John S Cipolla

Practice Areas

Patent Litigation

Patent Prosecution

IP and Technology Transactions

Trademark Law

Copyright Law

Antitrust and Trade Regulation Counseling and Litigation

Intellectual Property Litigation

Career

John Cipolla, Calfee Vice Chairman, has 30+ years of experience in patent and trademark law and serves as Co-Chair of the Intellectual Property group, a position he has held for more than 10 years.

John's focus is primarily on complex litigation matters that include patents. John has extensive experience in litigation and dispute resolution in all areas of intellectual property. He also provides clients with counseling and strategy concerning the procurement of patents and trademarks. In addition, John has provided numerous opinions in patent and trademark matters.

John has successfully handled a diverse range of federal and state litigation claims on behalf of both plaintiffs and defendants in the areas of patents, copyrights, trade secrets, product configuration and trademarks. His experience includes managing cases that involve international and multi-national litigation. He has participated and led teams at trial and Markman hearings in federal courts, and he has argued successfully before the Court of Appeals for the Federal Circuit. The past few years, John has led teams in disputes involving both multiple lawsuits and multiple Inter Partes Review (IPR) proceedings before the Patent Trial and Appeal Board.

Using his knowledge and experience, John also helps athletes establish, monetize and protect their Name, Image and Likeness (NIL).

John was previously a featured speaker at a Cincinnati Intellectual Property Law Association meeting where he gave a presentation titled “The State of Patent Law and Possible Upcoming Changes.”

John began working in intellectual property as a Patent and Trademark Coordinator at Bailey Controls in 1985. He began his career as an attorney with Jones Day from 1989-1993. John has served on the Firm’s Management Committee since 2010 and Executive Committee since 2006. He was elected Vice Chair of the Firm in 2021.

Professional Memberships

Cleveland State University College of Law's IP Advisory Council, Chair

American Bar Association, Member

Cleveland Intellectual Property Law Association (CIPLA), Member

National Alliance on Mental Illness (NAMI) of Greater Cleveland, President, Board of Directors

Expert in these Jurisdictions

Ohio

U.S. Patent and Trademark Office

Experience

Manage the entire patent portfolio directed to radiation oncology therapeutics and analytics technology for this publicly traded, multinational company headquartered in California. The portfolio encompasses dozens of seminal patents, particularly in the areas of combining imaging and therapeutic techniques in one integrated device. Due to its extensive scientific and technical background, the Calfee team assists the client at an extremely high technical level. In particular, the team takes an active role helping them secure intellectual property rights on new and developing technologies emerging from its vigorous research group, including drafting and prosecuting its domestic and international patent applications. Calfee works with the company’s scientists and engineers, as well as notable university researchers with whom the company collaborates. Calfee also manages the company’s numerous international applications. (2024)

Defend a high-performance and highly sustainable concrete manufacturer's positions with respect to patent ownership and validity and handle the client company's patent infringement claims. (2024)

Handle all ongoing patent prosecution and IP strategy for a privately held, multinational manufacturing company and serve as lead counsel on an ongoing IP litigation matter in the Southern District of New York. (2024)

Handle patent prosecution and IP strategy, management and strategy of patent and trademark portfolios, and advice on IP strategy and litigation for a publicly traded, Fortune 1000 multinational and global manufacturer. (2024)

Serve as primary IP counsel for a publicly traded, Fortune 1000 manufacturing company and its operating companies with regard to IP clearance and right-to-use and non-infringement analyses and opinions. With regard to procurement, we provide patentability and registrability analyses and opinions. We also prepare, file, and prosecute patent and trademark applications. We also are and have been involved as counsel on several IP litigations for the company. (2024)

Serve as Chief Outside Intellectual Property Counsel for a publicly traded, Fortune 500, multibillion-dollar, multinational holding company with multiple operating companies based in the U.S. and abroad. Calfee is responsible for patent annuity payments on all patent matters and assists many of the operating companies with the prosecution of patent applications, both in the U.S. and abroad. Calfee manages the U.S. trademark and patent work directly and supervises a network of foreign associates when action is required in foreign jurisdictions. Calfee regularly assists the client with enforcement matters involving any aspect of IP, including representing the operating companies in infringement litigation brought by or against them. Calfee also offers primary counsel on the impact of corporate reorganization efforts on the ownership and management of the operating companies’ IP. Calfee IP lawyers also supervise most of the intellectual property due diligence related to the mergers and acquisition activity of the client. Calfee represents the company in several trade secret matters. (2024)

Education

Awards