About Us
Professional Summary
John D. Simmons is an intellectual property attorney and licensed professional engineer in Delaware. His practice focuses on patent, trademark, copyright, trade secret litigation, and IP transactions. He has litigated cases across more than 25 federal districts and regularly appears before the PTAB and TTAB in post-grant and trademark proceedings at the USPTO.
John is also an inventor with patents in instrumentation and software. His technical background spans electrical engineering, process control, power systems, and software systems.
Background
An inventor holding patents related to instrumentation and software, John is an intellectual property attorney. John is currently a licensed professional engineer in the state of Delaware in electrical engineering.
John focuses his practice on intellectual property counseling and litigation, encompassing patent, trademark, copyright, trade secret, and IP licensing matters, as well as IP contract negotiations. John also has extensive experience in patent drafting, due diligence, opinion writing, and licensing.
Admissions & Education
John is admitted to practice before the Supreme Court of Pennsylvania, the U.S. District Court for the Eastern District of Pennsylvania, the U.S. District Court for the Middle District of Pennsylvania, the U.S.
District Court for the Western District of Pennsylvania, the Court of Appeals for the Federal Circuit, the Supreme Court of the United States, the Supreme Court of Delaware, and the United States District Court for the District of Delaware.
He is also registered to practice before the United States Patent and Trademark Office.
He received a bachelor’s degree in electrical engineering from Drexel University, where he was a member of the Eta Kappa Nu honor society of electrical engineers, and received his law degree magna cum laude from Temple University Beasley School of Law, graduating first in his class.
Education
- Temple University Beasley School of Law – J.D., magna cum laude, first in class
- Drexel University – B.S. in Electrical Engineering – Member, Eta Kappa Nu Honor Society
Professional Experience
- Panitch Schwarze Belisario & Nadel LLP – Partner (2011- present), Associate (2008-2010)
- Akin Gump Strauss Hauer & Feld LLP – Associate (2006-2007) & Patent Agent (2001-2006)
- Roberts Filter Manufacturing – Executive Manager (1994-2001)
- John Brown Engineering & Construction – Process Control Engineer (1992-1994)
Career Highlights
John is a registered patent attorney, a licensed professional engineer, and a civil litigator.
He has worked for Panitch Schwarze for twenty-five (25) years as a patent agent and then as a registered patent attorney. The Panitch Schwarze team was formerly part of Akin Gump Strauss Hauer & Feld LLP ("Akin Gump") from 1999-2008. The Panitch Schwarze team spun out of Akin Gump in 2008 and became Panitch Schwarze Belisario & Nadel LLP.
Civil Litigation & IP Defense
John has litigated over one hundred (100) complex civil litigation cases in state and federal court involving patent infringement, trademark infringement, copyright infringement, misappropriation of trade secrets, breach of confidentiality agreements, and the like.
He has litigated such cases in over twenty-five (25) jurisdictions across the United States. He has drafted numerous non-disclosure agreements, confidentiality agreements, and employment agreements.
Engineering & Consulting Roles
John owned and operated Simmons Consultants, LLC, which was an electrical engineering consulting firm, from 1998 to 2017. Simmons Consultants performed electrical system studies on commercial and industrial power systems. He is NFPA certified in arc flash studies.
He was a process control manager and engineer for Roberts Filter Manufacturing from 1994-2001.
Technical & Maintenance Oversight
He was responsible for electrical engineering, a UL508 control panel shop, and plant maintenance. At Roberts, he was responsible for starting up and maintaining manufacturing machinery such as lathes, drill presses, CNC machines, welding machines, and the like. He was also responsible for research and development and intellectual property.
EPC Engineering Role
John was an instrumentation and controls engineer at John Brown Engineering and Construction from 1992-1994. He was responsible for instrumentation, control system, and power system design and startup.
Many of the systems included machinery such as pumps, centrifuges, plastic extruders, chemical reactors, and the like.
