John Augustyn

Overview

John Augustyn represents clients in high stakes intellectual property litigation, licenses, agreements, mergers & acquisitions, client counseling, and prosecution.  Leveraging his prior experience in management and as an engineer at Fortune 100 companies, John understands that IP and business issues require creative and cost effective legal solutions.  Representative matters listed below and in the Experience section.

John has been an international speaker at over 50 programs to thousands of corporate and outside counsel.  Also, he has been a instructor and advisor for over 15 years total at Loyola Law School and Northwestern Law School.  John has been selected for several honors including Best Lawyers, Super Lawyers, Top 50 Lawyers in America, IAM Patent 1000, and Fellow to Litigation Counsel of America.

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Experience

U.S. Courts and International Trade Commission

• Amgen, Inc. v. Sanofi, U.S. Supreme Court, Counsel for Amicus Curiae, Intellectual Property Law Association of Chicago.
• Octane Fitness, LLC, v. Icon Health & Fitness, Inc., Counsel of Record in U.S. Supreme Court, Amicus Curiae for Intellectual Property Law Association of Chicago.
• Expert Witness on US patent prosecution practice. Parties and subject matter are confidential.
• D3 Enterprises v. EJOT Fastening Systems, lead counsel, successfully briefed and argued claim construction which led to settlement for client. Patent family involved 9 US Patents and 15 US patent applications for solar products.
• United States Department of Justice, Antitrust Division, Intellectual Property Consultant and Expert Witness, parties and subject matters are confidential.
• In the Matter of Certain Acousto-Magnetic Electronic Article Surveillance Systems, Components Thereof, And Products Containing Same, US International Trade Commission, obtained favorable settlement for the clients days before trial involving patents for electronic article surveillance devices. Concurrent proceedings involving patent infringement and invalidity in Europe and China.
• Allwine v. Globe Motors, lead counsel, obtained a favorable settlement for the client shortly before trial involving patent infringement of electronics and sensors for vehicles.
• U-Fuel, Inc. v. Highland Tank & Manufacturing Company, Inc. et al., lead counsel, after winning a several day hearing on a request for a preliminary injunction, obtained a favorable settlement for the client involving patent infringement for storage tank technology and standards by a standard setting organization.
• Battat, Inc. v. Binney & Smith Inc. (Crayola), lead counsel, obtained favorable settlement for patent owner (Crayola), alleged infringer agreed to stop selling product and redesign product.
• Senmed, Inc. and Ethicon, Inc. v. Richard-Allan Medical Industries, Inc., co-lead counsel, client obtained favorable settlement involving patents for medical devices.
• Hoover Containment Systems v. Steel Tank Institute et al., co-lead counsel, represented over 50 defendants, obtained a favorable license for clients involving patents for storage tank technology.
• Hallmark Cards, Inc. v. Noma International Inc. et al., co-lead counsel, obtained a favorable settlement for patent owner (Hallmark Cards) shortly before trial. Concurrent post grant proceedings.
• Giftec Ltd. v. Hallmark Cards and Willitts Designs International, Inc., co-lead counsel, obtained favorable settlement for Hallmark Cards and Willitts.
• Ethicon Endo-Surgery v. Richard-Allan Medical Industries, Inc., co-lead counsel, represented defendant at trial in district court and at Court of Appeals for the Federal Circuit, favorable settlement for client involving patents for medical devices.
• In the Matter of Certain Power Transmission Chains, Chain Assemblies, Components Thereof, And Products Containing The Same, US International Trade Commission, involving patents and trade secrets for vehicle transmissions.
• Fleischer Mfg. Co. v. Sukup Mfg. Co., co-lead counsel, obtained favorable settlement for client shortly before trial involving patent infringement of agriculture equipment.
• Behn v. Sukup Manufacturing Co., co-lead counsel, obtained favorable settlement for client shortly before trial involving trade secrets for agriculture equipment.
• Beatrice Foods Co. v. New England Printing and Lithographing Co., represented client at trial in district court and at Court of Appeals for the Federal Circuit involving patent infringement of printing technology.
• Rockwell Graphic Systems, Inc. v. DEV Industries, Inc. et al., represented Rockwell in the district court and Court of Appeals for the Seventh Circuit involving trade secrets for printing industry.

Additional representative matters available upon request.

