John C. O'Quinn, P.C.

Intellectual Property

• PACT v. Intel Corp. (Fed. Cir. 2023): Successfully obtained three reversals of PTAB decisions finding patents non-obvious – one in precedential decision rejecting the argument that motivation to combine requires expectation of better/more efficient results, as opposed to just suitable results.
• Sequoia v. IBM, Red Hat, et al. (Fed. Cir. 2023): Successfully defended claim constructions supporting the judgment of noninfringement in a precedential decision protecting Red Hat’s customers’ accused products and Linux technology services.
• Par/Endo v. Eagle Pharmaceuticals (Fed. Cir. 2022): Obtained a precedential decision establishing a bright line rule holding an ANDA’s representations controls the infringement inquiry, not evidence outside that specification.
• Wi-LAN v. Sharp Electronics (Fed. Cir. 2021): Successfully obtained an important precedential decision rigorously enforcing limits on use of expert testimony to backfill evidentiary gaps—requiring actual evidence from third parties that have exclusive control over evidence of how their components operate in defendants’ products.
• BotM8 v. Sony (Fed. Cir. 2021): Obtained the first-ever precedential opinion from the U.S. Court of Appeals for the Federal Circuit holding that a patent owner’s allegations of direct infringement were insufficiently pled to satisfy the Supreme Court’s Twombly/Iqbal pleading standards, affirming district court dismissal in relevant part.
• BASF v. SNF (Fed. Cir. 2020): Successfully argued for reversal of district court decision invalidating BASF’s patent on 3 separate grounds. In a precedential decision, the Federal Circuit significantly clarified the law on when confidential materials can and cannot constitute invalidating prior art.
• Oyster Optics v. Cisco Systems (Fed. Cir. 2019–2020): Successfully argued that patent owner’s settlement in related case served to release defendants from continued assertion of patent claims.
• Marcel Fashions Group, Inc. v. Lucky Brand (2d Cir. & S. Ct. 2019–2020): Briefed long-running trademark dispute in the Supreme Court, successfully advocating to abolish the 2nd Circuit’s “defense preclusion” test and restore predictability and stability to preclusion law. 
• Microspherix LLC. v. Merck (Fed. Cir. 2019–2020): Won a pivotal appeal defending Microspherix’s patent against invalidity challenges by Merck.
• Cobalt Boats v. Brunswick (Fed. Cir. 2018–2019): Successfully argued for reversal of jury verdict of infringement based on both literal and equivalents infringement theories.
• Honeywell v. Arkema (Fed. Cir. 2018–2019): Successfully argued for reversal of PTAB decision that had precluded Honeywell from seeking a patent owner correction during Patent Office proceedings.
• Enzo Life Sciences v. Abbott Labs (Fed. Cir. 2018–2019): Successfully defended decision on summary judgment invalidating broad claims to a genetic probe as non-enabled.
• Eagle View Technologies v. Xactware (Fed. Cir. 2018–2019): Successfully defended Patent Office’s decision upholding the validity of patented aerial roof measurement technology.
• WesternGeco (Schlumburger) v. ION Geophysical (E.D. Tex., Fed. Cir. & S. Ct. 2012–2018): Obtained judgment of patent infringement, defended reasonable royalty on appeal, obtained two decisions from the Supreme Court reversing Federal Circuit limitations on damages, defended royalty on remand from the Supreme Court.
• Allergan v. Sandoz (E.D. Tex. & Fed. Cir. 2016–2017): Successfully argued on appeal that the district court’s finding of infringement should be reversed under a proper understanding of the claims.
• Arista v. International Trade Commission & Cisco (Fed. Cir. 2017): Defended the ITC’s decision finding Arista infringed Cisco’s patents, and defended the scope of the exclusion order.
• In re Warsaw Orthopedic (Fed. Cir. 2016): Argued on behalf of patentee and obtained a rare remand from the Federal Circuit to the Patent Trial and Appeal Board of a finding of obviousness.
• Commonwealth Scientific and Industrial Research Organisation v. Cisco (Fed. Cir. 2014–2016): Argued case on appeal for Cisco involving apportionment and standardization issues; vacated and remanded for new determination of damages.
• ViiV Healthcare v. Lupin (Fed. Cir. 2014-2015): Argued case on appeal, affirmed judgment of non-obviousness of multi-billion dollar HIV pharmaceuticals.

