John S. Paniaguas

He has extensive experience in business method patents, novelty and non-infringement analysis, reissues, ex parte re-exams, ex parte appeals before the Patent Trial and Appeal Board (PTAB) and due diligence of domestic and international patents and applications associated with mergers and acquisitions of target companies. He represents both privately held and publicly traded companies, including start-ups. Mr. Paniaguas has handled inter party reviews before the PTAB and appeals from the PTAB to the Court of Appeals for the Federal Circuit.

A former electrical engineer, John has extensive experience with numerous forms of technology, including electronic circuits and devices, semiconductor fabrication, ion implant devices, automotive sensors, application specific integrated circuits, computer systems, telecommunications systems, software, optical components, optical systems, electronic communications systems, optical communications systems, lasers, laser weapon systems, battery chargers, avionics, electrical high-voltage equipment, electrical circuit breakers, fossil and nuclear energy generation equipment, mechanical components and systems, complex mechanical systems, oxy-fuel combustion systems and electro-mechanical systems.

As a member of the adjunct faculty at the DePaul University College of Law for over 18 years, John teaches Advanced Patent Law and has taught Introductory Patent Law in the past. John is also a member of the adjunct faculty at John Marshall Law School for two years where he teaches Intellectual Property Licensing. John is the Chairman emeritus of the Center for Intellectual Property Law and Information Technology at DePaul College of Law.

He has a strong commitment to pro bono work and was honored in 2004 with a Pro Bono Service Award at Katten Muchin Rosenman LLP for patent law work performed on behalf of inventors and artists.

John is a licensed professional engineer in Illinois and Indiana and worked as an Electrical Engineer for over 10 years at Sargent & Lundy engineers and Northern Indiana Public Service Company with a focus on the electrical design of nuclear and fossil generating stations and high-voltage electrical substations. John has extensive experience in licensing of nuclear generating stations before the Nuclear Regulatory Commission and has training as a nuclear reactor operator.

He formerly served as in-house patent counsel for the McGraw Edison Company and for Motorola and was a partner in the patent specialty firms of Fitch, Even, Tabin & Flannery and Mason, Kolehmainen, Rathburn & Wyss. John is a former partner in the Intellectual Property Department of Katten Muchin Rosenman LLP, where he worked for over 14 years.