Memberships
- Federal Bar Association, Member, 2014 — Current
- Delaware Bar Association, Member, 2014 — Current
- Pennsylvania Bar Association, Member, 2007 — Current
- Philadelphia Bar Association, Member, 2006 — Current
- Philadelphia Intellectual Property Law Association, Member, 2003 — Current
- Vice President, 2015
- Treasurer, 2013 — 2014
- Board Member, 2010 — 2011
- President, 2017 — 2018
Representative Litigation Matters
John has represented plaintiffs and defendants in IP litigation involving technologies such as semiconductors, medical devices, software, gaming, industrial design, and consumer products. His cases span trade secret misappropriation, patent and copyright infringement, trademark disputes, and unfair competition.
- 6115187 Canada Inc. v. Samsung Techwin America et al., DDE, represented the plaintiff in patent infringement
- Advertising Specialty Institute, Inc. v. Landmark Corporate Marketing, et al., PAED, represented defendant Landmark Corporate Marketing, trade secrets, computer fraud, and contract
- Advertising Specialty Institute v. Trade Only Inc. et al. represented the defendant, computer fraud and abuse act, and copyright infringement
- Alex Is The Best, LLC v. Blu Products, Inc., DDE, represented defendant Blu Products, patent infringement
- Aletto Brothers, Inc. v. Oscar Heyman & Brothers, Inc., SDNY, represented the defendant,
- Alzheimer’s Institute Of America, Inc. v. Avid Radiopharmaceuticals et al., PAED, represented defendant Avid, patent infringement
- AMI Entertainment Network, Inc. v. A&E Television Networks, LLC, PAED, represented the plaintiff in trademark infringement
- AMI Entertainment Network, Inc. v. Big Fish Games, Inc., PAED, represented the plaintiff in patent infringement
- Ami Entertainment Network, LLC v. E La Carte, Inc., DDE, represented the plaintiff in patent infringement
- Aperio Technologies, Inc. v. Olympus America Inc., et al., DDE, represented defendants, patent infringement, and parallel Inter Partes Reexamination
- Atomizing Systems, Inc. v. True Fog USA et al., NJD, represented the plaintiff, copyright infringement
- Brentwood Industries, Inc. v. E-Polytech Mfg Sys, LLC et al., PAED, represented the plaintiff, theft of trade secrets, and breach of non-disclosure agreement
- Brentwood Industries, Inc. v. Stinger Equipment, Inc., KYWD, represented the plaintiff in patent infringement
- Baby Merlin Company v. Cribculture, LLC et al., INSD, represented plaintiff, trademark infringement
- Broadband iTV v. Hawaiian Telcom, TWC, et al. HID represented the plaintiff in patent infringement
- Best Energy Reduction Technologies v. Boss Controls, PAED, represented the plaintiff, patent and copyright infringement, and unfair competition
- Blackbird Tech LLC v. Hyperikon, Inc., DDE, represented plaintiff, patent infringement
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- Brentwood Industries, Inc. V. Stinger Equipment, Inc., EDPA, represented plaintiff, trade secret misappropriation
- BSES Limited v. LT Industries, Inc., DMD, represented plaintiff, patent infringement
- Candella, LLC v. Primitives by Kathy, Inc., DMN represented the defendant in copyright infringement
- Celgard, LLC v. Sumitomo Chemical Company, Ltd., WDNC, represented defendant, patent infringement
- Chia Yi Chin Jwu Enterprises Co. Ltd. v. IDEA Nuova, Inc. et al., SDNY, represented defendant, patent infringement
- Christopher Warman, et al. v. Local Yokels Fudge LLC, et al., WDPA, represented plaintiffs, trade secret misappropriation, trademark infringement, and copyright infringement
- Corporate Web Solutions Ltd. V. N. Harris Computer Corp. D/B/A Harris Computer et al., PAED, represented plaintiff, copyright infringement
- Crystal Image Technology, Inc. v. Samsung Electronics Co., Ltd., PAWD, represented the defendant, patent infringement
- DMI Sports, Inc. v. Regent Sports Corp., PAED, represented the plaintiff in patent infringement
- Dominion Energy, Inc., et al. v. Alstom Grid, Inc., PAED, represented plaintiffs, patent infringement
- E. J. Breneman v. Road Science, PAED, represented defendant, patent infringement
