John S Cipolla

Practice Areas

Patent Litigation

Patent Prosecution

IP and Technology Transactions

Trademark Law

Copyright Law

Antitrust and Trade Regulation Counseling and Litigation

Intellectual Property Litigation

Career

John Cipolla, Calfee Vice Chairman, has 30+ years of experience in patent and trademark law and serves as Co-Chair of the Intellectual Property group, a position he has held for more than 10 years.

John's focus is primarily on complex litigation matters that include patents. John has extensive experience in litigation and dispute resolution in all areas of intellectual property. He also provides clients with counseling and strategy concerning the procurement of patents and trademarks. In addition, John has provided numerous opinions in patent and trademark matters.

John has successfully handled a diverse range of federal and state litigation claims on behalf of both plaintiffs and defendants in the areas of patents, copyrights, trade secrets, product configuration and trademarks. His experience includes managing cases that involve international and multi-national litigation. He has participated and led teams at trial and Markman hearings in federal courts, and he has argued successfully before the Court of Appeals for the Federal Circuit. The past few years, John has led teams in disputes involving both multiple lawsuits and multiple Inter Partes Review (IPR) proceedings before the Patent Trial and Appeal Board.

Using his knowledge and experience, John also helps athletes establish, monetize and protect their Name, Image and Likeness (NIL).

John was previously a featured speaker at a Cincinnati Intellectual Property Law Association meeting where he gave a presentation titled “The State of Patent Law and Possible Upcoming Changes.”

John began working in intellectual property as a Patent and Trademark Coordinator at Bailey Controls in 1985. He began his career as an attorney with Jones Day from 1989-1993. John has served on the Firm’s Management Committee since 2010 and Executive Committee since 2006. He was elected Vice Chair of the Firm in 2021.

Professional Memberships

Cleveland State University College of Law's IP Advisory Council, Chair

American Bar Association, Member

Cleveland Intellectual Property Law Association (CIPLA), Member

National Alliance on Mental Illness (NAMI) of Greater Cleveland, President, Board of Directors

Expert in these Jurisdictions

Ohio

USPTO

Experience

Managing the entire patent portfolio directed to radiation oncology therapeutics and analytics technology for a publicly traded, multinational company headquartered on the West Coast. The portfolio encompasses dozens of seminal patents, particularly in the areas of combining imaging and therapeutic techniques in one integrated device. Calfee takes an active role in securing intellectual property rights on new and developing technologies emerging from the client's vigorous research group, including drafting and prosecuting its domestic and international patent applications. Calfee works with the company’s scientists and engineers as well as notable university researchers with whom the company collaborates. Calfee also manages the company’s numerous international applications.

Handling IP matters for a publicly traded, Fortune 1000, global manufacturer, including drafting and prosecuting dozens of patent applications directed to technology of strategic importance to the client. Calfee also represents the company in significant IP litigation matters when they occur. Calfee routinely manages and assists with matters related to patent prosecution and IP strategy, management and strategy of patent and trademark portfolios, and advice on IP strategy and litigation. Calfee also is handling "take-down" disputes related to infringers of the client's patents on the Amazon.com website.

Serving as primary IP counsel for a publicly traded, Fortune 500, global manufacturing client and its operating companies with responsibility for the client's worldwide IP portfolio, including 1,000+ patent matters and 2,000+ trademark matters. With regard to clearance, Calfee provides right-to-use and non-infringement analyses and opinions. With regard to procurement, we provide patentability and registrability analyses and opinions. We also prepare, file, and prosecute patent and trademark applications. Calfee assists in all IP litigation the operating companies are involved in.

Serving as primary IP counsel for a publicly traded manufacturer and its operating companies with responsibility for more than 125 active patent and trademark matters for this client. With regard to clearance, we provide right-to-use and non-infringement analyses and opinions. With regard to procurement, we provide patentability and registrability analyses and opinions. Calfee also prepares, files, and prosecutes patent and trademark applications, and we represent the company in IP-related disputes.

Serving as chief outside IP counsel for a multi-billion dollar, publicly traded, Fortune 1000, multinational holding company with multiple operating companies based in the U.S. and abroad. Calfee is responsible for all patent matters and assists many of the operating companies with the prosecution of patent applications, both in the U.S. and internationally. Calfee manages the U.S. trademark and patent work directly and supervises a network of foreign associates when action is required in foreign jurisdictions. Calfee also offers primary counsel on the impact of corporate reorganization efforts on the ownership and management of the IP of the operating companies. Calfee IP lawyers supervise most of the intellectual property due diligence related to the mergers and acquisition activity of the client. Calfee represents the company in several trade secret matters and other IP litigation matters.

Representing a publicly traded, Fortune 1000 company and its operating entities spanning several continents in its complex intellectual property litigation and transactional matters. These matters range from complex IP deals (purchases, licensing, government contract issues) to infringement and theft of trade secret disputes, including multiple multi-million-dollar patent enforcement matters, an IP Option and Evaluation agreement to acquire a large IP portfolio and to assume government contracts, and an arbitration/litigation matter to resolve trade secret and contract claims relating to military and civilian systems.

Serving as global Intellectual Property Lead Counsel for an Asia-based manufacturer, representing the client in district court litigation matters and prosecuting patent applications. The patent work for this client includes patent infringement matters filed in district courts in two states and the Federal Circuit as well as in six inter partes reviews before the Patent Trial and Appeal Board. These actions are being heard in a variety of forums in four countries.

Education