A partner in the Litigation Department and co-chair of the Intellectual Property Litigation Practice Group, John E. Nathan concentrates his practice on patent and trademark litigation. He is registered to practice before the U.S. Patent and Trademark Office.

Mr. Nathan has been lead counsel in numerous patent and trademark cases for clients such as Edwards Lifesciences, Nichia Corporation, Estee Lauder, Gillette, Duracell, Braun, Time Warner, HBO and Johnson & Johnson. Many of his cases have involved jury trials.

Cases representative of Mr. Nathan’s practice include the following:

Medical Device Patent Cases

• Transcatheter heart valves: Edwards Lifesciences v. CoreValve, Inc. and Medtronic CoreValve, LLC, No. 08-091 (D. Del.) ($74 million jury verdict for client Edwards Lifesciences; infringement found to be willful); counterpart litigations in Germany and the United Kingdom; Edwards Lifesciences v. Medtronic, Inc. et al., No. 09-873 (D. Del.) (pending)
  
  
• Surgical Stapling: U.S. Surgical Corp. v. Hospital Products International and Alan Blackman, 701 F.Supp. 314 (D. Conn. 1988) (judgment for client USSC holding all four USSC patents in suit valid and willfully infringed); counterpart litigations in Australia, Canada, the United Kingdom, France and Germany
  
  
• Hip Prostheses: Noiles v. Church, Interference No. 102,732 (1996) (priority of invention awarded to clients Noiles and Johnson & Johnson); Joint Medical Products v. DePuy, No. 3:95CV00576 (D. Conn.)
  
  
• Knee Prostheses: Joint Medical Products v. Waldemar Link, No. 591CV778 (D. Conn.); counterpart litigations in Germany
  
  
• Laser Cornea Shaping: Trokel v. L’Esperance, Interference No. 102,026

Consumer Product Patent Cases

• Shaving Products: Gillette v. Energizer Holdings(Schick), 405 F.3d 1367 (Fed. Cir. 2005)  (infringement decision for Gillette; Gillette's patented "group" of three blades covers cartridges with four or five blades); counterpart litigations in the European Patent Office and Germany; Schick v. Gillette , No. 03:04-cv-00260 (D. Conn.); Gillette v. Schick, No. 03 Civ. 12455 (D. Mass.); Gillette v. Sharper Image, No. 04-10898 (D. Mass.); Syndia v. Gillette, No. 01 C 2485 (N.D. Ill. 2002) (jury trial); Tseng (Gillette) v. Doroodian (Arthur D. Little Enterprises), Interference No. 104,482 (2001); Wafer Shave v. Gillette, 857 F.Supp. 112 (D. Mass. 1993), affirmed per curiam 26 F.3d 140 (Fed. Cir. 1994) (summary judgment for Gillette on its laches and estoppel defenses); Arthur D. Little Enterprises and Doroodian v. Gillette, No. 99-399 (D. Del.); Gillette v. American Safety Razor Company, No. 99-11063 (D. Mass.); Gillette v. American Safety Razor Company, No. 95-10680 (D. Mass.); Sharper Image v. Gillette, No. 98-4112 (N.D. Cal.); Gillette v. Warner-Lambert (Schick), No. 87-1567 (D. Mass.); S.C. Johnson v. Gillette, Nos. 83-2657 and 3201 (D. Mass); BIC v. Gillette, No. 76-375 (D. Del.); Gillette v. Williams, 360 F. Supp. 1171 (D. Conn. 1973)
  
  
• Mascara Products: L’Oreal v. Estee Lauder, No. 04-1660 (D.N.J.)
  
