With three decades of intellectual property law experience, John Carson’s practice involves representing clients at varying stages of the growth curve in the acquisition, protection and exploitation of IP rights. In particular, John advises on patent portfolio management and development that maximizes value in complex IP and specialized industry environments. John is driven by excellence and entrepreneurial thinking. He provides clear, pragmatic and creative legal advice incorporating actionable business strategies. John’s technological experience is also diverse and includes healthcare software, video and image processing, mobile phone synchronization and security software, flat panel displays, Li-ion batteries, fuel cells and semiconductors.
Advisor to some of the most important industry leaders and thought-innovators of today, John serves as lead U.S. counsel for the world’s largest independent microelectronics and nanotechnology institute, and for the global leader in next generation flat panel display technology. John’s clients range from Fortune 500 companies to start-ups that are international in scope and reach far beyond the U.S. into the European and Asian markets. John has extensive experience advising start-ups with Plug and Play accelerator companies from founding funding, scaling to exit. John is also the founder of the firm’s Greater China Practice Group and is a trusted advisor to many Asian- and other foreign-owned companies doing business worldwide.
John’s legal practice is frankly, all about business. Notably, a sampling of John’s recent accomplishments include the representation of patent owners in concurrent reexamination and litigation proceedings that resulted in a $260M license settlement; a Board appeal reversing the rejection of all claims in a patent that is the subject of licensing to over 50 companies and 35 lawsuits; and the development of a monetization strategy relating to asset sales in a 900+ patent portfolio. He also served as a primary legal advisor and strategist in the negotiation of a cross-license to a worldwide patent portfolio and pre-filing due diligence initiative for bringing an infringement suit with 11 selected patents.
John is a California-focused private equity investor and advisor for the Technology Entrepreneurship Clinic (managed by CONNECT and USD Law School). John was also a past president of the International Technology Law Association (ITechLaw) and UCSD CONNECT Financial Forum. A previous adjunct professor of law, speaker and educator, John currently serves as Working Committee Chairman for international policy harmonization of IP as part of the United States Group of the International Association for the Protection of Intellectual Property (AIPPI-US).
At the top of his game, John is consistently ranked among premier lawyers practicing today. In addition to his Martindale-Hubbell AV Preeminent Rating, John has been listed in the U.S. and abroad for his legal accomplishments in such publications as The Best Lawyers in America, Intellectual Asset Management (IAM) - The World's Leading Patent Professionals, The Legal 500, American Lawyer Media, San Diego Magazine, the World’s Leading Trademark Law Practitioners, The San Diego Daily Transcript, Who’s Who publications (California, International Business and Internet & e-Commerce Lawyers), Super Lawyers and Euromoney.
John has received multiple awards and has been honored in both national and international forums for his legal accomplishments:
- Selected by peers for inclusion in the 2017-2020 editions of The Best Lawyers in America®. In 2017, he was recognized for his work in Patent Law and named San Diego Patent Law "Lawyer of the Year"
- Named one of the "World's Leading Patent Professionals" in the Patent 1000 guide by Intellectual Asset Management (IAM) magazine for Prosecution (2014-2019). In the 2019 guide, he was recognized as “a leader in areas such as flat panel displays and nanotechnology” and credited for “Knobbe Martens extremely strong IP brand in Asia, having founded the firm’s greater China practice group”.
