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Smart law | Smart clients™

For the last twenty years, John Mansfield has represented and advised clients while practicing at some of the country’s largest firms. John’s extensive experience taught him that success goes to the smartest, not the biggest. It also taught him that clear, forward-thinking legal advice can avoid litigation and help businesses prosper. John started MansfieldLaw so that his clients could benefit from smart law.™  

John carefully considers every legal issue with one goal in mind: to help his client make the smartest business decision. His clients’ business needs drive all aspects of his practice, whether in pre-litigation, trial, appeal, or settlement. He applies the same principles when advising clients on contracts, e-commerce, privacy, and other IP-related issues. Smart law™ requires careful research, innovative strategy, clear communication, and forceful execution. At MansfieldLaw, John uses smart law™ to help his clients achieve excellent business results.

121 SW Morrison, Suite 400, Portland, Oregon 97204               |                971.271.8615                |               john@mansfieldlaw.net

About

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John started MansfieldLaw after eight years
as a litigation partner at Schwabe, Williamson & Wyatt. Based on his reputation among his peers, John has been named an Oregon Super Lawyer in IP litigation since 2009, has received Martindale-Hubbell’s preeminent AV ranking, and was selected as one of the top 1000 patent professionals world-wide for 2013 by Intellectual Asset Management magazine. Before Schwabe, John represented large and small businesses in complex litigation throughout the country, practicing at Morrison & Foerster in San Francisco, Covington & Burling in Washington, D.C., and Corr Cronin in Seattle.

Experience

Schwabe, Williamson & Wyatt, Portland OR
(2005-2013): Intellectual property partner

Litigation:
Lead and local counsel in numerous cases in federal and state courts and arbitrations, on issues including: patents, trademarks, Lanham Act, trade dress, unfair business practices, trade secrets, noncompete agreements, electronic medical records, and software and
technology contracts.

Business and counseling:
Advice on trademark, patent, and copyright licenses; IP strategy;
NDAs; software agreements; distribution agreements; corporate articles; antitrust policies; RAND licensing; e-commerce; privacy;
and software audits.

Representative clients:
Columbia Sportswear, Crimson Trace, Yahoo!, InFocus,
Itanium Solution Alliance, Continua, Videx, Tranxition, Dossia,
Broadcom, Benchmade, Bowtech.

Morrison & Foerster, San Francisco CA
(2001-2005): Senior litigation associate

Litigation:
Numerous cases in federal and state courts and the International Trade Commission on issues including patent infringement, invalidity and unenforceability in hardware and software technologies, and open source software copyrights. Lead associate on major sports team relocation case with issues including damages, sports stadium naming rights, luxury boxes, and personal seat licenses.

Representative clients:
Echostar, BEA, Novell, Altera, City of Oakland, Oakland Coliseum.

Corr Cronin, Seattle WA
(1998-2001): Litigation associate
McNaul, Ebel, Nawrot, Helgren & Vance, Seattle WA
(1997-1998): Litigation associate
Covington & Burling, Washington DC
(1994-1997): Regulatory and litigation associate
District of Columbia Assistant Corporation Counsel, Washington DC (1996)
Honorable Conrad K. Cyr, United States Court of Appeals for the First Circuit (1993-1994): Judicial clerk

Education

Cornell Law School,
J.D., magna cum laude, Order of the Coif (1993)
Articles Editor, Cornell Law Review
Portland State University,
M.S., Political Science (political philosophy) (1990)
University of Oregon,
Bachelor of Music (music theory and composition) (1985)

Professional Service
and Memberships

Admitted

  • Oregon, Washington, California, and District of Columbia (active)
  • United States District Court for Oregon, N.D. California, W.D. Washington, E.D. Washington, E.D. Michigan, E.D. Wisconsin,
    and District of Columbia
  • Court of Appeals for the Ninth Circuit and the Federal Circuit
  • United States Supreme Court

Community Service

Recognition

  • Oregon SuperLawyers: Selected by peers as SuperLawyer in IP Litigation every year since 2009, reserved for top 5% of Oregon lawyers.
  • IAM 1000 for 2013: Ranked as one of the top 1000 patent professionals world-wide by Intellectual Asset Management magazine, which described him as “a very bright guy [,] aggressive and successful.”
  • Martindale-Hubbell AV ranking: Awarded preeminent ranking (5.0 out of 5) by peers for legal ability and ethics.

Services

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MansfieldLaw provides representation in commercial and intellectual property litigation on the West Coast and throughout the country, as well as advice on IP and e-commerce topics.

Commercial Litigation
John litigates all types of commercial cases, including contracts, business torts, licensing disputes, and enforcement of non-compete agreeements.
IP Litigation
John litigates patent, copyright, trademark, and trade secret cases.
Local Counsel
John often serves as local counsel in federal and state cases in Oregon and Washington, helping out-of-state counsel understand local rules and advising about local judges and counsel.
Litigation Consulting
John consults with other litigation counsel, particularly in
the areas of IP law, preparation of technical witnesses, and electronic evidence and discovery.
IP Consulting
John counsels on litigation preparation and avoidance,
and preparation of firm-wide IP strategy.
Tech and Software Contracts
John drafts and consults on software contracts of all kinds, to protect his clients throughout the performance of the contract, and to limit the risks of litigation.
Ecommerce Advice
John advises on many aspects of e-commerce law, including privacy, payments, disclosure requirements under FTC rules, and COPPA.
NDAs
John drafts nondisclosure agreements for clients, including employers, employees, inventors, and corporate entities, to ensure that patent and trade secret rights are protected.
IP Licensing
John drafts patent, trademark and copyright licenses of all kinds.

Presentations & Publications

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Presentations

Local Rule Changes in D. OR
Schwabe, Williamson & Wyatt, Portland, February 2013
Local Rules Update 2012
Oregon FBA and D. OR Clerk’s Office CLE, Portland, April 2012
Intellectual Property for the Non-IP Practitioner
Multnomah Bar Association CLE, Portland, March 2012
Moving Your Discovery Practice from Dial-Up
to Broadband
Oregon Law Institute CLE, Portland, March 2012
The Ethics of E-Discovery
Schwabe, Williamson & Wyatt, Portland, January 2012
Reinventing Patent Law
Oregon State Bar CLE, Portland, March, 2012
Metadata and Public Records Requests
King County Counsel’s Office, Seattle, August 2011
Metadata and Public Records Requests
Washington Public Ports Assn., Tacoma, November 2010
Nice Work, but is it Yours? Owning and Protecting
Your Creativity
Schwabe, Williamson & Wyatt, Portland, October 2010
Ethical Considerations in E-Discovery,
Schwabe, Williamson & Wyatt, Portland, September 2008
Intellectual Property Strategy
Capstone Management Class, Hillsboro, November 2007

Publications

Reinventing Patent Law: The American Invents Act Changes the Rules
Oregon State Bar Bulletin, November 7, 2011
Recent Changes to the Local Rules of Civil Procedure for the District of Oregon: Introduction
For the District of Oregon, V. 15, No. 2, Spring 2011 (Oregon FBA)
Are You Immune From the Patent False Marking Epidemic?
E-blast, October 26, 2010
Top Ten Ways to Protect Your Business’s Intellectual Property
Portland Business Journal, January 8, 2008
U.S. High Court Loosens Restrictions on Tying IP Products
E-blast, March 21, 2006

Updates

Contact

Office:
121 SW Morrison, Suite 400
Portland, Oregon 97204
Get directions
Get in touch:
971.271.8615
john@mansfieldlaw.net