J. Donald McCarthy concentrates his practice in the area of intellectual property litigation. Mr. McCarthy has represented clients in several hundred matters filed in federal, state and administrative agencies. Over 50 of these cases have gone to trial and many of them were jury trials which were tried to verdict.

Mr. McCarthy has made numerous appellate arguments in more than ten of the circuit courts of appeal, most frequently in the Federal Circuit Courts of Appeal. He has recently concentrated on patent cases and has also tried trademark, copyright and trade secret cases and has counseled clients in all aspects of intellectual property.

Mr. McCarthy has represented both plaintiffs and accused infringers, serving as lead trial and appellate counsel in district court and International Trade Commission patent cases. He has handled a wide variety of trademark matters, from complex trade name-service mark cases in which both sides had more than 25 years of use to routine trademark cases for famous marks such as Honda, Acura and General Motors. Mr. McCarthy also has extensive experience with franchise and antitrust matters in federal and state courts and administrative agencies, and has served as an expert witness in patent, trademark and copyright cases.

Mr. McCarthy has been named a Southern California Super Lawyer in Intellectual Property.

Mr. McCarthy is a 1968 graduate of Harvard Law School and graduate of Cornell University (B.S., M.E.).

Representative Matters

Intellectual Property Litigation

• Technology Licensing v. Gennum - N.D. California. Reduced potential recovery in patent case from $77 million to less than $1 million in pretrial motions; eliminated jury trial when opposition withdrew damages claim; successfully defeated mandamus on jury issue in Federal Circuit and Supreme Courts; and successfully tried the matter to the Court on remand, on video processing chips, to a defense judgment.
• Good Technology v. Research In Motion - N.D. California. Represented patentee on basic patent on handheld wireless technology.
• Panoram v. 3D Perception (patent). Three-dimensional video processing circuitry.
• Orion v. Toyota - E.D. Texas. Defendant patent case involving business method for handling parts orders.
• Ingersoll Rand v. Wilden - D.N.J. Defended patent case involving air-actuated diaphragm pumps.
• In the Matter of Certain Laminated Floor Panels - ITC. Defended patent case before the International Trade Commission involving laminated flooring.
• EAS Sensorsense v. Universal Surveillance Corp. - C.D. California. Defended patent case on RFID garment tags.
• Gale Banks v. Edelbrock Corp. - C.D. California. Represented defendant in trademark case.
• Link New Tech v. Wynn Oil Company - C.D. California. Represented defendant in patent case on lubrication equipment until indemnitor responsibility.

Patent and Trade Secret Litigation

• PGS v. Mycogen Plant Sciences (patent). Transgenic corn. Lead counsel for Mycogen against a charge of infringing PGS patents relating to transgenic corn. Case was successfully settled after patents held unenforceable in another court based on evidence uncovered in the PGS case.
• Aptix v. Quickturn, 269 F.3d 1369 (Fed. Cir. 2001). Lead trial and appellate counsel.
• Panoram v. 3D Perception - C.D. California. Defended patent case involving three-dimensional video processing circuitry.
• Wilden v. Pressed & Welded Products, inter alia (patent). Air-actuated, double-diaphragm pumps.
• Oakley v. Smith Sport Optics; Oakley v. J. T. Racing (patent, trademark). High-end sunglasses.
• Cell Genesys v. Genpharm (trade secret). Transgenic mice.
• Berg v. Hon Hai (patent). PMCIA (Personal Computer Memory Card International Association) connectors.

Trademark Litigation

• Represented both plaintiffs and defendants in a wide variety of trademark matters, from complex trade name-service mark cases where both sides had more than 25 years of use, to routine trademark cases for famous marks such as Honda, Acura and General Motors.

Franchise and Antitrust

• Represented worldwide automaker in several hundred franchise and antitrust cases in federal and state courts and administrative agencies in 33 states.
• Fifteen plus years of automobile franchise cases for American Honda involving several hundred cases in 33 states, in both litigation and counseling roles. Issues included antitrust, franchise, dealer law and trademark regulation.
• Boston Car v. American Honda, 971 F.2d 811 (1st Cir 1992).

Appellate Advocacy

• In re Technology Licensing Corporation, 423 F.3d 1286 (Fed. Cir. 2005), reh. den. Nov. 18, 2005, cert. den. June 5, 2006. Successfully defended mandamus petition on jury issue.
• Aptix v. Quickturn (patent). Integrated circuit emulation equipment.

Areas of Practice

• Intellectual Property Law
• Patents
• Trademarks, Copyrights and Trade Secrets

Admissions

• California
• U.S. Patent and Trademark Office
• Supreme Court of the United States
• U.S. District Court for the Central District of California
• U.S. District Court for the Northern District of California
• U.S. District Court for the Southern District of California
• U.S. District Court for the Eastern District of California
• U.S. Court of Appeals for the Federal Circuit
• U.S. Court of Appeals for the First Circuit
• U.S. Court of Appeals for the Second Circuit
• U.S. Court of Appeals for the Third Circuit
• U.S. Court of Appeals for the Fourth Circuit
• U.S. Court of Appeals for the Sixth Circuit
• U.S. Court of Appeals for the Eighth Circuit
• U.S. Court of Appeals for the Ninth Circuit
• U.S. Court of Appeals for the Tenth Circuit
• U.S. Court of Appeals for the Eleventh Circuit

Education

• Harvard Law School, J.D., 1968
• Cornell University, B.S., M.E., 1965

Other Experience

• Duane Morris LLP
  - Partner, 2008-present
• Jones Day
  - Partner, 2002-2008
• Lyon & Lyon
  - Senior Associate, Partner, 1976-2002
• Office of the Special Prosecutor, Philadelphia
  - Assistant Attorney General, 1974-1976
• Chittick & Pfund, Boston; Synnestvedt & Lechner, Philadelphia
  - Associate, Partner, 1968-1974

Professional Activities

• American Bar Association
  - Litigation, Intellectual Property and Antitrust Sections
• American Intellectual Property Law Association
• Los Angeles Intellectual Property Law Association
• California Bar Association

Honors / Awards

• Named a Southern California Super Lawyer in Intellectual Property
• Listed in Super Lawyers, Corporate Counsel Edition
• AV® Preeminent™ Peer Review Rated by Martindale-Hubbell

Board Memberships

• Big Brothers/Big Sisters
  - Director, Former Chair

Publications

• Featured in Intellectual Property Today, April 15, 2008