Biography

John has been practicing intellectual property law for over 20 years and is registered before the United States Patent and Trademark Office.

John has worked as the Chief Intellectual Property Counsel at private and publicly traded high-tech companies in the biotechnology industry (IGEN International, Inc. and Meso Scale Diagnostic, LLC) and the semiconductor industry (ATMI, Inc.), advising on a myriad of intellectual property and corporate issues.

His current practice focuses on patent counseling, preparation and prosecution as well as patent transactions, IP audits, due diligence evaluations, and patent litigation. John has worked with clients in a wide variety of technologies, life sciences and other industries on developing strategies for patent portfolios and managing patent prosecution, negotiating complex corporate, commercial, technology and intellectual property agreements, and advising on intellectual property aspects of merger and acquisition transactions.

John has worked at various law firms in Manhattan as a patent lawyer and has expertise in all areas of patent law, including transactions, litigation, licensing, prosecution and counseling.

Before entering private practice, John worked at the US Patent and Trademark Office examining patent applications for inventions relating to high temperature oxide superconductors, coatings, ceramics, pigments, piezoelectric materials and dental compositions, while attending law school at night.

John is also an inventor with several patents to his name and has negotiated IP transaction agreements resulting in the sale of two groups of patent assets to Apple, Inc. in 2010, one relating to targeted advertising and the other relating to online events and location-based networking.

John also successfully litigated breach of contract claims against two companies in an American Arbitration Association hearing, resulting in a damages award.

For more comprehensive information on John’s patent and technical expertise, please see the Patents and Patent Application section below for a list of several of the patents and patent applications he has drafted and/or prosecuted to allowance.

Presentations & Teaching Experience:

Speaker: Course entitled “Patent Family Analysis”, Certified Patent Valuation Analyst (cpva.info), 2014.
Conference Chair: Chaired session entitled “Concept to Product: Intellectual Property & Business Development” at The Society for Biological Screening, 10th Annual Conference & Exhibition, September 2004, Orlando, Florida.
Speaker: Presentation entitled “A Comparison of Patents, Trademarks, Copyrights, and Trade Secrets”, The Society for Biological Screening, 8th Annual Conference & Exhibition, September 22-26, 2002, The Hague, Netherlands.

Publications:

IPwatchdog.com – The Top 5 IP Mistakes Tech Startups Make (May 21, 2011)

Certificates:

English Common Law: Structure and Principles, University of London (Coursera).
An Introduction to Corporate Finance, The Wharton School of the University of Pennsylvania (Coursera).
An Introduction to Marketing, The Wharton School of the University of Pennsylvania (Coursera).
Financial Markets, Yale University (Coursera).
Analyzing Global Trends for Business and Society, The Wharton School of the University of Pennsylvania (Coursera)

