IP Due Diligence
Patent & Trade Secret Litigation
Fordham University, School of Law - J.D., 1996
Polytechnic University - M.S.M., 1992
Polytechnic University - B.S.E.E., 1990, cum laude
John Moehringer handles complex patent litigation, primarily in the electrical engineering, telecommunications, and computer science fields. In addition to representing clients in patent infringement suits in the U.S. district courts, John also has substantial experience representing clients in the U.S. International Trade Commission. He also counsels clients with respect to various Intellectual Property issues, including IP licensing and transactions, and rendering non-infringement and invalidity opinions.
Prior to joining Cadwalader, John was a partner with Morgan & Finnegan. Before graduating from law school, he worked as an electrical engineer for Grumman Aerospace Corporation. John is currently Chair of the Membership Committee and has served as a Board Member of the New York Intellectual Property Law Association (NYIPLA) and is a member of the New York State Bar Association and the Conner Inn of Court.
John received his J.D. from Fordham University School of Law, where he was a member of the Intellectual Property Law Journal. He received his Bachelor's Degree in Electrical Engineering, cum laude, and his Master's Degree in Engineering Management from Polytechnic University (now NYU-Poly).
- Adaptix Inc. v. AT&T Mobility LLC, (N.D. Cal.): Represented AT&T Mobility in successfully defending allegations of patent infringement related to 4G/LTE wireless networks. District court granted summary judgment of non-infringement of all seven asserted patent claims from the two patents-in-suit on January 20, 2015, and, further, invalidated four of those seven patent claims in a separate opinion on January 23, 2015.
- Beneficial Innovations, Inc. v. Microsoft Corp, (E.D. Texas 2014): Defending Microsoft against allegations of patent infringement related to web-based targeted advertising.
- Adaptix, Inc. v. AT&T, Inc., (N.D. Cal. 2013): Representing AT&T Mobility in a patent infringement action filed by Adaptix concerning LTE technology and the use of channel quality feedback reporting. We successfully secured a transfer from the Eastern District of Texas to the Northern District of California.
- ParkerVision, Inc. v. Qualcomm, Inc., (N.D. Fla. 2011): Representing Qualcomm in multi-patent infringement case related to RF receivers and baseband processing.
- Mobileye, Inc. v. Picitup Corp. (S.D.N.Y. 2012): Representing plaintiff Mobileye in false advertising and intellectual property case involving image processing technology in the automotive industry.
- Development Innovation Group, LLC v. AT&T Mobility, (S.D.Cal. 2011): Defended AT&T Mobility against charges of infringing three patents related to device synchronization, voice commands and power conservation.
- Ganas v. IBM: Defended IBM against allegations of infringement in multi-defendant patent infringement suit in Eastern District of Texas dealing with encoding and firewall technology.
- Broadcom Corp. v. Qualcomm, Inc.: Substituted as counsel of record on the eve of the trial to defend Qualcomm against allegations of infringement by its 3rd Generation baseband processors and proprietary network software. Broadcom alleged that these products infringed telecommunications patents related to video encoding and network switching technologies.
- In The Matter of Certain Computer Products, Computer Components And Products Containing Same: Represented complainant IBM before the International Trade Commission in an infringement proceeding involving several of IBM’s patents related to cooling, power conservation and router technology against respondents ASUSTek Computer, Inc. and ASUS Computer International as well as in a parallel federal district court litigation. While on appeal to the Federal Circuit, the case settled on favorable terms.
- In the Matter of Certain Wireless Communication Devices, Components Thereof, And Products Containing The Same: Represented complainants Ericsson Inc. and Telefonaktiebolaget LM Ericsson in a patent infringement investigation before the International Trade Commission involving wireless telecommunication equipment. The investigation was successfully brought to conclusion through a stipulated dismissal and settlement resolved to the satisfaction of all parties.
- SCO v. IBM: Represented IBM in patent counterclaim involving three patents related to high availability and encoding.
- IBM v. Compuware (S.D.N.Y)/ Compuware v. IBM (E.D. Mich.): Represented plaintiff IBM in the Southern District of New York in a patent infringement litigation involving several of IBM’s patents related to database management, distributed computing and data processing. Also represented IBM in the Eastern District of Michigan defending against Compuware’s claims of trade secret theft, copyright infringement and antitrust violations and in asserting counterclaims of infringement of six patents related to graphical user interfaces, fault detection and system monitoring. The cases were favorably settled.
- Lucent Technologies Inc. v. Micron Technology, Inc.: Represented Lucent in the District of Delaware in asserting several of Lucent’s semiconductor device and fabrication technology patents as well as a breach of license/contract claim. Also represented Lucent in declaratory judgment action of invalidity and non-infringement of several Micron patents covering integrated voice and multi-media telecommunications technology. The team was successful in achieving a rare transfer of Micron’s countersuit from Eastern District of Virginia to Delaware.
- TM Patents v. IBM: Represented IBM against allegations of infringement of four complex computer patents in the area of data storage, memory control and parallel processing data routing. In a case of first impression, the Court ruled that a patentee is collaterally estopped from challenging claim construction rulings obtained in a prior action that was settled before appeal. 72 F. Supp. 2d 370 (S.D.N.Y. 1999) (includes favorable Markman rulings). Our lawyers succeeded in obtaining a ruling that the patent holder lost his rights to the parallel processing data router patent for which he had received government funding when he failed to comply with the government-grant license requirements – resulting in the Government acquiring title. 121 F. Supp. 2d 349 (S.D.N.Y. 2000). IBM won summary judgment dismissing some of the patents following Markman ruling. 121 F. Supp. 2d 349 (S.D.N.Y. 2000). The case settled on the eve of trial on terms highly favorable for the client.
- United States Treasury – GM and Chrysler: Retained by The United States Treasury in connection with the Chapter 11 bankruptcy proceedings for GM and Chrylser and related transactions such as merger agreements, sale agreements, and loan agreements. The firm advised extensively on IP aspects of the bankruptcy, and continued to oversee relevant IP filings in the United States and abroad.