Overview

John Moran is an intellectual property attorney resident in Holland & Knight's Washington, D.C. He has extensive experience in litigating patent, trademark and trade secret cases for clients ranging from local companies to large multi-national corporations. He has represented many clients in Section 337 investigations before the International Trade Commission. Mr. Moran also analyzes and renders numerous legal opinions on patent portfolios in preparation for patent acquisition, licensing and litigation. Mr. Moran's experiences have led him to be called upon to testify as an expert witness on patent issues.

Since beginning his legal career in 1981, Mr. Moran has prosecuted or directly supervised the prosecution of hundreds of patent applications in many different technologies, including telecommunications systems and equipment, robotics, e-commerce systems and methods, pharmaceuticals, nuclear reactor instrumentation, semiconductor devices and manufacturing processes, and medical devices.

Prior to entering private practice, Mr. Moran worked as an engineer for six years in the fields of semiconductor design, microprocessor systems software, microprocessor-controlled products and telecommunications. His engineering career included four years with RCA at its solid state division and at its David Sarnoff Research Center.

Experience

  • Patent Infringement: represent multiple defendants in a patent infringement action relating to database management in quality control for large construction projects; the Court granted summary judgment invalidating the patent, which was affirmed by the Federal Circuit. (Atser Research Technologies, Inc. v. Raba-Kistner Infrastructure, Inc. et al., W.D. TX)
  • Patent Infringement: represented defendants against claim of patent infringement involving method and apparatus for determining metabolic rate ratios. Obtained summary judgment of noninfringement, which was affirmed by the Federal Circuit. (Tehrani v. Polar Electro, Inc., CD CA)
  • Patent Infringement: represented defendant against claim of patent infringement involving accelerometers to determining speed and distance of a person during activity. (Phatrat Technology, Inc. v. Polar Electro, Inc. et al., D. CO)
  • Patent Infringement: represented defendant against claim of patent infringement involving method and apparatus for selectively accumulating the altitude distance traveled by a user. Obtained summary judgment of laches, and the case was dismissed. (Avocet Sports Technology, Inc. v. Polar Electro, Inc., ND CA)
  • Patent Infringement: represented defendant against claim of patent infringement involving method and apparatus for adding personal notes to data for an exercise session. The case was dismissed during discovery. (FEGO Precision Industrial Co., Ltd. v. Polar Electro, Inc., ED TX)
  • Patent Infringement: represented defendant in this multidistrict litigation against claim of patent infringement involving method and apparatus for wirelessly communicating biometric data. Obtained summary judgment of noninfringement. (In re Body Science LLC, D. Mass)
  • Patent Infringement: represented defendant against claim of patent infringement involving method and apparatus for determining the overall fitness age of a person. The case was dismissed following the Markman order. (FitnessAge Services, Inc. v. Polar Electro, Inc., D. NV)
  • Patent Infringement: represented defendants against claim of patent infringement involving the use of switches to sense movement of a person. The case was dismissed after claim construction. (ICON Health & Fitness, Inc. v. Polar Electro Oy et al., CD CA)
  • Patent Infringement: represented defendant against claim of patent infringement involving three patents generally related to systems and methods related to monitoring a person's activity. Two of the three patents were invalidated, which judgments were affirmed on separate appeals to the Federal Circuit. The case with regard to the third patent was dismissed after a third-party reexamination. (ICON Health & Fitness, Inc. v. Polar Electro Oy., D. UT)
  • Patent Infringement: representing plaintiff in this patent infringement action involving method and apparatus for wirelessly communicating heart rate information, and for estimating a user's energy expenditure. (Polar Electro Oy v. Suunto et al., D. UT)
  • Patent Infringement: represented a defendant against claim of patent infringement involving system and method for adaptive computer security. The case was dismissed prior to filing an answer. (Olivistar, LLC v. Aliph, Inc. et al., ED TX)
  • Patent Infringement: represented a defendant against claim of patent infringement related to monitoring a person's activity. The case settled during discovery. (Tellus Fit, LLC v. Polar Electro, Inc., ED TX)
  • Patent Infringement: responsible for Markman portion of a patent infringement case involving network interface technology. (3Com Corp. v. D-Link Systems, Inc. et al., ND CA)
  • Patent Infringement: responsible for all aspects of a patent infringement action involving online purchasing systems; the case settled after Markman briefing. (Crawford v. Digital River, Inc., D. DC)
  • Patent Infringement: responsible for all aspects of defending a patent infringement case involving personal telephone services. The case settled favorably during discovery. (Call Sciences Inc. v. Aspect Communications, Inc., D. NJ)
  • Patent Infringement: responsible for all aspects of a patent infringement action involving encryption technology; the case settled after full discovery (Microchip Technology Incorporated v. The Chamberlain Group, Inc.)