Opinions and Due Diligence

• Control Systems and Software- Analyzed over 600 US and non-US patents and applications relating to control systems, software, chemical reactions, and product design for freedom to operate of a major product launch for a new technology
• Semiconductor Manufacturing- Assessed over 450 US patents and applications relating to semiconductor manufacturing technology for acquisition due diligence and freedom to operate.
• Fiber Optics- Analyzed over 200 US and non-US patents and applications relating to fiber optic technology for acquisition due diligence and freedom to operate.
• Semiconductor Circuitry- Analyzed over 51 US and non-US patents and applications relating to semiconductor circuitry for freedom to operate. The patents were involved in 29 litigations and 16 reexamination proceedings.
• Vehicle Technology- Prior to John’s involvement, the product was found to willfully infringe, and the damages were over $30 million. John was engaged by the company and led the redesign of the product which was acceptable to the market and did not violate the permanent injunction. The patent family included 17 US patents and 25 US patent applications. The claims were subject to three inconsistent claim construction orders from three different litigations.
• Consumer Product- Analyzed over 67 US and non-US patents and applications for due diligence in a corporate acquisition valued at over $200 million. Also evaluated trademarks, trade secrets, licenses, agreements, software, marketing, and manufacturing processes.
• Medical Devices – Performed IP Due Diligence in a corporate acquisition valued at over $100 million.  Evaluated patents, trademarks, trade secrets, licenses, agreements, IT, software, marketing, and manufacturing processes.

IP Licenses and Agreements

John successfully negotiates and prepares agreements relating to well-known products and brands for both the seller/ licensor and the buyer/ licensee. John has negotiated license agreements with royalty payments greater than $700 million over the life of the licenses for non-litigation transactions. John has prepared and negotiated various agreements including:

• Patent licenses,
• Licenses for Standard Essential Patents (SEP) including FRAND terms and rates,
• Technology licenses,
• Trade Secret agreements and licenses,
• Joint Venture agreements,
• Trademark agreements and licenses,
• Collaboration agreements,
• Research and Development agreements,
• John has presented over 10 CLE programs on IP Agreements to hundreds of corporate and outside counsel.

Trade Secrets
John advises clients on trade secret matters including:

• Litigated several trade secret cases and also patent cases which had trade secret issues.
• Negotiates trade secret agreements and licenses.
• Advises clients on the best techniques for protecting their trade secrets.
• Helps clients decide whether to use trade secret versus patent protection.
• Has presented over 10 CLE programs on trade secrets to hundreds of corporate and outside counsel.

Patent Prosecution

• Extensive experience in formulating patent strategies and managing patent portfolios.
• Manages the US and non-US patent prosecution for several international corporations.
• Prepared or supervised the preparation of over 1000 US original patent applications for several different technologies for numerous clients.
• Oversaw the prosecution of over 3000 non-US patent applications related to the US applications.

Additional representative matters available upon request.

Education

• Loyola University Chicago, J.D.
  • National Moot Court Team
  • First Place Intra-School Moot Court Competition
  • Five American Jurisprudence Awards for highest grade in five classes
  • First Place in ASCAP Legal Writing Competition
  • Jessup International Law Moot Court Team
• Illinois Institute of Technology, B.S. in Engineering, with honors
  • Tau Beta Pi Engineering Honor Society
  • Athletic Scholarship for soccer

Admissions

• Illinois
• Registered to practice before the U.S. Patent and Trademark Office

Courts

• U.S. Supreme Court
• U.S. Court of Appeals for the Federal Circuit
• U.S. Court of Appeals for the Seventh Circuit
• U.S. District Court for the Northern District of Illinois
• U.S. District Court for the District of Colorado

Honors

• Selected by Intellectual Asset Management to IAM Patent 1000
• Named in the Illinois Super Lawyers list (Top 5%), Intellectual Property (member of Advisory Panel)
• Selected to Best Lawyers by U.S. News and World Report
• Selected to Top 50 Lawyers In America
• Selected to Top 50 Lawyers in Illinois (Top 0.1%)
• Selected as America’s Top 100 High Stakes Litigators in Illinois
• Selected as a Fellow to Litigation Counsel of America (Top 0.5%)
• Selected by his peers as a Top Rated Lawyer in Litigation (Top 5%) – Martindale-Hubbell
• Recognized as America’s Most Honored Professionals (Top 1%)
• AV® Preeminent™ Peer Review Rated (Highest Rating) – Martindale-Hubbell
• Selected by peers as a Leading Lawyer in Intellectual Property Law – Leading Lawyers Network (member of Advisory Board)
• Listed among the Top Lawyers in Illinois in Intellectual Property Law (Top 5%) – Chicago Lawyer
• Selected as a Top Rated Lawyer in “Commercial Litigation” (Top 5%) by American Lawyer Media
• Recognized as a Top Attorney (Top 5%) in Illinois in Chicago Magazine
• Selected as a member of 7 Figure Litigators
• Recognized as Legal Leader (Top 5%) in National Law Journal

Professional Affiliations

• The Richard Linn American Inn of Court
  • Review Board for Scholarship which Promotes Diversity in IP Law by Awarding a $10,000 Scholarship Each Year
  • Chair – Mock Trial CLE Program
• Illinois State Bar Association: Intellectual Property Section
  • Former Chair
  • Former Vice Chair
  • Former Secretary
• American Intellectual Property Law Association (AIPLA)
• American Bar Association (ABA)
  • ABA Advisory Counsel
  • Intellectual Property Section
• Intellectual Property Law Association of Chicago (IPLAC)
  • Amicus Committee
• Intellectual Property Owners Association (IPO)

