John P. Pinkerton

Phone: 214-580-8602

If the rest of us know how to spell IP, John Pinkerton’s the guy who actually knows what it means.

As one of the firm’s partners, John Pinkerton practices intellectual property law with an emphasis on litigation. His primary areas of expertise are patent litigation, patent and technology license agreements, and opinions of counsel on issues of patent infringement, validity, and enforceability.

He also has expertise in trademark and copyright infringement and trade secret misappropriation litigation. Mr. Pinkerton’s practice also includes copyright and trademark registrations.

Practice Areas

Mr. Pinkerton has more than 30 years of experience in intellectual property cases and has served as lead counsel in numerous patent infringement cases involving diverse technologies, including:

  • Internet e-commerce
  • software-related systems and methods
  • prepaid phone cards
  • digital signal processors
  • bass-reflex speakers
  • telecommunications equipment and handsets
  • metal detectors
  • excavating buckets
  • flexible-line trimmers
  • nutritional supplements

Representative Experience

ACF v. Trinity Industries
U.S. District Ct., N.D. Texas
Represented Trinity Industries in action for patent infringement and trade-secret misappropriation involving pressurized railroad cars; preliminary injunction sought by ACF was denied

Alexsam Inc. v. FSV Payment Systems, et al.
U.S. District Ct., E.D. Texas
Represented Interactive Communications in action for infringement of patents on prepaid phone cards and prepaid phone card systems

Analog Devices Inc. v. Texas Instruments Inc.
U.S. District Ct., D. Massachusetts
Co-counsel in representation of Texas Instruments in patent-infringement action involving digital signal processors, modulo address generators and electrostatic discharge protection for integrated circuit chips

Digcom Inc. v. Nokia Inc., VoiceStream Wireless Corp. and Siemens Information and Communications Mobile Inc.
U.S. District Ct., N.D. Texas
Represented VoiceStream in an action for infringement of patent on GSM telecommunications equipment and handsets

Frymaster v. Food Automation Service Techniques
U.S. District Ct., D. Connecticut
Represented Frymaster in patent-infringement action involving microcomputers for controlling deep fat fryers

Garrett Electronics Inc. v. Control Screening LP
U.S. District Ct., N.D. Texas
Represented Control Screening in patent-infringement action involving patent on metal detector system having multiple, adjustable transmitter and receiver antennas

GH Hensley Industries Inc. v. ESCO
U.S. District Ct., N.D. Texas
Represented GH Hensley in declaratory judgment action involving patent on replacement teeth for excavating buckets

GH Hensley Inc. v. Weldco Inc.
U.S. District Ct., W.D. Wash.
Represented GH Hensley in action for infringement of patent on an excavating bucket for a backhoe

Heeling Sports Limited and Heeling Management Corp. v. Skechers U.S.A. Inc.
U.S. District Ct., E.D. Texas
Represented Heeling Sports in actions against Skechers for patent infringement and trade-secret misappropriation and in actions brought by Skechers for unfair competition and declaratory judgment of noninfringement of Heeling Sports’ patent

Illumination Innovation LLC v. Ace Hardware Corporation, et al.
U.S. District Ct., E.D. Texas
Represented Illumination Innovation in action against 12 defendants for infringement of patent on light-emitting diode lamps for flashlights

Micro Chemical Inc. v. Great Plains Chemical Co. Inc., Lextron Inc., et al.
U.S. District Ct., D. Colorado
Represented Micro Chemical in appeal to Federal Circuit of patent invalidity decision, which was reversed. Also represented Micro Chemical in remand to district court in regard to infringement; holding of noninfringement was reversed on appeal by the Federal Circuit

Nutrition 21 LLC v. General Nutrition Corp.
U.S. District Ct., E.D. Texas
Represented General Nutrition in action for infringement of three patents on methods for treating certain physical conditions by administering chromium picolinate

Orion IP LLC v. Xerox Corp., et al.
U.S. District Ct., E.D. Texas
Represented AT&T Mobility in action for infringement of patents on methods of selling parts and generating customized proposals for selling products

Printing Research Inc., et al. v. Williamson Printing Corp., et al.
U.S. District Ct., N.D. Texas
Represented Williamson Printing in an action for correction of inventorship of U.S. Patent No. 5,630,363 under 35 U.S.C. § 256; case settled with consent judgment that inventorship was proper and patent was not invalid or unenforceable

SourceProse Corp. v. The First American Corp., et al.
U.S. District Ct., E.D. Texas
Represented LandAmerica Tax and Flood Services in action for infringement of patents on methods for determining flood zone classifications

Southern Audio Services Inc., et al. v. JBL Consumer Products Inc.
U.S. District Ct., M.D. Louisiana
Represented JBL in action or infringement of patent on a bass-reflex speaker; motion for summary judgment of noninfringement was granted in favor of JBL. Argued case on appeal to the Federal Circuit, and district court decision was affirmed

Vinylex Corp. v. Black & Decker (U.S.) Inc. and Kawasaki Motors Corp., U.S.A.
U.S. District Ct., N.D. Texas
Represented Vinylex in action for infringement of patent on cable centering device for power tools

Vinylex Corp. v. B.W. Elliott Manufacturing Co. LLC
U.S. District Ct., E.D. Texas
Represented Vinylex in action for infringement of patent on cable-centering device for power tools

White Consolidated Industries v. Toro
U.S. District Ct., W.D. Louisiana
Represented White Consolidated in declaratory judgment action involving patent on flexible-line trimmers

Professional Affiliations

  • Member, State Bar of Texas
  • Member, State Bar of Oklahoma
  • Member, American Bar Association
  • Member, Dallas Bar Association
  • Member, American Intellectual Property Association 

Admitted to Practice

  • 5th and 11th U.S. Circuit Courts of Appeals
  • Court of Appeals for the Federal Circuit
  • U.S. District Courts for the Northern, Southern and Eastern Districts of Texas
  • U.S. Patent and Trademark Office

Education

  • Master’s Degree in Law, George Washington University (1973) — Patent and Trade Regulation Law
  • J.D., University of Oklahoma (1969)
  • B.S.E.E., University of Texas at Dallas (1997)
  • B.S.E., University of Oklahoma (1966)

Publications and Speeches

  • Instructor (1995-present), Designing Around Valid U.S. Patents course, Patent Resources Group Institute, on the following topics:
    • Equivalents Under Section 112, Paragraph 6
    • Doctrine of Equivalents and Its Legal Limitations
    • Litigating Infringement: Techniques and Strategy
  • Panel member, Texas Lawyer Roundtable on Patent Litigation, Dallas (May 2011)
  • Speaker, address at the Texas Association of Defense Counsel 2008 “Ultimate” Intellectual Property Seminar: Local Counsel and Mock Trial Use in IP Ligation, Dallas (2008)
  • Speaker, address at the Institute for Law and Technology: Advising Clients on Designing Around in Today’s Ever-Changing World, Dallas (2002)
  • Speaker, address at CLE International: Enforcing Intellectual Property Rights, Austin, Texas (1997)
  • Speaker, address at Advanced Intellectual Property Law Course: Infringer’s Trial Strategy, Santa Fe, N.M. (1995)
  • Speaker, address at CLE International: Infringement Litigation, Austin, Texas (1995)
  • Speaker, address at CLE International: Infringement Litigation, Austin, Texas (1994)
  • Speaker, address at Computer Law Conference: Trade Secret Litigation, Dallas (1993)
  • Speaker, address to the Southwest Legal Foundation: Avoiding Charges of Inducement of Infringement and Contributory Infringement, Dallas (1993)