John M. Baird

Partner

  • John M. Baird
  • Phone: +1 202 776 7819
    Fax: +1 202 379 9850

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  • Duane Morris LLP
    505 9th Street, N.W., Suite 1000
    Washington, DC 20004-2166
    USA

John M. Baird practices in the area of intellectual property law, including analysis, acquisition, management, licensing and defense. Mr. Baird’s practice focuses on patent disputes, with an emphasis on defensive proceedings in United States district courts and the Patent Trial and Appeal Board (PTAB). Mr. Baird has experience with complex intellectual property litigation in federal courts from pre-filing stages through summary judgment and trial. He provides technical and legal analysis, works with experts and witnesses, takes and defends depositions, prepares and argues motions, and manages the day to day efforts of trial teams. He has prepared non-infringement opinions and assisted in defensive proceedings, including declaratory judgment actions in federal court. He is a member of the firm’s Patent Trial and Appeal Board practice group and has been lead counsel in multiple inter partes review (IPR) proceedings before the Board, from drafting the initial petitions through arguing in final Trial Hearings.

Mr. Baird also has experience in prosecuting patent and trademark applications before the United States Patent and Trademark Office. He is a registered patent attorney, focusing in the electrical and mechanical arts. He has experience drafting, analyzing and negotiating intellectual property licenses, including patent, trademark and software licenses.

He represents clients in matters covering a diverse range of technologies, including data communications and networking (including WiFi, 4G/LTE, MoCA, OFDM, VoIP, SIP, RTP protocols, techniques and infrastructure), video imaging and conferencing, data center infrastructure and virtualization, mobility (including Mobile IP and other tunneling techniques), optical fiber communications (including precoding, laser optics, modulation technologies, amplifiers, add/drop multiplexing and switching, coherent transmission and detection, demodulation and equalization), thin films and related deposition techniques, semiconductor fabrication, packaging and circuitry, digital advertising, medical devices, lighting and other consumer electronics.

He has experience in managing intellectual property matters internationally. He advises clients in international IP strategy and has collaborated with foreign associates on a wide variety of IP matters in major jurisdictions globally. Before joining Duane Morris in April of 2005, he clerked for a boutique intellectual property firm in Sydney, Australia. He has also lived in Germany, where he became proficient in conversational German.

Prior to his legal career, Mr. Baird served as an officer in the United States Navy, where he managed the operation and maintenance of nuclear power plants, including electrical power generation and distribution on a Nimitz class aircraft carrier.

Mr. Baird is a 2008 cum laude graduate of George Mason University School of Law and a 1998 graduate of Cornell University (B.S., Electrical Engineering).

Representative Matters

    Patent Trial and Appeal Board Proceedings (Inter Partes Review)

  • Lead counsel representing petitioner Free Stream Media Corp. d/b/a Samba TV in two IPRs challenging the validity of patents held by Alphonso, Inc. One of the patents is directed to a system for delivering targeted advertisements based on user viewing behaviors. The other patent is directed to a system for measuring the lift in viewership attributable to a digital advertising campaign. Inter Partes Review Nos. 2019-00762, and -00790.
  • Lead counsel representing Petitioner Ruckus Wireless, Inc. in IPRs challenging the validity of patents held by XR Communications, LLC that are directed to wireless beam forming techniques. Inter Partes Review Nos. 2018-01018, -01017, and –01016.
  • Lead counsel representing petitioners Comcast Cable Communications, LLC, Cox Communications, Inc., Time Warner Cable Enterprises LLC, Verizon Services Corp. and ARRIS Group, Inc. in IPRs challenging the validity of patents held by TQ Delta, LLC. The patents are directed to phase scrambling, low power management, and diagnostic techniques for multicarrier communications. Final written decisions found in favor of petitioners. Inter Partes Review Nos. 2017-00417, -418, 419, -420, and -422.
  • Represented petitioners ARRIS Group, Inc., Tellabs, Inc., Alcatel-Lucent USA, INc., and Source Photonics, Inc. in successful IPRs of three patents held by Cirrex concerning optical waveguides and filters. In one IPR, obtained institution on all challenged claims and early judgment in favor of petitioners. Argued the final trial hearing in the other two, both of which resulted in final written decisions in favor of petitioners on all claims. Inter Partes Review Nos. 2014-00815, -1077 and -1191.
  • Represented petitioner Verizon Services Corp. in successful IPRs of three patents held by AIP that concern telephone call setup and transmission using a "callback" (i.e. a reverse direction phone call) from a telecommunication switch associated with the called party. The Patent Trial and Appeal Board instituted all IPRs and rendered judgment in favor of petitioner on all instituted claims. Inter Partes Review Nos. 2015-01104, -1106 and -1107.
  • Represented petitioner GoPro, Inc. in IPRs of two patents held by Contour concerning a compilation of conventional features that were well-known in the art of "point of view" ("POV") wireless cameras, such as those popularly used in action sports. The Patent Trial and Appeal Board instituted trial in both IPRs, but found that GoPro’s own sales catalog was not sufficiently public to constitute prior art. That decision was reversed on appeal to the Federal Circuit. Inter Partes Review Nos. 2015-01078 and -1080.
  • Patent Prosecution

