White & Case

John P. Scheibeler
Counsel, New York
Contact Info
John P. Scheibeler
Counsel
1155 Avenue of the Americas
New York, New York
10036-2787
United States
T: + 1 212 819 8830
F: + 1 212 354 8113

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Practice Experience
Mr. Scheibeler practices in the areas of patent litigation, licensing, and counseling for the procurement of patent rights.  He is a registered patent attorney with many years of experience in patent litigation, prosecution and interference practice and has represented clients in the electrical and mechanical arts as well as the life sciences.

Mr. Scheibeler has represented clients in all phases of patent litigation and arbitration, including pre-suit investigations, document discovery, fact witness depositions, expert reports and depositions, claim construction, summary judgment, motions in limine, pretrial orders, jury instructions, direct and cross examination of trial witnesses, and post trial motions.   He also has participated in several appeals before the Court of Appeals for the Federal Circuit.

Mr. Scheibeler also has experience in all aspects of patent procurement in the United States and around the world.   He has counseled clients in the identification and assessment of  proprietary rights and in the prosecution of patent applications around the world.  Mr. Scheibeler has also managed several multi-party interference proceedings.

Mr. Scheibeler has represented clients in the negotiation of  patent license agreements and has participated in due diligence investigations of the patent portfolios of companies as part of various corporate transactions.

Representative matters include:
  • Brotech Corp. v. White Eagle Int’l Techs. Group, Inc. – Represent plaintiff in litigation brought to correct inventorship of eleven patents concerning copolymeric resins with macronet and micronet structures.
  • Canton Bio-Med., Inc. v. Integrated Liner Techs., Inc. - Represent plaintiff in patent infringement litigation relating to polymeric septum discs.
  • Chemical Fabric Corp. v. Textile Coated, Inc. – Represent plaintiff in patent infringement and contract-related litigation concerning flexible polymeric composites used in high temperature food processing equipment.
  • CollaGenex Pharms., Inc. v. Ivax Pharms., Inc. – Represent defendant in patent infringement litigation regarding Periostat®, a drug used to treat periodontitis.
  • Glaxo Group, Ltd.  v. Sandoz Inc. – Represent defendant in ANDA patent infringement litigation involving Zofran®, a drug used to help relieve nausea and vomiting.
  • Interdigital Tech. Corp. v. NEC Corp. – Represent defendant in arbitration proceeding concerning patent license dispute regarding cellular telephony.
  • Item Dev. AB v.  Apothecary Prods., Inc. – Represent plaintiff in trademark infringement litigation involving medicine dispensers.
  • Item Dev. AB  v. Sicor, Inc. et al. – Represent patent holder in ANDA patent infringement litigation involving AdenoScan®, a drug used to  help identify areas of heart damage.
  • Novartis Seeds, Inc. v. Monsanto Company et al. – Represent patent holder in patent infringement litigation involving transgenic corn
  • Syngenta Seeds, Inc. v. Monsanto Co.et al. – Represent patent holder in patent infringement litigation involving transgenic corn.
  • Syntheon, LLC  v. Applied Med. Res. Corp. – Represent plaintiff in arbitration concerning endoscopic surgical devices, including flexible grasping surgical clip appliers.
  • Space Systems/Loral, Inc. v. Lockheed Martin Corp. – Represent defendant in patent infringement litigation concerning satellite communications equipment.
  • Interference Nos. 102,924 and 102,925 – Patent interferences involving transgenic plants.
  • Interference Nos. 104,453, 104,512, 104,513 – Patent interference involving insect resistant transgenic corn.
  • Interference No. 105,429 – Patent interference involving immunogenic conjugates and monoclonal antibodies used to assay drugs that prevent transplant rejection.
  • Interference No. 105,533 – Patent interference involving pharmaceutical formulations containing proton pump inhibitors and non-steroidal anti-inflammatory drugs.

Bars and Courts
New York State Bar
US District Court for the Eastern, Southern and Northern District of New York
US Court of Appeals for the Federal Circuit
US Patent and Trademark Office

Education
JD, Brooklyn Law School, 1994
BSEE, Polytechnic University, 1989

Professional Associations and Memberships
American Intellectual Property Association
New York Intellectual Property Association

Speaking Engagements
"Novelty and Nonobviousness in US Patent Law - KSR Int'l. Co. v. Teleflex Inc. et. al," 2006
"The Enablement Requirement, 35 U.S.C. § 112, paragraph 1," 2007
"Proposed Changes to PTO Rules: Claims and Continuations," 2007
"Proposed Changes to PTO Rules: Information Disclosure Statements," 2007
"In re Seagate Technology, LLC - Willful Infringement and the Advice of Counsel Defense," 2008

Languages
English

Citizenship
United States



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