- Elemica Inc. v. Conexiom USA Inc., DDE, represented the plaintiff, trade secrets missappropriation
- Endeavor Meshtech, Inc. v. Aclara, DDE, represents the defendant, patent infringement
- Ewing v. SA-GE Collectibles, Inc., NDTX, represented defendant, copyright and trademark infringement
- F2vs Technologies, LLC v. Silvair, Inc., DDE represented the defendant, patent infringement
- Fish Net, Inc. v. Foster and Smith, Inc. et al., PAED, represented the defendant, , trademark infringement and cybersquatting
- Gamajet Cleaning Systems, Inc. v. Spraying Systems Co., PAED, represented the plaintiff, patent and copyright infringement
- Gordium Innovations, LLC. v. Overture Networks, Inc., DDE, represented the defendant, patent infringement
- Grandeye Limited v. ImmerVision, TXWD, represented defendant, patent infringement
- Harvard University v. Hamamatsu Corporation, DMA, represented the defendant in patent infringement and trade secrets misappropriation
- Hamilton Beach Brands, Inc. v. Sunbeam Products, Inc., VAED, represented the plaintiff in patent infringement
- Henry Company v. Stelwagon Roofing Supply, Inc., PAED, represented plaintiff, trademark infringement
- Heraeus Electro-Nite Co. v. Midwest Instrument, PAED, represented the plaintiff in patent infringement
- Heraeus Electro-Nite Co. v. Vesuvius USA Corp., PAED, represented the plaintiff, patent infringement, and parallel Ex Partes Reexamination
- Huhtamaki Inc. and Future Mold v. International Container Corp. et al., MIED, represent defendants, patent infringement
- International Container Corp. v. Huhtamaki Inc., DDE, represented the plaintiff in patent infringement
- Idea Nuova, Inc. v. Tween Brands, Inc., SDNY, represented the plaintiff, patent infringement
- Illinois Tool Works Inc. v. Ion Systems, PAED, represented plaintiff, patent infringement
- ImmerVision v. CBC Co., Ltd. and CBC (America) Corp., DDE, represented plaintiff, ImmerVision, in patent infringement
- ImmerVision v. Vivotek Corp., DNV, represented plaintiff, patent infringement
- Immunotope, Inc. V. Captivate Pharmaceuticals, LLC, EDPA, represented the plaintiff, trade secret misappropriation
- Jsdq Mesh Technologies LLC v. Leviton Manufacturing Co. Inc. et al., DDE, patent infringement
- Karl Storz Endoscopy-America, Inc. v. Richard Wolf Medical Instruments Corp., NDIL, represented the defendant in patent infringement
- Konami Gaming v. Lightning Gaming, NVD, represents the defendant, patent infringement
- Lamm Rubenstone, LLC et al. v. Lesavoy et al., PAED, represented plaintiff, stored communication act, computer theft and abuse act, and state tort claims
- LaserMax v. Sellmark, et al., DDE, represent plaintiff, patent infringement
- Life Alert Emergency Response, Inc. v. Excelsis Investments, Inc., et al., DDE, represented plaintiff, patent infringement
- Life Alert Emergency Response, Inc. v. International Marketing Group, Inc., MOED, represented plaintiff, design and copyright infringement
- Lux Products Corp. v. Elementi Moderni, LLC, DDE, represented the plaintiff, patent infringement
- Mattern & Associates v. Cozen O’Connor, PAED, represented plaintiff, Mattern & Associates, in copyright infringement
- Mattern & Associates, LLC V. T. & G. Industries, Inc., PAED, represented plaintiff, copyright infringement
- Medicis Pharmaceutical Corporation et al. v. Activis MidAtlantic LLC, DDE, represented plaintiff, Alyzan, Inc., patent infringement
- Medicis Pharmaceutical Corporation, et al. v. Stiefel Laboratories, Inc., TXWD, represented plaintiff, Alyzan, Inc., patent infringement
- Megatouch LLC v. King Digital Entertainment Plc et al., DDE, patent infringement
- Merit Industries, Inc. v. JVL Corp., PAED, represented the plaintiff, patent infringement, and parallel Ex Partes Reexamination
- Miller Edge, Inc. v. Aso Gmbh U. Co. KG et al., PAED, represented the plaintiff, patent infringement
- MiMedx Group Inc. et al. v. Liventa, et al., NDGA, represent defendant, Liventa, patent infringement
- New Balance Athletics, Inc. v. USA New Bunren International Co. Limited LLC, DDE, represented defendant trademark infringement
