Sterne Kessler Goldstein Fox
Named 2013, 2014 "IP Star" by Managing Intellectual Property

2014 IP Stars Logo

Jon E. Wright
 

Mind + Muscle

Jon E. Wright

Director

 

Mr. Wright is active in all aspects of the firm’s patent practice, with a focus on contested proceedings before the United States Patent & Trademark Office. He is a recognized leader in complex reexamination and inter partes review practice where there is co-pending district court litigation or a USITC investigation. He is familiar with the challenges faced by both patent owners and third-party requesters in these complex proceedings. 

Mr. Wright is currently involved in over thirty inter partes review proceedings, all on behalf of patent owners. In one of the early success stories for patent owners, Mr. Wright successfully defended a set of four inter partes reviews, securing confirmation of all challenged claims. The involved technologies include semiconductor design and fabrication, digital rights management, RFID, optical switches, and stray voltage detection technologies. Prior to the new AIA proceedings, Mr. Wright represented patent owners in over fifty inter partes and ex parte reexaminations involving concurrent district court or USITC proceedings, including appeals to the Patent Trial and Appeal Board (formerly Board of Patent Appeals and Interferences), and to the Federal Circuit.

Mr. Wright is also an editor of Patent Office Litigation, a two-volume set focused on the new contested proceedings under the America Invents Act published in 2012 by Thomson Reuters Westlaw. This book examines how the proceedings interact with other aspects of patent procurement and enforcement, and delivers practical analysis and advice. Mr. Wright also has extensive experience in the preparation and prosecution of patent applications before the USPTO in technologies ranging from software, hardware (analog and digital), communications, wireless devices and systems, networking, database management, computer memory devices, semiconductor manufacturing, computer graphics and electrical power systems including nuclear technology. His practice also includes complex patent litigation in district courts, and appellate litigation before the Federal Circuit and the Patent Trial and Appeal Board.

Prior to joining Sterne Kessler, Mr. Wright clerked for the Honorable Alvin A. Schall at the U.S. Court of Appeals for the Federal Circuit. And while at George Mason University School of Law, Mr. Wright was the Managing Editor of the George Mason Law Review.

Before law school, Mr. Wright was a Lieutenant in the U.S. Navy and spent seven years on active duty in the Submarine Force. His tour included three years on the nuclear powered fast attack submarine USS TAUTOG (SSN 639), and two years with COMSUBGRU 7 in Yokosuka, Japan. In addition to being a qualified Naval Nuclear Engineer, Mr. Wright also has private industry experience where he worked in semiconductor manufacturing for industry leader International Business Machines.

 

District Court Litigation 

  • JuxtaComm Technologies, Inc. v. Ascential Software Corp.: Patent infringement defense for Sybase Inc., relating to software for transforming and exchanging data between distributed, heterogeneous computer systems.  (Eastern District of Texas)
  • FuzzySharp Technologies Inc. v. ATI Inc.:  Patent infringement defense for ATI relating to advanced computer graphics processing methods and procedures.  (Northern District of California)
  • Stream Theory v. Exent Technologies Inc.: Patent infringement defense for Exent relating to streaming applications over the internet.  (Central District of California)

Appellate Litigation

  • Floyd M. Minks v. Polaris Indus. Inc.:  Patent infringement defense for Polaris in an appeal related to speed limiting circuits for All Terrain Vehicles.  (Federal Circuit)
  • Medtronic Inc. v. Guidant Corp.:  Patent infringement defense for Medtronic in an appeal related to cardiac pacemakers.  (Federal Circuit)
  • In re Jung:  Appeal from the Board of Patent Appeals and Interferences dealing with prima facie anticipation.  (Federal Circuit)
  • Orion IP, LLC v. Hyundai Motor America:  Patent enforcement action on behalf of Orion IP.  (Federal Circuit)
  • Taurus IP, LLC v. DaimlerChrysler Corp. et al:  Patent enforcement action on behalf of Taurus IP, LLC.  (Federal Circuit // Lead Counsel)

Inter Partes Reviews and Reexamination (Representative List)

