John F. Duffy is Of Counsel, resident in Hughes Hubbard & Reed’s Washington, DC, office. He is also the Samuel H. McCoy II Professor of Law at the University of Virginia School of Law.
John is a former law clerk to Justice Antonin Scalia, a registered patent attorney and co-author of a widely used patent law casebook, “Patent Law and Policy”(6th ed. 2013), and the author of a number of articles on intellectual property and administrative law.
John has participated in a number of litigation matters, both as counsel for parties to the litigation and as an amicus curiae. In the field of intellectual property, John has been identified as one of the 25 most influential people in the nation (by the US publication The American Lawyer) and one of the 50 most influential people in the world (by the UK publication Managing Intellectual Property).
Professional Activities
Member, American Bar Association, Section of Intellectual Property Law, Task Force on Patent Reform (2007 – 2011)
Amicus curiae brief (principal author and lead counsel for a group of 10 academics) in Microsoft v. AT&T, 550 US 437 (2007)
Chair, 2004 Fall Conference on Administrative Law, American Bar Association (ABA) Section on Administrative Law and Regulatory Practice (Oct. 21 – 22, 2004)
Section council member, ABA Section on Administrative Law and Regulatory Practice (2001 – 2004)
Assistant chief reporter, project on the Administrative Procedure Act, ABA Section on Administrative Law and Regulatory Practice (1999 – 2005)
Clerkships
Law clerk to the Honorable Judge Stephen Williams, United States Court of Appeals for the District of Columbia Circuit, 1989 – 1990
Law clerk to the Honorable Antonin Scalia, Supreme Court of the United States, 1992 – 1993
Highlighted Publications
Co-author, with Robert Patrick Merges, Patent Law and Policy (6th ed. 2013), 6th ed., LexisNexis, 2013
“Reviving the Paper Patent Doctrine,” Cornell Law Review 98 (2013): 1359
“The Inequities of Inequitable Conduct: A Case Study of Judicial Control of Administrative Process,” invited symposium article, Houston Law Review 51 (2013): 417
“Jury Review of Administrative Action,” invited symposium article, William & Mary Bill of Rights Journal 22 (2013): 281
Co-author, with Michael Abramowicz, “The Inducement Standard of Patentability,” The Yale Law Journal 120 (2011): 1590
“Why Business Method Patents?,” Stanford Law Review 63 (2011): 1247
“The Federal Circuit in the Shadow of the Solicitor General,” The George Washington Law Review 78 (2010): 518
“Innovation and Recovery,” invited endowed lecture, The 13th Annual Honorable Helen Wilson Nies Memorial Lecture in Intellectual Property Law, Marquette Intellectual Property Law Review 14 (2010): 237
“Are Administrative Patent Judges Unconstitutional?,” The George Washington Law Review 77 (2009): 904
Co-author, with Michael Abramowicz, “Ending the Patenting Monopoly,” University of Pennsylvania Law Review 157 (2009): 1541
“Rules and Standards on the Forefront of Patentability,” invited symposium article, William & Mary Law Review 51 (2009): 609
Co-author, with Michael Abramowicz, “Intellectual Property for Market Experimentation,” New York University Law Review 83 (2008): 337
“Inventing Invention: A Case Study of Legal Innovation,” Texas Law Review 88 no. 1 (2007)
Co-author, with Craig Allen Nard, “Rethinking Patent Law’s Uniformity Principle,” Northwestern University Law Review 101 no. 4 (2007): 1619
Co-author, with Robert Patrick Merges, “Obviousness and the Graham Case,” in Intellectual Property Stories, edited by Jane Ginsburg and Rochelle Cooper Dreyfuss, New York: Foundation Press, 2005
“Rethinking the Prospect Theory of Patents,” The University of Chicago Law Review 71 (2004): 439
“The Marginal Cost Controversy in Intellectual Property,” The University of Chicago Law Review 71 (2004): 37
“The Festo Decision and the Return of the Supreme Court to the Bar of Patents,” written 2002, Supreme Court Review (2003): 273
“Harmony and Diversity in Global Patent Law,” Berkeley Technology Law Journal 17 (2002): 685
"Administrative Common Law in Judicial Review," Texas Law Review 77 no. 1 (1998): 113 (for this article, John received the 1999 Annual Scholarship Award from the ABA Section on Administrative Law and Regulatory Practice)
Co-author, with Monroe E. Price, “Technological Change and Doctrinal Persistence: Telecommunications Reform in Congress and the Court,” Columbia Law Review 97 (1997): 976
Wired.com, “Let’s Get Rid of Kludgy Patent Fixes and Define the Non-Obvious,” in conjunction with an academic conference held at Santa Clara University) Nov. 16, 2012, http://www.wired.com/2012/11/l...
United States District Court for the District of Columbia, 1994
United States Supreme Court, 1995
United States Court of Appeals for the District of Columbia Circuit, 1994
United States Court of Appeals for the Federal Circuit, 1996
United States Patent & Trademark Office, 1996
Highlighted Matters
TC Heartland v. Kraft Foods, No 16-341 (2017) (lead counsel for TC Heartland in winning reversal of patent venue judgment; successfully urged the Supreme Court to overturn decades of circuit precedent interpreting the patent venue statute, 28 U.S.C. § 1400(b))
KSR International Co. v. Teleflex Inc., 550 US 398 (2007) (co-author of a successful petition for a writ of certiorari and co-counsel for the prevailing defendant/petitioner in the Supreme Court)
Already LLC v. Nike Inc., 133 S. Ct. 721 (2013) (co-author of a successful petition for a writ of certiorari and co-counsel for the defendant/petitioner in the Supreme Court)
Arthrex Inc. v. Smith & Nephew Inc., 134 S. Ct. 786 (2013) (co-author of a successful brief in opposition and co-counsel for the respondent in the Supreme Court)
Pregis Corp. v. Kappos, 700 F.3d 1348 (Fed. Cir. 2012) (co-counsel for the prevailing plaintiff/appellee/cross-appellant in the US Court of Appeals for the Federal Circuit)
Global-Tech Appliances Inc. v. SEB SA, 131 S. Ct. 2060 (2011) (co-author of an amicus curiae brief supporting the prevailing defendant/respondent in the Supreme Court)
Bilski v. Kappos, 561 U.S. 593 (2010) (selected by the Federal Circuit to present the oral argument as amicus curiae on behalf of Regulatory Data Corp.; co-author of the amicus curiae brief in the Supreme Court)
Lucent v. Gateway, 580 F.3d 1301 (Fed. Cir. 2009) (co-author of the amicus curiae brief filed on behalf of 10 technology corporations in support of a changed approach to the patent damages doctrine)
Expert witness for the US Federal Trade Commission in the matter of Union Oil Company of California, No. 9305 (2003 – 2004)
University of Chicago Law School, J.D., 1989, cum laude, Articles Editor, Law Review , Order of the Coif , John M. Olin Prize for the Outstanding Graduate in Law and Economics
