John B. Sganga Jr. is a partner in the Orange County, Calif., office of Knobbe Martens Olson & Bear LLP. Over his 27 years of IP law practice, he has litigated numerous patent, trademark, copyright and trade secret cases through trial and appeal. Sganga has held leadership roles in the Orange County Bar Association and the William P. Gray Legion Lex Inn of Court. He has lectured and written on intellectual property law issues, including co-authoring the Thomson- West treatise on patent enforcement strategy. He also received the Rossman Award from the Journal of the Patent and Trademark Office Society. Sganga obtained a BS in Mechanical Engineering from Lafayette College and a JD from NYU School of Law.
Q: What is the most challenging lawsuit you have worked on and why?
A: Until I have obtained a favorable resolution for my client, every lawsuit is challenging, but one that stands out involved the inventor of the ergonomic computer mouse. If you have a mouse today, it probably uses this invention. We represented the patentee against the largest mouse manufacturer in the world. Years prior to suit, the manufacturer had rejected the offer of a patent license but, in our view, proceeded to use the invention anyway.
Just after we filed suit, our client’s career in the movie industry was dealt a blow when his studio went bankrupt. Since he was draining his savings for the lawsuit, we were on a shoestring budget, unlike our opponent. I had some very stressful moments when advising the client to turn down early settlement offers. He often reminded me that if the case did not turn out well, he would be driving a cab during what should be his retirement. I asked him to trust me, and he did. We really had some dark days when the court entered a summary judgment of noninfringement. But we got that overturned on appeal, and eventually resolved the case on the courthouse steps. I now have a forever grateful client who is retired, and not driving a cab!
Q: Describe your trial preparation routine.
A: I assume you mean other than the raw egg breakfast and fist-pumping jog up the steps of whatever hotel I am staying in. Really it is about identifying the key theme and stating it in a short paragraph. Everything flows from that — opening statement, witness testimony, exhibit selection and so on. I like to prepare high-level bullet point outlines for each portion of the trial, so that I have something simple to glance at while at the podium. But it always comes back to making sure that whatever we present, it fits into the theme.
Q: Name a judge who keeps you on your toes and explain how.
A: Tough question since there are so many, but Chief Judge Randall Rader of the Federal Circuit has to be high on that list. He is intimately familiar with the facts of each appeal, and of course the law. But on top of that, he does not hesitate to drill into what he perceives as the weaknesses in your case, and to do so forcefully. You really need to react quickly otherwise you will never catch up.
Q: Name a litigator you fear going up against in court and explain why.
A: I think you need to treat every opponent as fearsome in this business otherwise you are in trouble. It’s like the old saying, if you look around the poker table and can’t tell who the sucker is, it’s probably you. One lawyer who always commands my respect is Bill Rooklidge [of Jones Day]. He is always well- prepared, articulate and has the uncanny ability to pull out some Supreme Court case from the 1800s on an obscure patent law issue which is surprisingly on point, but old enough that you are caught flat- footed.
Q: Tell us about a mistake you made early in your career and what you learned from it.
A: I could have gotten much better terms for an injunction that was being entered against my client if I had just kept my mouth shut! You always want to sound like you have all the answers when in court, but I learned the hard way that it is better to admit sometimes that you just don’t know certain facts and that you need to consult with your client and offer to file supplemental briefing. Some judges can be very effective cross-examiners, so sometimes it is better to make your own lack of foundation objection than to appear to know it all.
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