About Roberts IP Law

Introduction:

Roberts IP Law comprises patent attorney John Roberts, his assistant Dr. Leah Jackman-Wheitner, and a flexible team of contract support staff and key affiliates.

Since 2000 Mr. Roberts has provided businesses, premier law firms, and select individuals with specialized legal services to help them with intellectual property (or “IP”) matters, including patents, trademarks, copyrights, and trade secrets, as well as related unfair competition, false advertising, and anti-trust issues.

United States Patent and Trademark Office, Registered Patent Attorney No. 50453
Supreme Court of California, Bar No. 208927
Supreme Court of Indiana, Bar No. 23363-49

Background:

Mr. Roberts is a native of San Diego, California and Columbus, Indiana.  He received a Bachelor of Science degree in Mechanical Engineering Technology from Purdue University in 1994 and a J.D. degree, cum laude, in 2000 from the University of San Diego School of Law, where he was a member of the San Diego Law Review, achieved the highest class grade in several courses including Intellectual Property Law and Biotechnology Patent Law, received a merit-based full scholarship and was awarded membership in the Order of the Coif.

Mr. Roberts practiced IP law as a first-chair patent litigator with Procopio, Cory, Hargreaves & Savitch, LLP, one of the largest full-service business law firms in Southern California.  Prior to that he practiced IP law with the oldest intellectual property boutique in Indiana, Woodard, Emhardt, Moriarty, McNett & Henry LLP, and began his practice in California with what was then one of the largest, oldest and most preeminent intellectual property firms in the nation, Lyon & Lyon LLP.

Before practicing law Mr. Roberts worked as a product design engineer for General Motors in their steering systems division where he led their first successful venture with any Japanese company, Nissan.  Mr. Roberts also worked as product engineering team leader for Parker Hannifin – another Fortune 200 company – where he personally added about $7 million in sales to a $20 million division.

As an inventor, Mr. Roberts received a patent for a steering invention.

Mr. Roberts is admitted to practice in the state and federal courts of California and Indiana, and is registered to practice throughout the United States before the United States Patent and Trademark Office.

Broad Experience:

Mr. Roberts has broad experience helping clients protect a wide variety of technologies. He focuses his practice on the following areas of the law:

  • Intellectual Property
  • Patent Prosecution and Counseling:
    • Medical Devices / Dental, Orthotics, Pacemakers
    • Biotech / Food Products, Processing
    • Optics / Lenses, Projection Systems
    • Automotive / Mechanical, Electrical, Safety, Hybrids
    • Television / Digital Television, Satellite Systems
    • Consumer Goods / Sports Equipment, Miscellaneous
    • Computer / Internet, Software, Systems
    • Military / Secret
    • Industrial / Pipelines, Valves, Generator Systems
    • Architecture / Construction Systems
    • Environmental / Water Contamination Prevention
    • Solar Technologies
  • Trademark Prosecution and Counseling
  • Copyright Prosecution and Counseling
  • Trade Secret Counseling
  • Licensing
  • Emerging Growth and Technology

Deep Experience:

Mr. Roberts’ work is informed by the real-world crucible of the courtroom, where he has participated in many high-stakes IP litigations in federal courts throughout the country.

Following are some representative IP litigations for which Mr. Roberts has been engaged, from brief writing to first-chair responsibility, including discovery battles, depositions of experts, Markman hearings, TTAB and reexamination proceedings before the USPTO, as well as jury trial and appeal in federal court:

