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John (Jack) J. Penny, Nutter McClennen & Fish LLP Photo

John (Jack) J. Penny

Chair, Intellectual Property Department / Boston

Overview

John (Jack) J. Penny, V is the chair of Nutter's Intellectual Property Department. He counsels clients in the development of strategic patent portfolios; prepares opinions concerning infringement, validity, unenforceability and patentability; prepares and prosecutes patent applications in the mechanical and electrical arts; and performs patent litigation. Jack focuses on the mechanical, electrical, and electro-mechanical technical fields including printer and imaging technology, wireless technology, semiconductors, manufacturing, automobile technology, aircraft technology, heavy machinery, and medical instruments and devices. His clients include Japanese, U.S. and European electronic and manufacturing companies. Jack has extensive experience conducting reexaminations and oral hearings at the United States Patent and Trademark Board of Appeals.

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Jack’s notable experience includes:

  • Successfully secured broad patent coverage for products in many technical fields including imaging technology, automotive technology, semiconductors, medical devices, computer hardware and software, and heavy machinery
  • Negotiated patent licensing agreements for large Japanese electronics manufacturers
  • Advised large Japanese electronics manufacturers on the issues of infringement, validity, and enforceability for hundreds of patents in the fields of imaging technology, automotive technology, semiconductors, medical devices, computer hardware and software, and heavy machinery
  • Successfully led efforts to redesign products to avoid patent infringement in the U.S.

Prior to attending law school, Jack worked as a control systems engineer for Hughes Aircraft Company in Los Angeles, California where he was responsible for the design, analysis, simulation and testing of attitude control systems for communications satellites. During the summer of 1993, Jack worked as a law intern in Tokyo, Japan at a large chemical company preparing U.S. patent applications, patent licensing agreements and technology licensing agreements for petrochemical processes and related technologies. In addition, Jack worked at Seiko Epson Corporation in Nagano, Japan from 1996 to 1998 as in-house patent counsel, where, in addition to the preparation and prosecution of all U.S. patent applications for ink-jet printers, laser printers, impact printers and scanners, he developed an inventor notebook program, led redesign efforts, and conducted lectures and client counseling on all aspects of patent law.

Jack is a member of the Boston Bar Association, Boston Patent Law Association, American Intellectual Property Law Association and AIPLA Japan Practice Committee.

Speaking Engagements and Publications:

  • "Design Patent Damages in the U.S. – Samsung Electronics v. Apple," AIPLA IP Practice in Europe and the Chartered Institute of Patent Attorneys (CIPA) Joint Meeting, London, June 2017
  • "Overview of U.S. Patent System," speaker, Seoul National University School of Business, Seoul, Korea, April 2016 
  • "The Duty to Disclose in the U.S.," speaker, Japanese Patent Office, Tokyo, Japan, 2016 
  • "Duty to Disclose in the U.S.," speaker, American Intellectual Property Law Association (AIPLA) Japan Practice Committee Intellectual Property Summer Seminar, Japan, April 2016
  • "Duty to Disclose in the U.S.," speaker and "Doing Business in Japan" speaker, American Intellectual Property Law Association (AIPLA) Japan Practice Committee Mid-Winter Meeting, La Quinta, CA, January 2010
  • “Tafas v. Doll, U.S. PTO Final Rules” speaker, Japan Patent Attorney Association (JPAA), Tokyo Japan, April, 2009
  • "Patent Exhaustion - Quanta Computer v. LG Electronics," Speaker, joint meeting with Japan Patent Attorney Association (JPAA) and American Intellectual Property Law Association Japan Practice Committee, and Japanese Intellectual Property Association (JIPA), Tokyo, Japan, April, 2008
  • "New Claims and Continuation Practice before the U.S. Patent and Trademark Office," speaker, Tokyo, Japan, October 10, 2007 and Osaka, Japan, October 11, 2007
  • "Recent Developments at the Federal Circuit," speaker, joint meeting with Japan Patent Attorney Association (JPAA) and American Intellectual Property Law Association Japan Practice Committee, Tokyo, Japan, April, 2007
  • "Recent Developments in U.S. Patent Law," speaker, joint meeting with Japan Patent Attorney Association (JPAA) and American Intellectual Property Law Association Japan Practice Committee, Tokyo, Japan, April, 2006
  • "Recent U.S. Supreme Court's Review of Intellectual Property Cases," lecturer, American Intellectual Property Law Association, Mid-Winter Meeting, IP Practice in Japan Committee, La Quinta, California, February 1, 2006
  • "Recent Developments at the Federal Circuit," speaker, joint meeting with Japanese Patent Attorney Association (JPAA) and American Intellectual Property Law Association, Japan Practice Committee, Tokyo, Japan, April, 2005
  • "Protection of Intellectual Property in the U.S.," lecturer, Keio University, Fujisawa, Japan, April, 2005
  • "Recent Developments at the Federal Circuit," American Intellectual Property Law Association, Mid-Winter Meeting, Japan Practice Committee, Orlando, Florida, January, 2005
  • "Prior Art Submission Obligations in the U.S.," presenter, Japanese Intellectual Property Association (JIPA), Japan, April, 2004
  • "The Duty to Disclose in the U.S.," presenter, Japanese Patent Attorney Association (JPAA) and Japanese Patent Office (JPO), Japan, April, 2004
  • "Submission of Prior Art During Critical Prosecution Stages in the U.S.," presenter, Japanese Patent Office (JPO), Japan, April, 2004
  • "Recent Patent Law Cases at the Federal Circuit," presenter, Japanese Patent Attorney Association (JPAA) and Tokyo High Court, Japan, April, 2004
  • "Argument-based Estoppel," speaker, American Intellectual Property Law Association, Japan Practice Committee Meeting, January, 2004
  • "Recent Developments in U.S. Patent Law," speaker, American Intellectual Property Law Association, Japan Practice Committee Meeting, Washington, D.C., October, 2003
  • "U.S. vs. European Patent Prosecution Practice of Mechanical and Electro-mechanical Inventions," 3rd International Conference on Law and Technology, Cambridge, MA, November 6-7, 2002
  • "Recent Developments at the CAFC," speaker, Japanese Patent Attorney Association, Tokyo, Japan, April, 2002
  • "Patentability of Computer Programs in the U.S. and the World," International Legal Strategy Magazine, November, 2001
  • "Foreign Inventor Inequitable Conduct," Sughrue Mion Intellectual Property Newsletter, May, 2000

News & Insights

Publications

Blog Posts

Education & Admissions

Education

Santa Clara University School of Law, J.D.

University of Southern California, M.S.M.E.

Massachusetts Institute of Technology, B.S.M.E.

Admissions

  • District of Columbia
  • Massachusetts
  • U.S. Patent and Trademark Office

Industry Expertise

Jack focuses on the mechanical, electrical, and electro-mechanical technical fields including printer and imaging technology, wireless technology, semiconductors, manufacturing, automobile technology, aircraft technology, heavy machinery, and medical instruments and devices. His clients include Japanese, U.S. and European electronic and manufacturing companies.

Noteworthy

Jack is a member of the Boston Bar Association, Boston Patent Law Association, American Intellectual Property Law Association and AIPLA Japan Practice Committee.

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