General Litigation

• Eli Lilly and Co. v. Becerra (S.D. Ind. & 7th Cir. 2021-2022): Successfully briefed and argued complex constitutional and administrative law challenges to HHS’s reinterpretations of a federal healthcare statute; obtained preliminary injunction on certain regulations and summary judgment on others; case now pending on appeal.
• U.S. ex rel. Schutte v. SuperValu (7th Cir. 2021): Argued appeal and led the briefing and strategy in an important, precedent-setting decision holding that the objective knowledge standard the Supreme Court articulated in Safeco Insurance v. Burr, also applies to the False Claims Act’s scienter requirement.
• U.S. ex rel. Proctor v. Safeway (7th Cir. 2022): Argued appeal and led the briefing and strategy in another important False Claims Act case in which the Seventh Circuit clarified what kinds of regulatory documents constitute “authoritative guidance” that would render a defendant’s otherwise reasonable, but erroneous, conduct unreasonable.
• U.S. ex. rel. Olhausen v. Arriva (11th Cir. 2022): Argued appeal and led the briefing and strategy on appeal in another important decision on the scope of the False Claims Act’s scienter requirement.
• Kinder Morgan v. United States (S.D. Tex. 2020). Successfully challenged the government’s sequestration of tax refunds. Raised novel legal arguments at the intersection of tax law and the Administrative Procedure Act. The government confessed error, agreed to pay the refunds it previously sequestered, plus interest, and took the extraordinary step of voluntarily agreeing to pay refunds to all other taxpayers similarly situated.
• Sun Capital Partners v. New England Teamsters Pension Fund (1st Cir. 2018–2019): Successfully argued for reversal of finding of withdrawal liability under ERISA based on a theory of implied partnership.
• In re Millennium Lab Holdings (3d Cir. 2016–2019): Successfully argued in Bankruptcy Court, District Court, and the Third Circuit that inclusion of third-party releases in a Plan of Reorganization did not violate the Constitution under Stern v. Marshall.
• Marcel Fashions Group, Inc. v. Lucky Brand (2d Cir. & S. Ct. 2019-2020): Briefed long-running trademark dispute in the Supreme Court, successfully advocating to abolish the 2nd Circuit’s “defense preclusion” test and restore predictability and stability to preclusion law.
• U.S. ex rel Colquitt v. Abbott Laboratories (5th Cir. 2017): Successfully defended trial win for Abbott Laboratories in a billion-dollar False Claims Act case alleging that Abbott promoted its biliary stents for off-label use in vascular stenting procedures that were then billed to Medicare.
• In re Caesars Entertainment Operating Co. (7th Cir. 2015): Argued successfully that Section 105 injunctions of third-party litigation should be granted when they will enhance the prospects for a successful resolution of the bankruptcy.
• Horne v. U.S. Dep’t of Agriculture (9th Cir. & Supreme Court 2013–2015): Successfully represented raisin farmers in challenge to USDA unconstitutional taking of a portion of farmers’ crop. 
• Independent Pilots Ass’n v. FAA (D.C. Cir. 2015–2016): Intervened on behalf of Cargo Airline Association and successfully defended FAA flight duty rule.
• National Chicken Council v. EPA, et al. (D.C. Cir. 2011-2012): Successfully argued on behalf of Intervenors that a challenge to Federal Renewable Fuel Standards should be dismissed for lack of standing.
• In re Charter Communications (S.D.N.Y., 2d Cir. & S. Ct. 2009–2013): Counsel for Charter in multi-billion dollar bankruptcy confirmation proceeding. Argued on behalf of Charter in the District Court and the Second Circuit. Successfully defended plan of reorganization in multiple appeals and against certiorari.

Research Assistant to Professor Laurence Tribe, Harvard Law School, 2000–2001

Bayer AG, Leverkusen, Germany, Engineering Intern, 1998

Dow Chemical Company, Freeport, Texas, Engineering Intern, 1998

Exxon Chemical Company, Baton Rouge, Louisiana, Engineering Intern, 1996