John P. Scheibeler | White & Case LLP International Law Firm, Global Law Practice
John Scheibeler
John Scheibeler

John P. Scheibeler

Counsel, New York

T +1 212 819 8830

E jscheibeler@whitecase.com

Overview

Mr. Scheibeler practices in the areas of patent litigation and licensing.  He has also represented clients seeking patent rights in the United States and internationally.  He is a registered patent attorney with many years of experience in patent litigation, prosecution, interference, and post-grant proceedings in the U.S. Patent & Trademark Office.  He holds a degree in electrical engineering and has represented clients in the high technology industries involving electronics and computer science.  He also has extensive experience representing clients in the life sciences industries, including matters involving genetically modified organisms, pharmaceuticals, and biosimilars.

Mr. Scheibeler has substantial experience in all phases of patent litigation and arbitration, including pre-suit investigations, fact and expert discovery, claim construction, summary judgment, motions in limine, pretrial orders, jury instructions, direct and cross examination of trial witnesses, and post-trial motions.  He has litigated cases in numerous U.S. district courts and in the International Trade Commission.  He has appeared before the U.S. Court of Appeals for the Federal Circuit.

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

Mr. Scheibeler has extensive experience in all aspects of patent prosecution 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 managed several multi-party interference proceedings, represented clients in inter partes review proceedings, and has experience concerning post-grant review proceedings and derivation proceedings.

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

  • BSEE, Polytechnic Institute of New York
  • JD, Brooklyn Law School

Languages

  • English

Experience

British Telecommunications plc v. Google Inc.

Represent defendant in patent infringement litigation alleging infringement of five patents by numerous Google products.

BRK Brands, Inc. v. Nest Labs, Inc.

Represent defendant in patent infringement litigation alleging infringement of multiple patents by defendant's smart home smoke/carbon monoxide detectors.

Certain Communications or Computing Devices, and Components Thereof

Represent Google as intervenor in 337 action in the International Trade Commission in which complainant asserted infringement of four patents by various applications and the operating system of mobile devices.

Pfizer Inc et al. v. Teva Pharmaceuticals U.S.A., Inc.

Represent plaintiff in Hatch Waxman litigation against multiple defendants involving the blockbuster drug Lyrica®.

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.