John Caracappa

Partner

• jcaracappa@steptoe.com
• vCard
• Washington Office

John Caracappa is a partner in the Intellectual Property Group of the Washington office of Steptoe & Johnson LLP.

Mr. Caracappa has focused on patent litigation for over 15 years and has appeared in over 40 patent cases in federal courts across the country, including the Eastern District of Texas, the District of Delaware, and the Court of Appeals for the Federal Circuit.

Mr. Caracappa is a first chair litigator whose clients range from automobile manufacturers to hard disk drive makers to banks. Mr. Caracappa leads cases involving all areas of technologies including wireless communication devices, flash memory devices, online messaging application software, flat panel displays, navigation systems, online banking, hard disk drives, and software. He handles all aspects of these cases, including fact discovery, preparation of witnesses, preparation of expert reports and cross-examination of technical witnesses and experts, Markman presentations, and trial.

Mr. Caracappa also has significant experience in the management of large joint defense groups. His avant-garde experience in the field of patent litigation has earned him the reputation as being a leader in his field, as noted by Legal 500 US for Patent Litigation: International Trade Commission in 2011.

In addition to his litigation practice, Mr. Caracappa has worked extensively in the area of client counseling, reexamination of litigated patents and provided numerous opinions on validity and infringement.

Mr. Caracappa has spoken, both domestically and internationally, on a broad array of patent litigation matters including practicing in the ITC and District Court. He has coordinated and participated in a number of moot court events and is a sought after expert in the field of intellectual property litigation.