  • AddVenture Products, Inc. v. Simply Smashing, Inc.
  • AddVenture Products, Inc. v. Smoothreads, Inc. (aka $2.95 Guys)
  • AddVenture Products, Inc. v. Purple G. et al.
  • Drenis, et al. v. Ardantz Associates, LP
  • LNCA, L.L.C. v. Antaya Technologies Corp.
  • Bacus Lab Inc. v. Aperio Tech Inc. et al.
  • Carbolite Foods, Inc. v. F.G.H. Consulting U.S.A., Inc.
  • Carbolite Foods, Inc. v. Online Cities, LLC
  • Carbolite Foods, Inc. v. Pure De-Lite Products, Inc.
  • Carbolite Foods, Inc. v. Universal Nutrition
  • Universal Protein Supplements Corp. d/b/a Universal Nutrition v. Carbolite Foods, Inc., and Big Bear Natural Foods, Inc.
  • Universal Protein Supplements Corp. d/b/a Universal Nutrition v. Carbolite Foods, Inc.
  • Dickey Consumer Products, Inc. v. CB Distributors, Inc.
  • Cook Biotech, Inc., et al. v. Acell, Inc., et al.
  • Cordis Corporation v. Cook Incorporated
  • C.P. Morgan Co., Inc. v. Hearthstone Homes, Inc.
  • Magnequench v. Dell Corporation, et al.
  • St. Croix Of Park Falls, Ltd. v. Duhamel & Dewar, Inc.
  • Dawson, et al v. Engineering Fitness, Inc. (Total Gym)
  • Suntrust Banks, Inc. v. Federated Holdings Group Ltd., et al.
  • Florists’ Transworld Delivery, Inc. (FTD) v. [5 different cases, including against ProFlowers, etc.]
  • CMG Worldwide, Inc. v. Frito-Lay, et al.
  • Hydrological Services America, LLC v. Rickly Hydrological Company, Inc., et al.
  • K-Swiss (shoes) v. [20+ different cases, including against Target, Payless Shoesource, Armani, L.A. Gear, Lugz, Puma, etc.]
  • DataQuill Limited v. Kyocera Wireless Corp.
  • Liaison Software Corp. v. MK Software, Inc.
  • NeilMed Products, Inc. v. Med-Systems, Inc.
  • Mazza v. Hands On Originals, Inc.
  • Med-Systems, Inc. v. Johnson & Johnson
  • Med-Systems, Inc. v. NeilMed Products, Inc.
  • MH Systems, Inc. v. NEI Treatment Systems, et al.
  • JCW Investments d/b/a Tekky Toys v. Novelty, Inc.
  • Aerus, LLC v. ProTeam, Inc.
  • Synopsys, Inc. v. Magma Design Automation (in re. Q-Think)
  • Rose Acre Farms, Inc. v. North Carolina State University
  • Michael Foods, Inc. and North Carolina State University v. Rose Acre Farms, Inc.
  • Jack Schwartz Shoes, Inc. v. Royal Elastics, Inc.
  • Caddy Products, Inc. v. Seating Concepts LLC
  • Speedster Motorcars Of Central Florida, Inc, d/b/a Speedster Motorcars v. Matthew Ospeck
  • Matthew Ospeck v. Speedster Motorcars of Central Florida, Inc., et al; Tim Durham; and Obsidian Enterprises, Inc.
  • St. Jude Medical Products and Pacesetter v. Guidant and Cardiac Pacemakers, Inc.
  • Yield Dynamics, Inc. v. Syntricity, Inc., et al.
  • R.A. Phillips Industries, Inc. v. Tectran Manufacturing, Inc.
  • Pegasus Development Corp., and PMC, LLC v. Thomson Consumer Electronics Inc. (RCA), et al.
  • TrekEight, LLC v. Symantec Corporation
  • Universal Merchandisers Inc. v. Naschem Company, Ltd.
  • APMC San Diego Hotel Management, LLC, et al. v. U.S. Grant Hotel Ventures, LLC, et al.
  • Rosen’s, Inc., et al. v. Van Diest Supply Co., et al.
  • Viasat, Inc. v. ViewTech, Inc.
  • Provide Commerce, Inc. v. Websidestory, Inc., et al.
  • X Concepts, LLC v. Play Visions, Inc., et al.

Other Notables:

Mr. Roberts has been active with the American Intellectual Property Law Association and various bar, business and civic associations, is an alumnus of Leadership Bartholomew County, and the Board of Directors of the Bartholomew County Bar Association.

Mr. Roberts enjoys spending time with his family, and as time permits his hobbies include hiking, bicycling, weightlifting, reading, and restoring and riding motorcycles.
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