Community Involvement

• Volunteer for two local food pantries
• Volunteer at neighborhood homeless shelter
• Judge for State Science Fair
• Coach and volunteer for youth sport teams
• Volunteer for school events
• Volunteer for Girl Scout STEM Projects
• Mentor to over 30 law school students
• Member of the Linn Inn Scholarship Committee which promotes diversity in IP law by awarding a $10,000 scholarship each year

Articles, Publications & Lectures

• John has been an international speaker at over 50 programs on topics including, patent litigation, patent prosecution, licensing, trade secrets, technology transfer, trademarks, privacy and data compliance. In addition, John has written over 13 legal articles and 4 chapters for legal treatises. Please see the list below.
• Speaker, Closing Session Panel, Global GRC, Data Privacy & Cybersecurity ConfEx Webinar, November 21, 2024. The webinar addressed Governance, Risk & Compliance (GRC) Strategies, Data Privacy and Protection, Cybersecurity Innovations and Threat Management, Risk Management in Digital Transformation, Incident Response and Crisis Management.
• Moderator and Speaker, “IP Challenges and Strategies in Artificial Intelligence (AI)”, General Counsel 360 webinar, October 17, 2024. The webinar addressed best practices for implementing AI, pitfalls when using AI, patenting AI inventions, preserving confidential information and trade secrets, copyright and trademark issues, and agreements with AI service providers.
• Host and Speaker, “Amgen v. Sanofi and Patent Enablement One Year Later: Guidance for Drafting, Defending, Challenging Patent Claims”, Strafford BARBRI CLE Video Webinar, September 24, 2024. The webinar discussed, post-Amgen Federal Circuit and District Court cases, the USPTO enablement guidelines, the application of the Wands Factors by the courts, best practices for drafting applications, and strategies for challenging patents.
• Moderator and Speaker, “Trends in Litigation Technology and Strategy” General Counsel 360 webinar, September 19, 2024. The webinar addressed litigation technology trends in several countries including the US, Mexico, UAE, Brazil, Columbia, and India.
• Speaker, “Protecting IP in the Digital Age” Global Legal ConfEx Webinar, August 28, 2024. The webinar addressed developing comprehensive IP protection policies, Artificial Intelligence (AI) concerns, implementing robust cybersecurity measures, and fostering collaboration and partnership between innovators and legal.
• Host and Speaker, “Patent Licensing: A Deep Dive Into Licensing Pitfalls”, Strafford BARBRI CLE Video Webinar, April 9, 2024. The webinar addressed recent cases and best practices for patent license terms including scope, field of use, sublicenses, royalties, indemnification, representations, warranties, patent challenges, bankruptcy, change of control, force majeure, forum selection, and termination.
• Host and Speaker, “Navigating Enablement: New USPTO Guidelines for Assessing Enablement, Post-Amgen Court Treatment, and Wands Factors”, Strafford BARBRI CLE Video Webinar, April 2, 2024. The webinar discussed the new USPTO enablement guidelines, post-Amgen Federal Circuit and District Court cases, the application of the Wands Factors by the courts, best practices for drafting applications, and strategies for challenging patents.
• Host and Speaker, “Licensing Trade Secrets” Strafford BARBRI CLE Video webinar, February 29, 2024. The webinar addressed best practices for trade secret license terms including scope, sublicenses, royalties, indemnification, representations, warranties, protective safeguards, termination, and consequences of disclosure.
• Speaker, “Data Discovery and Classification – New Challenges for Data Compliance” Global Legal ConfEx Webinar, February 28, 2024. The webinar addressed changing privacy and compliance mandates, the role of eDiscovery in data privacy, data security risk assessment and management strategy, and the impact of AI.
• Speaker, “Strategies for Patent Enablement in the US, Europe, and Japan” IPO Chat Channel Webinar, January 24, 2024. The CLE webinar discussed an overview of patent enablement, recent court decisions, the impact for future decisions, and strategies for addressing enablement in patent applications and litigation in the US, Europe, and Japan.
• Speaker, “The Compliance Chasm: Business Practicality vs. Consumer Privacy Acts,” Global Legal ConfEx Webinar, November 29, 2023. The webinar discussed the changing privacy and compliance mandates, data protection, finding and classifying data across the entire organization, and prevention of data leaks.
• Speaker, “Intellectual Property Licensing,” Confederation of Indian Industry (CII), October 28, 2023. John presented a three hour webinar on licensing including essential elements and risk mitigation strategies for patent license agreements, recent cases, royalty determinations by various industries, negotiation techniques, and a case study.
• Host and Speaker, “Trade Secrets Protection: Mitigating AI Risk, Pursuing Misappropriations, Structuring Agreements,” Strafford BARBRI CLE Video Webinar, October 24, 2023. The webinar discussed trade secrets protection, safeguards, artificial intelligence risks and mitigation strategies, trade secret agreements, remedies for misappropriation, and recent cases.
