JOHN W. SCHLICHER

PATENTS, PATENT LITIGATION, PATENT DISPUTE RESOLUTION AND

SETTLEMENT, LICENSING, ANTITRUST, LAW AND ECONOMICS

 

 

 

Patent Expert Experience

 

Mr. Schlicher has been retained as a consulting or testifying expert on patents, patent damages, and patent licensing.  

 

Patent Dispute Resolution and Settlement Experience

 

He served as counsel for companies involved in potential settlement of patent infringement actions on a regular basis for 35 years. He also served as counsel for companies seeking to resolve potential infringement actions prior to litigation.  He has served as a mediator in  many other infringement actions.  He has been appointed by the United States District Court for the Northern District of California to mediate patent disputes. 

 

He developed and has used for many years a system to help patent owners and potential patent infringers make economically sensible decisions about settlement of patent litigation and licensing.  This approach is described in a book, Settlement of Patent Litigation and Disputes: Improving Decisions and Agreements to Settle and License, published in 2011 by American Bar Association Publishing. (more information)  He has written a short introduction to this approach to settlement and licensing decisions. (paper)  

 

Licensing and other IP Transaction Experience

 

He has designed, prepared, and negotiated many research and development, patent license, know-how license, and copyright license agreements involving biotechnology products, pharmaceuticals, software, automated databases, catalysts, document processing systems, semiconductor devices, semiconductor equipment, and others.  He wrote and negotiated some of the earliest research, development, and license agreements between biotechnology and pharmaceutical companies (modified versions of which are still in use).  He has prepared and negotiated research and license agreements between universities and commercial companies.

 

Among others, he has represented companies in the following patent licensing matters: Genentech in connection with a variety of biotechnology patents; BioGrowth connection with pharmaceutical product patents; Children’s Hospital Medical Center in connection with pharmaceutical product patents; Varian Associates in connection with semiconductor process and equipment patents; Alps Electric in connection with touchpad patents;  Samsung in connection with a variety of semiconductor device and process patents; Bridgestone-Firestone in connection with polymer patents; Mitsubishi Electric in connection with semiconductor device patents; Corning Incorporated in connection with optical switch patents; Coca-Cola in connection with beverage container patents; Strasbaugh in connection with semiconductor equipment and process patents; and TRW Financial Systems in connection with image-based document processing system patents.

 

Antitrust Experience

 

He has advised clients on the antitrust and misuse limits on creating and exploiting intellectual property rights in connection with licensing transaction and litigation matters.  He has represented clients in litigation involving patent-related antitrust claims and patent misuse defenses.

 

Technical Work Experience

 

During his senior year at Northwestern University, he conducted a research project under the supervision of Professor James A. Marshall.  See “Synthesis of Bicyclo-5,4,0-Undecanones Via Olefin Cyclization,” Marshall, J.A., Andersen, N.H., Schlicher, J.W., Journal of Organic Chemistry, 35(3) : 858, 1970. 

 

He began the PhD program of the Chemistry Department of Stanford University and did chemistry research at Stanford as a Research Fellow.  He also worked as a research scientist in the Institute of Organic Chemistry at Syntex Corporation, Palo Alto, California.