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John Edmonds

Of Counsel

Email : John@CHZfirm.com

Tel: (713) 364-5291

John Edmonds has over thirty years of experience representing clients in intellectual property and complex litigation. His practice focuses on intellectual property disputes, including patent litigation and appeals, trademark, copyright and trade secret litigation, and inter partes review and other post-grant proceedings before the U.S. Patent and Trademark Office.​​

Legal Experience

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John has served as lead counsel in more than 150 lawsuits throughout the United States, including more than 30 jury trials, and has served as lead counsel in more than 70 appeals. His appellate experience includes appeals before the U.S. Courts of Appeals for the Federal, Fifth, Ninth, and D.C. Circuits.  

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John represents both plaintiffs and defendants in intellectual property disputes and has experience handling matters from pre-suit investigation through trial and appeal. His practice also includes patent and intellectual property counseling, licensing, due diligence, and strategic advice concerning intellectual property rights and disputes.

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John’s clients range from multinational corporations to individual inventors and smaller businesses.

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Patent Litigation and AIA Post-Grant Proceedings

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Mr. Edmonds has significant experience representing both patent owners and accused infringers in patent litigation and proceedings before the Patent Trial and Appeal Board. He has handled more than 20 inter-partes review and ex parte reexamination proceedings and has represented clients in multiple appeals including challenges to PTAB decisions in the Federal Circuit.

 

His patent litigation experience includes patent infringement, invalidity, non-infringement, claim construction, damages, and patent validity disputes. He has obtained verdicts of infringement that were affirmed on appeal and has successfully defended patent claims in post-grant proceedings.

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Representative Cases​​

  • John was the lead attorney for the patent owner in case involving routing/switching technology that resulted in a seven-digit verdict which was upheld in appeal.

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  • John was co-lead attorney for the patent owner in a case involving computer mounting technology that resulted in a seven-digit verdict which was upheld in appeal.  John and his co-counsel also successfully defended the patent during reexamination proceedings.

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  • John was lead attorney for a developer who successfully defended against copyright and DMCA claims involving 10 digit damages.  John and his team obtained summary judgment and an award of attorney’s fees, both of which were affirmed on appeal.

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  • John was lead trial and appellate counsel for a patentee in a case involving one of the first reversals by the U.S. Court of Appeals for the Federal Circuit favoring a patentee with respect to step 1 of the Alice test for patentability.

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  • John was part of a team that obtained a favorable settlement on behalf of a major pharmaceutical company involving eight-figure claims on the first day of trial.

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  • John was part of a team that obtained a favorable seven-figure settlement on behalf of a patentee against a major social networking companies in the world after successfully defending IPR challenges.

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  • John also represents clients in state and federal court litigation involving Trademarks/trade dress, unfair competition, Lanham Act claims; Internet, ecommerce, and website disputes, and other intellectual property and technology-related disputes

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Intellectual Property Counseling​

John provides strategic intellectual property counseling and analysis, including:

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  • Patent invalidity and non-infringement opinions

  • Freedom-to-operate opinions

  • Patent portfolio counseling

  • Patent and technology licensing

  • Technology transactions

  • Due diligence in acquisitions and investments

  • Pre-suit investigation and analysis

  • Trademark counseling

  • Copyright counseling

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Complex Commercial and Civil Litigation​

John has broad experience in complex commercial and civil litigation, including:

  • Breach of contract

  • Business/commercial disputes

  • Fraud

  • Unfair competition

  • Construction disputes

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Education​

  • LL.M., 2006, University of Houston Law Center, Intellectual Property & Information Law

  • J.D., 1994, The University of Texas School of Law

  • B.A., Plan II, 1991, The University of Texas at Austin

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Admissions​

  • Texas State and Federal Courts

  • California State and Federal Courts

  • U.S. Court of Appeals for the Federal Circuit

  • U.S. Court of Appeals for the Fifth Circuit

  • U.S. Court of Appeals for the Ninth Circuit

  • U.S. Court of Appeals for the D.C. Circuit

  • U.S. Supreme Court

  • U.S. Patent and Trademark Office

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Recognitions​

  • Recognized as a Super Lawyer® in 2020, 2021, 2023, and 2024

  • Recognized with the highest “Preeminent” peer rating by Martindale-Hubbell® for over a decade

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Professional Activities​

  • State Bar of Texas

  • State Bar of California

  • Houston Intellectual Property Lawyers Association

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Military Service​

John served honorably in the U.S. Marine Corps.   ​

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