• Program Leader, “Laws of the Machines: Unraveling AI’s Legal Enigma (as generated by ChatGPT)” presented by the Richard Linn American Inn of Court and IPLAC on October 12, 2023. The CLE program discussed recent legal cases involving AI and IP including patent and copyright issues.
• Host and Speaker, encore presentation due to popular demand, “Amgen v. Sanofi: Patent Enablement and Implications of the Supreme Court Decision,” Strafford BARBRI CLE Video Webinar, August 8, 2023. The webinar discussed the US Supreme Court decision, best practices for drafting applications, and strategies for challenging patents.
• Host and Speaker, “Amgen v. Sanofi: Patent Enablement and Implications of the Supreme Court Decision,” Strafford BARBRI CLE Video Webinar, June 15, 2023.  The webinar discussed the technology, case history, Supreme Court decision, best practices for drafting applications, and strategies for challenging patents. John was Counsel on the brief for Amicus Curiae.
• Speaker, “Patent Enablement After Amgen v. Sanofi,” AIPLA Webinar, June 15, 2023.  The webinar discussed the technology, case history, Supreme Court decision, best practices for drafting applications, and strategies for challenging patents.
• Quoted multiple times in the article “Generative AI and Copyright: Legal Concerns for Businesses” by Dave Argentar for the Simmons Group on June 14, 2023.
• Speaker, “ChatGPT and Generative AI: Intellectual Property Protection and Infringement,” Global Legal ConfEx Webinar, May 26, 2023. The webinar discussed intellectual property issues involving ChatGPT and Generative AI.
• Speaker, “Building a Robust Invention Harvesting Program,” Global Legal ConfEx Webinar, April 28, 2023. The webinar discussed invention harvesting topics including improving engagement with R&D, processes for evaluating and building a robust patent portfolio, and efforts to increase diversity of inventors.
• Host and Speaker, “Terminating Patent Licenses: Key Considerations and Best Practices,” Strafford BARBRI CLE Video Webinar, April 13, 2023. The webinar discussed termination topics including breach, patent invalidity challenge, bankruptcy, change of control, force majeure, post-termination, and key provisions for effective termination of patent licenses.
• Host and Speaker, “Patent Enablement in Amgen v. Sanofi (US Supreme Court 2023),” Faculty Lecture by the Center for Intellectual Property Law & Information Technology (CIPLIT) and Intellectual Property Law Association of Chicago (IPLAC), at DePaul Law School on March 30, 2023. John is Counsel on the Supreme Court brief for Amicus Curiae, IPLAC.
• Speaker, “101 Days: Where We Are and Where Are We Going?” presented by the Richard Linn American Inn of Court on March 8, 2023. The CLE program discussed Patent Section 101 Patent Eligibility and recent legal cases.
• Host and Speaker, “IP License Compliance Reviews and Audits,” Federal Bar Association CLE Webinar, February 15, 2023. The webinar discussed compliance and audits for patent, trademark, copyright, and trade secret licenses.
• Host and Speaker, “An Analysis of Patent Enablement in Amgen v. Sanofi (US Supreme Court 2023),” Chicago Bar Association, January 24, 2023. John is Counsel on the Supreme Court brief for Amicus Curiae, Intellectual Property Law Association of Chicago.
• Host and Speaker, “Structuring Agreements to Preserve Trade Secrets: Employment Agreements, Non-Disclosure Agreements, and Trade Secret Licenses,” Strafford BARBRI CLE Video Webinar, January 10, 2023. The webinar addressed recent cases and best practices for protecting trade secrets in various agreements.
• Host and Speaker, “IP License Compliance Reviews and Audits: How to Protect IP Rights, Double Royalty Income or Pay No Royalties,” Strafford BARBRI CLE Video Webinar, December 14, 2022. The webinar discussed compliance and audits for patent, trademark, copyright, and trade secret licenses.
• Host and Speaker, “Structuring Patent Licensing Agreements: Avoiding Litigation, Allocating Risk and Maximizing Patent Value,” Strafford BARBRI CLE Video Webinar, October 25, 2022. The webinar addressed recent cases and best practices for patent license terms including scope, field of use, sublicenses, royalties, indemnification, representations, warranties, patent exhaustion, improvements, patent prosecution, bankruptcy, assignment, patent marking, standing to sue, patent validity challenges, and termination.
• Host and Speaker, “Patent Licensing: A Deep Dive Into Licensing Pitfalls,” Strafford CLE Video Webinar, February 24, 2022. The webinar addressed recent cases and best practices for patent license terms including scope, field of use, sublicenses, royalties, indemnification, representations, warranties, and forum selection.
• Content Developer, “The Intersection of Litigation Funding and Ethics: What Makes Cents” presented by the Richard Linn American Inn of Court on February 17, 2022. The CLE program discussed litigation funding, ethics issues, and recent legal cases.
