described in a book recent published by American Bar Association Publishing. Licensing and other IP Transaction Experience He has designed, prepared, and negotiated many research and development, patent license, know-how license, and copyright license agreements involving biotechnology products, pharmaceuticals, software, automated databases, catalysts, document processing systems, semiconductor devices, semiconductor equipment, and others. He wrote and negotiated some of the earliest research, development, and license agreements between biotechnology and pharmaceutical companies (modified versions of which are still in use). He has prepared and negotiated research and license agreements between universities and commercial companies. Antitrust Experience He has advised clients on the antitrust and misuse limits on creating and exploiting intellectual property rights in connection with licensing transaction and litigation matters. He has represented clients in litigation involving patent-related antitrust claims and patent misuse defenses. Education J.D., Stanford Law School (1973)(Research Assistant to Professor William F. Baxter) B.A., Northwestern University (1969)(with highest distinction, chemistry major), Phi Beta Kappa, Sigma Xi (national scientific research honorary society), Phi Lambda Upsilon (national chemistry honorary society) |
|
JOHN W. SCHLICHER |
|
PATENTS, PATENT LITIGATION, PATENT DISPUTE RESOLUTION AND SETTLEMENT, LICENSING, ANTITRUST, LAW AND ECONOMICS |