Representative Matters

• Beacon Navigation GmbH v. Nissan Motor Co. Ltd. et al (D. Del., 2011) – Representing Nissan Motor Co. Ltd. and Nissan North America Inc. in patent litigation brought by Beacon Navigation GmbH regarding six patents related to Global Positioning System (“GPS”) technology.
• Beacon Navigation GmbH v. Hyundai Motor Company et al (D. Del., 2011) – Representing Hyundai Motor Company, Hyundai Motor America, and Hyundai Motor Manufacturing Alabama LLC in patent litigation brought by Beacon Navigation GmbH regarding six patents related to Global Positioning System (“GPS”) technology.
• Beacon Navigation GmbH v. Kia Motors Corp. et al (D. Del., 2011) – Representing Kia Motors Corp., Kia Motors America Inc., and Kia Motors Manufacturing Georgia Inc. in patent litigation brought by Beacon Navigation GmbH regarding six patents related to Global Positioning System (“GPS”) technology.
• Unified Messaging Solutions, LLC v. Facebook, Inc. et al. (E.D. Tex.) - Representing Regions Financial Corporation and Regions Bank in patent infringement litigation involving online messaging services and application programs.
• Abridge Technology v. MetroPCS Communications, Inc. et al. (E.D. Tex.) - Representing Regions Financial Corporation in a patent infringement litigation involving the use of electronic tokens and related software programs.
• TQP Development, LLC v. Allianz Insurance Co. of North America, et al. (E.D. Tex.) - Representing Geico Corporation and Government Employees Insurance Company in patent infringement litigation involving encrypted data communications.
• Joao Bock Transaction Systems, LLC v. USAmeribank et al. (C.D. Fla.) - Representing EverBank in patent infringement litigation relating to account security for financial services and wireless telephone accounts.  
• Keranos, LLC v. Analog Devices, Inc. et al. (E.D. Tex.) - Representing Samsung Electronics, Inc. in a patent infringement case related to the use and manufacture of integrated circuits using embedded flash memory.
• Site Update Solutions LLC v. Accor North America Inc. et al. (E.D. Tex.) – Representing The Walt Disney Company against allegations of patent infringement involving the update of Internet search engines.
• Parallel Networks, LLC v. Abercrombie & Fitch Co. et al. (E.D. Tex.) – Representing Disney Online, Time, Inc., and Toyota against allegations of patent infringement involving dynamically generated applets in Internet software applications. 
• Tadayon et al v. Coach USA, Inc. et al (D. D.C.) – Representing Coach USA, Inc. in a patent infringement case related to wireless communication devices.  
• TQP Development, LLC v. Bank of New York Mellon Corporation et al (E.D. Tex.) – Representing Time Warner, Inc. against allegations of patent infringement involving encrypted data transmission technology.
• Axis AB et al. v. Vivotek USA, Inc. (E.D. Pa.) – Representing Vivotek USA, Inc. in a design patent infringement litigation relating to security cameras.
• Datatern, Inc. v. Staples, Inc. et al (E.D. Tex.) – Representing Regions Financial Corporation in a patent infringement litigation involving database software.
• SimpleAir, Inc. v. AWS Convergence Technology, Inc., et al. (E.D. Tex.) – Representing Disney Online, ESPN Enterprises, Inc., and American Broadcasting Companies, Inc. in patent infringement litigation relating to the delivery of content, notifications, and updates to mobile computing devices.  
• BTG Int'l Inc. v. Sony Corp., et al, 2:09cv223 (E.D. Tex.) – Representing Sony Corporation and Sony Electronics Inc. in a district court action involving certain flash memory devices including MP3 players, solid state flash drives, digital video cameras, cellular telephone handsets, and flash memory cards.
• Xpoint v. Intel Corporation, et al. (D. Del.) – Representing Sony Corporation, Sony Corporation of America, and Sony Electronics Inc. in a patent infringement case involving two US patents for a data recovery system.  
• MHL Tek v. American Honda Motor Co., Inc. (E.D. Tex.) – Representing American Honda Motor Co., Inc. in patent litigation involving tire pressure sensor monitors.
• LML Patent Corp. v. JP Morgan Chase & Co. et al. (E.D. Tex.) – Representing Regions Bank in a case involving certain payment services.  
• Joao Bock Transaction Systems of Texas, LLC v. AT&T, Inc., et al. (E.D. Tex.) – Representing Regions Bank in a patent infringement case relating to transaction security.
• Stambler v. Regions Bank (E.D. Tex.) – Represented Regions Bank in patent litigation involving secure on-line transactions.  
• TQP Development, LLC v. Merrill Lynch & Co., Inc. et al., Marshall Division, Case No. 2:08-CV-471 (E.D. Tex.) – Represented Regions Bank and Raymond James Financial, Inc. in a case involving encrypted data communications. Obtained dismissal with prejudice upon favorable settlement.
• EasyWeb Technologies, Inc. v. Blip Networks, Inc., et al. (E.D.N.Y.) – Defended Blip Networks, Inc., a leading video hosting, distribution, and media management service, in patent infringement litigation involving the upload of content to a website.
• Felix v. American Honda Motor Co., Inc., et al., (Federal Circuit) and Civil Action No. 05-2525-CM (D. Kan.) – Represented American Honda Motor Co., Inc. in a case involving the In-Bed Trunk of the Honda Ridgeline. Obtained summary judgment in district court in 2007. In April 2009, the Federal Circuit affirmed the decision, issuing a precedential opinion and agreeing with Honda's interpretation of the disputed claim terms in all relevant aspects.  
• Traffic Information, LLC v. Honda et al. (E.D. Tex.) – Represented Honda in a patent case involving in-vehicle navigation systems.
• Trover v. Regions Bank (E.D. Tex.) – Represented Regions Bank in patent litigation involving bank security systems.  
• Adamasu Gebre v. Clarion et al. (D. Utah) – Represented Clarion in a patent case involving touch screen technology.
• SimpleAir v. VeriSign et al. (E.D. Tex.) – Represented VeriSign in patent litigation involving instant messaging services.  
• Mobile Micromedia Solutions v. General Motors (E.D. Tex.) – Represented General Motors in a patent suit related to microprocessor technology.
• Mobile Micromedia Solutions, LLC v. Nissan North America, Inc. (E.D. Tex.) – Represented Nissan North America, Inc. in patent litigation involving automobile audio systems.

Noteworthy

• Recommended by Legal 500 US 2011 for Patent Litigation: International Trade Commission
• Clerk at the International Trade Commission
• Judicial Intern for the Honorable Randall Rader, US Court of Appeals for the Federal Circuit, 1998

Selected Publications

• Effects of the America Invents Act on International Trade Commission Section 337 Proceedings
  December 13, 2011