• Host and Speaker, “Licensing Trade Secrets:  Risks, Benefits, and Best Practices for License Terms,” Strafford CLE Video Webinar, August 26, 2021. The webinar addressed best practices for trade secret license terms including scope, sublicenses, royalties, indemnification, representations, warranties, protective safeguards, termination, and consequences of disclosure.
• Host and Speaker, “After Final Patent Prosecution” CLE webinar on March 9, 2021. The webinar discussed best practices for Examiner Interviews, After Final Consideration Program (AFCP 2.0), Amendments After Final, Requests for Continued Examination (RCEs), Requests for Reconsideration, Pre-Appeal Conferences, and Appeals.
• Host and Speaker, “Structuring Patent Licensing Agreements: Maximizing Patent Value,” Strafford Publications webinar, November 19, 2020. The webinar addressed recent cases and best practices for patent license terms including scope, field of use, sublicenses, royalties, indemnification, representations, warranties, patent exhaustion, improvements, patent prosecution, bankruptcy, assignment, patent marking, standing to sue, patent validity challenges, and termination.
• Co-Chair, “Mock Trial: Closing Arguments and Jury Deliberations,” presented by the Richard Linn American Inn of Court on October 22, 2020.  The Honorable Richard Linn, US Court of Appeals for the Federal Circuit, presided over the mock trial.
• Host and Speaker, “Structuring Patent Licensing Agreements: Avoiding Litigation, Allocating Risk and Maximizing Patent Value,” Strafford Publications webinar, May 21, 2019. The webinar addressed recent cases and best practices for patent license terms including scope, field of use, sublicenses, royalties, indemnification, representations, warranties, patent exhaustion, improvements, patent prosecution, bankruptcy, assignment, patent marking, standing to sue, patent validity challenges, and termination.
• Co-Chair, “Mock Trial: Closing Arguments and Jury Deliberations,” jointly presented by the Richard Linn American Inn of Court and the Intellectual Property Law Association of Chicago on May 16, 2019.  The Honorable Richard Linn, US Court of Appeals for the Federal Circuit, presided over the mock trial.
• “Local patent rules see some changes,” Chicago Daily Law Bulletin, January 4, 2019. The article discussed the changes to and ramifications of the local patent rules for the District Court of the Northern District of Illinois.
• Speaker, “Best Practices in Patent Prosecution,” AIPLA Annual Meeting, October 25, 2018, Washington D.C. The CLE presentation discussed recent cases and best practices for patent prosecution including Overcoming Obviousness Rejections, Tips to Persuade Examiners, Inherency in Prior Art Rejections, and Tactics for Leveraging Objective Indicia of Nonobviousness.
• Speaker, “Negotiating Patent and Technology License Agreements” for the Certified Patent Valuation webinar on September 28, 2018. The webinar addressed recent cases and best practices for patent license terms including scope, field of use, sublicenses, royalties, indemnification, representations, warranties, patent exhaustion, improvements, patent prosecution, bankruptcy, assignment, patent marking, standing to sue, patent validity challenges, and termination.
• Speaker, “Patent Prosecution and Portfolio Management,” IP Defense Summit, May 17, 2017. The program focused on strategies and best practices for developing a strong portfolio in a cost effective manner which is aligned with business goals.
• Moderated a panel of in-house counsel on “Global IP Protection and Enforcement” at the In-House Innovates Super Conference on November 16, 2016. The program provided recommendations on protecting and enforcing a cost-effective IP program globally including discussion of patent, trademark, copyright, trade secret protection and litigation.
• Host and Speaker, “Wearable Technology: Protecting IP Rights and Minimizing Infringement Risks,” Strafford Publications webinar, August 23, 2016. The webinar discussed IP protection involving wearable technology including Internet of Things, Data Security and Privacy, Utility Patents, Design Patents, Trademarks, and Trade Secrets.
• “New Trade Secrets Act Expands Owner’s Right to Pursue Thieves,” Chicago Daily Law Bulletin, August 18, 2016. The article discussed the benefits of the new Defend Trade Secrets Act (DTSA) which provides federal jurisdiction and cause of action for trade secret misappropriation litigation.
• Host and Speaker, “The Defend Trade Secrets Act of 2016: Leveraging the New Federal Framework to Protect IP,” Strafford Publications webinar, July 26, 2016. The webinar discussed the benefits and best practices for the new Defend Trade Secrets Act (DTSA) which provides federal jurisdiction and cause of action for trade secret misappropriation litigation.
• Speaker, “Patent Prosecution: How to develop Cost Effective & Winning Prosecution Strategies,” The Knowledge Group webinar, May 13, 2016. The program discussed recent cases and recommendations on protecting and enforcing a cost-effective patent and litigation program.
• Host and Speaker, “Structuring Patent Licensing Agreements: Avoiding Litigation, Allocating Risk and Maximizing Patent Value,” Strafford Publications webinar, March 24, 2016. The webinar addressed recent cases and best practices for patent license terms including scope, field of use, sublicenses, royalties, indemnification, representations, warranties, patent exhaustion, improvements, patent prosecution, bankruptcy, assignment, patent marking, standing to sue, patent validity challenges, and termination.
