Overview
John R. King is a partner in the firm’s Orange County office. Mr. King’s practice is concentrated in strategic counseling, licensing, and patent procurement for both early stage and established companies. He has extensive experience in patenting novel technologies, developing strategies to protect a market niche, conducting patent landscape reviews, performing venture capital due diligence, preparing opinions, and dealing with the intellectual property challenges that face new companies.
Mr. King chairs Knobbe Martens’ patent prosecution committee and has successfully counseled numerous start-up companies during the early stages of development, including:
- Broadband Storage, Inc. (acquired by Adaptec)
- Corollary, Inc. (acquired by Intel)
- Endeavors Technology (acquired by Tadpole)
- FileNet, Inc. (acquired by IBM)
- InterWorks Computer Products (acquired by Sanmina)
- Kofax Image Products (acquired by DICOM Group)
- Linfinity Microelectronics (acquired by Microsemi)
- McCaw Cellular Communications (acquired by AT&T Wireless)
- Quest Software (acquired by Dell)
- SRS Labs (acquired by DTS, Inc.)
- XYPoint (acquired by TeleCommunicaiton Systems)
Mr. King works with a variety of industries including artificial intelligence, audio processing, battery charging systems, computer graphics, computer software and hardware, data storage, database technologies, driver safety systems, financial transactions, GPS technologies, healthcare information technology, navigation control, networking, online businesses, RFID tagging, semiconductors, statistical modeling, telecommunications, wireless communications, vehicle navigation control, video gaming, and video processing.
Education
- University of Texas - Austin (J.D., 1993), with honors
- Brigham Young University (B.S. Electrical Engineering, 1986), with honors, Emphasis in computer architecture and software, Phi Kappa Phi Honorary Fraternity, Eta Kappa Nu Honorary Fraternity
Representative Matters
Kinetic Technologies, Inc. v. Skyworks Solutions, Inc., Case IPR2014-00529 (2014).
Successfully convinced the Patent Trial and Appeals Board to not institute the Inter Partes Review proceeding.
Kinetic Technologies, Inc. v. Skyworks Solutions, Inc., Case IPR2014-00530 (2014).
Successfully convinced the Patent Trial and Appeals Board to not institute the Inter Partes Review proceeding.
Kinetic Technologies, Inc. v. Skyworks Solutions, Inc., Case IPR2014-00690 (2014).
Successfully prevailed in validating all challenged claims.
Canon Inc. v. Intellectual Ventures I LLC, Case IPR2014-00536 (2014).
Successfully convinced the Patent Trial and Appeals Board to not institute the Inter Partes Review proceeding.
Canon Inc. v. Intellectual Ventures I LLC, Case IPR2014-00537 (2014).
Successfully convinced the Patent Trial and Appeals Board to not institute the Inter Partes Review proceeding.
Canon Inc. v. Intellectual Ventures I LLC, Case IPR2014-00757 (2014).
Successfully prevailed in validating all challenged claims.
Google Inc. v. Intellectual Ventures II LLC, Case IPR2014-00787 (2014).
Successfully prevailed in validating certain challenged claims.
Canon Inc. v. Intellectual Ventures I LLC, Case IPR2014-00952 (2014).
Successfully convinced the Patent Trial and Appeals Board to not institute the Inter Partes Review proceeding.
International Business Machines Corp. v. Intellectual Ventures I LLC, Case IPR2014-01516 (2014).
Successfully convinced the Patent Trial and Appeals Board to not institute the Inter Partes Review proceeding.
International Business Machines Corp. v. Intellectual Ventures I LLC, Case IPR2014-00587 (2014).
Successfully prevailed in validating all challenged claims.
Great West Casualty Company, BITCO General Insurance Corporation, and BITCO National Insurance Company v. Intellectual Ventures II LLC, Case IPR2015-01706 (2016).
Successfully convinced the Patent Trial and Appeals Board to not institute the Inter Partes Review proceeding for certain claims.
Great West Casualty Company, BITCO General Insurance Corporation, and BITCO National Insurance Company v. Intellectual Ventures II LLC, Case IPR2015-01706 (2016).
Successfully convinced the Patent Trial and Appeals Board to not institute the Inter Partes Review proceeding for certain claims.
PNC Financial Services Group, Inc. and PNC Bank, N.A. v. Intellectual Ventures I LLC, Case CBM2014-00032 (2014).
Challenged the broad interpretation of the financial product or service requirement needed to institute a Covered Business Method proceeding. Successfully convinced the Patent Trial and Appeals Board to not institute the CBM proceeding.
