John Flaim
USA Guide 2023
Band 4 : Intellectual Property
Email address
[email protected]Contact number
+1 214 978 3097Share profile
Band 4
About
Provided by John Flaim
Practice Areas
John Flaim is a member of the Firm’s Global Intellectual Property Group. His practice encompasses intellectual property litigation, counseling, licensing and portfolio matters. He has significant experience in patent litigation infringement actions in federal district courts and before the US International Trade Commission.
John recently ended an eight-year term as Chair of the Firm’s Global Intellectual Property Practice Group. He is ranked by Chambers USA 2018 and described as "very intelligent and knows the subject matter and understands it. He's good at being able to deal with opposing counsel." John was also selected as an “IP Star” by Managing IP in 2018, as well as a “Leader” in patents and trademarks by World IP Review.
John's practice focuses on intellectual property litigation. He has significant experience representing multinational clients, as both plaintiffs and defendants, in patent litigations throughout US District Courts and before the US International Trade Commission. Many of the patents litigated by John cover electrical and computer related technologies, such as software, voice messaging, semiconductor processing and circuitry, smart cards, wireless and wireline telecommunication systems, and digital image editing. In the course of his practice, John counsel's clients regarding the infringement, validity and enforceability of patents, including the preparation of formal opinions concerning those issues. John is also experienced in licensing, acquisition, development, and co-development transactions and agreements involving various technologies. In addition, he also advises clients on copyright, patent and trademark matters, including the protection of intellectual property assets and infringement assessments.
Professional Memberships
Intellectual Property Owners Association
International Trade Commission Trial Lawyers Association
International Trademark Association (INTA)
Dallas/Fort Worth Intellectual Property Law Association
State Bar of Texas
Work Highlights
• Secured a win for a leading 3D display provider as complainant at the US International Trade Commission, resulting in a final determination that all asserted claims of three patents-in-suit were valid and infringed by all five of the accused products, and providing for issuance of exclusion and cease-and-desist orders with a 100% bond against respondents.
• Defended a major US location services company in a patent infringement litigation pending in the Eastern District of Virginia, resulting in invalidation of all five asserted patent claims.
• Represented a major US bank in an arbitration proceeding involving theft of trade secrets, finding that the bank's trade secrets had been misappropriated and awarding damages.
• Represented a multinational game developer in a copyright infringement and trade secret misappropriation litigation in the Northern District of California, resulting in a favorable settlement after a preliminary injunction hearing finding a likelihood of success on the merits.
• Secured an injunction for a major US welding equipment manufacturer against a main competitor in a patent infringement case in the Eastern District of Texas.
• Represented a major US bank and a major US provider of banking and payments technology in defense of multiple patent infringement litigation throughout the US.
Education
St. Johns University
J.D., Honors
1992
Manhattan College
B.E. Electrical Engineering, magna cum laude
1989
Expert in these Jurisdictions
USA
Languages Spoken
English, Italian
Industry Sector Expertise
Brand Enforcement
Brand Management
Copyright
Financial Institutions
Industrials, Manufacturing & Transportation
Intellectual Property
IP Disputes
IP Transactions
Patent Disputes
Patent Prosecution
Tax Optimized IP