John Phillips is a Principal in Fish & Richardson’s Southern California office. He was previously with the firm from 1994-1999 and rejoined from 2001-present. His practice emphasizes inter partes and ex parte post-grant work, due diligence and freedom-to-operate investigations, patent opinions, and strategic patent prosecution with special expertise in internet-related technologies, computer software, telecommunications, and electronics.
Mr. Phillips’ post-grant experience involves more than 90 proceedings before the U.S. Patent Trial and Appeal Board (“PTAB”) in various technologies including telecommunications, medical devices, power electronics, e-commerce, computer graphics, advanced materials, oceanography, and hydrocarbon recovery. He also is a member of the Trials and Communications Committees of the PTAB Bar Association.
Mr. Phillips’ internet and software experience includes e-commerce applications, enterprise software systems, 3D computer graphics, electronic imaging, user-interfaces, electronic messaging, digital rights protection, database technology, and computer networking. His other experience includes medical device technology, telecommunications, and avionics. His clients include individuals, start-ups, mid-sized businesses, and large corporations.
Mr. Phillips is involved in charitable causes such as providing pro bono representation of adoptive parents and serving as a member of the Board of Advisors for Workshops For Warriors, a charitable organization whose mission is to train combat veterans for careers in advanced manufacturing.
Mr. Phillips was previously general counsel for MercExchange LLC and Navlet.com, Inc. (2000-2001), an associate and law clerk with Fitzpatrick, Cella, Harper & Scinto (1990-1993), a Staff Electrical Engineer with Johns Hopkins University Applied Physics Laboratory (1988-1989) and a Research & Development Engineer with Scripps Institution of Oceanography (1985-1988).
J.D., George Washington University Law School 1992
Valedictorian, Order of the Coif
B.S., University of Michigan 1984
- U.S. Patent and Trademark Office 1992
- California 2003
- U.S. Court of Appeals for the Federal Circuit 1994
United States Court of Appeals for the Federal Circuit, The Honorable Alvin A. Schall, 1993 – 1994
Selected Publications and Presentations
Speaker, IPO IP Chat Channel Webinar: BRI and Claim Drafting, December 9, 2016.
Author, “PTAB First! CBM Review Denied on Jurisdictional Grounds,” fishpostgrant.com, May 2014.
Media Coverage, “Being Philanthropic on the Job,” San Diego Metro magazine, March 2013.
Quoted, “Federal circuit and USPTO seek to clarify business method patents,” Managing Intellectual Property, January 2013.
Author, “Sui Generis Intellectual Property Protection for Computer Software,” 60 Geo. Wash. L. Rev. 997 (1992).
Co-author, “Modifications to the Sea Beam Bathymetric Survey System,” OCEANS ’88, October 1988.
Co-author, “Multiple Sound Source Synchronizer for Seafloor Surveying, Society of Petroleum Geologists,” Offshore Technology Conference, May 1988.
Named a “Top PTAB Practitioner” by Managing Intellectual Property for 2018
Named an “IP Star” by Managing Intellectual Property for 2013-2016.
Named as one of Top 25 Leading Portfolio Managers in California by the Los Angeles Daily Journal.
Listed as one of The Daily Transcript‘s “Top Influentials” for 2007 and 2008.
Listed in The Legal 500 US – IP survey of top law firms and lawyers in the area of patent reexamination
Listed in The Southern California Super Lawyers, San Diego 2007 and 2010 surveys for Intellectual Property.