Profile
John Gresens brings first-chair jury trial litigation experience to Taylor English. A registered patent lawyer, Mr. Gresens represents clients in federal courts throughout the United States and before the U.S. Patent and Trademark office. He has experience defending and asserting patent rights for both public and private companies, as well as successfully counseling his clients to avoid litigation through settlements and negotiation. With more than 35 years of legal experience, Mr. Gresens has secured hundreds of patents for his clients.
Prior to joining Taylor English, Mr. Gresens served as a partner in an Am Law 100 firm. He counsels both United States companies conducting international business and foreign clients seeking to do business within the United States. He helps guide clients entering new markets through patent enforcement and protection matters, as well as through licensing arrangements.
Mr. Gresens has extensive experience trying cases throughout the United States and internationally. He has first-hand knowledge of U.S. federal courts and the International Trade Commission, where he has obtained jury verdicts and exclusion orders. In addition to his litigation work, Mr. Gresens provides clients with strategic counseling and professional opinions. Beyond trying cases, he has handled inter partes review and International Contested Patent matters. He has also successfully negotiated international patent settlements for sums up to $2 billion.
Throughout his career, Mr. Gresens has gained experience in numerous industries, including chemical technology, biotechnology, material science, pharmaceuticals, nanotechnology, and material technology. In addition to his legal practice, Mr. Gresens served as an adjunct professor at Hamline University School of Law from 1990 to 2000.
Memberships
American Bar Association, Intellectual Property Law Section, Member; Section Council, 2004 – 2008
American Intellectual Property Law Association, AIPLA Quarterly Journal, Editorial Board, Member, 2001 – 2004
Minnesota State Bar Association, Member 1988 - 2019, Board of Governors, 2000 - 2006
Minnesota Intellectual Property Law Association, President, 2004 – 2005
Community Involvement
Art Institute of Chicago, Lifetime Member
Catholic Charities of the Archdiocese of Chicago, Board of Directors
Chicago Public Library Foundation, Board of Directors, 2008 - 2018
Fire Fighter/EMT (Retired)
Practice Highlights
Experience
Represented client in securing exclusion order through trial preserving client’s $50 million annual market position.
Represented client in securing settlement of multi-party/multi-patent litigation allowing underwritten sale of publicly traded corporation.
Represented client in securing fee award from the ITC penalizing adverse parties conduct during investigation.
Represented client in securing $2 billion settlement of multi-patent litigation.
Represented client in securing ITC exclusion order in multi-party/multi-country investigation, and using ITC investigation to suspend actions in foreign national jurisdictions.
Represented patentee in obtaining jury verdict against infringer resulting damages/fees/costs.
Represented patentee in jury trial resulting in multi-million dollar damages after successful defense of client’s patent portfolio.
Represented client in securing settlement in multi-party litigation preserving patentee’s retail market position.
Represented clients in defending against patent troll litigations, with a record of defeating troll patentees’ claims for damages.
Newsroom
Speaking Engagements
- “Enforcement of National Judgments in Foreign Jurisdiction,” World IP Forum 2015January 1, 2015
- “Avoiding Patent Infringement Abroad,” MB IP Days 2014September 1, 2014
- “An Update of Recent Supreme Court and Federal Circuit Decisions on Patent Law or What I did on My Summer Vacation,” ABA-IPL National Round TableSeptember 1, 2010
- “Conflicts and Ethical Challenges,” Corporate Intellectual Property LawConferenceMay 1, 2010
- “Managing IP Assets in a Distressed Economy,” Corporate Intellectual Property LawConferenceMay 1, 2009
- “The Duty of Candor at the USPTO -- How to Make, (or Stay Out of), Trouble," Minnesota Intellectual Property Law Association Annual Meeting 2007May 1, 2007
- “New Developments in U.S. Patent Law -- Tips on How to Manage U.S. Counsel,” Intellectual Property Law Institute of Australia 2007 Annual Conference and Government of Singapore (Exploit Technologies)March 1, 2007
- “Patent Opinions in Theory and Trial Practice: From the Sublime to the Ridiculous,” Minnesota Intellectual Property Law Association CLE/StampedeMay 1, 2006
- “The Impact of Means Language in U.S. Patent Claims,” Melbourne, Australia Intellectual Property SeminarFebruary 1, 2006
- “The Duty of Candor and Inequitable Conduct,"Minnesota Intellectual Property Law Association CLE on Ethics and Elimination of BiasMay 1, 2005
- “Recent Developments In Patent Law - What You Need To Know,” ABA 19th Annual Intellectual Property Law ConferenceApril 1, 2004
- “Business Method Patents Around the World,” American Intellectual Property LawAssociation Annual MeetingOctober 1, 2001
- “Candor before the Courts and the U.S.P.T.O.,” American Bar Association, IntellectualProperty Law SectionJune 1, 2001
- "The Attorney as a Witness," Minnesota Intellectual Property Law AssociationMay 1, 2001
- “An Overview of the Law of Electronic Commerce and Internet Transactions” and “An Overview of Jurisdictional Issues Created By the Internet,” International Law CongressMay 1, 2001
- "International Trends in the Protection of Software" and "The Cross-Border Licensing and Enforcement of Intellectual Property," International Law ConferenceApril 1, 2000
Publications
- "Oral Argument in TheraSense," The National Law JournalDecember 13, 2010
- “Intellectual Property Rights: An Important Economic Tool,” Minnesota Law & PoliJune 1, 2002
Education
Hamline University School of Law, J.D., Dean’s List, 1986
St. John’s University, B.S. in Chemistry, 1981
Bar Admissions
Illinois
U.S. Patent and Trademark Office