- Nobel Learning Communities, Inc. V. Paladin Academy, MND, represented plaintiff copyright infringement
- NorCom v. IsoVac, PAED, represents the plaintiff, patent infringement
- Patent Group v. Vesdia Corporation, EDTX, represented defendant, patent infringement
- Penn Emblem Company v. World Emblem International, FLSD, represented plaintiff, patent infringement
- Playworld v. BCI Burke, LLC, PAED, represented defendant, trade dress and trademark infringement
- Prism Technologies, LLC v. VeriSign, Inc. et al., DDE, represented defendant, VeriSign, Inc., patent infringement
- Ra Sushi Holding Corporation v. 1225 Raw, Inc., PAED, represented plaintiff, trademark infringement
- Robinson & Cole LLP v. Mattern & Associates, LLC, CTD, represented defendant, declaratory judgment copyright infringement
- Schiller Grounds Care, Inc. v. The Toro Company, PAED, represented the plaintiff, patent infringement
- SC Botanicals LLC V. Intragenix Holdings LLC, et al., DED, represented plaintiff, trade secret misappropriation ScriptPro, LLC v. Yuyama USA et al., KSD, represented defendants, patent infringement
- Skyline Toolworks LLC v. Techna Clip, LLC, represented plaintiff, patent infringement
- Slingmax, Inc. v. Marcal Rope & Rigging, Inc., et al. MOED, representing the plaintiff, patent infringement
- Source, Inc. v. Access Development, Inc., et al., EDTX, represented defendant(s), Mall Networks, in patent infringement
- Synygy, Inc. v. ZS Associates and Novo Nordisk, PAED, represented the plaintiff, trade secret misappropriation, copyright infringement, and unfair competition
- Synkloud Technologies, LLC v. Blu Products, Inc., DDE represented the defendant, patent infringement
- Tabletop Media, LLC v. Ami Entertainment Network, LLC, DDE represented the defendant, declaratory judgment patent infringement
- T.C. Millwork, Inc. et al. v. KGM Gaming, LLC, PAED., represented the defendant(s), patent infringement, and state law tort claims
- Thomas Skold v. Galderma Laboratories, LP, et al., PAED, represents defendant, copyright, and trademark infringement
- TuitionFund, LLC v. Suntrust Banks et al., TNMD, defendants Cartera Commerce, SunTrust Bank, and Vesdia, patent infringement and parallel Inter PartesReexamination
- Viskase Companies, Inc. v. World PAC Int’l AG et al., VAED, represented defendants, patent infringement, and state law tort claims
- Yuyama Manufacturing Company, Ltd. v. JVM Limited, DMD, represented the plaintiff, patent infringement
- Zenith Products Corp. v. Elite Home Fashions, LLC et al., PAED, represented plaintiff, design patent infringement
- Zenith Products Corp. v. Splash Home, Inc., PAED, represented the plaintiff, design patent infringement
- Zenith Products Corporation v. Carnation Home Fashions, Inc., DDE, represented plaintiff, trademark and copyright infringement
- Zenith Products Corporation v. Design Home Solutions, LLC, FLSD, represented plaintiff, patent infringement
- Zenith Products Corporation v. DHI Corp., WIWD, represented plaintiff, Zenith Products Corporation, patent infringement
- Zenith Products Corporation v. Hardware Resources, PAMD, represented plaintiff, copyright infringement
- Zenith Products Corporation v. Kenney Manufacturing, RID, represented plaintiff, patent, and trade dress infringement
- Zenith Products Corporation v. LTD Commodities AVEO, DDE represented the plaintiff, patent infringement
- Zenith Products Corp. v. Mambate USA Inc., DDE, represented plaintiff, patent infringement
- Zenith Products Corporation v. Organize-It-All, Inc., NJD, represented plaintiff, copyright infringement
- Zenith Products Corporation v. Popular Bath, DDE, represented plaintiff, patent infringement
- Zenith Products Corp. v. Splash Home, Inc., PAED, represented the plaintiff, patent and copyright infringement
- Zig Zag Innovations, LLC v. Leviton Manufacturing Co., Inc., DDE, represented the defendant, patent infringement
Representative Post-Grant Review Matters
John has handled numerous IPRs, CBMs, and inter partes reexaminations before the PTAB, including high-stakes disputes involving global electronics and software companies.
