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John Fischer, P.E.

PARTNER

Overview

John is a highly experienced patent attorney who has represented clients in Noth America, Asia, and Europe, including representation in patent infringement cases in the Federal Courts across the United States. With an extensive background in engineering and business management, John brings valuable additional expertise to his clients. As a licensed professional engineer with several U.S. patents of his own, he prosecutes complex patents both domestically and internationally.

John’s unique perspective as an experienced litigator allows him to draft and prosecute patent applications with judges and juries in mind, emphasizing enforcement and commercialization strategies. His patent work has resulted in substantial value for his clients, exceeding 100 million dollars in total (including product sales, litigation awards, and enterprise valuation). Recognized as an AV rated lawyer, John has received accolades such as being listed as a Super Lawyer for more than ten consecutive years, and he has also been recognized by Best Lawyers® in America and Best Lawyers in Dallas by D Magazine.

Mr. Fischer has extensive successful experience in patent defense litigation, including defense against larger patent-holding entities. Mr. Fischer has years of litigation experience in oilfield and construction-related intellectual property matters, and also in the jewelry industry, including materials and process related patents.

Mr. Fischer has built and managed manufacturing facilities and served in capacities ranging from Project Manager to Vice-President of various companies. He regularly negotiates licenses for his clients as well as intellectual property co-development and procurement agreements.

The combination of his legal experience, business experience, and extensive design experience in mechanics, manufacturing, electronics, photoelectrics, and oil and gas exploration provides his clients with a unique level of participation in the fullest development of inventions.

Representative clients include Schlumberger, Ryan Corporation, Orenda, Conestoga Energy Partners, RTC, T&T Engineering Services, Inc., Inficomm, Inc., The Gearhart Companies, C&C Jewelry Mfg., HNJ, Inc., Prime Art and Jewel (PAJ), Pavestone, Antron Compact Electronics, Crow-Erickson, Inc., DLA, Inc., Collier Metal Specialties, Inc., Detex Corporation, Dobbs-Stanford Corporation, and RECS, Inc.

  • Member, Texas Society of Professional Engineers
  • Member, American Intellectual Property Law Association
  • Member, Dallas Bar Association
  • Member, American Society of Mechanical Engineers
  • Member, Society of Manufacturing Engineers
  • Bachelor of Science, Mechanical Engineering, University of Southern California, 1979
  • Juris Doctor, Southern Methodist University School of Law, 1996
  • AV rated, Martindale-Hubbell
  • Selected in “Super Lawyer” list, Thomson Reuters, 2012 – 2023
  • Selected in “Best Lawyers in Dallas” list, D Magazine, 2018 – 2023
  • Selected in “Best Lawyers in America” list, Best Lawyers (Woodward/White Inc.), 2019 – 2023
  • Selected in “Best Lawyers in Texas” list, The Wall Street Journal, June 2020 – 2023
  • Selected in “Texas’ Top Rated Lawyers in Intellectual Property” list, Legal Leaders Magazine, 2014 and 2015
  • Selected in “Top Attorneys in Texas” list, Texas Monthly Magazine, 2011 – 2019
  • Selected in “Top Rated Lawyers in Texas” list, Texas Lawyer, 2015 – 2017
  • Selected in “Top-Rated Lawyers in Intellectual Property Law” list, Fortune Magazine, 2014
  • Selected in Marquis Who’s Who in America, 2017 – 2019
  • Selected in Marquis Who’s Who in Science and Engineering, 1994 -1995
  • Copyright Litigation
  • Licensing & Technology Transfer
  • Patent Litigation
  • Patent Portfolio Strategic Development
  • Patent Prep & Prosecution
  • Trade Secret Litigation
  • Trade Secret Program Management
  • Trademark Litigation
  • Trademark Preparation & Prosecution
  • Copyright Litigation
  • Patent Litigation
  • Trade Secret Litigation
  • Trademark Litigation
  • Interviewed by The Dallas Morning News, November 2003 and May 2002.
  • Speaker for STLE CM2002 Conference, February 2002.
  • Editor and publisher of Metalworking Fluid Magazine (metalworkingfluid.com).
  • Interviewed by Good Morning America in September 1999.
  • Interviewed and quoted in Business Week Magazine, April 2000, Wrap Sheet, University of Tennessee, May 2000, The Wall Street Journal, July 2000, and the Sydney Times, June 2000.
  • Featured guest speaker at the FTC press conference announcing the prosecution of 100th Internet Fraud case, September 1999.
  • CLE speaker for Dallas Chapter of FBA, October 2000. Speaker for Dallas Chapter of TSPE, February 2001.
  • Registered U.S. Patent Attorney
  • Attorney at Law, State Bar of Texas
  • Attorney at Law, State Bar of Colorado
  • Attorney at Law, District of Columbia
  • Licensed Professional Engineer, Texas
  • U.S. District Court Northern District of Texas
  • U.S. District Court Eastern District of Texas
  • U.S. District Court Western District of Texas
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. Supreme Court
  • The College of the State Bar of Texas
Mr. Fischer has several muti-national patents extending over three industries with a patent pending in a fourth. His issued patents are listed below.

 


Featured Patents:

  • U.S. Patent No. 4,753,305 — Cutter Mounting for Drag Bits
  • U.S. Patent No. 4,676,124 — Drag Bit with Improved Cutter Mount
  • U.S. Patent No. 5,021,675 — Photoelectric Mensuration Device and Method of Use
  • U.S. Patent No. 5,033,559 — PDC Drill Bit with Facetted Wings
  • GB 2,244,075 — Drill Bit With Faceted Profile
  • U.S. Patent No. 5,021,675 — Photoelectric Mensuration Device and Method of Use
  • GB 2,242,019 — Photoelectric Mensuration Device and Method of Use
  • BE1005906A5 — Photoelectric Mensuration Device and Method of Use
  • GB 2,241,266 — Intersection Solution Method for Drill Bit Design

  • U.S. Patent No. 7,834,878
  • U.S. Patent No. 7,483,026
  • U.S. Patent No. 8,554,346
  • U.S. Patent No. 8,226,877
  • U.S. Patent No. 8,661,849
  • U.S. Patent No. 9,364,993
  • U.S. Patent No. 9,542,702
  • U.S. Patent No. 10,149,556
  • U.S. Patent No. 10,528,990
  • U.S. Patent No. 11,273,581
  • U.S. Patent No. D718,655
  • U.S. Patent No. D834,358
  • U.S. Patent No. D839,642
  • U.S. Patent No. D856,044
  • U.K. Design Registration No. 4029323
  • U.K. Design Registration No. 6003778
  • U.K. Design Registration No. 6003779
  • U.K. Design Registration No. 6003780
  • U.K. Design Registration No. 6003781
  • U.K. Patent Application No. 1517781.9
  • Canada Design Registration No. 150632
  • Canada Design Registration No. 153075