John C. Gatz

/My focus

Patent Prosecution/Counseling

I prosecute patents and counsel clients in a number of mechanical- and chemical-related technologies including: biomechanical devices, chemical products and processes, sensor-dispensing instruments, analyte meters, test sensors, non-invasive processes, surgical and medical products, lancing devices, closure and closure systems, coin- and currency- processing machines, stretch-film products and processes, epoxy compositions, coatings, foam products and processes, gaming devices, herbicides, silicon-based compositions and methods, window-cleaning apparatuses, packaging devices, and optical devices.

I really enjoy using my engineering background to help clients in the product development process to avoid competitive patents and to ensure commercial success of new products through effective intellectual property (IP) protection strategies. In many instances, these projects have involved infringement, invalidity and due diligence opinions. I work closely with clients in providing comprehensive patent and patent portfolio review. Understanding my client’s businesses and providing great client service are priorities in my everyday practice.

Patent Litigation/Other Experiences

My patent litigation experience includes drafting motions and pretrial documents; arguing motions, including Markman; taking and defending depositions; and all other facets of discovery. I’ve handled cases in a variety of federal district courts and I’ve handled various proceedings before the Board of Patent Appeals and Interferences. I have prepared and filed IPR petitions. I also have experience drafting and negotiating license agreements and trademark prosecution.

/Looking ahead

I see a constant evolution of IP patent laws both domestically and internationally where our strategies will anticipate and adjust to better obtain the business objectives of our clients.

/Insights

• Board member and an editor of the ABA Landslide Publication (2012-present)
• Editor of the “Recent Developments in IP Law” column in the ABA-IPL Landslide Publication (formerly the ABA-IPL Newsletter), which is a bimonthly intellectual property publication released by the American Bar Association. Mr. Gatz is responsible for summarizing recent developments in patents, trademarks and copyrights (2003–present)
• “Recent Developments in IP Law” (contributing author), ABA-IPL Landslide Publication (formerly the ABA-IPL Newsletter) (1996–present)
• “New PTO Rules-How Will They Affect Your Business,” Nixon Peabody co-speaker, Chicago, Illinois (September 2007)
• “Willfulness: Make a Bad Situation Worse in Patent Litigation,” Biannual Jenkens & Gilchrist Seminar, Chicago, Illinois (April 2003)
• “Willfulness Trends of the Federal Circuit and Recommendations to Avoid Willful Infringement” (with Jeremie D. Moll), 14 Intellectual Property & Technology Law Journal, No. 11, at 7–15 (2002)
• “Update on Inequitable Conduct,” Intellectual Property Law Section of the State Bar of Michigan, Winter Meeting in East Lansing, Michigan (March 2001)
• “State Street—Patentable Subject Matter,” Biannual Arnold White & Durkee Seminar, Chicago, Illinois (March 1999)
• “Economic Espionage Act of 1996,” Biannual Arnold White & Durkee Seminar, Chicago, Illinois (September 1997)