John S. Hilten

Partner

Washington, D.C.
T +1.202.861.1516
F +1.202.861.1783

Overview

A registered patent attorney, John Hilten's practice concentrates on patent prosecution and client counseling with respect to patent protection, trade secret protection, patent and trade secret litigation, infringement, invalidity, and freedom to operate. He has extensive experience with every aspect of utility and design patent prosecution, including patent application drafting, responses, reissuing patent applications, reexamining patent applications, patent appeals and foreign filing. His experience working as an examiner and Supervisory Patent Examiner (SPE) in the United States Patent and Trademark Office deepened John's understanding and knowledge of the patent procedure, which he utilizes when creating and maintaining patent portfolios for his clients. John develops thorough understandings of the high-level technologies with which his clients work, enabling him to efficiently represent them in complex or challenging industries that include telecommunication, semiconductor, aerospace, blockchain, artificial intelligence, and automotive technologies, as well as others. Moreover, John’s multidisciplinary engineering degrees allow him to skillfully obtain broad patent coverage for a multitude of technologies.

Select Experience

  • Represent one of the largest wireless service providers in management of entire patent portfolio, including detailed intellectual property counseling and strategy, patent drafting, filing, and prosecution, and freedom to operate analysis of a suite of innovative wireless device features, wireless network systems, and related wireless service offerings.
  • Represent a large semiconductor manufacturer in management of worldwide patent portfolio, providing advice on patent drafting, filing, and prosecution of complex semiconductor devices, complex semiconductor manufacturing processes, and related implementations of the semiconductor devices.
  • Represented a chemical company in a trade secret misappropriation action involving the production and marketing of Kevlar. A jury found in favor of the client, which was awarded damages.
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Experience

  • Represent one of the largest wireless service providers in management of entire patent portfolio, including detailed intellectual property counseling and strategy, patent drafting, filing, and prosecution, and freedom to operate analysis of a suite of innovative wireless device features, wireless network systems, and related wireless service offerings.
  • Represent a large semiconductor manufacturer in management of worldwide patent portfolio, providing advice on patent drafting, filing, and prosecution of complex semiconductor devices, complex semiconductor manufacturing processes, and related implementations of the semiconductor devices.
  • Represented a chemical company in a trade secret misappropriation action involving the production and marketing of Kevlar. A jury found in favor of the client, which was awarded damages. 
  • Represented a multinational engineering and electronic conglomerate in a patent infringement action alleging the client had infringed patents related to computer numerical control machine tools.
  • Represented a wireless service provider in a patent infringement action involving wireless technology.
  • Represented a wireless carrier in a patent infringement action involving voice over internet protocol technology. A jury found in favor of the client, which was awarded damages.
  • Represented a lighting company in two separate patent infringement actions involving LED technology.
  • Represented an equipment supplier in a patent infringement action involving mining equipment.
  • Represented a client in the home automation area. Developed an intellectual property strategy and built a patent portfolio based on the same. Brought an entire product suite to the market, determined all patents that could be filed, analyzed competitors' patents, and developed noninfringement and invalidity positions to ensure freedom to operate.

Recognitions and Memberships

Memberships

  • Intellectual Property Owners Association

Prior Positions

  • U.S. Patent and Trademark Office
    • Technology Center Special Programs Office
    • Supervisory Patent Examiner

Admissions

  • U.S. District Court, Eastern District of Virginia
  • District of Columbia
  • Virginia

Education

  • J.D., American University Washington College of Law
  • M.S., Electrical Engineering, George Mason University
  • B.S., Aeronautical Engineering, Embry-Riddle Aeronautical University