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John A. Dragseth

John A. Dragseth

www.fr.com
Principal
Fish & Richardson P.C.
Minneapolis, Minnesota

Practice Areas

Appellate
Licensing
Patents

Technology Areas

Bioinformatics
Business Methods
Electrical Engineering
Mechanical Engineering
Software
Internet
Telecommunications
Wireless Services

Education

University of Minnesota B.S. Mechanical Engineering 1992 summa cum laude, Tau Beta Pi
University of Minnesota Law School J.D. 1996 magna cum laude, Order of the Coif
Managing Editor, Minnesota Law Review

Professional Experience

John Dragseth is a principal of Fish & Richardson P.C. His practice emphasizes complex analytical and writing work in patent law—including federal appeals, patent prosecution, pre-suit and due diligence investigations, and patent opinions. He writes and lectures frequently on a variety of patent law topics. Mr. Dragseth has led the briefing on more than 30 appeals to the U.S. Supreme Court and the U.S. Court of Appeals for the Federal Circuit, where he was previously a law clerk to the Honorable Raymond C. Clevenger III. He has extensive experience in taking over cases on appeal and framing them for the Federal Circuit, while working closely with trial counsel. As part of his appellate practice, he frequently consults with trial teams to ensure that they are properly preparing their cases for the best result on appeal. Mr. Dragseth focuses on technologies in the fields of medical devices, software, electronics, and business methods. He grew up on a small grain and sugar beet farm and was a law clerk at Honeywell Inc. (1994-1995), and a consulting project engineer in the medical group at Ellerbe Becket, Inc. (1991-1993).

Software/Business Method Experience

AJAX techniques, search engines, mobile devices, on-line payment systems, computer graphics and modeling (CAD/CAM), communications protocols, databases, e-commerce applications, process control, fraud prevention, test case management, location-based services, ATM machines, fraud detection, product activation, digital signal processing, enterprise resource planning (ERP), securitization techniques, currency inventory management, various investment vehicles, and ATM machine operation.

Medical Device Experience

Biopsy devices and methods, cryotreatment of tissue, defibrillators (implantable and external), blood centrifuges, infusion pumps, stents, surgical tools, endoscopic instruments, medical uses of ultrasound, pacing technologies, catheters, heart remodeling devices, implantable heart pumps, medical scanners, nucleic acid microarrays, surgical drapes, bandages, electronic stethoscopes, telemetry systems, blood analysis chips, implantable sensors, and molecular modeling systems.

Electronics Experience

Wireless communications, computer hardware, networking (NICs, switches, routers, and digital cross-connects), semiconductor processing, telephone systems (telephone sets, PBX’s, and IVR’s), passive infrared detectors, and GPS.Wireless communications, computer hardware, networking (NICs, switches, routers, and digital cross-connects), semiconductor processing, telephone systems (telephone sets, PBX’s, and IVR’s), passive infrared detectors, and GPS.

Recent Appellate Examples

Obtained complete reversal for our client (the patent owner) on 10 separate issues on which district court had granted summary judgment for opponent. Also obtained affirmance on all four issues raised by opponent. Case is now on remand with a set trial date. The technology relates to computer architecture. Took over responsibility for appeal from another firm.

Was lead counsel at U.S. Supreme Court opposing petition for certiorari after obtaining full reversal of summary judgment entered against client 3M. On remand, 3M won a judgment of infringement after a jury trial. The Federal Circuit’s precedential opinion centered around claim construction. The technology was repositionable adhesive signage. 3M Innovative Properties Co. v. Avery Dennison Corp., 350 F.3d 1365 (Fed. Cir. Dec. 2, 2003).

Obtained full reversal of judgment previously entered against client R.E. Service Co. (and against company’s founder personally) before the en banc Federal Circuit, in a case that solidified the “disclosed but unclaimed subject matter” limitation to the doctrine of equivalents. Johnson & Johnston Associates v. R.E. Service Co., 285 F.3d 1046 (Fed. Cir. Mar. 28, 2002) (en banc). Took over responsibility for appeal from another firm.

Obtained full reversal (on six separate issues) and reinstatement of jury verdict and damage award for client Mentor. The technology was use of ultrasonic technology in medical procedures. Mentor H/S, Inc. v. Medical Device Alliance, 244 F.3d 1365 (Fed. Cir. 2001). Took over responsibility for appeal from another firm.

Led briefing in appeal that secured full affirmance of a jury verdict of noninfringement in favor of client Sunny Fresh Foods. (a Cargill company). The plaintiff had sought over $100 million in damages but ultimately obtained none; it instead paid substantial costs to Sunny Fresh. The technology was liquid egg pasteurization techniques. Sunny Fresh Foods, Inc. v. Michael Foods, Inc., 2005 WL 858015 (Fed. Cir. Apr 15, 2005). Took over responsibility for appeal from another firm.

