John C. O'Quinn - Partner

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John C. O'Quinn

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Washington, D.C.
Phone: +1 202-879-5191
Fax: +1 202-879-5200
Overview News Publications

Professional Profile

John O’Quinn’s practice focuses on litigation, including intellectual property disputes, commercial litigation, regulatory matters, and other complex litigation matters at the trial and appellate levels. He has argued over fifty appeals in courts throughout the country, including more than two dozen in the U.S. Court of Appeals for the Federal Circuit. For each of the past five years he has been named in the IAM Patent 1000, particularly for his work in the Federal Circuit. His work has also been recognized in the National Law Journal, the Legal 500, the Financial Times, and in Law360, where he was named a “Rising Star” in appellate litigation. John has been to trial multiple times, where he has examined expert and fact witnesses. Representative clients include Abbott, Charter Communications, Cisco Systems, C.R. Bard, IBM, Motorola, POET LLC, and Teva Pharmaceuticals.

From 2006 to 2009, John served in the U.S. Department of Justice. As Deputy Associate Attorney General, he was responsible for helping to oversee much of the government’s civil litigation and reviewing proposed settlements of multi-million dollar civil cases brought by or against the government. As the Deputy Assistant Attorney General for the Federal Programs Branch of the Civil Division, John supervised more than 100 attorneys charged with defending the constitutionality of federal statutes and regulations, representing the diplomatic and national security interests of the United States in court, and conducting significant Title VII, personnel, social security, Medicare and Medicaid-related litigation. John worked with counsel from virtually every federal agency on complex civil litigation matters and personally directed significant cases defending the government’s interests, arguing more than 20 cases in federal court. In February of 2009, John was awarded the Office of the Secretary of Defense Medal for Exceptional Public Service for his leadership in defending the Department of Defense in lawsuits challenging the detention and trial of enemy combatants captured abroad by United States Armed Forces.

John was previously an associate with Kirkland from 2003 to 2006. While on leave from the Firm, he served as special counsel to the U.S. Senate Committee on the Judiciary for the nomination of Chief Justice Roberts. Prior to joining the Firm, John was a law clerk for Justice Antonin Scalia of the U.S. Supreme Court and Judge David Sentelle of the U.S. Court of Appeals for the D.C. Circuit.

While at Kirkland, John has also provided legal counseling and representation for individuals and organizations on a pro bono basis, including arguing a habeas petition on behalf of a defendant convicted of capital murder; submitting FOIA requests on behalf of a civil rights organization; challenging a state’s involuntary medication of competent patients on behalf of a disability rights organization; representing federal judges challenging Congress' failure to provide guaranteed COLAs as violating the Compensation Clause of the U.S. Constitution; and representing raisin farmers in their Supreme Court case challenging the federal government’s unconstitutional taking of a portion of their crops.


Representative Matters

Intellectual Property

  • Biscotti v. Microsoft (Fed. Cir. 2017): Argued on appeal that the PTAB properly construed Biscotti’s patent, and correctly found the claims neither anticipated nor obvious; Federal Circuit affirmed.

  • Arista v. International Trade Commission & Cisco (Fed. Cir. 2017): Defended the ITC’s decision finding Arista infringed Cisco’s patents, and defended the scope of the exclusion order.

  • Allergan v. Sandoz (E.D. Tex. & Fed. Cir. 2016-2017): Successfully argued on appeal that the district court’s finding of infringement should be reversed under a proper understanding of the claims.

  • In re Warsaw Orthopedic (Fed. Cir. 2016): Argued on behalf of patentee and obtained a rare remand from the Federal Circuit to the Patent Trial and Appeal Board of a finding of obviousness.

  • Commonwealth Scientific and Industrial Research Organisation v. Cisco (Fed. Cir. 2014-2016): Argued case on appeal for Cisco involving apportionment and standardization issues; vacated and remanded for new determination of damages.

  • Bard Peripheral Vascular v. W.L. Gore (Fed. Cir. & S. Ct. 2009-2015): Successfully represented Bard in multiple appeals to the Federal Circuit defending a jury verdict of infringement and validity, including a nine-figure damages verdict and an ongoing royalty award of 15-20 percent of revenues on infringing products through the expiration of the asserted patent. Successfully defended challenge to finding of willfulness and challenge to standing in subsequent appeal. Successfully opposed two petitions for certiorari in the Supreme Court, bringing the 41-year dispute to close.

  • Atlas IP v. Medtronic (Fed. Cir. 2014-2015): Defended claim construction and obtained remand on invalidity issues following argument in the Federal Circuit.

  • SynTest v. Cisco (Fed. Cir. 2014-2015): Argued case on appeal, affirmed claim construction and judgment of non-infringement.

