John Callahan is a partner in the firm’s Washington, D.C. office. He is a three term prior member of the firm’s Management Committee. His practice includes all aspects of intellectual property law, with a particular focus on district court litigation and interference proceedings. In addition to his litigation and interference practice, Mr. Callahan counsels a variety of international and domestic clients regarding U.S. intellectual property law including providing clearance, enforceability, and validity opinions. He also counsels clients with licensing matters, and assists clients in the procurement of both U.S. and foreign patents. Mr. Callahan’s experience includes the drafting and worldwide prosecution of numerous applications as well as the specialized practice in the U.S. of reissue and reexamination proceedings.
Mr. Callahan’s practice has encompassed a wide range of technologies in the chemical, mechanical and electrical arts, including polymers, glass products, pharmaceuticals, biotechnology, inorganic chemistry, medical devices, the manufacture of semiconductor devices and electronic circuitry.
Mr. Callahan has lectured widely on U.S. intellectual property law. He has lectured in the U.S. for the Practising Law Institute, and in Korea, Japan and India on topics including opinion writing, generic drug litigation, caselaw from the Court of Appeals for the Federal Circuit, claim drafting for biotech inventions, reexamination, interferences, doctrine of equivalents and changes in U.S. patent laws and procedures.
Bars
District of Columbia
U.S. Court of Appeals - Federal Circuit
U.S. Patent and Trademark Office
Education
University of Baltimore School of Law (J.D. 1990)
Catholic University of America (B.S.Ch.E. 1985)
Prior Experience
Ostrolenk, Faber, Gerb & Soffen, Patent Agent and Associate (1987-93) - drafted and prosecuted patent applications in the chemical arts; infringement and validity opinions
U.S. Patent and Trademark Office, Patent Examiner (1985-87) - examined patent applications directed to the manufacture of integrated circuits
Representative Cases
Berka v. Boel. Interference No. 105,205 - Lead counsel in interference proceeding directed to DNA constructs used to transform an Aspergillus host to enable secretion of a heterologous polypeptide. Represent client Novozymes.
Bott v. Svendsen. Interference No. 105,206 - Lead counsel in interference proceeding directed to Termamyl-like family of alpha-amylases including Bacillis licheniformis alpha-amylase, Bacillis stereothermophilis alpha-amylase and Bacillis amyloliquifaciens alpha-amylase enzymes used primarily in detergents. Represented client Novozymes. Judgment obtained in favor of client Novozymes.
Bridgestone Sports Co. Ltd. v. Acushnet - U.S. District Court proceeding involving materials and physical characteristics of golf balls.
Dow Chemical Co. v. Sumitomo Chemical Co., Ltd. - U.S. District Court proceeding for patent infringement case involving epoxy resins used to encapsulate microelectronics. Summary Judgment obtained in favor of client Sumitomo and case settled.
Ellis v. Fulks. Interference No. 104,788 - Interference proceeding relating to fitness equipment. Represented client Magnum Fitness.
Magna Donnelley Corp. v. Pilkington NA, Inc. et. al. (W.D. Mich. 2006)
Pagani et. al. v. Rescalli. Interference No. 104,556 - Lead counsel in interference proceeding related to processes for the production of urea. Represented client Urea Casale. Judgment obtained in favor of client Urea Casale.
Pilkington North America v. PPG Industries Ohio, Inc. Interference No. 105,147 - Lead counsel in interference proceeding involving the chemical composition of grey colored glasses for automotive and architectural purposes. Represented client Pilkington North America. Judgment obtained in favor of client Pilkington.
Pilkington North America, Inc. v. Valeo SA and Valeo Electrical Systems Inc. - U.S. District Court proceeding for patent infringement relating to rain sensing devices used to control windshield wipers. Obtained favorable settlement for client Pilkington.
Sumitomo Chemical Co., Ltd. v. Dow Chemical Co. - U.S. District Court proceeding for patent infringement involving epoxy resins used to encapsulate microelectronics.
Sumitomo Chemical Co., Ltd. v. General Electric Co. - U.S. District Court; patent infringement case involving polymer alloys of polyamide and polyphenylene ether. Obtained settlement in favor of client Sumitomo Chemical.
Wallace v. Hubbard. Interference No. 103,570 - Interference proceeding relating to tissue augmentation materials. Represented client Bristol Myers Squibb.
Winn Inc. and Ben Huang v. Eaton Corp. - U.S. District Court proceeding involving polyurethane materials for use as golf club grips.
Associations
District of Columbia Bar Association - Intellectual Property Law Section; past Editor, Intellectual Property Law Section Newsletter
American Institute of Chemical Engineers
American Intellectual Property Law Association
Intellectual Property Owners Association
Federal Circuit Bar Association