- CBM2014-00189 Hawaiian Telcom, Inc. v. Broadband iTV, Inc.
- IPR2015-01448 Funai Electric Co., Ltd. v. Gold Charm Limited
- IPR2015-01416 Samsung Display Co., Ltd. v. Gold Charm Limited
- IPR2015-01491 Funai Electric Co., Ltd. v. Gold Charm Limited
- IPR2015-01499 Samsung Display Co., Ltd. v. Gold Charm Limited
- IPR2015-01525 Toshiba Corporation v. Gold Charm Limited
- IPR2015-01479 Toshiba Corporation v. Gold Charm Limited
- IPR2015-01469 Samsung Display Co., Ltd. v. Gold Charm Limited
- IPR2016-00462 Toshiba Corporation v. Gold Charm Limited
- IPR2014-01222 Unified Patents, Inc. v. Panitch Schwarze Belisario & Nadel, LLP
- IPR2015-01468 Funai Electric Co., Ltd. v. Gold Charm Limited
- IPR2015-01497 Toshiba Corporation v. Gold Charm Limited
- IPR2015-01417 Samsung Display Co., Ltd. v. Gold Charm Limited
- IPR2015-01452 Samsung Display Co., Ltd. v. Gold Charm Limited
- IPR2014-01438 Panasonic System Networks Co., Ltd. v. 6115187 CANADA INC.
- IPR2016-01143 Hamamatsu Corporation v. PRESIDENT & FELLOWS OF HARVARD COLLEGE
- IPR2016-01910 Hamamatsu Corporation v. SiOnyx, LLC
- IPR2017-00909 Hamamatsu Corporation v. PRESIDENT & FELLOWS OF HARVARD COLLEGE
- IPR2018-01006 MacSports, Inc. v. Idea Nuova, Inc.
- IPR2020-00179 LG Electronics Inc. v. ImmverVision, Inc.
- IPR2020-00195 LG Electronics Inc. v. ImmerVision, Inc.
Representative Inter Partes Reexaminations Corresponding to Co-Pending Litigations
- 95/001,606 TuitionFund, LLC v. Cartera Commerce, Inc. and Vesdia Corporation, et al.
- 95/001,604 TuitionFund, LLC v. Cartera Commerce, Inc. and Vesdia Corporation, et al.
- 95/001,601 TuitionFund, LLC v. Cartera Commerce, Inc. and Vesdia Corporation, et al.
- 95/001,226 Chia Yi Chin Jwu Enterprise Co., Ltd. v. Idea Nuova, Inc., et al.
- 95/000,518 Aperio Technologies Inc. v. Olympus America Inc. et al.
- 95/000,517 Aperio Technologies Inc. v. Olympus America Inc. et al.
- 95/000,516 Aperio Technologies Inc. v. Olympus America Inc. et al.
- 95/000,421 T.C. Millwork, Inc. and A.C. Coin and Slot Service Co., Inc. v. KGM Gaming LLC
- 95/000,420 T.C. Millwork, Inc. and A.C. Coin and Slot Service Co., Inc. v. KGM Gaming LLC
- 95/000,296 Datalogic Scanning, Inc. v. Metrologic Instruments, Inc.
- 95/000,289 Datalogic Scanning, Inc. v. Metrologic Instruments, Inc.
Honors & Awards
- Named a Pennsylvania “Rising Star,” 2010 — 2016, by Thomson Reuters, publishers of Pennsylvania Super Lawyers
- Named a Pennsylvania “Super Lawyer,” 2018 — present, by Thomson Reuters, publishers of Pennsylvania Super Lawyers
- Selected to The Best Lawyers in America® in the area of Intellectual Property, 2015 — Present