- Ranked a 2018 "Top Lawyer in San Diego" for IP Strategy by San Diego Magazine
- Received the 2017 AV Preeminent Rating for legal ability and ethical standards by Martindale-Hubbell
- Recognized in The Legal 500 "United States 2015" for patent prosecution (2015)
- American Lawyer Media (ALM) - Top Rated Lawyer in Intellectual Property Law (January 2012)
- Top Lawyers in San Diego, San Diego Magazine (March 2013)
- Recognized in the Guide to the World’s Leading Trademark Law Practitioners (April 2012 and June 2014)
- San Diego County Top Attorney, The San Diego Daily Transcript (2009 and 2011)
- The International Who’s Who of Business Lawyers (2008 - 2012)
- The International Who’s Who of Internet & e-Commerce Lawyers (2001, 2008, 2009, 2010 and 2011)
- Super Lawyer, Super Lawyers- Southern California and Super Lawyers- San Diego Editions (2007 – 2010)
- Top 25 Leading Portfolio Managers, Daily Journal (April 2009)
- Who’s Who Legal: California 2009, One of California’s Leading Trademark Lawyers
- Who’s Who Legal: California 2009, One of California’s Leading Business Lawyers
- Who’s Who Legal: California 2007, One of 52 Top Trademark Attorneys in California
- Awarded World’s Leading Trademark Law Practitioner, Euromoney’s Legal Media Group (2000 and 2006)
"An Innocent Abroad: A Successful Recovery of Trademark Rights in China" co-authored with Tom Cowan, International Bar Association (IBA) Intellectual Property & Entertainment Law Committee Newsletter, May 2018.
“Weighing the Evidence: How will i4i Change the Scales of Justice?” co-authored with Brent C. Moore, European Intellectual Property Review, Issue 6, 2011.
“Board of Trustees of the Leland Stanford Junior University v. Roche Molecular Systems, Inc.,” co-authored with Laura E. Battat, AIPPI e-newsletter 2010.
“A practical guide to the patent prosecution highway,” Managing Intellectual Property: The Global Magazine for Intellectual Property Owners, April 2009
“Case Summary: Hakim v. Cannon Avent Group, PLC, et al.”, No. 2005-1398, Fed. Cir. February 23, 2007. SDIPLA Newsletter, Vol. 8, Issue 5. April 2007.
SanDisk Corp. v. STMicroelectronics, Inc. No.05-1300, Fed.Cir., March 26, 2007 SDIPLA Newsletter, Vol. 8, Issue 7. June 2007.
KSR International Co. v. Teleflex Inc., No. 04-1350, U.S. Supreme Court, April 30, 2007” SDIPLA Newsletter, Vol 8, Issue 6. May 2007.
“Issues for Standards-Setting Bodies In Balancing Patent Policies With Open Source Software”, March 2, 2005, Unpublished manuscript posted at Intellectual Property Owners Association website
Various case summaries, European Intellectual Property Review, 1999-2010
Various case summaries, Computer Law Association Bulletin, 1998-2003
Speeches & Seminars
2016 Symposium on China-U.S. Patent Practice, SIPO-US BAR Liaison Panel, State Intellectual Property Office of P.R. "Brief Review of Software Patents" Beijing, China, June 2016.
"Examiner Interviews in the USPTO," Seoul, Korea 2016; Beijing, China, June 2016.
"Software as Patentable Subject Matter After Alice v. CLS Bank" presented at Knobbe Martens, San Diego with International Technology Law Association (ITechLaw), San Diego County Bar Association (SDCBA), and the San Diego Intellectual Property Law Association (SDIPLA), January 20, 2015.
"Attacking Patent Validity Without Filing a Lawsuit," presented at AIPPI-US, Hangzhou, China, November 14, 2013.
"Limited Discovery in Inter Partes Review," Seoul, Korea, November 10, 2013; Paris, France, June 2013.
"U.S. Patent Prosecution Case Study" presented at KIAT Tech Commercialization Training Program, Von Liebig Entrepreneurism Center, UCSD, September 9, 2013.
“Reviewing Patent Claims for Validity” presented at Knobbe SD IP Impact Seminar, August 15, 2011
“Under What Circumstances Should Applicant Appeal?” presented at Samsung SAIT, Seoul, South Korea, May 31, 2011.
“Challenging Patent Validity at the USPTO: The Ins and Outs of Reexamination,” presented at Samsung SDI Co., Ltd., Seoul, South Korea, May 27, 2010.