John Padro

Partner, New York

Biography

Overview

John is an experienced litigator of intellectual property and complex commercial litigation matters. His practice primarily focuses on patent and trade secret litigation. John uses his technical background and advocacy skills to quickly understand complex and technical issues and craft case-winning and cost-effective strategies. John has litigated cases in a wide range of technical areas and has represented leading technology and life sciences companies including Pfizer, Samsung Bioepis, Abiomed, Biotronik, Google Inc., Omilia NLS, Nest, and UCB. John has litigated cases throughout the United States and has extensive experience with all facets of litigation, including depositions, written and oral advocacy, trial preparations and appeals. John has also led and first chaired a contractual arbitration.

John also advises on various transactional matters, including due diligence and licensing related to intellectual property rights and the evaluation of intellectual property portfolios. Prior to joining White & Case, John worked in-house at WiPower, Inc., a hardware and software start-up, where he advised the company on developing its intellectual property, commercializing its proprietary wireless power system, and with respect to WiPower's sale to Qualcomm.

John is also co-head of White & Case's Alianza network, its Latinx affinity group, and heavily involved in the firm's diversity initiatives.

Bars and Courts
New York State Bar
Florida State Bar
US Court of Appeals for the Federal Circuit
US District Court for the Southern District of New York
Education
JD
Columbia University School of Law
BSEE and BA
University of Florida
Languages
English
Spanish

Experience

Representing Biotronik, Inc. in a declaratory judgment action against W.H. Wall Family Holdings, LLLP concerning angioplasty stents. Biotronik, Inc. v. W.H. Wall Family Holdings, LLLP, No. 1:21-cv-01124-SCJ (N.D. Ga.).

Representing Pfizer in trade secret misappropriation action concerning pneumococcal conjugate vaccines. Merck Sharp & Dohme Corp vs. Pfizer, Inc., 19-cv-02011 (E.D. Pa.).

Defended Omilia NLS in a patent, copyright and antitrust matter. Omilia was alleged to infringe eight software patents owned by the largest competitor in the speech recognition market. Nuance Communications LLC v. Omilia Natural Language Solutions, 19-cv-11438 (D. Mass.).

Defended Samsung Bioepis Co., Ltd. in BPCIA litigation concerning a biosimilar version of Herceptin®. Genentech, Inc. v. Samsung Bioepis Co., Ltd., 18-cv-1363 (D. Del.).

Representing Abiomed in two patent litigation matters. The client's intravascular heart pump products were alleged to infringe eight patents owned by another medical device company. However, after prevailing at claim construction, this case was narrowed to just two patents. This case is awaiting case dispositive summary judgment rulings on noninfringement and invalidity. Abiomed Inc. v. Maquet Cardiovascular LLC, 16-cv-10914, 17-cv-12311 (D. Mass.).

Defended Pfizer in an antitrust matter brought by various class action plaintiffs concerning the procurement of a patent relating to Celebrex®. In re Celebrex Antitrust Litigation, 14-cv-00361 (E.D. Va.).

Defended UCB in a declaratory judgment patent infringement action against Yeda Research and Development. Successfully obtained summary judgment of no infringement; a decision affirmed by the Court of Appeals for the Federal Circuit. The litigation involved UCB's product Cimzia®, a humanized antibody that targets the receptor TNF-alpha and approved for the treatment of Crohn's disease and rheumatoid arthritis, among other indications. UCB, Inc. v. Yeda Research and Development Co. Ltd., 14-cv-1038 (E.D. Va.).

Defended Google and YouTube in a patent infringement matter brought by VideoShare involving two patents concerning the use of transcoding of videos online. Invalidated both patents on the basis that they did not cover patentable subject matter under 35 U.S.C. § 101, a decision affirmed on appeal. VideoShare, LLC v. Google Inc. et al., 13-cv-990 (D. Del.).

Defended Nest Labs in a patent infringement matter filed brought by BRK Brands. BRK alleged that Nest infringed six patents through its offering of the Nest Protect, a combination smoke and carbon monoxide detector. Obtained summary judgment of noninfringement. BRK Brands Inc. v. Nest Labs, Inc., 13-cv-7900 (N.D. Ill.).

Defended Google in a patent infringement matter brought by British Telecommunications. British Telecom alleged that Google infringed six patents through its offering of various location-based and content-access features in many of Google's mobile and desktop products. British Telecommunications plc v. Google Inc., 11-cv-1249 (D. Del.).

Defended Google in a patent infringement matter brought by Wireless Ink Corporation concerning social media and collaboration platforms. Obtained summary judgment of noninfringement as to all claims, which was affirmed on appeal. Wireless Ink Corp. v. Facebook Inc., 10-cv-1841, 11-cv-1841 (S.D.N.Y.).

Publications

Co-author, "CLS Bank v. Alice Corp. Further Muddies §101 Patent Eligibility," White & Case Client Alert, May 2013 (with Kevin X. McGann and Warren S. Heit)

Co-author, "Federal Circuit Opens Door to New Defense to Inducing Infringement," White & Case Client Alert, July 2013 (with Kevin X. McGann and Warren S. Heit)

Awards and Recognition

Euromoney's LMG Rising Stars Awards Americas 2020 – Patents (shortlisted)