  • CryoLife v. Medafor (D. Del. & Fed. Cir. 2014-2015): Obtained preliminary injunction halting CryoLife’s sales of an infringing medical product.

  • ViiV Healthcare v. Lupin (Fed. Cir. 2014-2015): Argued case on appeal, affirmed judgment of non-obviousness of multi-billion dollar HIV pharmaceuticals.

  • SynQor, Inv. v. Artesyn Technologies, Inc. (E.D. Tex. & Fed. Cir. 2011-2015): Represented Murata in a bench trial resulting in award of less than a tenth of what plaintiff was seeking. Successfully argued case on appeal.

  • Teva v. Sandoz (Supreme Court 2014-2015): Represented Teva in reversing Federal Circuit’s de novo standard of review of subsidiary factual findings made in the course of a district court’s construction of a patent claim.

  • Vasudevan Software v. Microstrategy (Fed. Cir. 2014-2015): Defended judgment of non-infringement on appeal for TIBCO Software based on claim construction.

  • Warsaw Orthopedic v. NuVasive (Fed. Cir. 2014-2015): Defended judgment of infringement and no invalidity on spinal implant patents.

  • Ericsson v. D-Link Systems (Fed. Cir. 2013-2014): Represented Intel in successful appeal over application of apportionment principles to determining royalty base in the case of standard-essential patents, and proper use of the Georgia-Pacific factors where the patent is subject to RAND licensing terms.

  • Intellectual Ventures v. JP Morgan Chase (Fed. Cir. 2014-present): Representing defendants in dispute over the right to appeal a decision denying a stay of district court litigation pending the Patent Office’s institution of covered business method patent review.

  • In re Spansion (D.Del. & 3d Cir. 2010-2012): Represented client in a successful appeal of a bankruptcy court decision finding that Spansion's rejection of an intellectual property license left the client without rights under 11 U.S.C. § 365(n). After winning in the district court, successfully defended decision in the Third Circuit following oral argument.

  • Siemens v. Saint-Gobain (Fed. Cir. & S. Ct. 2010-2012): Represented Siemens on appeal in successfully defending District Court judgment of infringement under the doctrine of equivalents. Obtained denial of certiorari in the U.S. Supreme Court.

  • uShip Intellectual Properties v. IBM (Fed. Cir. 2012-2013): Defended judgment of non-infringement on appeal for IBM based on claim construction.

  • Fifth Generation v. IBM (Fed. Cir. 2010-2011): Represented IBM on appeal in patent infringement suit over IBM's BlueGene supercomputer. Successfully defended the District Court's claim construction and judgment of non-infringement.

  • SLR Partners v. B. Braun Medical, Inc. (S.D. Cal. & Fed. Cir. 2009-2010): Counsel for B. Braun Medical in company-threatening patent infringement action, successfully defeating attempts to preclude Braun from marketing its innovative IV catheter and medical connector products. Argued and won motion to dismiss in S.D. California. Successfully argued appeal in the Federal Circuit.

  • Rambus, Inc. v. Infineon Tech., AG. (E.D. Va. 2005): Represented Infineon in patent infringement action involving computer memory (SDRAM DDR SDRAM) technology. Assisted in successfully trying spoliation and inequitable conduct defenses. Client subsequently reached a favorable settlement on all claims.

General Litigation

  • In re Millennium Lab Holdings (Bankr. D. Del. 2016-2017): Successfully argued on remand from appeal that inclusion of third-party releases in a Plan of Reorganization did not violate the Constitution under Stern v. Marshall.

  • U.S. ex rel Colquitt v. Abbott Laboratories (5th Cir. 2017): Successfully defended trial win for Abbott Laboratories in a billion-dollar False Claims Act case alleging that Abbott promoted its biliary stents for off-label use in vascular stenting procedures that were then billed to Medicare.

  • In re Caesars Entertainment Operating Co. (7th Cir. 2015): Argued successfully that Section 105 injunctions of third-party litigation should be granted when they will enhance the prospects for a successful resolution of the bankruptcy

  • Horne v. U.S. Dep’t of Agriculture (9th Cir. & Supreme Court 2013-2015): Successfully represented raisin farmers in challenge to USDA unconstitutional taking of a portion of farmers’ crop.

  • Independent Pilots Ass’n v. FAA (D.C. Cir. 2015-2016): Intervened and argued on behalf of Cargo Airline Association to successfully defend FAA flight duty rule.

  • In re Actos End Payor Antitrust Litigation (S.D.N.Y. 2014-2015): Successfully argued motion to dismiss in patent-settlement antitrust litigation, addressing the scope of the Supreme Court’s decision in FTC v. Actavis.

