John S. Torkelson is senior counsel at Carter Scholer. John is a patent attorney registered to practice before the United States Patent and Trademark Office.
John represents clients in disputes involving catastrophic construction failures, copyrights, director and officer liability and corporate governance, emerging technologies, engineering and construction defects, insurance and surety coverage, patents, products liability, trademarks, and trade secrets.
John’s vast experience includes acting as lead counsel in the following representative matters involving patent infringement: representing a defendant in case involving internet communication technology in the Eastern District of Texas; defending multiple companies in litigation involving consumer products packaging technology in the Eastern District of Texas, representing the manufacturer of patented automobile parts against infringer in the Eastern District of Michigan and in multiple reexaminations before the U.S. Patent and Trademark Office; and acting as lead counsel for the defense in suit brought by non-practicing entity involving DVD technology in the Eastern District of Texas.
John has extensive experience in alternative dispute resolution, and has been selected to serve on the American Arbitration Association’s National Panel of Construction Neutrals.
Honors and Distinctions:
- Martindale-Hubbell AV® PreeminentTM (5.0 out of 5) Peer Review Rating
Professional Associations and Community Involvement:
- State Bar of Texas
- Dallas Bar Association
- American Bar Association
- American Intellectual Property Law Association
- Associated General Contractors
- Associated Builders' and Contractors
- Licensed as a Professional Engineer, 1976
Published Works and Speaking Engagements:
- "Forum Selection and Local Rules," University of Texas 13th Annual Advanced Patent Law Institute, Austin, Texas, October 2008.
- "Ethics for Professional Engineers," Half Moon CLE presentation for Texas mandatory education credits for Professional Engineers, 2006.
- "Calculating Reasonable Royalty Damages for Infringement of Early-stage Technology Patents," The Sedona Conference Journal, Fall 2003.
- Sedona Conference on Pre-filing Investigation of Process Patents, Panelist, November 2002.
- "Bonds and Liens in Construction Work in Texas," Associated General Contractors, Dallas Chapter – Leadership Conference, 2000.
- "Intellectual Property and Competing Ownership Claims," Texas Lawyer, September 2000.
- "The Current Status of the Manifest Intent Requirement of Financial Institution Bonds," Surety Claims Institute Conference, 1997.
- Author, Selected Chapters on Texas Construction Law Edition of What Do You Do When…, Published by the National Business Institute, 1996.