John P. Donohue Jr.

Partner

Philadelphia
T 215.564.8367  |  F 215.568.3439

"John Donohue...is recommended for his 'ethical and smart practice.'"

— Chambers USA 2012

John Donohue concentrates his practice on litigation and counseling in the areas of patents, trademarks, and copyrights. John has litigated and resolved high-stakes, multi-party disputes and has appeared in several federal district courts, before the International Trade Commission, and the International Court of Arbitration in London. Working with high technology clients in the computer, software, telecommunications, electronics, robotics, and automated control systems industries, John draws on his own experience as in-house counsel to help shape his counseling perspective. John also brings to his practice insight gleaned as a law clerk, as a public defender, and as lead and assisting trial counsel. Through this work, John has achieved an invaluable level of insight into the mindset of judges and juries, and the courtroom process.

John has been recognized by Chambers USA: America’s Leading Lawyers for Business as a "Leading Lawyer" for intellectual property litigation since 2003. He has been described by his peers as a "practical and straightforward attorney with excellent leadership skills" (2008) and an "eloquent trial lawyer" (2009).

Select Experience

  • Represented SAS company prosecuting claims of patent infringement against former licensee. During the course of the litigation, the litigation was stayed to permit the defendant to pursue a petition for post-grant review of the subject patent. The matter was tried before the Patent Trial and Appeal Board at the USPTO. The decision is pending.
  • Defended a manufacturer of consumer products in an aggressively pursued patent infringement action. The action was brought by an arch competitor over the importation and sale of a product manufactured in China. Following many months of litigation, the case ended via court ordered mediation in a walkaway dismissal.
  • Defended a manufacturer of active optical cables in an investigation by the International Trade Commission. Somewhat typical for ITC investigations, multiple companies and witnesses located in several different countries were involved. The decision is pending.
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Experience

  • Represented SAS company prosecuting claims of patent infringement against former licensee. During the course of the litigation, the litigation was stayed to permit the defendant to pursue a petition for post-grant review of the subject patent. The matter was tried before the Patent Trial and Appeal Board at the USPTO. The decision is pending.
  • Defended a manufacturer of consumer products in an aggressively pursued patent infringement action. The action was brought by an arch competitor over the importation and sale of a product manufactured in China. Following many months of litigation, the case ended via court ordered mediation in a walkaway dismissal.
  • Defended a manufacturer of active optical cables in an investigation by the International Trade Commission. Somewhat typical for ITC investigations, multiple companies and witnesses located in several different countries were involved. The decision is pending.
  • Represented a financial investment firm prosecuting claims of trademark infringement against a major bank. During the course of the litigation, it was discovered that hundreds of millions of dollars had been deposited during the time the alleged infringement occurred. Following court ordered mediation, the matter resolved in a significant lump sum payment to the trademark owner.

Recognitions

  • Donohue Jr, John PChambers USA: Intellectual Property in Pennsylvania (2003 to 2014)
  • The Best Lawyers in America© (2006 to present)
    Copyright 2013 by Woodward/White, Inc., of Aiken, SC
    • Philadelphia: Litigation – Intellectual Property
    • Philadelphia: Litigation – Patent
  • Pennsylvania "Super Lawyer" (2004 to 2014)
  • Martindale-Hubbell: AV Preeminent

Memberships

  • Litigation Counsel of America: Fellow
  • American Bar Association: Litigation Section
  • American Intellectual Property Law Association
    • Federal Litigation Committee
    • Electronic and Computer Law Committee
  • Federal Circuit Bar Association: Rules Committee
  • Intellectual Property Owners
    • Patent Law (U.S.) Committee (2007)
  • Montgomery County Bar Association
  • Philadelphia Bar Association
  • Philadelphia Intellectual Property Law Association

Services

Prior Positions

  • Benjamin Franklin American Inn of Court: President (2002 to 2003)
  • Nordis Corporation: In-house Counsel

Admissions

  • U.S. Court of Appeals, Federal Circuit
  • U.S. Court of Appeals, Third Circuit
  • U.S. District Court, Eastern District of Pennsylvania
  • U.S. Patent and Trademark Office, Registration No. 29,916
  • Pennsylvania

Education

  • LL.M., Trial Advocacy, Temple University School of Law, 1997
  • J.D., New England School of Law, 1977
  • B.E.E., University of Dayton, 1974