John Lane

Expertise John Advises Experience Highlights Career History

Partner

Intellectual Property

(332) 895-5241

Expertise

John has acquired more than 30 years of high-level international experience in all aspects of intellectual property practice, with a particular specialty in complex patent and trademark litigation and counselling over a broad spectrum of technologies and products.

John has acted as lead or supporting counsel in a variety of patent, trademark and trade secret cases before several U.S. Courts. He has handled the successful enforcement and defense of a variety of intellectual property disputes through multiple actions in the U.S. and abroad.

As a registered patent attorney with a high-tech competency, he has helped to proactively and reactively protect clients in the areas of polymer chemistry, pharmaceuticals, embedded electronic smart cards and RFID tags, automotive products, shape memory alloys, footwear, magnetically attachable eyewear lenses, bicycle components, toys and computer and internet related technologies, including blockchain and NFT platforms.

John has also led numerous successful trademark representations of major consumer and publishing brands including multiple trademark and unfair competition litigations involving high-end fashion, art and culinary publications, furniture design, restaurants, internet service providers, watches, eyewear brands and many other consumer goods and services.

Through his past experience in Europe, John has become a trusted advisor to European companies and law firms with U.S. based intellectual property legal needs.

John Advises

  • FinTech/Blockchain/NFT Companies
  • High-End Fashion, Apparel, Footwear and Eyewear Brands
  • Publishing Brands
  • Pharma and Chemical industry
  • Metallurgy
  • Restaurant and Food Brands
  • Bicycle and Toy Products
  • Smart Card/RFID Devices

Experience Highlights

Trademark/Copyright Representative Matters

  • Representation of well-known London-based publisher of books in several trademark and copyright disputes resulting in successful out-of court resolutions.
  • Successful procurement of stylized trademark registration for financial services firm, and defense of infringement allegations through successful out-of court resolutions.
  • Representation in trademark and copyright disputes resulting in successful out-of court resolutions involving client’s sweater designs.
  • Representation of media company in licensing of extensive animated children’s programming to several licensees.
  • Successful defense of trademark infringement claim against European-based client relating to launch of couture collection after early mediation and settlement agreement leading to dismissal of claims,
  • Successful resolution for Bayer after summary judgment motion and mediation to acquire plaintiff’s U.S. registration of internationally famous Bayer brand through unique application of Paris and Pan American Conventions,

Patent Representative Matters

  • Successful procurement of bio-based women’s apparel patent for leading intimate apparel manufacturer.
  • Successful procurement of environmentally safe shark barrier patent for leading marine biologist.
  • In a pending matter, summary judgment for a big-box client in a sandal and design patent.
  • Grant of summary judgment invalidating plaintiff’s toy patent, dismissal of false marking claim and entry of final judgment dismissing action including an award of costs in favor of client/defendant.
  • Grant of summary judgment in favor of smart card/RFID device client for breach of license agreement and trade secret misappropriation for manufacturing processes for smart cards and RFID devices, including exclusion of plaintiff’s expert evidence before trial,
  • Successful resolution for eyewear company of infringement claim relating to patent for magnetic clip-on eyewear technology.
  • Successful resolution after mediation of patent infringement and trade secret claims for Australian- based client against major Italian manufacturer through licensing, manufacturing and distribution agreement in the field of specialty bicycle equipment.
  • Successful enforcement of patent infringement claims on behalf of eyewear company through consent judgments, injunctions and mediations against multiple infringers following narrowing claim construction which also lead to enforcement against additional infringers in several European countries and in China.
  • Successful jury trial determination and damages award for infringement of eyewear patents and precedential decisions on claim construction principles contemporaneous with Federal Circuit and Supreme Court Markman decisions;
  • Grant of Preliminary injunction in favor of patentee-clients to prevent mass importation of infringing shape memory eyewear;
  • Early Hatch Waxman suit settled before trial leading to launch of generic form of Zantac (ranitidine hydrochloride)];
  • Successful defense of infringement claim through grant of summary judgment based on discovery of knock-out public use evidence in favor of client, allowing continued sale of the Cannondale famous wide-tube aluminum bicycle frames.
  • Precedential decision on patent damages after full trial regarding assessment of reasonable royalty damages in complex chemical patent action and reversal by district court of special master’s initial enhanced damage and attorney’s fees award.
  • Several trials before the High Court of Justice, Chancery Division [Patents Court], London in patent infringement cases, including precedential decisions on purposive claim construction, invalidation of patent through evidence of prior use and sale and referrals to the European Court of Justice on competition law questions.