• Speaker, “Significant IP Strategies for Wearable Technology,” The Knowledge Group webinar, February 5, 2016. The webinar discussed IP protection involving wearable technology including Internet of Things, Data Security and Privacy, Utility Patents, Design Patents, Trademarks, and Trade Secrets.
• “Crowdsourcing Innovation Requires Care,” Chicago Daily Law Bulletin, January 19, 2016. The article discussed the IP issues and best practices to be implemented when using crowdsourcing to develop new products.
• Speaker, “How to Prove Damages in Patent, Trademark and Copyright Cases,” The Knowledge Group webinar, September 2, 2015. The article discussed recent cases and best practices for proving damages in patent, trademark, and copyright cases.
• “International Trade Commission May Yield Quick Results for Patent Owners,” Chicago Daily Law Bulletin, June 10, 2015. The article discussed the benefits and disadvantages of using ITC proceedings to enforce IP rights.
• “Two Paths to Invalidate a U.S. Patent,” Chicago Daily Law Bulletin, December 3, 2013. The article discussed the pros and cons of Inter Partes Review proceedings versus district court litigation to invalidate a US patent.
• “Federal Court Amends Local Patent Rules for Electronically Stored Information,” Chicago Daily Law Bulletin, May 16, 2013. The article discussed the changes to the local patent rules for electronically-stored information in the District Court of the Northern District of Illinois.
• “Federal Circuit Expands Scope of Method Claims in U.S. Patents,” Chicago Daily Law Bulletin, February 11, 2013
• Moderated panel on “Patent Claims and Infringement,” Corporate Intellectual Property Law Conference, 2013
• “Patent Cases May Require Different Evidence to Prove Damages,” Chicago Daily Law Bulletin, August 20, 2012
• “Patent Office Publishes Proposed Rules, Fees for Changes to U.S. Law,” Chicago Daily Law Bulletin, April 13, 2012
• Speaker on panel with Chief Judge James Holderman (USDC, ND IL), “Trends from the Courts and the USPTO,” Corporate Intellectual Property Law Conference, 2012
• “Sweeping Changes Come to U.S. Patent Law,” Chicago Daily Law Bulletin, November 15, 2011
• Author of Chapter 12, Antitrust and Unfair Competition, IICLE. The chapter analyzed antitrust and unfair competition law, including a discussion of recent cases and best practices for avoiding antitrust and unfair competition claims and for asserting such claims against a business competitor.
• Speaker on panel, “Protecting Trade Secrets,” Corporate Intellectual Property Law Conference, 2011
• Speaker on panel with Chief Judge James Holderman (USDC, ND IL), “Patent Case Law Update,” Corporate Intellectual Property Law Conference, 2010
• “Recent Patent Decisions And Their Impact On Your Company,” Corporate Counsel, February 2009
• Speaker on panel with Chief Judge James Holderman (USDC, ND IL), “Business Implications of Recent Major Patent Cases,” Corporate Intellectual Property Law Conference, 2009
• Speaker on panel, “Patent Reform,” Corporate Intellectual Property Law Conference, 2008
• Speaker, Intellectual Property Law, MSNBC, 2007. Appeared on international television to discuss recent IP cases, their impact on business practices, and recommendations for business operations.
• Speaker, “What is a Patent”, a one hour cable television program by the Illinois State Bar Association, August 2001
• Speaker, “How to Obtain a Patent”, a one hour cable television program by the Illinois State Bar Association, August 2001
• Speaker, “Best Practices in Web-Enabled Collaborative Product Design”, IQPC Conference, July 2001, San Francisco, CA
• Speaker, “Establishing a Presence on the World Wide Web: An Internet Primer”, Illinois State Bar Association CLE Program, April 2001
• Speaker, “Corporate Compliance/Voluntary Disclosure, Intellectual Property”, Illinois State Bar Association CLE Program, January 2001
• Speaker, “Technology and Competition”, Illinois State Bar Association CLE Program, April 1998
• Contributor to Chapters 40-42, Negotiations Involving Intellectual Property, Attorney’s Practice Guide to Negotiations
• “Rule Changes at the U.S. Patent Office,” Intellectual Property Newsletter, Vol. 37, No. 3, March 1998
• Speaker, “How to Prevent Competitors from Stealing Your Clients’ Products and Services”, Illinois State Bar Association CLE Program, March 1997
• “Who Would Own The Mona Lisa? Work Made for Hire under present Copyright Law,” CBA Record
• “High Technology and International Affairs: Export Restrictions, Intellectual Property and Import Restrictions,” 81 Am. Soc’y Int’l L. Proc. 1-26
• Speaker, “Avoiding Intellectual Property Pitfalls: A Program for the General Practitioner,” Illinois State Bar Association Midyear Meeting
• Speaker, “Recent Developments in Copyright Law,” American Intellectual Property Law Association Spring Meeting
• Speaker, “Copyright Registration and Licensing of Computer Technology,” American Intellectual Property Law Association Mid-Winter Meeting