  • Prosecutes in the area of integrated circuits on behalf of one of the world's largest independent semiconductor foundries.
  • Prosecutes applications for one of the largest professional engineering services firm in the world in the area of infrastructure engineering.
  • Patent Litigation

  • Oyster Optics, LLC v. Coriant Am. Inc., et al. , 2:16-cv-01302-JRG (E.D. Tex.). Represented Cisco Systems in a seven patent infringement action concerning 40G and 100G optical fiber communications equipment. Plaintiff withdrew six of the seven patents from the case after claim construction and other victories. Secured summary judgment on a release and related exhaustion defense for the final patent, which the Plaintiff has appealed to the Federal Circuit..
  • TQ Delta LLC (D.Del.). Represent defendants Comcast, Cox, Time Warner Cable, and Verizon. The eight patents-in-suit held by TQ Delta pertain to multicarrier DSL technology, including low power modes, diagnostics, and phase scrambling. The patents are asserted against Multimedia over Coax Alliance (MoCA) products and services.
  • Consolidated Work Station Computing, LLC v. Cisco Systems, Inc.. (S.D.N.Y.) Represented defendant Cisco. The patent-in-suit held by CWSC pertains to fault-tolerant power supplies for powering clustered personal computer processors. Obtained early settlement.
  • Cirrex Systems LLC v. Verizon Communications Inc., et al. (D. Del). Represented Verizon, Tellabs and ARRIS Group defendants as litigation counsel and IPR counsel. The three patents-in-suit held by Cirrex concern various optical assemblies that include waveguides, thin film filters, and masks and are asserted against Optical Networking Terminal components in the Verizon FiOS service. Obtained stay and then dismissal of cases after successful resolution of IPRs.
  • AIP Acquisition LLC v. Verizon Communications Inc., et al. (D. Del). Represented Verizon defendants as litigation and IPR counsel. The five patents-in-suit are held by AIP and concern telephone call setup procedures, including use of data networks, VoIP, least cost routing, hybrid networks, and call hunt/simulring features. Obtained stay and then dismissal of cases after successful resolution of IPRs.
  • ReefEdge Networks, LLC v. Cisco Systems, Inc., et al., (D. Del); ReefEdge Networks, LLC v. Meraki, Inc. (D. Del); and ReefEdge Networks, LLC v. Aruba Networks, Inc. (D. Del). Represented Cisco, Meraki and Aruba defendants. The three patents-in-suit held by ReefEdge concerned technology for seamless user mobility among WiFi access points in a wireless networking environments. Argued claim construction and indefiniteness at Markman hearing. Case settled for all clients.
  • BAE Systems Information and Electronic Systems Integration Inc. v. Aeroflex Incorporated (D. Del.) Represented Aeroflex defendants. The patent-in-suit held by BAE Systems concerned infrared countermeasure systems that use lasers to protect aircraft from incoming missiles. Argued claim construction at Markman hearing. Obtained summary judgment in favor of Aeroflex on patent infringement claims, disposing of case prior to trial. Had earlier obtained summary judgment ruling in favor of Aeroflex disposing of patent infringement claim.
  • Graywire, LLC v. Ciena Corp et. al., (N.D.Ga). Represented Cisco and Ciena defendants. The three patents-in-suit held by Graywire (now Cirrex Systems) were directed to various optical technology, including planar lightguide circuitry, reconfigurable add-drop optical multiplexers, optical fiber identification technology, and laser light filtration and stabilization. Obtained stay and then dismissal after successful resolution of patents in inter partes re-examination and Federal Circuit appeals.
  • Network Gateway Solutions, LLC v. Adtran, Inc. et al., (D. Del.). Represented defendant Cisco Systems, Inc. The patent in suit pertained to digital network access servers that connect remote computers over telephone line infrastructure. Case settled.
  • Trade Secret Litigation