  • SEC v. Securities Investor Protection Corp. (D.D.C. & D.C. Cir. 2011-2014): Successfully represented SIPC against claims by SEC that SIPC was required to cover losses arising from Allen Stanford Ponzi scheme. Affirmed by the D.C. Circuit.

  • In re Charter Communications (S.D.N.Y., 2d Cir. & S. Ct. 2009-2013): Counsel for Charter in multi-billion dollar bankruptcy confirmation proceeding. Argued on behalf of Charter in the District Court and the Second Circuit. Successfully defended plan of reorganization in multiple appeals and against certiorari.

  • Beer et al. v. United States (Fed. Cir. & S. Ct. 2011-2013): Successfully represented group of senior and retired Federal Judges challenging Congress' failure to provide guaranteed cost of living adjustments as violating the Compensation Clause of the Constitution; successfully opposed certiorari.

  • In re Modafinil Antitrust Litigation (E.D. Pa. 2009-present): Represent drug manufacturer in class action and opt-out litigation asserting antitrust violations from the settlement of pharmaceutical patent infringement litigation.

  • National Chicken Council v. EPA, et al. (D.C. Cir. 2011-2012): Successfully argued on behalf of Growth Energy and other Intervenors that a challenge to the Federal Renewable Fuel Standards should be dismissed for lack of standing.

  • Agility Defense & Government Services, Inc. v. DynCorp International (2010-2012): Represented Agility in a successful, three-week AAA arbitration in a government contracting dispute over a joint venture.

  • Teva Pharmaceuticals v. FDA (D.D.C. & D.C. Cir. 2005-2006): Successfully represented Teva Pharmaceuticals in a series of administrative law actions against FDA over generic exclusivity under the Hatch-Waxman Act.

  • Leonard v. Nationwide Mutual Insurance Co. (S.D. Miss. 2006): Represented Nationwide Insurance in dozens of Hurricane Katrina coverage cases in state and federal courts, including taking the ground-breaking first Katrina case to trial. The Court upheld the validity and enforceability of the water damage exclusion in Nationwide's insurance policy. 438 F. Supp. 2d 684 (S.D. Miss. 2006).


Other Distinctions

The Legal 500 United States for Appellate, 2017 and 2018

The Legal 500 United States for Trademarks: Litigation, 2018

The National Law Journal, Litigation Trailblazers of the Year, 2015

Financial Times, North America Innovative Lawyers, 2015

The Am Law Litigation Daily, Litigators of the Week, October 8, 2015

IAM Patent 1000 - The World’s Leading Patent Professionals 2014, 2015, 2016, 2017, 2018

Legal Who's Who, Corporate Responsibility Magazine, 2014

Law360 Appellate Rising Star, 2013

The Legal 500 United States for Trade Secrets, 2013

Office of the Secretary of Defense Medal for Exceptional Public Service, 2009

Special Commendation, Civil Division, U.S. Department of Justice, 2008

The Honor Society of Phi Kappa Phi National Board of Directors, 2012-2014

Eagle Scout, Boy Scouts of America


Publications

What’s Next For Issue Preclusion And Patent Invalidity, Law360 (June 28, 2018)

A Spectrum of Abuse at FCC?, The Washington Times (July 25, 2004)

Three Strikes for the FCC: Government regulation stifles the telecom industry, National Review Online (March 18, 2004) (with Jay Lefkowitz)

Protecting Private Intellectual Property from Government Intrusion: Revisiting SmithKline and the Case for Just Compensation 29 PEPP. L. REV. 435 (2002)

There's No Place Like Home: Finding Personal Jurisdiction in ANDA Patent Cases After Zeneca v. Mylan Pharmaceuticals, 10 FED. CIR. B. J. 335 (2000), reprinted from 13 HARV. J. L. & TECH. 129 (1999) (Second Place Winner of the Federal Circuit Bar Association's 2000 George Hutchinson Writing Competition)

Note, Not-So-Strict Liability: A Forseeability Test for Rylands v. Fletcher and Other Lessons from Cambridge Water Co. v. Eastern Counties Leather plc, 24 HARV. ENVTL. L. REV. 287 (2000)


Prior Experience

Research Assistant to Professor Laurence Tribe, Harvard Law School, 2000-2001

Bayer AG, Leverkusen, Germany, Engineering Intern, 1998

Dow Chemical Company, Freeport, Texas, Engineering Intern, 1998

Exxon Chemical Company, Baton Rouge, Louisiana, Engineering Intern, 1996


Courts

Supreme Court of the United States

Numerous U.S. Courts of Appeals

U.S. District Court for the District of Columbia

 

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