J.P. Morgan Chase & Co., JP Morgan Chase Bank, Nat’l Ass’n, Chase Bank USA, Nat’l Ass’n, Chase Paymentech Solutions LLC, and Paymentech LLC v. Intellectual Ventures II LLC, Case CBM2014-00160 (2015).
Successfully convinced the Patent Trial and Appeals Board to not institute the CBM proceeding.
Motorola Mobility LLC, v. Intellectual Ventures I LLC, Case CBM2015-00005 (2015).
Successfully filed a motion to terminate the CBM proceeding.
Great West Casualty Company, BITCO General Insurance Corporation, and BITCO National Insurance Company v. Intellectual Ventures II LLC, Case CBM2015-00171 (2016).
Successfully convinced the Patent Trial and Appeals Board to not institute the CBM proceeding.
Motorola Mobility LLC, v. Intellectual Ventures I LLC, Case CBM2015-00174 (2016).
Successfully convinced the Patent Trial and Appeals Board to not institute the CBM proceeding.
Recognition
Awards & Honors
Mr. King has received multiple awards and has been honored for his legal accomplishments:
- Recognized for outstanding work in patent law in the 2024 edition of the Intellectual Asset Management (IAM) “Patent 1000 Guide” for Prosecution (2024)
- Named one of the “World’s Leading Patent Professionals” in the Patent 1000 guide by Intellectual Asset Management (IAM) magazine for Prosecution (2012-2023). In the 2023 guide, he was commended as someone who “drafts meticulous patent applications that can withstand the test of time.” In the 2019 guide, he was noted for his “experience and broad patent procurement, monetisation and counselling expertise [which] make him a valuable ally”.
- Selected for inclusion in the “Southern California Super Lawyers” list for his work in intellectual property law by Super Lawyers magazine from 2012-2020
- Recognized in The Legal 500 “United States 2015” as being an outstanding practitioner. In this guide, he was noted for his work in patent prosecution
- Named one of Orange County’s “Top Patent Attorneys” multiple times by O.C. Metro magazine
Affilliations
Past President, Orange County Patent Law Association
American Intellectual Property Law Association
Intellectual Property Organization
Licensing Executives Society
News & Insights
Speeches & Seminars
“Alice-Proofing Patent Claims Under Section 101,” Telecommunication and Software Patent Practice Update, New Jersey Intellectual Property Law Association, Iselin, New Jersey.
“Post Grant Procedures & Strategies,” Orange County Patent Law Association, Irvine, California.
“What Businesses And Engineers Need To Know About Recent Developments in Patent Law,” OCTANe Strategic Growth Series, Irvine, California.
“Post Grant Patent Challenges,” 37th Annual Intellectual Property Institute, The State Bar of California, San Diego, California.
Look Before You Leap – Avoiding Intellectual Property Problems When Starting A New Information Technology Business,” OCTANE Software Information Technology Seminar, Irvine, California.
The American Invents Act – How Changes To The Patent Law Can Help Emerging Companies,” Patent Strategies Seminar, Irvine, California
“Cease and Desist Strategies – Preparing For Licensing Negotiations,” Orange County Patent Law Association, Irvine, California.
“Defending the Crown Jewels: How to Manage and Protect Intellectual Property,” Harvard Business School Entrepreneurs Conference, Anaheim, California
Patent Claim Drafting Techniques That Enhance Enforcement And Increase Licensing Revenue,” Orange County Patent Law Association, Seminar, Irvine, California
“Patent Allowance, Now What? Continuation Strategies That Significantly Increase Patent Value,” Orange County Patent Law Association, Costa Mesa, California
“Protecting Innovative Medical Products,” Harvard Business School Entrepreneurs Conference, Irvine, California
“Tailoring a Patent Portfolio to Increase Licensing Revenue,” Orange County Licensing Executive Society, Irvine, California.
“Limiting Language and Alternative Embodiments: What to Do and What to Avoid,” Orange County Patent Law Association, Costa Mesa, California.
“Transforming Proprietary Knowledge Into Competitive Business Tools,” Chapman University, Orange, California.
“Profiting from Technology Innovation,” Harvard Alumni Association, Irvine, California.
“Protecting Intellectual Property – A Venture Capitalist’s Perspective,” Harvard Business School Entrepreneurs Conference, Irvine, California.
“Patent Strategies to Enhance Your Competitive Position,” Harvard Business School Entrepreneurs Conference, Irvine, California.
“Intellectual Property Protection for Startups,” Harvard Business School Entrepreneurs Conference, Irvine, California.
“Patent Preparation and Drafting for the International Company,” International Intellectual Property Seminar, Newport Beach, California.