  
• Erasable Ink Pens: Scripto-Tokai v. Gillette, 788 F.Supp. 439 (C.D. Cal. 1992), 1994-2 Trade Cases 70,821 (C.D. Cal. 1994) (jury trial)
  
  
• Toothbrushes, Other Dental Products, Hair Dryers, Appliances, Antiperspirants:  numerous cases for Gillette, Braun and Oral-B, including Philips v. Gillette, No. 04-859 (D. Del.); Dr. Key v. Oral-B, No. 2:00-cv-288 (E.D. Tex.); Gillette v. FTS & Dawia, No. 02 CV 4176 (S.D.N.Y.) and No. 01-7167 (S.D. Fla.); Gillette v. Tella-Tech, No. 02-20946 (S.D. Fla.); Gillette v. Conair, No. 01-11190 (D. Mass.); Braun v. Salton, No. 99 CV 11341 (D. Mass.); Braun v. Conair, No. 95-12273 (D. Mass.);  Braun v. Helen of Troy, No. 96-11469 (D. Mass.); Braun v. Remington, No. 96-10080 (D. Mass.); Gillette v. Westwood Chemical, No. 96-10670 (D. Mass.); Braun v. Dr. Robinson, No. 96-12454 (D. Mass.); Gillette v. Thornton, No. 393 CV 01464 (D. Conn.)  
  
  
• Golf Shoe Cleats: numerous cases for Softspikes, including favorable decision of U.S. Patent and Trademark Office Board of Patent Appeals and Interferences resulting in allowance of basic patent on “spikeless” golf cleats (2001)
  
  
• Feminine Products and Pregnancy Test Kits: numerous cases for Tambrands and Tampax
  
  
• Non-Woven Fabrics: Du Pont v. Bloch, No. 77 Civ. 4866 (S.D.N.Y.) (represented Du Pont)

Electrical Patent Cases

• LEDs and Laser Diodes: Bluestone Innovations Texas, L.L.C. v. Nichia Corporation et al., No. 2-10-cv-171 (E.D. Tex.) (pending)
  
  
• Short Wavelength Semiconductor Lasers: In the Matter of Certain Short Wavelength Semiconductor Lasers and Products Containing Same, Investigation No. 337-TA-627 (U.S. International Trade Commission) (defended Nichia Corporation against claim its blue lasers infringed patent owned by Seoul Semiconductor)
  
  
• Hearing Aid Batteries: Rayovac v. Duracell and Gillette, No. 99-C-0272-C (W.D. Wis. 2000) (jury verdict and judgment of patent invalidity for Duracell and Gillette holding all three Rayovac patents in suit invalid)
  
  
• Alkaline Batteries: Eveready v. Duracell and Gillette, No. 1:00CV0475 (N.D. Ohio)
  
  
• Compact Discs: Thomson v. Time Warner, No. 94-83 (D. Del);   Justice Records v. Warner Bros. Records, No. H 96-2069 (S.D. Tex.); Optical Recording v. Time Warner, No. 90-314 (D. Del); numerous CD and DVD licensing matters for Time Warner, Warner Music and Warner Home Video
  
  
• Audio Tape Cassette Technology: Duplitronics v. Time Warner, No. 1:93-cv-04652 (N.D. Ill.)
  
  
• Color Correction Equipment: Corporate Communications Consultants v. HBO, No. 84 Civ. 4178 (S.D.N.Y.)
  
  
• Word Processing: IBM v. Xerox, No. CA3-78-0210-G (N.D. Tex.); Bernier v. DeGeorge, Interference No. 99,564 (represented IBM in both cases)
  
  
• Programmable Logic Controller System: Solaia Technology v. Gillette, No. 02 C 4704 (N.D. Ill.)
  
  
• Voltage Regulators: Superior Electric v. Raytheon, 306 F. Supp. 960 (D.N.H. 1972)
  
  
• Computers: Bunker Ramo v. IBM, No. 74 C 580 (N.D. Ill.) (represented IBM)
  
  
• Stepping Motors: Superior Electric v. Sigma, No. 71 B-310 (D. Conn.); counterpart litigation in Germany
  
  
• TV tuners: Sarkes Tarzian v. Mitsumi Electric and General Electric,  No. 75-504-N (E.D. Va.) and No. 75-1981 (D.N.J.) (represented Mitsumi and GE)
  
  
• Modems: Milgo v. Western Electric, No. 76-15-C2 (D. Kan.) (represented Western Electric)

Chemical Cases

• Termite Control: BASF Agro B.V., Arnhem (NL), Wädenswil Branch et al. v. Makhteshim Agan of North America, Inc. et al., No. 10-cv-276 (M.D. N.C.) (pending); BASF Agro B.V., Arnhem (NL), Wädenswil Branch et al. v. Cheminova, Inc., No. 10-cv-274 (M.D. N.C.) (pending)
  