Obtained affirmance of substantial attorney fees award to client Acorn Mobility in case announcing that a patent applicant must explain a failure to disclose highly material information to the Patent Office when the applicant is charged with inequitable conduct. Technology was home stairlifts for handicapped individuals. Bruno Independent Living Aids, Inc. v. Acorn Mobility Services, Ltd., 394 F.3d 1348 (Fed. Cir. Jan. 11, 2005).

Obtained summary affirmance of judgment in favor of Medtronic in case relating to blood centrifuges. Haemonetics Corp. v. Medtronic, Inc., 2001 WL 246394 (Fed. Cir. Mar. 9, 2001).

Obtained significant reduction in a verdict against client in case involving air filter indicators for automobiles. Engineered Products Co. v. Donaldson Co., 2005 WL 2090662 (Fed. Cir. Aug 31, 2005).

Representing Sandel Avionics in appeal after district court found Sandel not liable for infringing patents on Ground Proximity Warning Systems (GPWS) for aircraft. Honeywell Int’l Inc. v. Universal Avionics Sys. Corp., Docket Nos. 05-1112, 1151, 1152. Oral argument occurred Summer 2006.

Representing Universal Avionics in appeal of case relating to GPWS systems. Honeywell Int’l Inc. v. Universal Avionics Sys. Corp., Docket Nos. 06-1406, - 1435. Currently in briefing.

Representing Microsoft in appeal after jury trial in z4 Technologies, Inc. v. Microsoft Corp., Docket No. 2006-1638, currently in briefing. Technology relates to activation of software.

Representing Google, Inc. in appeal from summary judgment of noninfringement. Technology relates to medical records software. Hyperphrase Technologies, LLC v. Google, Inc. Docket No. 2007-1125. Currently in briefing.

Representing 3M in appeal from jury verdict finding infringement of 3M’s patent on repositionable commercial graphics (e.g., the large graphics placed on the sides of buses and subway cars). 3M Innovative Properties Co. v. Avery Dennison Corp., Docket No. 2007-1040. Currently stayed pending resolution of certain issues in district court.

Was lead appellate counsel for Fresnel in appeal from successful trial finding infringement of Fresnel patent relating to plastic fresnel lenses for applications such as passive infrared (PIR) motion detectors. Fresnel Technologies, Inc. v. Rokonet Industries, Inc., Docket No. 04-1067 (Fed. Cir. 2004). Case settled favorably during briefing.

Block Financial Corp. v. Yodlee, Inc., Docket No. 04-1136 (Fed. Cir. 2004) - represented defendant Yodlee on appeal from summary judgment of noninfringement in trial court. Case settled favorably after successful oral argument.

Glaxo Group Ltd. V. Kali Labs., Inc., Docket No. 06-1026 (Fed. Cir. 2006) – represented defendant in a case relating to the doctrine of anticipation by inherency. Technology was an anti-enemic known as ondansetron. Case settled favorably after oral argument.

Hyperphrase Technologies, LLC v. Microsoft Corp., Docket No. 04-1036 (Fed. Cir. 2004) - represented defendant Microsoft Corporation on appeal after summary judgment of noninfringement in trial court. Case settled favorably during briefing.

Alcatel USA, Inc. v. Cisco Sys., Inc. Docket No. 03-1518 (Fed. Cir. 2003) – represented Alcatel in appeal involving software for digital cross-connects. Parties agreed to arbitration while appeal was in briefing.

Mentor H/S, Inc. v. Medical Device Alliance - represented Mentor in appeal filed by, and dismissed by, opposing party. Docket No. 02-1122 (Fed. Cir.) (dismissed Apr. 10, 2002).

Bell Communications Research, Inc. v. Fore Systems, Inc. - represented Fore Systems in appeal from judgment of noninfringement in Fore's favor. Kinik v. ITC, 362 F.3d 1359 (Fed. Cir. 2004) – drafted combined petition for rehearing and rehearing en banc for intervenors 3M Innovative Properties Company and 3M.

AT&T v. Microsoft Corp. – filed amicus brief with United State Supreme Court on behalf of Autodesk Corp., arguing that 35 U.S.C. § 271(f) does not apply to copies of computer programs made outside the United States.

KSR Int’l Co. v. Teleflex, Inc. – drafted U.S. Supreme Court amicus brief for 3M that was filed by 3M, General Electric, Proctor & Gamble, DuPont, and Johnson & Johnson, relating to the “motivation to combine” requirement of 35 U.S.C. § 103.

Medimmune, Inc. v. Genentech, Inc. – drafted U.S. Supreme Court amicus brief for 3M that was filed by 3M, General Electric, Proctor & Gamble, and DuPont, relating to the predicates for declaratory judgment jurisdiction in the context of patent license agreements.

