• Jonathan S. Caplan represents clients in patent litigation, counseling and prosecution, as well as in general corporate matters involving the acquisition, sale or licensing of intellectual property rights.

    Jonathan litigates patent infringement actions in federal district courts across the country, in the Court of Appeals for the Federal Circuit, and in state courts, both representing patent owners seeking to enforce their rights and defending companies against allegations of infringement. His litigation work includes patent infringement actions in the Southern District of New York, the District of Delaware, the Northern District of California and the District of Nebraska, involving technologies from wireless communications to semiconductor wafer inspection equipment to immuno-assay kits and analyzers. He also handles inter partes review and ex parte re-exam proceedings before the Patent and Trademark Office.

    Jonathan has handled numerous patent and technology cases, including recently winning a motion to dismiss in a very contentious patent litigation in Delaware for long-standing client Sirius XM Radio. He also achieved a favorable settlement after a seven-day trial and then a subsequent jury verdict for a client in the telecommunication field. In a state court action, Jonathan obtained a summary judgment victory in Kentucky that involved patent ownership and misappropriation of intellectual property rights related to pharmaceutical treatment of AIDS-related conditions.

    Jonathan regularly counsels on freedom to operate and patent prosecution matters in the United States and foreign patent offices for numerous clients in all fields of technology, from biotechnology to medical devices, semiconductor manufacturing and devices. Jonathan leads the department in advising corporations on intellectual property issues in connection with merger and acquisition transactions.

    Experience

    • Representing Sirius XM Radio in patent infringement action involving multicarrier modulation technology and recently won a motion to dismiss the case.

    • Advised Stone Point Capital LLC in an agreement by which funds managed by Stone Point acquired Sabal Capital Partners LLC.

    • Advised Stone Point Capital LLC and its Trident funds in an investment in Gordon Brothers Group LLC, a global advisory, restructuring and investment firm specializing in the industrial, consumer products and retail sectors. 

    • Advised NXT Capital Inc., a provider of structured financing solutions, in its acquisition by Orix Corp. USA.

    • Represented Watermark, a leading provider of outcomes assessment and faculty activity reporting solutions for higher education, in its acquisition of Digital Measures, a leading provider of a web-based faculty activity reporting solution.

    • Successfully represented Seoul Semiconductor in a patent infringement action involving gallium light-emitting diodes.

    • Obtained a walk-away dismissal for satellite radio service provider Sirius XM Radio Inc. of patent infringement claims relating to live chat customer service technology, representing Sirius XM in a third-party indemnification claim against a vendor.

    • Successfully represented Prism Technologies in two patent infringement actions involving access control for wireless networks, including a favorable settlement following a seven-day jury trial and a subsequent jury verdict.

    • Successfully represented Toyoda Gosei in a patent infringement action involving fabrication of light-emitting diodes.

    • Successfully represented Sirius XM Radio Inc. in a patent infringement action involving encryption technology.

    • Successfully represented Sirius XM Radio Inc. in a patent infringement action involving audio content that can be downloaded and played according to a playlist.

    • Successfully represented Sirius XM Radio Inc. in a patent infringement action involving interoperable satellite radio receivers.

    • Took over representing Camtek Ltd., an Israeli manufacturer of semiconductor wafer inspection systems, in a patent infringement action after an adverse jury verdict had already been entered and obtained a decision on appeal to the Federal Circuit, vacating the adverse judgment of the district court.

    • Successfully represented Sirius XM Radio Inc. in a declaratory judgment action involving patents relating to microprocessor design and flash memory chips.

    • Successfully represented Sinosteel Corp., Sinosteel Trading Co. and Liaoning Jiayi Metals & Minerals Co. Ltd. in an antitrust class action lawsuit alleging price fixing for magnesite, successfully obtaining the dismissal of two complaints asserted by the plaintiffs.

    • Won summary judgment for Savient Pharmaceuticals in the defense of a breach of contract claim regarding ownership of patents and multimillion-dollar damages.

    • Successfully defended Sirius XM Radio Inc. against a patent infringement action relating to radio devices, resulting in a walk-away stipulation of dismissal by the plaintiff-patentee after a decisive claim construction ruling.

    • Successfully defended Sirius Satellite Radio in a patent infringement action involving navigation system technology, resulting in a favorable settlement.

    • Represented Toyoda Gosei, one of the world’s largest producers of light-emitting diodes, in a patent infringement litigation involving LED technology, which concluded in a favorable settlement.

    • Successfully defended Sirius Satellite Radio in a binding arbitration involving transmission of embedded text in a satellite radio signal.

    Credentials

    Education

    • J.D., cum laude, Temple University Beasley School of Law, 1993
    • B.S., Electrical Engineering, University of Pennsylvania, 1986

    Bar Admissions

    • New York, 1994
    • New Jersey, 1993
    • U.S. Patent and Trademark Office, 1994

    Court Admissions

    • U.S. Supreme Court
    • U.S.C.A., Federal Circuit
    • U.S.C.A., 3rd Circuit
    • U.S.D.C., District of New Jersey
    • U.S.D.C., Eastern District of Texas
    • U.S.D.C., Southern District of New York

    Professional Affiliations

    • New Jersey Intellectual Property Law Association, President (2010)
    • New York Intellectual Property Law Association
    • American Bar Association, Section on Intellectual Property Law
    • American Bar Foundation, fellow
    • The International Federation of Intellectual Property Attorneys
    • The Trial Lawyer Honorary Society of the Litigation Counsel of America, fellow
    • Jewish Vocational Services of MetroWest, former trustee
    • United Jewish Communities of MetroWest, former trustee
    • Temple Beth Shalom, former board member
    • United States Air Force, former officer
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