Career History

Previous Law firms

  • GS2Law LLP, Partner (2013-2023)
  • Cowan Liebowitz & Latman, P.C.,Partner (2011-2013)
  • Frommer Lawrence & Haug LLP, Founding Partner (1997-2010)
  • Curtis Morris & Safford, Associate/Partner (1992-1997)
  • Finnegan Henderson Farabow Garrett & Dunner, Associate (1991-1992)
  • The Chambers of Stephen Gratwick, Q.C., Pupil/Junior Barrister (1989-1991)
  • Pennie & Edmonds, Associate (1984-1989)

Admitted to Practice

  •  New York, 1985
  • England and Wales, 1989
  • S. Supreme Court, 1996
  • S. Court of Appeals for the Federal Circuit, 1989
  • Southern (1986) & Eastern (1992) Districts of New York
  • District of Colorado (2009)
  • Southern, Northern & Middle Districts of Florida
  • Central & Southern Districts of California
  • Registered to practice before U.S. Patent and Trademark Office (1992)

 Education

  • Inns of Court School of Law, (London)
  • State University of New York at Buffalo School of Law, JD
  • General Motors Institute, Bachelor of Mechanical Engineering (BME)

Awards and Honors

  • Linn Inn Alliance of the American Inns of Court/William Conner American Inn of Court- Distinguished Service Award (2017);
  • Denis McInerney American Inn of Court- Distinguished Service Award (2009)

Publications/Events

  • The Wright v. Curtiss “Aeroplane” Patent Litigations (Historical Appellate Reenactment); Thurgood Marshall Courthouse, New York, NY ; 125th Anniversary Program (U.S. Court of Appeals for the 2nd Circuit), November 16, 2016:
  • Who Really Invented the Telephone? (Historical Reenactment); William Conner American Inn  of Court/ New York University Law School, New York , NY (March 22, 2011);
  • Speaker/Panelist: Global IP-Positioning Strategies, AIPLA Spring Meeting (May 2010) New York, NY
  • Speaker/Panelist: Models of Modernity for Commercial Litigation, ABA Section of International Law (October 2011) Dublin, Ireland
  • Presenter/Panelist: Calculation of Damages in a Patent Case, Joint NYIPLA/Conner Inn of Court program (March 2010)
  • Speaker/Panelist: Annual Intellectual Property Law and Policy Conference at Cambridge University; April 15-16, 2009, Fordham University Law School
  • Speaker: Boehmert & Boehmert Training Course 2003-2008: Obtaining, Enforcing and Evaluating Intellectual Property Rights in Europe, Munich, Germany

Professional and Community Involvement

Professional:

  • William C. Conner American Inn of Court (Master & Executive Committee Member) (2008- 2017)
  • Honourable Society of the Middle Temple, London

Community:

  • The Chapel Restoration, Cold Spring, NY- Board Member (2022- present)

Other

  • Living Before, Through and With Markman: Claim Construction As A Matter Of Law, Buffalo Intellectual Property Law Journal (May 2001).
  • ‘The Fromson Rule: Should the Respect for Patent Rights Take Precedence Over the Attorney-Client Privilege?’ 49 The Record of the Assoc. of the Bar, 969 (December 1994)
  • ‘What Level of Disclosure is Required to Anticipate a Patented Invention by Prior Publication or Use?’ 12 European Intellectual Property Review 462 (December 1990)

Expertise

Back to top

John has acquired more than 30 years of high-level international experience in all aspects of intellectual property practice, with a particular specialty in complex patent and trademark litigation and counselling over a broad spectrum of technologies and products.

