John S. Pratt
Retired

1100 Peachtree Street NE Suite 2800, Atlanta, GA USA 30309

Overview

John Pratt joined the firm in 1977. He founded and led the phenomenal growth of the firm's Atlanta patent prosecution practice. Mr. Pratt practices primarily in the patent area, including patent prosecution, litigation and licensing.

Mr. Pratt served as general counsel to an Internet consulting firm, Enterpulse, from 1999 to 2001, during which period the firm survived the Internet downturn. Mr. Pratt lectures at continuing education seminars, particularly on patent law, licensing, trade secret protection and restrictive covenants. He was involved in drafting the Georgia Trade Secrets Act of 1990.

Mr. Pratt is listed as #1 in the 2014 and the three immediately preceding editions of Chambers USA for Intellectual Property and has been listed in that publication each year since 2005. He was listed as an International Who's Who of Patent Lawyers for 2011 and 2013 and was also listed in the 2011, 2013 and 2014 editions of International Who's Who of Business Lawyers in the area of Patent Law. Mr. Pratt has also been listed in The Best Lawyers in America® for 2017 and each of the 25 years immediately preceding. He was recognized as a Georgia "Super Lawyer" in Intellectual Property in 2016 and the seven years immediately preceding and for Intellectual Property Litigation in 2009 by Super Lawyers magazine. Mr. Pratt was named by Legal Media Group to its 2010 and 2013 Guide to the World's Leading Patent Law Practitioners. In 2016 and the four years immediately preceding, he was named a top patent practitioner by IAM Patent 1000 – The World’s Leading Patent Practitioners. Mr. Pratt was recommended by Legal 500 U.S. in the areas of Patent Prosecution and Non-Contentious Trademark Law in from 2012 to 2016 for Patent Prosecution. He was also honored in 2013, 2014, 2015 and 2016 as a "Leading Lawyer" by Legal 500 U.S. Mr. Pratt was named as one of Georgia's "Legal Elite" by Georgia Trend magazine. He was recognized as an "IP Star" by Managing Intellectual Property magazine in 2017 and the four years immediately preceding and is AV® rated by Martindale-Hubbell.

An accomplished woodworker, furniture maker and woodworking tool expert, Mr. Pratt devotes a portion of his practice to tool and furniture patent matters. His woodworking has been the subject of an ABA Journal article, and he has been featured in the Fulton County Daily Report and the Atlanta Business Chronicle for the American Flag that he recently created. The flag is made of black cherry (red), curly maple (white) and walnut (brown and dyed blue) and currently hangs in Kilpatrick Townsend's Atlanta office.

*CV, BV, and AV are registered certification marks of Reed Elsevier Properties Inc., used in accordance with the Martindale-Hubbell certification procedure's standards and policies.

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Experience

The firm advises a major retailer about potential patent infringement issues associated with hundreds of products sold or considered for sale by the retailer that are being considered for alternative sourcing. The multi-year, fixed fee project provides the retailer a large quantity of sophisticated clearance advice very quickly and efficiently at a known cost. The project provides the firm with an opportunity to deploy unmatched patent identification and evaluation skills in a relationship that encourages sophisticated use of patent searching resources and efficient development and delivery of advice.

The firm's intellectual property and business attorneys collaborated to provide pro bono assistance to a young woman farmer establishing a diversified vegetable farm and CSA (community supported agriculture) on land owned by a non-profit trust on Chappaquiddick, a little island a two-minute ferry ride away from Martha’s Vineyard in Massachusetts. The assistance included identification and advice about alternative business entities, formation of a limited liability company, selection of a name (Slip Away Farm) and tag line (Sown by the Sea), and advice and assistance relative to financing for the venture.

The firm served as intellectual property counsel for a prominent investment fund represented by a major New York law firm in connection with the fund’s participation in an auction of several divisions of a major home improvement products company and brands. Operating within a short time frame, we reviewed pleadings and multiple patent file histories and other information in order to advise the client about the merits and implications of a recently settled patent infringement litigation, advised the client about numerous other patent and trademark matters and assisted lead counsel revising a trademark license that would allow the businesses being sold to continue to use the most significant brand name during a transition period.

Represented Interface Inc. in a suit filed by two competitors alleging that Interface had "falsely marked" certain carpet tiles and thus was subject to more than $800 million dollars in penalties. Simultaneously, the two competitors were also defending against patent infringement claims filed by Interface. Both parties settled with Interface on the eve of trial, on confidential terms favorable to Interface. Mohawk Industries, Inc. et al. v. Interface, Inc., No. 4:07-cv-212 (N.D. Ga. filed Nov. 6, 2007).

