Professionals

Practice Areas

Admissions

  • Massachusetts
  • U.S. Court of Appeals, Federal, First, Seventh and Ninth Circuits

  • U.S. District Court, District of Massachusetts

  • U.S. District Court, Eastern District of Texas

Education

J.D., New York University School of Law

B.A., Boston University, magna cum laude

Photo of John T. Gutkoski

John T. Gutkoski

Partner
Hartford
Boston 617.686.2257 | 860.286.2929
Email

John T. Gutkoski is a national patent and intellectual property trial attorney representing clients as lead trial counsel in life sciences and high technology matters. His cases have involved pharmaceuticals, radiotherapeutics, nanotechnology, medical devices, synthetic latex, optics, collagen production, intravenous pumps, banking and finance, semiconductors, analog and digital circuitry, smart phones, telecommunications, network architecture, imaging, sound waves, software, and electronic data.

John’s extensive patent litigation experience includes representing pharmaceutical companies in Hatch-Waxman proceedings. He has tried numerous cases to judges and juries across the country, including representing clients successfully in Delaware, Texas, Illinois, Wisconsin, North Carolina, New Jersey, California, Massachusetts, New York and before the International Trade Commission.

John has been repeatedly named one of the World’s Leading Patent Practitioners for Patent Litigation by IAM Patent 1000. Their recent 2018 ranking noted that “He is one of the sharpest and most adaptable patent litigators out there …” He has been named Benchmark Litigation’s Local Litigation Star and has also been recognized by Massachusetts Super Lawyers. John previously served as the department chairman of the Intellectual Property practice in Boston for an international AM Law 100 firm.

Experience Highlights

Partner, Cantor Colburn LLP, 2019-present

Partner, Barclay Damon LLP, 2013-2018

IP Department Chair, Boston, Foley & Lardner, 2007-2011

Partner, Day Pitney, 2003-2007

Partner, WilmerHale, 1994-2003

Special Assistant District Attorney, Commonwealth of Massachusetts, 2000

Representative Matters

  • Won a rare, complete defense jury verdict of non-infringement and invalidity in the Eastern District of Texas where the jury found the asserted patents concerning the interaction of light and human tissue to be anticipated and rendered obvious by four separate combinations of prior art.
  • Led the defense trial team in defeating a claim for more than $600 million against a leading national bank and financial services holding company in the only one of the infamous Data Treasury “troll” cases to go to verdict over check imaging patents.
  • Won a complete jury verdict of willful infringement of multiple patents and a $61 million enhanced damages award for the industry leader in coaxial cable connectors, against its leading competitor in the Northern District of New York.
  • Served as lead counsel for multi-patent Hatch Waxman litigation representing the pharmaceutical manufacturer of Mucinex against generic challengers in the U.S. District Court for the District of Delaware.
  • Successfully defended the maker of Durex brand condoms against claims of infringing several patents asserted by the competitor brand Lifestyles in the District of Delaware.
  • Obtained landmark decision in ProCD v. Zeidenberg, 86 F.3d 1447, the first case in the country to enforce “shrink-wrap,” “click-on” and “Web-wrap” licenses and contracts for protecting software and electronic data.
  • Defeated seven photolithography and nanotechnology patents after month-long Section 337 trial before the International Trade Commission, preserving almost $2 billion in annual sales; related litigation with five additional patents in the U.S. District Court for the Northern District of California then settled favorably.
  • Served as lead counsel for the pharmaceutical manufacturer of a radiotherapeutic drug designed to treat metastatic carcinoid and pancreatic neuroendocrine tumors in a case before the District of Massachusetts involving European Union patent development rights, which settled favorably following extensive summary judgment briefing.
  • Represented a major pharmaceutical company in asserting claims against a competitor for the breach of a settlement agreement resolving rights from an ANDA patent litigation and related patent-based antitrust litigation.
  • Successfully represented industry leader asserting telecommunication and data transmission patents against a competitor before the Eastern District of Arkansas achieving settlement after Markman hearing.
  • Prevailed as lead trial counsel for the plaintiff in a scanning technology dispute; recovered both actual and multiple damages for unfair and deceptive trade practices in Boston.
  • Served as lead trial counsel for an international intravenous pump manufacturer asserting multiple patents against key competitors before the Northern District of Illinois.
  • Served as co-lead trial counsel for a computer chip designer and manufacturer suing a former employee and a competitor for the theft of confidential semiconductor schematics and trade secrets. Following an initial trial in North Carolina state court and appeal, the case settled favorably.
  • Represented the owner of laser eye surgery patents in separate patent infringement matters leading to a $17 million plaintiff’s jury verdict in the District of Massachusetts and the competitor defendant forced into bankruptcy and going out of business in the second case in the District of Delaware.
  • Represented as lead counsel a data storage leader obtaining favorable settlements against infringement claims in multiple matters before the Eastern District of Texas.
  • Served as co-trial counsel for the defense of all New England electric utilities in a hydro-electric technology dispute exceeding $100 million.
  • Successfully represented a leading manufacturer of proton exchange membrane electrolysis devices in a dispute before the District of Massachusetts.
  • Prosecuted a trademark action in the Central District of California for false advertising and grey market sales of discarded materials as functional semiconductor components, securing on the eve of trial a favorable settlement and the seizure of all offending materials.
  • Secured a favorable appeal and established the First Circuit’s seminal opinion against trial by ambush.
  • Obtained summary judgments of validity, enforceability and infringement for a patentee in the Central District of California involving electronic temperature monitors.
  • Represented a pharmaceutical research and development company and its manufacturer of a wound treatment product against claims of trade secret misappropriation, breach of contract and related claims in the District of Massachusetts. 