  
• Red 40 Food Color: Warner-Jenkinson v. Allied Chemical,  567 F. 2d 184 (2 Cir. 1977) (decision on declaratory relief); 477 F. Supp. 371 (S.D.N.Y. 1979), affirmed 633 F. 2d 208 (2 Cir. 1980) (trial and appeal sustaining client Allied Chemical’s patent)
  
  
• Catalytic Cracking: Mobil v. W.R. Grace, 367 F. Supp. 207 (D. Conn. 1973); other related cases

Pharmaceutical/Biotech Cases

• Monoclonal Antibodies: Glaxo Group Limited et al. v. Genentech, Inc. et al., No. 2:10-cv-02764 (C.D. Cal.) (pending)
  
  
• Treatment of eye diseases: Regeneron Pharmaceuticals, Inc. v. Genentech, Inc., No. 10-cv-08779 (S.D.N.Y.) (pending)
  
  
• Tetracycline: numerous cases for Bristol-Myers
  
  
• Semi-Synthetic Penicillin (Ampicillin): Beecham v. Zenith Laboratories, No. 526-69 (D.N.J.) (represented Beecham)
  
  
• Vitamin B12: Merck v. Chase, 273 F. Supp. 68 (D.N.J. 1967)

Paper Machinery Patent Cases

• Corrugated Paper Machinery: Marquip v. Fosber America and United Container Machinery, 198 F.3d 1363 (Fed. Cir. 1999) (summary judgment of non-infringement for client United Container); Mitsubishi Heavy Industries v. United Container Machinery, No. 97-C-780-C (W.D. Wis.)
  
  
• Paper Stock Washers: Sulzer v. Black Clawson, No. 93 Civ. 8721 (S.D.N.Y.) (represented Black Clawson)

Trademark Cases

• Home Box Office v. Showtime/The Movie Channel, 832 F.2d 1311 (2 Cir. 1987) (HBO’s trademark rights upheld; disclaimers used by Showtime ruled insufficient)
  
  
• Brune v. HBO, No. 02 Civ 5703 (S.D.N.Y.) (trial resulted in hung jury; case subsequently settled)
  
  
• Shields Pictures v. Time4 Media, TTAB opposition proceedings on “Popular Science”
  
  
• MasterCard International v. HBO, No. 99-4296 (S.D.N.Y.)
  
  
• The Comedy Channel v. Home Box Office, No. 89-3095 (C.D. Cal.)
  
  
• Duck Walk Vineyards, Inc. v. St. Helena Wine Co., Inc. d/b/a Duckhorn Vineyards, No. CV-01-4896 (E.D.N.Y.) (trademark infringement litigation involving the use of a duck image and the word “Duck” on wine labels)
  
  
• Mermaid Seafoods v. Chicken of the Sea, No. 396-cv-02362 (D. Conn. 2000) (all trademark infringement claims against client Mermaid Seafoods dismissed with prejudice)
  
  
• Numerous trademark cases for Tambrands and Tampax, both in the United States and Germany

Mr. Nathan is a member of bar associations that focus on patent and trademark litigation, including the Federal Circuit Bar Association, the New York Intellectual Property Law Association and the American Intellectual Property Law Association.  He is also a member of the American Bar Association, The Association of the Bar of the City of New York and Federal Bar Council.  Mr. Nathan is listed in The Best Lawyers in America, Euromoney Guide to the World’s Leading Patent Law Experts and Euromoney Guide to the World’s Leading Trademark Law Practitioners.  He has lectured on patent law at the Columbia Graduate School of Business Administration (1996-1999) and the Columbia Department of Mechanical Engineering (1996-2002).  He is a member of the Board of Advisors of The National Gallery for America’s Young Inventors.

Mr. Nathan graduated from Yale Law School, where he was 18th in a class of 192. He was a member of the Yale Law Journal and was elected to the Order of the Coif. He is the author of "Novelty and Reduction to Practice: Patent Confusion," 75 Yale L.J. 1194 (1966), which was awarded the 1966 prize of New York Patent Law Association.

He holds a B.E. with high honors in Mechanical Engineering (with a concentration in Electro-Mechanical Systems) from Yale University and was elected to Tau Beta Pi.