Knorr-Bremse Systeme Fuer Nutzfahrzeuge GmbH v. Dana Corp. - filed amicus brief with the en banc Federal Circuit on behalf of Microsoft Corporation, advocating more restrained application in certain circumstance of the inference that a patent defendant's infringement has been willful.

J.E.M. Ag-Supply v. Pioneer Hi-Bred Int’l, Inc. - filed amicus brief with U.S. Supreme Court for Cargill in support of victorious party Pioneer. The appeal addressed whether sexually-reproducing plants should be eligible for utility patent protection.

Schism v. United States – was lead counsel for Disabled American Veterans (DAV) and the National Organization for Veterans Advocates (NOVA), pro bono before Federal Circuit and U.S. Supreme Court. The appeal centered around the Government's refusal to pay promised benefits to thousands of career soldiers.

Have consulted on numerous other litigations – before, during, and after appeals – for Fish & Richardson litigation teams and teams from other firms.

Selected Publications and Presentations

  • "Patents: A Historical Perspective," manuscript of casebook co-authored with Frank P. Porcelli, the John A. Reilly Visiting Professor of Patent Law at Harvard Law School.
  • “The Federal Circuit Year Being Reviewed,” Chapter One, The IP Book (Midwest Intellectual Property Institute (2006); “Top Ten Federal Circuit Issues of 2004- 2005,” Chapter One, The IP Book (Midwest Intellectual Property Institute (2005); “Top Ten Federal Circuit Issues of 2003-2004,” Chapter One, The IP Book (Midwest Intellectual Property Institute 2004); “Federal Circuit Year in Review: July 2002 to June 2003,” Chapter One, The IP Book (Midwest Intellectual Property Institute 2003).
  • “Remedies After eBay,” Presentation given in Seoul, Republic of Korea (Dec. 10, 2006).
  • “Recent and Pending Supreme Court Decisions in Intellectual Property,” Suffolk Law School (Oct. 5, 2006) (with Frank Porcelli).
  • “Infringement Licensing from a Licensee Perspective,” Hot Topics in IP Licensing 2006 (Minn. CLE) (June 9, 2006).
  • “Substantive Issues for Pre-Suit Investigations,” Minn. CLE (Feb. 2006). “Are Patent Attorneys Environmentalists? Post-Sale Restrictions on Use and Re- Use of Medical Devices,” Patent Protection for Medical Devices (Minn. CLE) (May 17, 2004).
  • “Update on Attorney Opinion Issues in Patent Litigation ,” Chapter Fourteen, The IP Book (Midwest Intellectual Property Institute 2003).
  • “Claim Drafting in Contemplation of Implied License and Exhaustion Issues,” AIPLA Spring Meeting (May 14, 2003).
  • “10 Best and Worst Patent Cases,” Houston Intellectual Property Law Ass’n (Sept. 27, 2002) (with Frank Porcelli).
  • “The 2001 Federal Circuit Year in Review: Patents,” Technology Law Alert (Jan. 2002).
  • “The Price of Security: The USA Patriot Act and Technology-Based Businesses,” Technology Law Alert (Dec. 2001).
  • “The Unappealing Prospect of a Federal Circuit Cross-Appeal,” Technology Law
    Alert (Mar. 2001).
  • “Intellectual Property Law Catches Up With the Internet,” Technology Law Alert
    (Feb. 2001).
  • “The Coming Scourge [sic, Surge] of Internet Patents,” wallstreetlawyer.com
    Magazine (Apr. 2000).
  • “Patenting Methods of Doing Business: After State Street and AT&T, It's the
    Law,” wallstreetlawyer.com Magazine (May 1999).
  • “Coerced Waiver of the Attorney-Client Privilege for Opinions of Counsel in
    Patent Litigation,” 80 Minn. L. Rev. 167 (1995).
  • “Patently Good Publicity,” IP Law & Business (May 2006) (quoted); “Lawyers
    Turn to Old Websites for Evidence,” Mass. Lawyers Weekly (Aug. 29, 2005)
    (quoted); “Panel Tosses the Dictionary in Patent Cases,” San Francisco Daily J.
    (July 13, 2005) (quoted).

Bar admissions

Registered to practice before the United States Patent and Trademark Office.
Admitted to the bar in Minnesota, the United States District Courts for the
districts of Minnesota and Colorado, the United States Court of Appeals for the
Federal Circuit, and the United States Supreme Court.

Additional information

Editor-in-Chief, Technology Law Alert (M. Lee Smith Publishers) (2000-2002).
National Champion, 1996 Giles S. Rich Intellectual Property Moot Court
Competition.
Former Co-Chair, Litigation Committee, Minnesota Intellectual Property Law
Association Cargill Award recipient.