Barclay Damon
Barclay Damon

John T. Gutkoski

John T. Gutkoski

Partner

p: 617-274-2906

f: 617-722-6003

icon_email jgutkoski@barclaydamon.com
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Boston Office

One Financial Center
Suite 1701
Boston, Massachusetts 02111

John T. Gutkoski has a national trial practice with a track record of successfully representing clients as lead trial counsel in patent and intellectual property matters spanning life sciences and high technology industries. His cases have involved pharmaceuticals, banking and finance, radiotherapeutics, nanotechnology, medical devices, synthetic latex, optics, collagen production, intravenous pumps, semiconductors, analog and digital circuitry, smart phones, telecommunications, network architecture, imaging, sound waves, software, and electronic data.

John has been repeatedly named one of the World's Leading Patent Practitioners for Patent Litigation by IAM Patent 1000. He previously served as the department chairman of the Intellectual Property practice in Boston for an international AM Law 100 firm.

Representative Experience

  • Won a rare, complete defense jury verdict of non-infringement and invalidity in the Eastern District of Texas where the jury found the asserted patents concerning the interaction of light and human tissue to be anticipated and rendered obvious by four separate combinations of prior art.
  • Led the defense trial team in defeating a claim for more than $600 million against a leading national bank and financial services holding company in the only one of the infamous Data Treasury "patent troll" cases to go to verdict over check imaging patents. Following the verdict in the Eastern District of Texas, the case settled favorably prior to appeal due to John's cross-examination of Data Treasury's experts.
  • Currently serving as lead trial and appellate counsel for multi-patent Hatch -Waxman litigation representing the manufacturer of Mucinex against generic challengers in the U.S. District Court for the District of Delaware and the U.S. Court of Appeals for the Federal Circuit.
  • Successfully defended the maker of Durex brand condoms against claims of infringing several patents asserted by the competitor brand Lifestyles in the District of Delaware.
  • Obtained landmark decision in ProCD v. Zeidenberg, 86 F.3d 1447, the first case in the country to enforce "shrink-wrap," "click-on" and "Web-wrap" licenses and contracts for protecting software and electronic data.
  • Served as lead counsel for the pharmaceutical manufacturer of a radiotherapeutic drug designed to treat metastatic carcinoid and pancreatic neuroendocrine tumors in a case before the District of Massachusetts involving European Union patent development rights, which settled favorably following extensive summary judgment briefing.
  • Represented a major pharmaceutical company in asserting claims against a competitor for the breach of a settlement agreement resolving rights from an ANDA patent litigation and related patent-based antitrust litigation.
  • Represented a pharmaceutical research and development company and its manufacturer of a wound treatment product against claims of trade secret misappropriation, breach of contract and related claims in the District of Massachusetts.

Practice Areas

Education

  • New York University School of Law, J.D.
  • Boston University, B.A., magna cum laude, with distinction

Admitted To Practice

  • Massachusetts, 1994
  • U.S. Court of Appeals, Federal Circuit
  • U.S. Court of Appeals, 1st Circuit
  • U.S. Court of Appeals, 7th Circuit
  • U.S. Court of Appeals, 9th Circuit
  • U.S. District Court, District of Massachusetts
  • U.S. District Court, Eastern District of Texas

Memberships & Affiliations

  • American Bar Association
  • Boston Bar Association
  • Intellectual Property Owners Association
  • American Intellectual Property Law Association
  • Federal Circuit Bar Association
  • Boston Patent Law Association
  • Innovation American Inn of Court, Member

Speaking & Publications

  • Speaker, “Post Trial Strategies – What to Do After You Win the Verdict,” IP Strategy Summit, Boston, MA, May 19, 2016
  • Author of “Halo and Stryker at the Supreme Court: Will the Essential Questions of Timing for Willfulness Be Left Unanswered?” Chapter in Inside the Minds – The Impact of Recent Patent Law Cases and Developments, 2016 Ed., Thompson Reuters / Aspatore Books
  • Quoted in "Fed. Circ. May Fill In Blanks On New Indefiniteness Rule," Law360, October 27, 2014
  • "Post-Nautilus Most Indefinite Patent Challenges Fail," Law360, September 16, 2014
  • Speaker, "Fight the Patent Trolls in 2014: Tactical and Practical Issues," The Knowledge Congress, Webcast Series, February 10, 2014
  • Quoted, "Software Patent Mess Hits High Court with WildTangent Case," Law360, August 26, 2013
  • Quoted, "Attorneys Discuss Impact of CLS Bank Decision," Law360, May 13, 2013
  • Speaker, "Strategic Choices in Patent Litigation Following Patent Reform and Chief Judge Rader's Recommendations," October 1, 2011
  • Speaker, "Lawyers in the Crosshairs: Ethical Dilemmas - Ethical Considerations in Patent and Trademark Proceedings," Corning, Inc. 2011 Global Meeting, September 30, 2011
  • Speaker and Panelist, "Top Ten Things You Need to Know About Patent Reform," Silicon Valley, September 29, 2011
  • "Patent Bar Split on Impact of New Law," Massachusetts Lawyers Weekly, September 26, 2011
  • Moderator, "An Update of Recent Supreme Court and Federal Circuit Decisions on Patent Law," American Bar Association Intellectual Property Roundtable, October 1, 2010
  • Speaker, "What Now for Patent Eligibility? In Bilski v. Kappos, the Supreme Court Rejects Machine or Transformation as the Sole Test," July 1, 2010
  • "Texas Eastern District: IP Equipoise?," Law360, January 5, 2009
  • Panel Moderator and Speaker, "Managing IP Smarter Not Harder," What's Your Next Move? IP in the New Business Reality, September 30, 2009
  • Panel Moderator and Speaker, "Changing IP Strategies in Lean Budget Times," Emerging Technologies Conference: Navigating a New World, September 29, 2009
  • "Patent Verdicts in Eastern Texas No Longer a Slam Dunk," Mass High Tech, December 5, 2008

Honors

  • World's Leading Patent Practitioners, Patent Litigation, IAM Patent 1000
  • Local Litigation Star, Benchmark Litigation
  • Massachusetts Super Lawyers Directory
  • Order of the Barristers and National Moot Court Team
  • Eagle Scout and Recipient of the Distinguished Service Award of the Order of the Arrow

Prior Experience

  • Hiscock & Barclay, LLP, Partner
  • Foley & Lardner, Boston IP Chairman, Partner
  • WilmerHale (formerly Hale and Dorr), Partner
  • Middlesex County Special Assistant District Attorney