Partner

Tel: (503) 459-4141

Education

• J.D., University of Michigan Law School, Ann Arbor, Michigan, Magna Cum Laude
• Ph.D., Mechanical Engineering, The Ohio State University, Columbus, Ohio
• M.S., Engineering, University of California at Berkeley, Berkeley, California
  
• B.S., Mechanical Engineering, The Ohio State University, Columbus, Ohio, Summa Cum Laude and With Distinction
  
• Executive Note Editor, Michigan Telecommunications and Technology Law Review

Professional Highlights

• John D. Russell, Ph.D. currently represents clients in a variety of patent and trademark matters, including patent portfolio management and strategy development, patent procurement, patent appeals, licensing, and client counseling.
• Has over three years of invaluable in-house experience with intellectual property matters including patent procurement, licensing and negotiations, non-infringement and design-around client counseling, and foreign oppositions.
  
• Has drafted and prosecuted hundreds of patents in a broad range of technical fields, including electronic feedback control systems, digital and analog signal processing, electromechanical sensors and actuators, mechanical design, engine and transmission systems, vehicle steering systems, hydraulic control systems, computer software, and optics.

Professional Recognition

• John’s work at the firm has resulted in the firm being recognized as a 2013 Go-To Law Firm by its Fortune 500 clients for delivering exceptional work to in-house counsel in the area of intellectual property. To compile the list, American Lawyer Media polls the legal departments of Fortune 500 companies for their preferred primary outside counsel in key practice areas. The full list of honored firms is featured in the April 2013 editions of Corporate Counsel and The American Lawyer magazines.

Technical Experience

• Conducted research and development at Ford Motor Company in the area of engine, transmission, and emission control systems, and was awarded the prestigious Henry Ford Technology Award, one of Ford’s highest technical honors.
• Named inventor on more than 100 United States Patents to date.
• Author of numerous technical articles in journals and conferences proceedings.
• Research experience in the areas of renewable energy, clean technology, emission controls, internal combustion engines, transmission and power transfer devices, wind energy, hydraulics, and others.

Awards

• 40 Under 40 (2010) - Portland Business Journal
• Texnikoi Outstanding Alumni Award (2007) - The Ohio State University

Associations

• Admitted to practice in the State of Oregon.
• Registered to practice before the United States Patent and Trademark Office.
• Member of the American Bar Association, the American Intellectual Property Law Association, the Oregon Patent Law Association, and the Society of Automotive Engineers.

Sample Post Grant Review Proceedings

• Prepared and filed Inter Partes Reexamination against a litigation-tested patent. The patent was disclaimed in full by the patentee.
• Request for Inter Partes Reexamination
• Patent Disclaimer

Sample Board of Patent Appeals and Interferences (BPAI) Decisions

• Decision on Appeal - U.S. Application No. 09/952,214
• Decision on Appeal - U.S. Application No. 09/992,223
• Decision on Appeal - U.S. Application No. 10/683,600
• Decision on Appeal - U.S. Application No. 10/767,339
• Decision on Appeal - U.S. Application No. 11/154,726
• Decision on Appeal - U.S. Application No. 11/490,718
• Decision on Appeal - U.S. Application No. 11/559,828
• Decision on Appeal - U.S. Application No. 11/675,528

Publications

• Yikes! (Times Five) - Oregon State Bar Bulletin