Publications

John Gutkoski quoted in “US Supreme Court Upholds Disputed Language in Patent Law, Giving Generic Drug Makers a Big Win,” STAT, 01/22/19

John Gutkoski quoted in “Supreme Court to Decide a Patent Case with Big Implications for Small Drug Makers,” STAT, 12/06/18

John Gutkoski quoted in "Fed. Circ. May Fill In Blanks On New Indefiniteness Rule," Law360, 10/27/14

John Gutkoski quoted in "Post-Nautilus Most Indefinite Patent Challenges Fail," Law360, 09/16/14

John Gutkoski quoted in "Software Patent Mess Hits High Court with WildTangent Case," Law360, 08/26/13

John Gutkoski quoted in "Attorneys Discuss Impact of CLS Bank Decision," Law360, 05/13/13

Halo and Stryker at the Supreme Court: Will the Essential Questions of Timing for Willfulness Be Left Unanswered? Chapter in Inside the Minds “The Impact of Recent Patent Law Cases and Developments, John T. Gutkoski, 2016 Ed., Thompson Reuters / Aspatore Books

Events

Oil States, SAS, and the Future of IPRs, John T. Gutkoski, ACI 12th Annual Paragraph IV Disputes Conference, NYC, April 23-25, 2018

Post Trial Strategies: What to Do After You Win the Verdict, John T. Gutkoski, IP Strategy Summit, May 19, 2016

Fight the Patent Trolls in 2014: Tactical and Practical Issues, Webcast Series, February 10, 2014

Strategic Choices in Patent Litigation Following Patent Reform and Chief Judge Rader's Recommendations, October 1, 2011

Lawyers in the Crosshairs: Ethical Dilemmas - Ethical Considerations in Patent and Trademark Proceedings, Corning, Inc. 2011 Global Meeting, September 30, 2011

Top Ten Things You Need to Know About Patent Reform, Silicon Valley, September 29, 2011

Professional Affiliations

American Bar Association

American Intellectual Property Law Association

Boston Bar Association

Boston Patent Law Association

Federal Circuit Bar Association

Innovation American Inn of Court, Member

Intellectual Property Owners Association 

Massachusetts Bar Association

Order of the Barristers