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John J. Cotter

Fax +1.617.261.3175

Mr. Cotter concentrates his practice in patent and complex intellectual property trials and appeals.  He has tried patent cases, argued Markman hearings, and handled appeals throughout the U.S., and litigated U.S. and overseas arbitrations and court cases. His patent cases have involved technologies including HIV drugs; polymers; electronic and optical switching technology; wireless and mobile communications; medical devices and instruments; food products; software for databases, security, manufacturing and digital music systems; surgical devices; and flat panel displays.   He regularly advises clients on Hatch-Waxman related patent litigation, including ANDA infringement suits and exemptions from infringement for FDA-related activities, and counsels clients on international patent litigation strategies.

Mr. Cotter’s trademark litigation experience spans from internationally famous to regional and niche brands, and includes obtaining injunctions and seizures across the country.  In the copyright area, Mr. Cotter was trial counsel in the leading case on internet trespass, in an artists and musicians rights case which resulted in the City of Boston rescinding unconstitutional regulations, and in software copyright cases including under the Digital Millennium Copyright Act.

Professional Background

Prior to joining K&L Gates, Mr. Cotter was the co-chair and partner in the patent and intellectual property practice group of Testa, Hurwitz & Thibeault, LLP. Prior to practicing law, Mr. Cotter was an engineer with General Electric’s Aircraft Engine Group. Mr. Cotter has been selected by his peers multiple times for inclusion in each of Massachusetts Superlawyers, New England Superlawyers, and Superlawyers – Corporate Counsel Edition. He was listed in The Best Lawyers 2013-2019 for intellectual property litigation. Mr. Cotter has been selected by his peers for inclusion in The Best Lawyers in 2014 and 2015 for patent litigation.

Professional/Civic Activities

  • American Bar Association (Intellectual Property Law and Litigation Sections)
  • American Intellectual Property Law Association
  • Boston Bar Association
  • Federal Circuit Bar Association
  • Intellectual Property Owners Association
  • International Trademark Association
  • New York Intellectual Property Law Association

Speaking Engagements

Mr. Cotter speaks regularly before legal and industry groups including the International Trademark Association, the Biotechnology Industry Organization, the Boston Patent Law Association, the Practicing Law Institute, and law schools and universities. He has also published a number of papers, and been mentioned in press articles in periodicals such as the ABA Journal, the National Law Journal, Massachusetts Lawyers Weekly, and Photonics Spectra. Example speaking engagements include:
  • "Securing and Defending IP Rights," European Private Equity and Venture Capital Association (EVCA), Course for Investment Professionals, Paris, France, April 23, 2009.
  • "Hot Topics in Patent Litigation," Client CLE Presentation, Reston, VA, November 12, 2007.
  • "The Changing World of Intellectual Property Law," Financial Technology Forum (a division of Institutional Investor, Inc.), Boston, MA, November 16, 2005.
  • "Intellectual Property Insurance and Risk Management Strategies," Licensing Executives Society, Boston, October 20, 2004.
  • "Hatch Waxman Patent Litigation Update," S.G. Cowen & Co. 7th Annual Pharmaceutical and Biotechnology Therapeutic Categories Review Conference and 4th Patent Forum, New York, October 12-13, 2004.
  • Host for International Trademark Association Roundtables, Boston, various dates, 2000-2003.
  • "Clickwrap and Click-Through; Licensing and Contract Issues," Harvard University Extension School, Cambridge, MA, April 14, 2003.
  • "Avoiding Evidence Pitfalls: Demonstrative Evidence," Macaronis Institute for Trial and Appellate Advocacy, Suffolk University Law School, Boston, April 17, 2003.
  • "Unwanted Access: Online Trespass and Other Contact," ABA’s National Cybercrime Conference at John Marshall Law School, Chicago, May 10, 2002.
  • "I.P. for I.T.," Northeastern University's High Tech MBA Program, Dedham, MA, June 1, 2002.
  • "Pharmaceutical and Health Care Breakout Session," International Trademark Association Annual Meeting, San Francisco, May 7, 2001.
  • "Fair Use, Public Domain or Privacy? Should the Digital Exchange of Copyrighted Works be Permitted or Prevented?," Fordham University Law School's Symposium on Digital Exchange of Copyrighted Works, New York, October 6, 2000, transcript published at Vol. IX, No. 2, Fordham Intellectual Property, Media, and Entertainment Law Journal, Winter 2001.
  • "Using and Misusing Third Party Resources," Practising Law Institute's 5th Annual Internet Law Institute, New York, July 9, 2001.
  • "The Infringement Continuum: The Expanding Definitional View," American Conference Institute's Intellectual Property on the Internet Seminar, Washington, D.C., November 14, 2000.
  • "Property Rights in Cyberspace," Yale Law School's Law and Technology Society Roundtable, New Haven, November 13, 2000.
  • "Trademark Law," Suffolk University Law School, Boston, Fall 1999.
  • "Patent Infringement Risks:  Financial Consequences and Funding Remedies," Biotechnology Industry Organization BIO ’98 Conference, New York, June 18, 1998.
  • "Selected Permanent Injunction Issues in Patent Litigation," Boston Patent Law Association Litigation Committee Seminar, Boston, April 8, 1998.
  • "Development, Enforcement and Defensive Strategies for Intellectual Property," Conference on Latest Developments in Intellectual Property, Burlington, MA, March 19, 1998.

Additional Information

  • Quoted in "Technology Cases to Watch in 2008," Technology Law 360, Portfolio Media, January 1, 2008.
  • Quoted in "Let the Music Play," Boston Globe Magazine, May 15, 2005.
  • Quoted in "Sidewalk shows must go on: Hub give street performers a pass – for now," by J. M. Lawrence, Boston Herald, December 23, 2004.
  • Quoted in "Singers sue city, say they're harassed," by Shelley Murphy, Boston Globe, July 24,2004, and in "Street performers sue, claiming harassment," by The Associated Press, Sarasota Herald-Tribune, Florida, July 24, 2004.
  • Quoted in "Suggestions to Overhaul U.S. Patent System Questioned," by Linda Goodspeed, Boston Business. Journal, June 4-10, 2004.
  • Quoted in "Lemelson Patents Ruled Invalid, Unenforceable and Not Infringed," by Daniel S. Burgess, Photonics Spectra, March 2004.
  • Quoted in "On the Docket: Digital Copyright Act, Pharmaceutical Disputes Will Define IP Battles," by Sheri Qualters, Boston Business Journal, September 5-11, 2003.
  • Mentioned in "At the Bar: Lawyering Can Turn Into a Real Lifesaver," by Maggie Mulvihill, Boston Herald, July 1, 2003.
  • Mentioned in "Hearsay" column, by Jeanne Greeley, Massachusetts Lawyer's Weekly, June 30, 2003.
  • Quoted in "Plug Pulled on File-Sharing Students," by Monty Phan, New York Newsday, April 27, 2003.
    Mentioned in "eBay's Behind the Scenes Move," by Victoria Slind-Flor, National Law Journal, August 7, 2000.
  • Quoted in Computer & Internet Lawcast, Vol. 11, No. 12, Week of July 10, 2000.
  • Quoted in "Bid for Fair Practice: Online auctioneer gains business from link site but doesn't want e-shoppers using the back door," by Debra Baker, ABA Journal, April 2000.