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John M. Guaragna  


Partner

john.guaragna@dlapiper.com

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401 Congress Avenue, Suite 2500
Austin, Texas 78701-3799
United States
T: +1 512 457 7125   F: +1 512 721 2325

John Guaragna focuses on patent litigation and other intellectual property-related matters. Mr. Guaragna has represented clients in patent infringement matters in district courts throughout the United States, as well as in the International Trade Commission. He has significant experience in the Eastern District of Texas where he is admitted to practice and has handled over forty patent infringement matters, including dozens of cases involving multiple-defendants and joint defense coordination. Additionally, Mr. Guaragna has extensive experience relating to industry standard-setting and the intersection between patent law and antitrust law, including a three month antitrust trial before the Federal Trade Commission. Mr. Guaragna also has handled various trademark, trade secret and indemnity disputes.

The respected English publisher Chambers & Partners cites him in Chambers USA: America's Leading Lawyers for Business in the area of intellectual property law, and has called him a "phenomenal lawyer who looks out for clients' best interests" and who "is praised by clients for his 'ability to translate complex problems into business speak.'"

Before he began practicing law, Mr. Guaragna spent seven years on active duty as a surface line officer in the United States Navy. His Navy assignments included a tour as the Operations Officer aboard USS Chancellorsville, an Aegis guided missile cruiser deployed to the Persian Gulf in support of Operations Desert Storm and Southern Watch.

Representative Matters

  • Motorola Mobility v. Tivo. Representing Motorola against Tivo in a patent infringement matter relating to DVR technology. The case is pending before Judge Folsom in the E.D. Tex.
  • In the Matter of Certain Static Random Access Memories and Products Containing the Same. Defending Respondents in a patent infringement matter before the International Trade Commission relating to GSI SRAM chips
  • Rydex v. American Suzuki et al. Defending American Suzuki in a patent infringement matter relating to automotive fuel controls. The case is pending in the S.D. Tex. before Judge Gilmore
  • Levine v. Kyocera et al. Defending Kyocera in a patent infringement matter relating to wireless navigation technology. The case is pending before Judge Everingham in the E.D. Tex.
  • Uniloc v. CA et al. Defending Borland Software against allegations of patent infringement relating to software activation technology. The case is pending in the E.D. Tex. before Judge Davis
  • US Ethernet v. AT&T et al. Defending retailer defendants against allegations of patent infringement relating to Ethernet technology. After a successful motion to transfer the case from the E.D. Tex., the case is now pending before Judge Ware in the N.D. Cal.
  • Macrosolve v. Canvas Solutions et al. Defending Canvas against allegations of patent infringement relating to certain software applications. The case is pending in the E.D. Tex. before Judge Davis
  • Norman IP v. Canon et al. Defending Pentax and Hoya against allegations of patent infringement relating to digital imaging. The case is pending before Judge Davis in the E.D. Tex.
  • Unified Messaging v. Facebook et al. Defending E*TRADE in patent infringement matter relating to web-based message managing. The case is pending before Judge Davis in the E.D. Tex.
  • Acqis LLC v. Oracle America et al. Represented defendant Oracle America (formerly Sun Microsystems) in a multi-defendant patent infringement case pending before Judge Davis in the E.D. Tex. The case involved allegations of infringement of numerous patents asserted against blade server technology. The case proceeded through a Markman hearing and expert discovery with Oracle America settling shortly before the pretrial conference in late 2010
  • Blackboard v. Desire2Learn. Led the defense of Desire2Learn against allegations of patent infringement relating to eLearning software in the EDTX, Maryland and in the International Trade Commission. The cases settled in late 2009 after Desire2Learn prevailed on a rare motion to stay the ITC proceeding in its early stages
  • Horizon Radiology v. McKesson. Successfully defended McKesson at trial in a multi-billion dollar trademark infringement case before Judge David Hittner in federal court in Houston, Texas. Selected to replace existing counsel in the months leading up to trial in early 2009, our team prevailed in establishing no likelihood of consumer confusion before a Houston jury
  • Broadcom v. QUALCOMM. Defended QUALCOMM against allegations of misconduct arising out of standard setting activity involving QUALCOMM's patented technology. The case settled during the week before trial in early 2008
  • Hitachi Global Storage v. Samsung. Represented Samsung in a patent infringement case before Judge Clark in the E.D. Tex. The patents related to Hard Disk Drive technology. The case settled after Markman briefing in late 2007
  • Crossroads v. Dot Hill Systems. Led the trial team representing Crossroads in a patent infringement matter before Judge Sam Sparks in the W.D. Tex. The asserted patents related to storage router technology designed, developed and sold by Crossroads. On the day trial was scheduled to begin in late 2006, Dot Hill agreed to pay Crossroads $10.5 million in past damages and a running royalty of 2.5% on future sales
  • In the Matter of Rambus Inc. Defended Rambus at trial before the Federal Trade Commission in a matter alleging antitrust and unfair competition arising out of standard setting activity involving Rambus's patented technology. After a three month trial in the summer of 2004, Rambus won a complete victory before the FTC Administrative Law Judge – a result that was later confirmed on appeal to the DC Circuit

Admissions

  • California
  • Texas
  • United States Court of Appeals for the Federal Circuit
  • United States District Court for the Eastern District of Texas
  • United States District Court for the Western District of Texas
  • United States District Court for the Southern District of Texas
  • United States District Court for the Southern District of California
  • United States District Court for the Central District of California
  • United States District Court for the Eastern District of California
  • United States District Court for the Northern District of California

Memberships

  • Eastern District of Texas Bar Association
  • Austin Intellectual Property Law Association
  • Federal Bar Association
  • American Intellectual Property Law Association

Publications

  • "EDTX Closely Scrutinizes Nuisance Value Settlement Strategy," June 2011
  • "A New Deal in Venue Transfers," April 2009
  • "Rambus Decision Sheds Light On Intellectual Property Issues in Industry Standard Setting," February 5, 2003
  • "Your Customers, Your Trademark . . . Their Website: Trademark Infringement Through Metatags," Summer 2000

Seminars

  • "KSR v. Teleflex: Examining the Obviousness Inquiry in Patent Law," Intellectual Property Assets in Oil & Gas, October 24, 2007

Prior Experience

  • Surface Warfare Officer stationed aboard Fast Frigate USS MARVIN SHIELDS and Aegis Guided Missile Cruiser USS CHANCELLORSVILLE. Deployed to Persian Gulf in support of Operation Desert Storm/Southern Watch while serving as Operations Officer aboard USS CHANCELLORSVILLE

Clerk Information

  • Judicial Extern for the Honorable Ruben B. Brooks, United States Magistrate Judge, Southern District of California


EDUCATION

  • J.D., University of San Diego cum laude
    Order of the Coif
  • B.A., Villanova University

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