John Kappos

Partner

John Kappos is a partner in O’Melveny's Newport Beach office and a member of the Intellectual Property and Technology Practice within the Litigation Department.  John is also a registered patent attorney.  His practice is dedicated to intellectual property matters and focuses on patent and technology litigation, including all phases of discovery, motion practice, trial preparation, and trial proceedings.  He has been involved in numerous patent litigations in federal district courts throughout the nation, in the International Trade Commission, and in domestic and international arbitrations.  In addition, he has assisted a number of companies in interference proceedings before the Board of Patent Appeals and Interferences and in developing successful patent strategies in competitive environments, such as the fields of biomedical devices, pharmaceuticals, and biotechnology.

Illustrative Professional Experience

John has substantial experience litigating patent and trademark infringement cases in the medical device, pharmaceutical, and biotechnology industries, including the following engagements:

• Patent infringement litigation involving recombinant Factor VIII for blood coagulation therapy
• Patent infringement litigation involving DNA microarray devices for RNA expression analysis
• Patent infringement and trade secret litigation involving photoactivatable compositions and devices for tooth whitening
• IP counseling on restructuring of patent portfolio of start-up pharmaceutical company leading to $1.9 billion transaction with major pharmaceutical company
• Patent infringement litigation involving devices and methods for vessel closure for use in achieving rapid hemostasis after percutaneous transluminal coronary angioplasty
• Patent infringement litigation involving devices and methods for cosmetic surgery for use in breast augmentation mammoplasty; this representation resulted in one of the first successful invalidity defenses in the Eastern District of Texas on a motion for summary judgment (Williams v. General Surgical Innovations Inc., 2002 U.S. Dist. LEXIS 25953 (E.D. Tex. 2002))
• Patent infringement litigation involving devices and methods for dissecting tissue for use in minimally invasive hernia repair
• Patent interference action before the Board of Patent Appeals and Interferences involving iron oxide compounds as diagnostic pharmaceuticals for magnetic resonance imaging
• Patent interference action before the Board of Patent Appeals and Interferences involving dual lumen catheter construction for rapid exchange of endovascular diagnostic or interventional medical instruments
• Trademark and unfair competition litigation under the Lanham Act involving unauthorized use by a reference laboratory of the name of a prominent hospital

Professional Activities

Admitted to Practice,  U.S. District Court, Southern, Northern, Eastern, and Western Districts of California; U.S. Court of Appeals, Ninth and Federal Circuits
Registered to Practice,  U.S. Patent & Trademark Office
Member,  American Intellectual Property Law Association; American Bar Association; Los Angeles Intellectual Property Law Association; Orange County Patent Law Association; Federal Circuit Bar Association; Orange County Bar Association
Speaker,  "Is The Supreme Court Exhausted With Patents?," O'Melveny Corporate Counsel Seminar (July 2008); "Complying With The Duty Of Care And Avoiding Willful Patent Infringement," O'Melveny Corporate Counsel Seminar (August 2006)
Co-Author,  "Changing Opinions on Willful Patent Infringement," Orange County Business Journal (August 2009); "Redefining Obviousness After KSR Decision:  Eisai Provides Some Greatly Needed Predictability for Biotech and Pharma," Genetic Engineering & Biotechnology News (October 2008);  "Is the Supreme Court Exhausted With Patents?" Orange County Business Journal (September 2008)
Honors,  Recognized as a Southern California "Super Lawyer" in a survey conducted by Law & Politics Media Inc. and published in Los Angeles Magazine and the Southern California edition of Super Lawyers; named a "Rising Star" by the same organization