Additional articles, publications & lectures available upon request.

Practices

• Freedom-to-Operate, Non-Infringement, and Invalidity Opinions
• IP Asset Management and Licensing
• IP Due Diligence and Transactions
• IP Litigation
• Patent Preparation and Prosecution
• Post-Grant Proceedings Before the USPTO
• Trade Secrets and Unfair Competition
• Trademarks and Copyrights

Technologies

• Cybersecurity
• Electrical, Computer, and Software Technologies
• Internet and Telecommunications
• Mechanical, Electromechanical, and Optical Technologies

Insights

• John Augustyn Moderates Panel on IP Challenges and Strategies in Artificial Intelligence (AI)
  October 21, 2024
• John Augustyn Moderates CLE Webinar on Amgen v. Sanofi and Patent Enablement One Year Later
  September 24, 2024
• John Augustyn Speaks at Webinar on Trends In Litigation Technology and Strategy
  September 23, 2024
• John Augustyn Speaks at Webinar on IP and Artificial Intelligence
  August 28, 2024
• Leydig Attorneys Named The Best Lawyers in America® for 2025
  August 15, 2024
• John Augustyn and Kristina Swanson Present CLE Webinar “Patent Licensing: A Deep Dive Into Licensing Pitfalls
  April 19, 2024
• John Augustyn to Present CLE Webinar “Navigating Enablement: New USPTO Guidelines and Post-Amgen Court Treatment”
  April 1, 2024
• John Augustyn Presents Trade Secret Licensing Webinar
  February 28, 2024
• John Augustyn to Speak on Data Discovery and Classification – New Challenges for Data Compliance
  February 28, 2024
• John Augustyn Presents IPO Webinar “Strategies for Patent Enablement in the US, Europe and Japan”
  February 2, 2024
• Leydig Attorneys Named 2024 Illinois Super Lawyers
  February 1, 2024
• John Augustyn to Speak on The Compliance Chasm: Business Practicality vs. Consumer Privacy Acts
  November 29, 2023
• John Augustyn Presents Webinar “Intellectual Property Licensing”
  November 14, 2023
• John Augustyn and Kristina Swanson Present CLE Webinar “Trade Secrets Protection: Mitigating AI Risk, Pursuing Misappropriations, Structuring Agreements”
  October 30, 2023
• Leydig Attorneys Selected for IAM Patent 1000
  September 29, 2023
• John Augustyn serves on Scholarship Committee for IP Law
  September 20, 2023
• Leydig Attorneys Named The Best Lawyers in America® for 2024
  August 18, 2023
• John Augustyn to Moderate and Present Encore CLE Webinar on Amgen v. Sanofi: Patent Enablement and Implications of the Supreme Court Decision
  August 8, 2023
• John Augustyn Presents AIPLA Webinar “Patent Enablement After Amgen v. Sanofi”
  June 27, 2023
• John Augustyn Presents CLE Webinar “Amgen v. Sanofi: Patent Enablement and Implications of the Supreme Court Decision”
  June 12, 2023
• John Augustyn to speak on ChatGPT and Generative AI: Intellectual Property Protection and Infringement
  May 26, 2023
• John Augustyn to Speak at webinar “Building a Robust Invention Harvesting Program”
  April 26, 2023
• John Augustyn Presents CLE webinar “Terminating Patent Licenses: Key Considerations and Best Practices”
  April 10, 2023
• John Augustyn Speaks at CIPLIT Faculty Lecture at DePaul Law School on Patent Enablement in Amgen v. Sanofi (US Supreme Court 2023)
  March 28, 2023
• John Augustyn and Laura Schaefer present CLE webinar “IP License Compliance Reviews & Audits”
  February 10, 2023
• John Augustyn is Counsel on US Supreme Court Brief in Amgen v. Sanofi and Presents CLE Webinar Discussing the Amgen case and Patent Enablement
  February 1, 2023
• Leydig Attorneys Named 2023 Illinois Super Lawyers
  January 26, 2023
• John Augustyn Presents CLE Webinar “Structuring Agreements to Preserve Trade Secrets: Employment Agreements, Non-Disclosure Agreements, and Trade Secret Licenses”
  January 10, 2023
• John Augustyn and Laura Schaefer present CLE webinar “IP License Compliance Reviews & Audits”
  November 10, 2022
• John Augustyn Presents Patent Licensing Webinar
  October 3, 2022
