Jon E. Wright is a director in Sterne Kessler’s Trial & Appellate and Electronics Practice Groups. He co-chairs the firm’s appellate practice, and is a past co-chair of its PTO litigation practice. Jon focuses primarily on contested proceedings before the USPTO’s Patent Trial and Appeal Board, and on appeals of those cases to the United States Court of Appeals for the Federal Circuit. He is a recognized leader in inter partes review practice where there is co-pending district court litigation or a USITC investigation. He is familiar with the challenges faced by both patent owners and petitioners in these complex proceedings, often works closely with trial counsel as part of an inter-disciplinary team.
Jon has extensive appellate experience at the U.S. Court of Appeals for the Federal Circuit. He has argued as the principal attorney in over ten appeals to the Federal Circuit, and has been co-counsel in dozens more. Jon recently secured a rare reversal of a PTAB decision for a small electronics company. He has also secured affirmances of PTAB decisions for several Fortune 500 companies in the communication and semi-conductor memory fields. Prior to joining Sterne Kessler, Jon clerked at the Federal Circuit for the Honorable Alvin A. Schall.
In addition to his appellate work, Jon has been lead or back-up counsel in over seventy-five inter partes review (IPR) proceedings, mostly on behalf of patent owners. In one of the earliest success stories for patent owners, he successfully defended a set of four IPRs, securing confirmation of all challenged claims in the digital rights management space. More recently, Jon secured key non-institution decisions in four IPRs on two patents for a Fortune 500 IT company, and in two IPRs on one patent for an innovator medical device company.
The involved technologies in Jon’s IPR and appellate cases include semiconductor design and fabrication, digital rights management, RFID, computer networking, optical switches, medical devices, heavy machinery, and stray voltage detection technologies. Prior to the new AIA proceedings, Jon represented patent owners in over fifty inter partes and ex parte reexaminations involving concurrent district court or USITC proceedings.
Jon is a contributing author of Patent Office Litigation, Second Edition, published in 2017, and an editor of the two-volume set Patent Office Litigation, published in 2012 by Thomson Reuters Westlaw. The first edition focused on the new contested proceedings under the America Invents Act that year, while the second edition provides a fresh and comprehensive exploration of these proceedings. Both books examine how the proceedings interact with other aspects of patent procurement and enforcement, and deliver practical analysis and advice. Jon is also a contributing author to the Patent Litigation Strategies Handbook, Fourth Edition, published by the ABA Section of Intellectual Property.
Prior to focusing on contested proceedings, Jon had extensive experience in the preparation and prosecution of patent applications before the USPTO in technologies ranging from software, hardware (analog and digital), communications, wireless devices and systems, networking, database management, computer memory devices, semiconductor manufacturing, computer graphics and electrical power systems including nuclear technology.
While at George Mason University School of Law, Jon was the managing editor of the George Mason Law Review. Before law school, he was a Lieutenant in the U.S. Navy Submarine Force. His tour included three years on the nuclear powered fast attack submarine USS TAUTOG (SSN 639), and two years with COMSUBGRU 7 in Yokosuka, Japan. In addition to being a qualified Naval Nuclear Engineer, Jon also has private industry experience where he worked in semiconductor manufacturing for industry leader International Business Machines. Jon received his B.S. in electrical engineering from the University of Vermont.
- Managing IP, "IP Star" (2017-2014)
- IAM Patent 1000, "Patent Litigation - Bronze Band" (2017)
- Inter partes review of U.S. Patent No. 7,225,160 (IPR2013-00134) – secured confirmation of asserted claims at trial initiation phase.
- Inter partes review of U.S. Patent No. 6,058,045 (IPR2014-00113) – secured non-institution decision.
- Inter partes review of U.S. Patent No. 8,359,102 (IPR2015-01203, -01204) – secured non-institution decisions for innovator medical device company.
- Inter partes review of U.S. Patent Nos. 6,377, 577 (IPR2015-00973) – secured non-institution decisions for Fortune 500 IT company.
- Inter partes review of U.S. Patent No. 7,724,879 (IPR2013-00296) – secured cancellation of all challenged claims for Fortune 500 global communications company.
- AIP Acquisition LLC v. Level 3 Communications: Appeal from the Patent Trial and Appeal Board.
- K/S HIMPP v. Hear-Wear Techs., LLC: Appeal from the Patent Trial and Appeal Board
- In re Jung: Appeal from the Board of Patent Appeals and Interferences dealing with prima facie anticipation.
- Taurus IP, LLC v. DaimlerChrysler Corp. et al: Patent enforcement action on behalf of Taurus IP, LLC.
- Orion IP, LLC v. Hyundai Motor America: Patent enforcement action on behalf of Orion IP.
- Medtronic Inc. v. Guidant Corp.: Patent infringement defense for Medtronic in an appeal related to cardiac pacemakers.
- Floyd M. Minks v. Polaris Indus. Inc.: Patent infringement defense for Polaris in an appeal related to speed limiting circuits for All Terrain Vehicles.
- Fresenius Medical Care Holdings, Inc. (FMC) v. Paddock Laboratories, Inc.: ANDA litigation. (District of Massachusetts)
- JuxtaComm Technologies, Inc. v. Ascential Software Corp.: Patent infringement defense for Sybase Inc., relating to software for transforming and exchanging data between distributed, heterogeneous computer systems. (Eastern District of Texas)
- FuzzySharp Technologies Inc. v. ATI Inc.: Patent infringement defense for ATI relating to advanced computer graphics processing methods and procedures. (Northern District of California)
- Stream Theory v. Exent Technologies Inc.: Patent infringement defense for Exent relating to streaming applications over the internet. (Central District of California)
- Reexam of U.S. Patent No. 6,470,405 entitled “Protocol for Communication with Dynamic Memory” on behalf of patent owner. (Control No. 95/001,178)
- Reexam of U.S. Patent No. 7,360,050 entitled “Integrated Circuit Memory Device Having Delayed Write Capability” on behalf of patent owner. (Control No. 95/001,201)
- Reexam of U.S. Patent No. U.S. Patent No. 6,020,729 entitled "Discrete-Time Sampling of Data for Use in Switching Regulators" on behalf of patent owner. (Control No. 90/009,403)
- Reexam of U.S. Patent No. 5,774,670 entitled "Persistent Client State in a Hypertext Transfer Protocol Based Client-Server System" on behalf of third party requester. (Control No. 90/011,106)
- Reexam of U.S. Patent No. 5,490,216 entitled "System for Software Registration" on behalf of patent owner. (Control No. 90/010,831)
- American Bar Association
- American Intellectual Property Law Association
- Federal Circuit Bar Association
- The Giles S. Rich American Inn of Court
- U.S. Court of Appeals for the Federal Circuit