John has acted as lead or supporting counsel in a variety of patent, trademark and trade secret cases before several U.S. Courts. He has handled the successful enforcement and defense of a variety of intellectual property disputes through multiple actions in the U.S. and abroad.

As a registered patent attorney with a high-tech competency, he has helped to proactively and reactively protect clients in the areas of polymer chemistry, pharmaceuticals, embedded electronic smart cards and RFID tags, automotive products, shape memory alloys, footwear, magnetically attachable eyewear lenses, bicycle components, toys and computer and internet related technologies, including blockchain and NFT platforms.

John has also led numerous successful trademark representations of major consumer and publishing brands including multiple trademark and unfair competition litigations involving high-end fashion, art and culinary publications, furniture design, restaurants, internet service providers, watches, eyewear brands and many other consumer goods and services.

Through his past experience in Europe, John has become a trusted advisor to European companies and law firms with U.S. based intellectual property legal needs.

John Advises

Back to top
  • FinTech/Blockchain/NFT Companies
  • High-End Fashion, Apparel, Footwear and Eyewear Brands
  • Publishing Brands
  • Pharma and Chemical industry
  • Metallurgy
  • Restaurant and Food Brands
  • Bicycle and Toy Products
  • Smart Card/RFID Devices

Experience Highlights

Back to top

Trademark/Copyright Representative Matters

  • Representation of well-known London-based publisher of books in several trademark and copyright disputes resulting in successful out-of court resolutions.
  • Successful procurement of stylized trademark registration for financial services firm, and defense of infringement allegations through successful out-of court resolutions.
  • Representation in trademark and copyright disputes resulting in successful out-of court resolutions involving client’s sweater designs.
  • Representation of media company in licensing of extensive animated children’s programming to several licensees.
  • Successful defense of trademark infringement claim against European-based client relating to launch of couture collection after early mediation and settlement agreement leading to dismissal of claims,
  • Successful resolution for Bayer after summary judgment motion and mediation to acquire plaintiff’s U.S. registration of internationally famous Bayer brand through unique application of Paris and Pan American Conventions,

Patent Representative Matters

  • Successful procurement of bio-based women’s apparel patent for leading intimate apparel manufacturer.
  • Successful procurement of environmentally safe shark barrier patent for leading marine biologist.
  • In a pending matter, summary judgment for a big-box client in a sandal and design patent.
  • Grant of summary judgment invalidating plaintiff’s toy patent, dismissal of false marking claim and entry of final judgment dismissing action including an award of costs in favor of client/defendant.
  • Grant of summary judgment in favor of smart card/RFID device client for breach of license agreement and trade secret misappropriation for manufacturing processes for smart cards and RFID devices, including exclusion of plaintiff’s expert evidence before trial,
  • Successful resolution for eyewear company of infringement claim relating to patent for magnetic clip-on eyewear technology.
  • Successful resolution after mediation of patent infringement and trade secret claims for Australian- based client against major Italian manufacturer through licensing, manufacturing and distribution agreement in the field of specialty bicycle equipment.
  • Successful enforcement of patent infringement claims on behalf of eyewear company through consent judgments, injunctions and mediations against multiple infringers following narrowing claim construction which also lead to enforcement against additional infringers in several European countries and in China.
  • Successful jury trial determination and damages award for infringement of eyewear patents and precedential decisions on claim construction principles contemporaneous with Federal Circuit and Supreme Court Markman decisions;
  • Grant of Preliminary injunction in favor of patentee-clients to prevent mass importation of infringing shape memory eyewear;
  • Early Hatch Waxman suit settled before trial leading to launch of generic form of Zantac (ranitidine hydrochloride)];
  • Successful defense of infringement claim through grant of summary judgment based on discovery of knock-out public use evidence in favor of client, allowing continued sale of the Cannondale famous wide-tube aluminum bicycle frames.
  • Precedential decision on patent damages after full trial regarding assessment of reasonable royalty damages in complex chemical patent action and reversal by district court of special master’s initial enhanced damage and attorney’s fees award.
  • Several trials before the High Court of Justice, Chancery Division [Patents Court], London in patent infringement cases, including precedential decisions on purposive claim construction, invalidation of patent through evidence of prior use and sale and referrals to the European Court of Justice on competition law questions.