  • BAE Systems Information and Electronic Systems Integration Inc. v. Aeroflex Incorporated (D.Del.). Represented Aeroflex defendants. The technology involved infrared countermeasure systems that used lasers to protect aircraft from incoming missiles. Obtained summary judgment in favor of Aeroflex on trade secret and breach of contract claims.
  • Ellucian, Inc. v. Lori Crockett, (Fairfax County Circuit Court, Virginia). Served as Virginia local counsel for Plaintiff, Ellucian, Inc. in bringing claims of breach of contract, misappropriation of trade secrets and unfair competition.
  • Design Patent Litigation

  • Genlyte Thomas Group LLC v. Quality Sourcing Services, Inc. (C.D.Cal.). Represented QSSI defendant. Design patent directed to lighting structure.
  • International IP Litigation

  • ReefEdge Networks Deutschland GmbH v. Cisco Systems GmbH (District of Dusseldorf, Germany). Represented Cisco defendant through German counsel and coordinated co-pending U.S. litigation. The patent-in-suit was the European Patent counterpart to patents-in-suit in co-pending United States litigation concerning technology for seamless mobility among WiFi wireless access points.
  • Cisco Systems GmbH v. ReefEdge Networks Deutschland GmbH (Federal Patent Court, Munich, Germany). With German counsel, represented plaintiff Cisco in bringing a nullity action challenging the validity of the European Patent that was the subject of a co-pending infringement action against Cisco in Germany.
  • Pro Bono Matters

  • Negotiated trademark license with the United States Marine Corps on behalf of charitable organization that provides support for U.S. Marines and their families.
  • Represented Vietnam War veteran before the U.S. Court of Appeals for Veterans Claims in connection with a claim for benefits for a service connected disability, resulting in a remand in favor of the veteran. Ruling forced Veterans Administration to properly recognize angina as a compensable form of ischemic heart disease.

Admissions

  • Virginia
  • District of Columbia
  • U.S. Patent and Trademark Office
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. District Court for the Eastern District of Virginia
  • U.S. Court of Appeals for the Fourth Circuit
  • U.S. District Court for the Eastern District of Texas
  • U.S. Department of Veterans Affairs

Education

  • George Mason University School of Law, J.D., cum laude, 2008
  • Cornell University, B.S. Electrical Engineering, 1998

Experience

  • Duane Morris LLP
    - Partner, 2016-present
    - Associate, 2009-2015
    - Patent Agent, 2005-2008
  • Hodgkinson McInnes Pappas Patent & Trademark Attorneys, Sydney, Australia
    - Prosecution Clerk, 2004-2005
  • United States Navy
    - Surface Warfare Officer, Nuclear 1998-2003

Honors and Awards

  • Named as a Super Lawyers' Rising Star in Intellectual Property for Washington, D.C., 2015-2018

Professional Activities

  • American Intellectual Property Law Association (AIPLA)
  • The Institute of Electrical and Electronics Engineers (IEEE)

Selected Speaking Engagements

  • "A Deep Dive into Preparing Winning IPR, PGR, and CBM Petitions," American Intellectual Property Law Association (AIPLA), June 2016
  • "The Shifting Landscape for US Patent Disputes," Germany, June 2016
  • "Joinder Motions in Inter Partes Reviews," PTAB Practice Group, July 2015
  • "Real Parties in Interest in Inter Partes Reviews," PTAB Practice Group, May 2015
  • "Post-Issuance Procedures Under the America Invents Act," IP Practice Group, April 2013
  • "Overview of the America Invents Act," October 2012
  • "Key AIA Procedures Impacting Patent Enforcement," IP Practice Group Breakout, October 2012