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John Dragseth | Fish & Richardson

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John Dragseth | Fish & Richardson Skip to Main Content Why Fish Diversity, Equity & Inclusion Pro Bono & Social Responsibility Legal Operations Pricing Legal Project Management Knowledge Management eDiscovery Legal Technology Services Our People Services Litigation Patent Litigation Trademark, Copyright & Media Litigation Trade Secret Litigation Appellate ITC Litigation & Section 337 Standard Essential Patents Chancery & Corporate Governance Post-Grant Inter Partes Review Post-Grant Review Ex Parte Reexamination Supplemental Examination Patent Patent Prosecution Strategic Patent Counseling & Opinions Patent Portfolio Management Unitary Patent & Unified Patent Court IP Licensing, Transactions & Agreements Trademark & Copyright Counseling & Prosecution Strategic Counseling, Registration & Opinions Advertising & Marketing Domain Names & Internet TTAB Oppositions & Cancellations Digital Millennium Copyright Act Transactions & Agreements Regulatory & Government Affairs Communications & Spectrum Regulation Drug & Medical Device Regulation mHealth & Telemedicine Privacy & Data Security Industries Electrical & Computer Technology Software & Internet Hardware Semiconductors Consumer Electronics Optics Artificial Intelligence Digital Health Digital Media & E-Commerce Financial, Business & FinTech Services Telecommunications Energy & Chemicals Petrochemical Cleantech Life Sciences Biotech & Diagnostics Medical Devices Pharmaceuticals Academic Research & Medical Centers Transportation, Aerospace & Defense Manufacturing Autonomous Vehicles Insights Thought Leadership IP Law Essentials Post-Grant Annual Reports Webinars Podcasts Offices Careers News & Events Contact Us John A. Dragseth Title Senior Principal Offices Minneapolis Phone Numbers 612 337 2550 Email [email protected] Overview Insights Home People John A. Dragseth People Overview John Dragseth has been named one of the top 50 intellectual property attorneys in the country under the age of 45. He has also been named a Minnesota SuperLawyer multiple years. His practice centers on complex legal analysis and writing — in federal appeals, patent prosecution, reexamination, pre-suit and due diligence investigations, and patent opinions.

His prosecution work centers on cloud computing, mobile computing, software, medical devices, and mechanical technologies (including HVAC). John has led briefing on more than 60 appeals to the U.S. Supreme Court and 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. He also enters cases frequently as a “fixer” — helping with tough and important issues. (The similarities with George Clooney’s “Michael Clayton” character end there.) John writes and lectures frequently on a variety of patent law topics. He is also an adjunct professor teaching IP litigation at the University of St. Thomas Law School, and has authored case books on patent law and IP litigation (very exciting reads). He was raised on a small grain and sugar beet farm in Northern Minnesota.

Show more Show less Experience

Software and Electronics

Wireless mobile devices, videogames, AJAX techniques, search engines, e-commerce, CAD/CAM, communications protocols, databases, process control, fraud prevention, location-based services, ATM machine operation, product activation, digital signal processing, enterprise resource planning (ERP), various investment vehicles, GPS, computer hardware, networking, telecommunications, and semiconductor processing.

Medical Devices

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

Green Technologies

Wind generators and blade design, control systems, power supplies, thermal solar, semiconductor fabrication, hybrid vehicles, super-efficient HVAC systems, wave-powered and wind-powered systems, and green building techniques.

Recent Appellate Cases

Obtained affirmance of district court ruling and dismissal of part of appeal on behalf of client Google Inc. in iLor LLC v. Google Inc., __ F.3d __ (Fed. Cir. Dec. 11, 2008)

Led appeal in obtaining full reversal of two independent claim construction issues in Predicate Logic, Inc. v. Distributive Software, Inc., __ F.3d __ (Fed. Cir. Oct. 9, 2008)

Represented Microsoft in separate successful appeals against Lucent, including one that zeroed out a $1.5 billion jury award – the largest patent defense victory ever on appeal in Lucent Technologies , Inc. v. Gateway, Inc. and Microsoft Corp., __ F.3d __ (Fed. Cir. Sept. 25, 2008) and __ F.3d __ (Fed. Cir. May 8, 2008)

Obtained complete reversal for our client (the patent owner) on 10 separate issues, and affirmance on all four issues raised by opponent. The technology related to computer architecture. Took over responsibility for appeal from another firm.

Was lead counsel at 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 trial 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.

AT&T v. Microsoft Corp. – filed amicus brief with 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 Supreme Court amicus brief 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 Supreme Court amicus brief 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, 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 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 Supreme Court. The appeal centered around governmental refusal to pay promised benefits to thousands of career soldiers.

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

Show more Show less Recognitions & awards

Best Lawyers in America

Best Lawyers 2020-2026

IAM Patent 1000

IAM 2016-2025

Ranked Lawyer

Chambers USA: Minnesota 2020-2025

IAM Strategy 300

IAM 2020-2021, 2023-2025

IP Star

Managing IP 2013-2025

Super Lawyers

Super Lawyers 2009-2014, 2021-2023

North Star Lawyer

Minnesota State Bar Association 2020

Litigation Trailblazer

National Law Journal (NLJ) 2016

Top 50 Under 45

IP Law & Business 2008

Giles S. Rich Memorial Moot Court Competition

American Intellectual Property Law Association (AIPLA) 1996

Cargill Award

 

Leading Attorney at the Court of Appeals for the Federal Circuit

IAM Patent 1000  

Outstanding Litigator in Minnesota

Managing Intellectual Property  

Professional associations Former Co-Chair, Litigation Committee, Minnesota Intellectual Property Law Association Editor-in-Chief, Technology Law Alert (M. Lee Smith Publishers) (2000-2002) Services Services Patent Prosecution Strategic Patent Counseling & Opinions Appellate Litigation Post-Grant Patent Show more Show less Industries Industries Telecommunications Manufacturing Digital Health Software & Internet Financial, Business & FinTech Services Electrical & Computer Technology Show more Show less Admissions Admissions U.S. Patent and Trademark Office (2002) Minnesota (1997) Supreme Court of the United States U.S. Court of Appeals for the Federal Circuit U.S. District Court for the District of Colorado U.S. District Court for the District of Minnesota Show more Show less Clerkships Clerkships U.S. Court of Appeals for the Federal Circuit, The Honorable Raymond C. Clevenger III (1996-1998) Education Education J.D. Order of the Coif, University of Minnesota Law School (1996) Managing Editor, Minnesota Law Review B.S. summa cum laude, Tau Beta Pi, Mechanical Engineering, University of Minnesota (1992) Offices Atlanta Austin Boston Chicago Dallas Delaware Houston Minneapolis Munich New York Orange County San Diego Shenzhen Silicon Valley Washington, D.C. Careers Life at Fish Judicial Clerks Law Students Lateral Hires Scientists & Engineers Operations & Admin Staff Training & Benefits FAQ Subscribe Contact Us Site Information Site Map Cookie Policy Disclaimer Privacy Policy Terms of Use

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