John R. Lastova
Clients credit John Lastova's deep technical knowledge, as well as his keen patent drafting and leveraging skills, for enhancing the value of their companies and for creating effective patent defenses.
John Lastova brings more than 35 years of hands-on patent experience to his IP practice at Nixon Vanderhye. A Shareholder since 1991 and a Managing Partner for over a decade, John helped lead the firm into the 21st century. Combining a comprehensive understanding of what it takes to run a business with an understanding of a client’s enterprises, industries, and objectives, he delivers forward-thinking, yet practical, IP counsel.
With a love of ideas and technology, John regularly engages with Ph.D. scientists and engineers in order to gain a thorough understanding of their inventions. Using that knowledge, he effectively communicates the nuances of their IP as he prepares and prosecutes comprehensive patent applications. His goal is to protect their inventions, obtain broad coverage, and avoid the pitfalls he has seen in his real-world experiences in patent litigation and licensing. At the same time, John effectively translates difficult, highly complex technical and legal issues to advise business executives and to advocate before decision-makers at the U.S. Patent and Trademark Office (USPTO) and in adversarial settings.
John’s practice concentrates on patent preparation, prosecution, counseling, IP portfolio review and management, and litigation involving complex technology including:
- Computer and Cloud-based Architectures
- Computer Security/Cryptography
- Graphics Processing
- Software Applications
- 2G-5G Wireless, Wired, and Network Telecommunications
- MPEG and HEVC Video Coding
- Electronic Trading Exchanges and Data Analytics
- Optical Interferometry, Sensing, and Communications
- Artificial Intelligence, Machine Learning, and Neural Networks
- Video Game Technology
This concentration has resulted in his drafting hundreds of patents applications, prosecuting thousands of patents in the U.S. and abroad, and shepherding issued patents through post-grant procedures. John has argued many winning appeals before the USPTO’s Patent Trial and Appeal Board. He also maintains an extensive network of relationships with foreign associates, working hand-in-hand with them to procure patents around the world.
In addition, John counsels clients with respect to patent infringement, validity, and enforceability. He has considerable experience as patent counsel in patent infringement litigation, having represented clients seeking to enforce and defend their patents. John has also testified at trial as a witness regarding patent infringement and in deposition as an expert witness regarding the validity of multiple patents.
Working with companies of all sizes, John delivers intellectual property due diligence counsel to clients considering a potential sale or purchase of a business or portfolio, and provides advice on the merits and risks of a portfolio.
While attending law school, John worked as a Primary Examiner with the USPTO, exercising independent patentability decision-making authority in a variety of complex technical areas, including computer architecture, artificial intelligence, robotics, process control, automated manufacturing, and various computer software-based applications. He credits his significant USPTO experience for providing him with a deep understanding of the importance and wording of claim language.
- Prepared and prosecuted a highly valued, worldwide portfolio of seminal optical interferometry sensing patents for a mid-sized company with medical, communications, and sensing applications. The patent portfolio, valued at nearly $100 million, rescued the company from bankruptcy.
- Prosecuted about 1,000 patents for a multinational semiconductor (CPUs, systems, and platforms) and software design company that derives its revenue from IP licensing royalties.
- Prepared and prosecuted many highly valued patents included in a larger portfolio of patents covering wireless communications technology licensed to cellular and other radio communications companies worldwide.
- Worked as patent counsel, along with trial counsel, to successfully defend a large U.S. stock exchange against patent infringement claims in a U.S. District Court for the District of Delaware case.
- Counseled, prepared, and prosecuted key U.S. and foreign patents for a startup company, resulting in the acquisition of crucial additional venture capital to develop products and continue R&D.
- Prepared briefs and witnesses for Markman hearing and trial before the U.S. District Court for the Eastern District of Texas. As a member of the trial team, John successfully asserted the client’s electronics patents in a victory against a defense contracting company.
- Appeared as a trial witness in a U.S. District Court for the Northern District of Texas infringement case on behalf of an international telecommunications company. John testified regarding noninfringement opinions he prepared concerning several complex radio communications patents.
- Prepared successful substantive patent defenses for a large consumer electronics and video gaming company against several different plaintiffs in Texas and Delaware district courts, and against a host of patent licensing entities in face-to-face negotiations.
- Served as an expert witness in litigation before a San Diego district court, opining on the validity of standard essential telecommunications patents.
- Post-Grant Proceedings
- Due Diligence
- Domestic and Worldwide Portfolio Management
- PTAB Practice
- IPRs, PGRs, CBMs, Reexams, and Derivations
IP Transactions, Agreements, and Trade Secrets
- Licensing, Sales, and Assignments
- Non-Disclosure Agreements
- Due Diligence
- IP Audits
Electrical & Computer Technology
- Computer Systems (Hardware, Software, & Firmware)
- Artificial Intelligence
Communications & Data Transfer
- Internet of Things
- Data Analytics
- Toys & Gaming
- Medical Devices
Industrial & Manufacturing Systems & Products
- Power Generation
- Sensing and Measuring Systems & Devices
Optical Devices & Systems
- District of Columbia
- U.S. Patent and Trademark Office
- U.S. Court of Appeals for the Federal Circuit
- U.S. Patent and Trial Appeal Board (PTAB)
- U.S. District Court for the Southern District of New York
- U.S. District Court for the Eastern District of Texas
- J.D., with high honors, George Washington University, 1987
- B.S.E.E., magna cum laude, Virginia Polytechnic Institute, 1982
- Martindale-Hubbell, AV Preeminent rating