Career History

Back to top

Previous Law firms

  • GS2Law LLP, Partner (2013-2023)
  • Cowan Liebowitz & Latman, P.C.,Partner (2011-2013)
  • Frommer Lawrence & Haug LLP, Founding Partner (1997-2010)
  • Curtis Morris & Safford, Associate/Partner (1992-1997)
  • Finnegan Henderson Farabow Garrett & Dunner, Associate (1991-1992)
  • The Chambers of Stephen Gratwick, Q.C., Pupil/Junior Barrister (1989-1991)
  • Pennie & Edmonds, Associate (1984-1989)

Admitted to Practice

  •  New York, 1985
  • England and Wales, 1989
  • S. Supreme Court, 1996
  • S. Court of Appeals for the Federal Circuit, 1989
  • Southern (1986) & Eastern (1992) Districts of New York
  • District of Colorado (2009)
  • Southern, Northern & Middle Districts of Florida
  • Central & Southern Districts of California
  • Registered to practice before U.S. Patent and Trademark Office (1992)

 Education

  • Inns of Court School of Law, (London)
  • State University of New York at Buffalo School of Law, JD
  • General Motors Institute, Bachelor of Mechanical Engineering (BME)

Awards and Honors

  • Linn Inn Alliance of the American Inns of Court/William Conner American Inn of Court- Distinguished Service Award (2017);
  • Denis McInerney American Inn of Court- Distinguished Service Award (2009)

Publications/Events

  • The Wright v. Curtiss “Aeroplane” Patent Litigations (Historical Appellate Reenactment); Thurgood Marshall Courthouse, New York, NY ; 125th Anniversary Program (U.S. Court of Appeals for the 2nd Circuit), November 16, 2016:
  • Who Really Invented the Telephone? (Historical Reenactment); William Conner American Inn  of Court/ New York University Law School, New York , NY (March 22, 2011);
  • Speaker/Panelist: Global IP-Positioning Strategies, AIPLA Spring Meeting (May 2010) New York, NY
  • Speaker/Panelist: Models of Modernity for Commercial Litigation, ABA Section of International Law (October 2011) Dublin, Ireland
  • Presenter/Panelist: Calculation of Damages in a Patent Case, Joint NYIPLA/Conner Inn of Court program (March 2010)
  • Speaker/Panelist: Annual Intellectual Property Law and Policy Conference at Cambridge University; April 15-16, 2009, Fordham University Law School
  • Speaker: Boehmert & Boehmert Training Course 2003-2008: Obtaining, Enforcing and Evaluating Intellectual Property Rights in Europe, Munich, Germany

Professional and Community Involvement

Professional:

  • William C. Conner American Inn of Court (Master & Executive Committee Member) (2008- 2017)
  • Honourable Society of the Middle Temple, London

Community:

  • The Chapel Restoration, Cold Spring, NY- Board Member (2022- present)

Other

  • Living Before, Through and With Markman: Claim Construction As A Matter Of Law, Buffalo Intellectual Property Law Journal (May 2001).
  • ‘The Fromson Rule: Should the Respect for Patent Rights Take Precedence Over the Attorney-Client Privilege?’ 49 The Record of the Assoc. of the Bar, 969 (December 1994)
  • ‘What Level of Disclosure is Required to Anticipate a Patented Invention by Prior Publication or Use?’ 12 European Intellectual Property Review 462 (December 1990)