John Gallagher Email & Phone Number

East Quogue, Ny, Us

Melville, New York, United States

Intellectual Property Attorney

• Preparing, filing, and prosecuting patent applications with the U.S. Patent and Trademark Office (USPTO), including Patent Cooperation Treaty (PCT) patent applications.• Preparing responses to office actions and other communications issued by USPTO. Negotiating with USPTO examiners to obtain the broadest possible patent protection. Specialization in electronics, electrical systems, telecommunications, medical devices, and mechanical devices.• Communicating with inventors and evaluating invention disclosures. Conducting patentability assessments and infringement analyses.• Authoring invalidity opinions, freedom to operate opinions, patentability opinions, and infringement opinions. Performing related client counseling.• Preparing appeal briefs and responding to answers issued by USPTO examiners in Trademark Trial and Appeal Board (TTAB) matters. • Preparing Petitions and communicating with USPTO Office of Petitions. • Preparing and filing trademark and copyright applications. • Preparing trademark freedom to use opinions and performing related client counseling.• Appearing in patent and trademark infringement litigations and conducting dozens of depositions (first chair).• Negotiating and preparing intellectual property settlement agreements.Representative Litigations:• Jump Around Party Rentals NY, LLC v. Schrody, Eastern District of New York (EDNY) 2:13-cv-06209• The Estate of Nathan L. Serota v. The Serota Organization, EDNY 2:12-cv-01577• Marky Sparky Inc v. Pacific Cycle LLC, Southern District of California 3:2000-cv-00261• Marky Sparky Toys, Inc. et al v. Publix Super Market, Inc., EDNY 1:09-cv-00420

Uniondale, New York, United States

• Initiated and prosecuted reexamination and interference proceedings. • Initiated and defended patent, trademark, and copyright litigations. • Conducting first chair depositions in patent, trademark, and copyright litigations.• Prepared pretrial briefs, motions, pleadings, and responses in patent, trademark, and copyright litigations.• Appeared as principal attorney at court conferences and settlement negotiations. • Prepared intellectual property licensing contracts and settlement agreements.• Prepared, filed, and prosecuted U.S. and PCT patent applications.• Formulated strategies for responding to USPTO office actions.• Conducted interviews with USPTO examiners.• Meeting with inventors to identify relevant technology and prepare invention disclosures. • Conducted prior art searches and analyzed patentability of inventor submissions.• Instructed foreign law firms in the prosecution of patent applications.• Drafted appeal briefs and responses in TTAB proceedings.Representative Litigations• Site Pro-1, Inc. v. Better Metal, LLC, Southern District of New York (SDNY) 1:06-cv-06508 • Island Swimming Sales, Inc. v. Flexible Solutions International, EDNY 2:05-cv-03982• Multi Media Electronics, Inc. v. Lumin Zone International, EDNY 2:05-cv-01946• Multi Media Electronics, Inc. v. Grandrich Corporation, EDNY 2:04-cv-04668• Wolverine World Wide, Inc. v. Harbor Footwear Group, LTD. et al., Western District of Michigan 1:04-cv-00754• CYI, Inc. v. Multi Media Electronics Inc., EDNY 2:04-cv-02295• CYI, Inc. v. Multi Media Electronics Inc., EDNY 2:05-cv-00752• Island Swimming Sales, Inc. v. Poseidon Pool and Spa Recreational, EDNY 2:03-cv-06351• Erie Engineered Products, Inc. v. Wayne Integrated Technologies, Corp., EDNY 2:03-cv-03776• Kam Hing Enterprises v. Zheng Zhang USA, et al., SDNY 1:99-cv-09338

New York, New York, United States

• Represented plaintiffs and defendants in patent infringement actions of mechanical, electrical, and chemical patents.• Drafted and responded to pleadings.• Preparing infringement and invalidity claim charts. • Participated in Markman and claim construction proceedings. • Authored expert witness reports. Deposed and defended expert witnesses during discovery of patent infringement litigations.• Appeared before the Southern District of New York, the Eastern District of New York, the Southern District of California, the District of New Jersey, the District of Minnesota, and the Western District of Michigan.Representative Litigations• Marky Sparky Inc v. Pacific Cycle LLC, Southern District of California 3:00-cv-00261• Regents of U of MN v. Glaxo Wellcome Inc., District of Minnesota 0:98-cv-02465

New York City Metropolitan Area

• Prepared regulatory filings, appeal briefs, and litigation filings. • Represented Megawatt-Hour Store in wholesale power marketing.• Reviewed, prepared, and managed consultant contracts.• Appeared in civil litigations.Representative Litigations:• Consolidated Edison v. Edison International, SDNY 1:97-cv-07311 • J.J. Cassone Bakery, Inc. v. Consolidated Edison Co. of New York, Inc., representing Defendant in fraud and breach of contract action. See, 168 Misc. 2d 272 (N.Y. Sup. Ct. 1996)

New York City Metropolitan Area

• Designed electrical underground network distribution system.• Managed complex subsurface construction projects. • Supervisiedteam of union technicians performing underground network distribution planning. • Testified as expert witness in electrical engineering matters.

Engineering and shipboard surveys

J.D., Law

Bee, Electrical Engineering

Doctor Of Law - Jd

Bachelor Of Engineering - Be, Electrical, Electronics And Communications Engineering