FacultyFaculty/Author Profile
John A. Marlott

John A. Marlott

Jones Day

Chicago, IL, USA

John Marlott has over 25 years of IP law experience, and he focuses on high-stakes district court patent litigation, post-grant patent proceedings before the USPTO Patent Trial & Appeal Board (PTAB), and appeals to the U.S. Court of Appeals for the Federal Circuit.  In addition to traditional IP infringement litigation and Hatch-Waxman pharmaceutical litigation, John assists clients with licensing and transactional matters involving IP of all types.

Among recent engagements, John argued the Federal Circuit appeal in SAS v. ComplementSoft, a PTAB decision that the U.S. Supreme Court agreed in May 2017 to review.  The Supreme Court will review whether the PTAB is required by statute to issue a final decision on every patent claim challenged by an IPR petitioner, whereas the USPTO believes it can pick-and-choose which patent claims to review.  The Supreme Court’s decision could have a dramatic impact on the PTAB’s handling of all post-grant proceedings going forward.  The Federal Circuit’s decision in SAS-ComplementSoft also established important precedent regarding the PTAB’s adoption of a new claim construction during an IPR, and the requirement that the PTAB comply with the Administrative Procedure Act.

John is a co-author of the Annotated Local Patent Rules for the Northern District of Illinois most recently published by Jones Day in December 2016, and he is a contributing author of Drafting Patents For Litigation & Licensing, published annually since 2008 by BNA Bloomberg and the ABA Section of Intellectual Property Law.  John is a registered patent attorney, and he began his career as a Patent Examiner at the USPTO.

John A. Marlott is associated with the following items:
CHB Chapters  CHB Chapters Multi-Party Patent Infringement: Recent Developments in the Law of Joint Infringement, Inducement, Contributory Infringement (July 14, 2017) - Patent Litigation 2017: Advanced Techniques & Best Practices, Friday, November 17, 2017
Live Seminar  Live Seminar Patent Litigation 2018: Advanced Techniques & Best Practices, Wednesday, October 17, 2018, Chicago, IL

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