Served as lead counsel representing one of the world's leading providers of lighting fixtures in a patent infringement suit against a manufacturer of electrical products and others relating to combination exit and emergency lighting fixtures, as well as in a countersuit against our client related to other lighting products. Though mediation was unsuccessful, we were able to successfully negotiate a very favorable settlement.

Represented Oklahoma Medical Research Foundation in patent licensing and sponsored research transactions since 1989. The medical technology has spanned virtually the entire field of medicine and has related to technologies at the very earliest stages of development to FDA approved treatments now in widespread use.

Served on the board of and provided counsel for twenty years to a non-denominational Christian NGO that provides education, housing, medical services and community development in a rural portion of Honduras, one of the least developed countries in the Western Hemisphere.

Helped in name selection, business organization, fundraising and chicken coop design for a new community supported agriculture vegetable farm on Martha’s Vineyard and Chappaquiddick islands in Massachusetts.

The firm served as lead counsel on behalf of Weyerhaeuser Company, a major U.S. forest products manufacturer, in a patent infringement suit relating to packaging materials for food products. We engaged in early written discovery and helped our client obtain a covenant not to sue and dismissal of plaintiff's claims. Case dismissed with prejudice. Con Pac S., Inc. v. Weyerhaeuser Co., No. 06-055 (M.D. Ga. filed July 10, 2006).

Counseled Lee Valley Tools Ltd. and Veritas Tools, a leading woodworking and gardening tool developer, manufacturer and retailer, for more than twenty years regarding intellectual property matters including patent applications, prosecution advocacy and patent litigation.

We develop and manage the patent portfolio for Interface, a leading manufacturer of carpet tile, through the use of both design and utility patent protection. Interface’s inventions often include both ornamental and utilitarian aspects. By understanding the carpet tile design process and how designs impact the functionality of carpet tiles, we have been able to secure groundbreaking utility patents directed to design features on the tiles by establishing the utilitarian functions and benefits of such features. Interface has also charged us with enforcing its patents and defending them against attacks all over the world.

Represented Oklahoma Medical Research Foundation (OMRF) in a suit against Eli Lilly in the Western District of Oklahoma. OMRF alleged patent infringement and breach of a license agreement in connection with Eli Lilly's sales of Xigris, the first FDA-approved drug to treat severe sepsis. The suit settled on the eve of trial after more than 60 depositions, production of more than one million pages of documents by Eli Lilly, and a Markman hearing resulting in a claim construction favorable to our client.
Oklahoma Med. Research Found. v. Eli Lilly & Co., No. 01-0456 (W.D. Okla. filed Mar. 15, 2001).

The firm served as lead counsel on behalf of Georgia-Pacific LLC’s subsidiaries in a patent infringement suit against two competitors in the Northern District of Georgia involving composite food wrap products. Following a favorable Markman ruling in which the court adopted our clients’ claim construction arguments, the parties reached a settlement involving cash payment and an ongoing royalty-bearing license. Fort James Corp. & Fort James Operating Co. v. J.H. McNairn, Ltd., et al., No. 04-3000 (N.D. Ga. filed Oct. 14, 2004).

We represented Interface Inc., a leading manufacturer of carpet tile, in patent litigation filed by one of its largest competitors alleging hundreds of millions of dollars in damages as a result of infringement of two patents. After a three-week jury trial, the jury took less than one hour to find that the competitor's patents were invalid and that Interface did not infringe them. During the hearing on inequitable conduct issues, Interface reached a confidential settlement with the competitor resolving these issues as well as resolving Interface's counterclaims for infringement of two of its own patents.

The firm served as lead counsel on behalf of Oklahoma Medical Research Foundation in a patent infringement suit brought in the Northern District of Oklahoma against Alexion Pharmaceuticals. The patents related to complement-inhibition technology and their use in a drug marketed by Alexion to treat a rare, debilitating and life-threatening disease. After replacing OMRF’s previous counsel in the matter and soon after claim construction briefing was complete, we obtained a settlement. It included payment to our client as well as public acknowledgement that individuals affiliated with OMRF were the true inventors of the technology at issue. Oklahoma Med. Research Found. v. Alexion Pharmaceuticals, Inc., No. 07-163 (N.D. Okla. filed Mar. 15, 2007).

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Education

Harvard University, J.D. (1977)

Clemson University, B.S., Electrical Engineering (1974)

Admissions

Georgia (1977)

Court Admissions

U.S. Patent and Trademark Office (1979)

Fulton County Superior Court

Georgia Court of Appeals

Georgia Supreme Court

Federal Circuit Court of Appeals

U.S. Court of Appeals for the Fifth Circuit

U.S. Court of Appeals for the Eleventh Circuit

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