  • Section 337 Investigation: responsible for all aspects of a patent infringement-based 337 investigation before the International Trade Commission (In the Matter of Certain Integrated Circuits and Products Containing Same)
  • Section 337 Investigation: responsible for all aspects of a patent infringement-based Section 337 investigation before the International Trade Commission (In Re Certain Code Hopping Remote Control Systems, Including Components and Integrated Circuits Used Therein)
  • Section 337 Investigation: represented a subpoenaed third party at the trial in this Section 337 investigation before the International Trade Commission (In Re Certain Excimer Laser Systems for Vision Correction Surgery and Components thereof and Methods for Performing Such Surgery)
  • Section 337 Investigation: responsible for the successful intervention of Microchip into a Section 337 investigation before the International Trade Commission (In Re Certain Garage Door Operators Including Components Thereof)

  • Appeals in Patent Infringement Cases
    • Icon Health & Fitness, Inc. v. Polar Electro Oy, 717 Fed. Appx. 1005 (Fed. Cir. 2018)
    • Icon Health & Fitness, Inc. v. Polar Electro Oy, 656 Fed. Appx. 1008 (Fed. Cir. 2016)
    • Polar Electro Oy v. Suunto Oy, 829 F.3d 1343 (Fed. Cir. 2016)
    • Atser Research Techs. v. Raba-Kistner Consultants, Inc., 469 Fed. Appx. 915 (Fed. Cir. 2012)
    • Tehrani v. Polar Electro Inc., 397 Fed. Appx. 644 (Fed. Cir. 2010)
    • Atser Research Techs., Inc. v. Raba-Kistner Consultants, Inc., 384 Fed. Appx. 995 (Fed. Cir. 2010)
    • Tehrani v. Polar Electro Inc., 301 Fed. Appx. 959 (Fed. Cir. 2008)
    • Medical Solutions, Inc. v. C Change Surgical LLC, 541 F.3d 1136 (Fed. Cir. 2008)
  • Appeals in Trademark Cases
    • Sterling Acceptance Corp. v. Tommark, Inc., 91 Fed. Appx. 880 (4th Cir. 2004)

Credentials

Education
  • Villanova University, B.S., Electrical Engineering, cum laude
  • The Catholic University of America Columbus School of Law, J.D.
  • Rutgers University, M.S., Computer Engineering
Bar Admissions/Licenses
  • District of Columbia
Court Admissions
  • U.S. Supreme Court
  • U.S. Court of Appeals for the Fourth Circuit
  • U.S. Court of Appeals for the Federal Circuit
  • All Courts in the District of Columbia
  • U.S. District Court for the District of Maryland
  • U.S. District Court for the District of Colorado
  • U.S. Court of Federal Claims
Memberships
  • Federal Bar Association
  • American Intellectual Property Law Association (AIPLA)  
  • Federalist Society, Intellectual Property Group Executive Committee
Honors & Awards
  • Martindale-Hubbell AV Preeminent Peer Review Rated

Publications

Speaking Engagements

News