John S. Hilten

Partner

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

Overview

John Hilten is a registered patent attorney with more than 30 years of experience in patent prosecution. His areas of concentration include patent prosecution and client counseling with respect to patent protection, trade secret protection, patent and trade secret litigation, infringement, invalidity and freedom to operate.

John 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 U.S. Patent and Trademark Office deepened John's understanding and knowledge of the patent procedure, which he utilizes when creating and maintaining patent portfolios for clients.

John develops thorough understandings of the high-level technologies with which 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 designers and manufacturers of dispensing equipment for consumer and industrial adhesives, sealants and coatings, equipment used in the testing and inspection of electronic components, technology-based systems for curing and surface treatment processes as well as medical devices and component technologies. The representation of this multinational company includes detailed intellectual property counseling and strategy, patent drafting, and worldwide patent filing and patent prosecution.
  • 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.
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Experience

  • Represent one of the largest designers and manufacturers of dispensing equipment for consumer and industrial adhesives, sealants and coatings, equipment used in the testing and inspection of electronic components, technology-based systems for curing and surface treatment processes as well as medical devices and component technologies. The representation of this multinational company includes detailed intellectual property counseling and strategy, patent drafting, and worldwide patent filing and patent prosecution.
  • 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
  • U.S. Patent and Trademark Office, Registration No. 52,518
  • 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

Blog

In The Blogs

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IP Intelligence: Insight on Intellectual Property
The Federal Circuit Provides Insight on Experimental Use and On-Sale Bar
By John S. Hilten
May 9, 2022
On April 29, 2022, the Court of Appeals for the Federal Circuit issued an opinion for Sunoco Partners Marketing & Terminals L.P. v. U.S. Venture, Inc., U.S. Oil Co., Inc. (2022 WL 1275697).This case touched on a number of issues, including...
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IP Intelligence: Insight on Intellectual Property
Bio-Rad Co-ownership Defense Fails at the CAFC
By John S. Hilten
May 10, 2021
On April 29, 2021, the United States Court of Appeals for the Federal Circuit (CAFC) affirmed an International Trade Commission (ITC) decision holding the importation and sale by Bio-Rad Laboratories, Inc. (Bio-Rad) of certain microfluidic...
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