  • Inter partes review of U.S. Patents Nos. 6,963,859 (IPR2013-00137), 7,139,736 (IPR2013-00138), 7,269,576 (IPR2013-00139), 7,523,072 (IPR2013-00133) – successfully defended family of four patents, securing confirmation of all challenged claims.
  • Inter partes review of U.S. Patent No. 7,225,160 (IPR2013-00134) – secured confirmation of asserted claims at trial initiation phase
  • Inter partes review of U.S. Patent No. 6,058,045 (IPR2014-00113) – successfully convinced Board not to initial trial for any challenged claims. 
  • Reexam of U.S. Patent No. 6,470,405 entitled “Protocol for Communication with Dynamic Memory” on behalf of patent owner.  (Control No. 95/001,178)
  • Reexam of U.S. Patent No. 7,360,050 entitled “Integrated Circuit Memory Device Having Delayed Write Capability” on behalf of patent owner.  (Control No. 95/001,201)
  • Reexam of U.S. Patent No. U.S. Patent No. 90/009,403 entitled "Discrete-Time Sampling of Data for Use in Switching Regulators" on behalf of patent owner.  (Control No. 90/009,403)
  • Reexam of U.S. Patent No. 5,774,670 entitled "Persistent Client State in a Hypertext Transfer Protocol Based Client-Server System" on behalf of third party requester.  (Control No. 90/011,106)
  • Reexam of U.S. Patent No. 5,490,216 entitled "System for Software Registration" on behalf of patent owner.  (Control No. 90/010,831)
  • Representative Matters

      District Court Litigation 

      • JuxtaComm Technologies, Inc. v. Ascential Software Corp.: Patent infringement defense for Sybase Inc., relating to software for transforming and exchanging data between distributed, heterogeneous computer systems.  (Eastern District of Texas)
      • FuzzySharp Technologies Inc. v. ATI Inc.:  Patent infringement defense for ATI relating to advanced computer graphics processing methods and procedures.  (Northern District of California)
      • Stream Theory v. Exent Technologies Inc.: Patent infringement defense for Exent relating to streaming applications over the internet.  (Central District of California)

      Appellate Litigation

      • Floyd M. Minks v. Polaris Indus. Inc.:  Patent infringement defense for Polaris in an appeal related to speed limiting circuits for All Terrain Vehicles.  (Federal Circuit)
      • Medtronic Inc. v. Guidant Corp.:  Patent infringement defense for Medtronic in an appeal related to cardiac pacemakers.  (Federal Circuit)
      • In re Jung:  Appeal from the Board of Patent Appeals and Interferences dealing with prima facie anticipation.  (Federal Circuit)
      • Orion IP, LLC v. Hyundai Motor America:  Patent enforcement action on behalf of Orion IP.  (Federal Circuit)
      • Taurus IP, LLC v. DaimlerChrysler Corp. et al:  Patent enforcement action on behalf of Taurus IP, LLC.  (Federal Circuit // Lead Counsel)

      Inter Partes Reviews and Reexamination (Representative List)

      • Inter partes review of U.S. Patents Nos. 6,963,859 (IPR2013-00137), 7,139,736 (IPR2013-00138), 7,269,576 (IPR2013-00139), 7,523,072 (IPR2013-00133) – successfully defended family of four patents, securing confirmation of all challenged claims.
      • Inter partes review of U.S. Patent No. 7,225,160 (IPR2013-00134) – secured confirmation of asserted claims at trial initiation phase
      • Inter partes review of U.S. Patent No. 6,058,045 (IPR2014-00113) – successfully convinced Board not to initial trial for any challenged claims. 
      • Reexam of U.S. Patent No. 6,470,405 entitled “Protocol for Communication with Dynamic Memory” on behalf of patent owner.  (Control No. 95/001,178)
      • Reexam of U.S. Patent No. 7,360,050 entitled “Integrated Circuit Memory Device Having Delayed Write Capability” on behalf of patent owner.  (Control No. 95/001,201)
      • Reexam of U.S. Patent No. U.S. Patent No. 90/009,403 entitled "Discrete-Time Sampling of Data for Use in Switching Regulators" on behalf of patent owner.  (Control No. 90/009,403)
      • Reexam of U.S. Patent No. 5,774,670 entitled "Persistent Client State in a Hypertext Transfer Protocol Based Client-Server System" on behalf of third party requester.  (Control No. 90/011,106)
      • Reexam of U.S. Patent No. 5,490,216 entitled "System for Software Registration" on behalf of patent owner.  (Control No. 90/010,831)
  • Admissions
      • District of Columbia

      • United States Patent and Trademark Office

      • Virginia

      • Court of Appeals for the Federal Circuit

      • Federal District Court for the District of Columbia

  • Education
    • J.D., George Mason University magna cum laude

    • B.S., Electrical Engineering, University of Vermont