Patents and Patent Applications

WO/2014/055717 Aero boost – gas turbine energy supplementing systems and efficient inlet cooling and heating, and methods of making and using the same (PowerPhase LLC.)
WO/2014/066276 Gas turbine energy supplementing systems and heating systems, and methods of making and using the same (PowerPhase LLC.)
WO/2013/151909 Compressed air injection system method and apparatus for gas turbine engines (PowerPhase LLC.)
WO/2013/116185 Gas turbine energy storage and energy supplementing systems and methods of making and using the same (PowerPhase LLC.)
WO/2013/025582 High output modular CAES (HOMC) (PowerPhase LLC.)
WO/2013/188443 Fluid level and volume measuring systems and methods of making and using the same (Tidewater Sensors)
US Patent Publication No. 20110288917 Systems and Methods for Providing Mobile Targeted Advertisements (Weabot, Inc.)
US Design Patent 575297 Computer generated image for a display panel or screen (Meso Scale Technologies, LLC.)
US Design Patent 493232 Diagnostic Instrument (Meso Scale Technologies, LLC.)
US Design Patent 516221 Diagnostic Instrument (Meso Scale Technologies, LLC.)
US Design Patent 650392 Graphic user interface for a display panel or screen (Meso Scale Technologies, LLC.)
US Design Patent 502184 Computer generated image for a display panel or screen (Meso Scale Technologies, LLC.)
US Patent Publication No. 20040189311 Assay cartridges and methods of using the same (Meso Scale Technologies, LLC.)
US Patent Publication No. 20040022677 Assay plates, reader systems and methods for luminescence test measurements (Meso Scale Technologies, LLC.)
US Patent Publication No. 20030124572 Assay electrode having immobilized lipid/protein layers, methods of making the same and methods of using the same for luminescence test measurements (Meso Scale Technologies, LLC.)
US Patent Publication No. 20030059839 Method for detecting pathogens using immunoassays (IGEN International, Inc.)
US Patent No. 7,063,946 Methods, reagents, kits and apparatus for protein function analysis (Meso Scale Technologies, LLC.)
U.S. Patent No. 6,160,162 Methods of catalytic oxidation of propane to acrylic acid (Saudi Basic Industries Corporation)
U.S. Patent No. 6,156,928 Method for gas phase production of acetic acid from ethane (Saudi Basic Industries Corporation)
U.S. Patent No. 6,143,928 Catalysts for low temperature selective oxidation of propylene, methods of making and using the same (Saudi Basic Industries Corporation)
U.S. Patent No. 6,143,921 Method for producing vinyl acetate monomer from ethane or ethylene oxidation (Saudi Basic Industries Corporation)
U.S. Patent No. 6,124,412 Alumoxane-enhanced, supported ziegler-natta polymerization catalysts, methods of making same, processes of using same and polymers produced therefrom (Saudi Basic Industries Corporation)
U.S. Patent No. 6,087,525 Highly Active and Selective Catalysts for the Production of Unsaturated Nitriles, Methods of Making and Using the Same (Saudi Basic Industries Corporation)
U.S. Patent No. 6,087,297 Catalysts for Gas Phase Production of Acetic Acid from Ethane, Processes of Making the Same and Methods of Using the Same (Saudi Basic Industries Corporation)
U.S. Patent No. 6,060,421 Catalysts for the oxidation of ethane to acetic acid, methods of making and using the same (Saudi Basic Industries Corporation)
U.S. Patent No. 6,037,304 Highly Active and Selective Catalysts for the Production of Unsaturated Nitriles, Methods of Making and Using the Same (Saudi Basic Industries Corporation)
U.S. Patent No. 6,030,920 Catalysts for Producing Acetic Acid From Ethane Oxidation, Processes of Making Same and Method of Using Same (Saudi Basic Industries Corporation)
U.S. Patent No. 6,028,221 Catalyst Systems for the One Step Gas Phase Production of Acetic Acid From Ethylene and Methods of Making and Using the Same (Saudi Basic Industries Corporation)
U.S. Patent No. 6,017,846 Highly Active and Selective Catalysts for the Production of Unsaturated Nitriles, Methods of Making and Using the Same (Saudi Basic Industries Corporation)
U.S. Patent No. 6,013,597 Catalysts for the Oxidation of Ethane to Acetic Acid, Processes of Making Same and Processes of Using Same (Saudi Basic Industries Corporation)
U.S. Patent No. 5,907,056 Catalysts for the Oxidation of Ethane to Acetic Acid, Processes of Making Same and Processes of Using Same (Saudi Basic Industries Corporation)
U.S. Patent No. 5,685,797 Coated Planet Gear Journal Bearing And Process of Making Same (United Technologies Corporation)
U.S. Patent No. 5,736, 469 Anti-Static Cleanroom Products and Methods of Making the Same (The Texwipe Co., LLC)
U.S. Patent No. 5,985,112 Nanofiber Packed Beds having Enhanced Fluid Flow Characteristics (Hyperion Catalysis International, Inc.)
PCT WO9743774 Graphitic Nanofibers in Electrochemical Capacitors (Hyperion Catalysis International, Inc.)
PCT Patent Publication WO9743473 High Surface Area Nanofibers (Hyperion Catalysis International, Inc.)
PCT Patent Publication WO9743116 Rigid Porous Carbon Structures, Methods of Making, Methods of Using and Products Containing Same (Hyperion Catalysis International, Inc.)
U.S. Patent No. 6,419,970 Methods of setting chocolate and products produced by same (Mars, Inc.)
U.S. Patent No. 6,406,733 Method of shaping chocolate products (Mars, Inc.)
U.S. Patent No. 6,391,356 Methods of processing chocolates at low viscosities and/or at elevated temperatures using seeding agents and products produced by same (Mars, Inc.)
U.S. Patent No. 6,015,913 Method for Producing Fat and/or Solids from Cocoa Beans (Mars, Incorporated)
U.S. Patent No. 5,834,044 Method of Making a Health Food Product Containing Anti-Oxidants (Mars, Incorporated)
U.S. Patent No. 5,643,623 Health Food Product and Its Uses (Mars, Incorporated)
U.S. Patent No. 5,741,505 Edible Products Having Inorganic Coatings (Mars, Incorporated)
PCT Patent Publication No. WO 99/45788 Food Products having Enhanced Cocoa Polyphenol Content and Processes for Producing Same (Mars, Incorporated)
U.S. Patent 6,416,802 Method of making quick cooking and instant rice (Uncle Ben’s)
PCT Patent Publication No. WO 97/49300 Quick cooking and instant rice and methods of making same (Uncle Ben’s, Inc.)
PCT Patent Publication No. WO 97/21361 High Temperature/Ultra-high Pressure Sterilization of Low Acid Foods (Kal Kan Foods)
PCT Patent Publication No. 99/47000 Multicomponent Food Product and Methods of Making and Using the Same (Kal Kan Foods)
U.S. Patent No. 5,680,008 Compact Low-Noise Dynodes Incorporating Semiconductor Secondary Electron Emitting Materials (Advanced Technology Materials, Inc.)
U.S. Patent No. 5,973,444 Carbon-Fiber Based Field Emission Devices (Advanced Technology Materials, Inc.)
U.S. Patent No. 5,868,814 Apparatus for Recirculating Molten Glass (GTS Duratek Inc.)
PCT Patent Publication WO 97/04736 Infant Fluid Delivery Nipple Unit (Evan Lipman)

New York, NY

vCard

John E. Boyd

Partner

[email protected]
T: (646) 389-3152

Credentials

Admissions

New York
U.S. Patent & Trademark Office (USPTO)

Education

George Mason University School of Law, Patent Track, J.D., 1993

Columbia University, School of Engineering & Applied Science, B.S., Metallurgy & Materials Science, 1988

Prior Law Firm Experience

Winston & Strawn, LLP

Whitman Breed Abbott & Morgan, LLP

Curtis, Morris & Safford, P.C.