• Leydig Attorneys Selected for IAM Patent 1000
  September 29, 2022
• John Augustyn serves on Scholarship Committee for Diversity in IP Law
  September 13, 2022
• Leydig Attorneys Named Best Lawyers by U.S. News
  August 25, 2022
• John Augustyn and Kristina Swanson Present Patent Licensing Webinar
  March 2, 2022
• Leydig Attorneys Named 2022 Illinois Super Lawyers
  January 26, 2022
• Leydig Attorneys Selected for IAM Patent 1000
  September 29, 2021
• John Augustyn to Moderate and Speak at CLE webinar on Licensing Trade Secrets: Risks, Benefits, and Best Practices for License Terms
  August 26, 2021
• Leydig attorneys named Best Lawyers by U.S. News
  August 19, 2021
• John Augustyn to Present a CLE webinar on After Final Patent Prosecution on March 9, 2021
  March 9, 2021
• John Augustyn to Present a CLE webinar on After Final Patent Prosecution
  March 9, 2021
• Leydig Attorneys Named 2021 Illinois Super Lawyers
  January 26, 2021
• John Augustyn Presents Patent Licensing Webinar
  October 27, 2020
• John Augustyn co-chairs Mock Trial Program
  October 13, 2020
• Leydig Attorneys Selected for IAM Patent 1000
  September 29, 2020
• Leydig attorneys named Best Lawyers by U.S. News
  August 20, 2020
• Leydig attorneys named in Best Lawyers
  February 28, 2020
• Leydig Attorneys Named 2020 Illinois Super Lawyers
  January 26, 2020
• Federal Circuit rejects concept of “aesthetic functionality” for design patents
  November 22, 2019
• Leydig Attorneys Selected for IAM Patent 1000
  September 29, 2019
• Leydig Attorneys Listed in 2019 Edition of The Best Lawyers in America®
  August 17, 2019
• John Augustyn to Moderated and Present a CLE Webinar on Structuring Patent Licensing Agreements
  May 21, 2019
• Leydig Attorneys Named 2019 Illinois Super Lawyers
  January 25, 2019
• Local patent rules see some changes
  January 4, 2019
• John Augustyn to Speak at AIPLA Annual Meeting in Washington DC on October 25, 2018
  October 25, 2018
• John Augustyn to present a CLE Webinar on Negotiating Patent and Technology License Agreements
  September 28, 2018
• Leydig Attorneys Listed in 2018 Edition of The Best Lawyers in America®
  August 17, 2018
• Leydig Attorneys Named 2018 Illinois Super Lawyers
  January 25, 2018
• Leydig and Six of its Attorneys Selected Among World's Leading Patent Practitioners by IAM Patent 1000
  June 11, 2017
• John Augustyn to Speak on Patent Portfolio Management at IP Defense Summit on May 17
  May 17, 2017
• Leydig Attorneys Named 2017 Illinois Super Lawyers
  January 18, 2017
• Leydig Attorneys Named as Leading Lawyers
  December 1, 2016
• John Augustyn to Moderate Panel on Global IP Protection and Enforcement at the In-House Innovates Super Conference on November 16
  November 16, 2016
• John Augustyn to Discuss IP Rights and Infringement Risks of Wearable Technology in Webinar on August 23
  August 23, 2016
• John Augustyn to Discuss the Defend Trade Secrets Act of 2016 During Webinar on July 26
  July 26, 2016
• John Augustyn to Speak on Best Practices in Developing and Implementing Patent Prosecution Strategies During Webinar on May 13
  May 13, 2016
• John Augustyn to Speak on Structuring Patent Licensing Agreements for Best Practices to Maximize Value, Allocate Risk and Avoid Litigation During Webinar on March 24
  March 24, 2016
• Leydig Attorneys Named as Leading Lawyers
  March 22, 2016
• John Augustyn to Speak on Significant IP Strategies and Data Security for Wearable Technology and the Internet of Things in Webinar on February 5
  February 5, 2016
• Leydig Attorneys Named in Illinois Super Lawyers and Rising Stars 2016 Lists
  December 4, 2015
• John Augustyn to Speak on Proving Damages in Patent, Trademark and Copyright Cases in view of Recent Cases and Trends During Webinar on September 2, 2015
  September 1, 2015
• Leydig Attorneys Named as Leading Lawyers
  February 2, 2015
• Leydig Attorneys Named in Illinois Super Lawyers and Rising Stars 2015 Lists
  January 16, 2015