Morris, Manning & Martin, LLP

John R. Harris is a senior partner in the Technology/Intellectual Property Practice and a registered patent attorney. For the past 30 years, Mr. Harris has advised clients in the electronics, computer, and Internet industries on intellectual property matters. A former computer system design engineer at Harris Corporation, Mr. Harris designed electronic printing and word processing systems.

Mr. Harris has extensive experience counseling clients, preparing and prosecuting patent applications, rendering opinions, and negotiating transactions involving various technologies such as electronic commerce systems, financial services business models and payment systems, telecommunication technologies, video signal processing, data compression, computer architecture, visual systems for flight simulation and video gaming, distributed database systems, and computer software interface technology.

Mr. Harris contributed to early publications on Internet law. He also helped put together and was co-chair of the first computer law legal education program in the Southeast, the Southeastern Computer Law Institute held at Georgia Tech in 1984 and 1985.

Recent Experience

PATENT

• Prepared, filed, and currently prosecuting complex family of patents for a mobile financial services company relating to mobile financial payment systems and processes (using cellphones for billpay and related financial transactions), starting with company at inception in 2005 and invention/technology identification, and assist in sale of company to Qualcomm, Inc. in 2007 for $220+ million.
• Prepared, filed, and currently prosecuting family of patents relating to renewable resource processing equipment and manufacturing processes that involve breaking down small trees and similar long strand fiber sources into “scrimber” and forming mats of scrimber into engineered lumber products.
• Prepared, filed, and currently prosecuting complex family of patents for venture-capital funded recently-graduated ATDC financial auditing and monitoring company, relating to electronic enterprise transaction compliance monitoring systems and processes for use by auditors and fraud detection / case management personnel for enterprises with heterogeneous and distributed ERP systems such as accounting, CRM, email, document management etc.
• Working with MMM IP litigators headed by David Rabin, successfully defended $1.2+ billion privately held diversified building products and materials company from charge of patent infringement, by winning summary judgment motion and obtaining favorable ruling on appeal from Court of Appeals for Federal Circuit, case reported at L.B. Plastics, Inc. v. Amerimax Home Products, Inc., 431 F.Supp.2d 578 (W.D.N.C. 2006), affirmed, L.B. Plastics, Inc. v. Amerimax Home Products, Inc., 499 F.3d 1303 (Fed. Cir. 2007).
• Prepared, filed, prosecuted, and maintained family of 100+ patent applications directed to various aspects of online payment systems, credit card transaction processing, credit card terminals, check processing equipment, encryption based authentication, transaction anonymizing processes, and other financial transaction processing systems, for publicly held $10 billion Fortune 200 company from 1991 until company taken private in late 2007. Work included various opinions and infringement avoidance counseling, invention “mining,” and other related IP work.
• Prepared, filed, prosecuted and maintained family of patents relating to downspout water diversion products and other water diversion products of, through sale of company for $40+ million (circa 1995-2008).
• Advised numerous clients on both buy-side and sell-side of mergers or acquisitions as to IP issues and due diligence, for technologies and products as varied as heavy agricultural equipment, Internet content distribution systems, scanning electronic microscopes, Internet protocol filtering, identity verification using a central biometric authority, and others.

TRADEMARK

• Currently represent Georgia-based agricultural testing laboratory in trademark opposition and cancellation proceedings before the Trademark Trial and Appeal Board (TTAB) in connection with certification marks relating to certification of taste properties of onions.
• Successfully represented same Georgia-based agricultural testing laboratory in various challenges brought by certain Vidalia onion growers in Georgia Dept. of Agriculture, state, and federal court relating to use of the certification marks for onion taste properties, preserving the client’s rights to register and use the marks in its certification and testing services.
• Successfully represented real estate developer in defending a challenge to its “house design” logo in a trademark opposition proceeding, through TTAB trial and argument, decision reported at Red Carpet Corp. v. Johnstown American Enterprises Inc., 7 USPQ2d 1404 (TTAB 1988) (stylized house design for “management of real estate properties for others” held not likely to be confused with stylized house design for real estate brokerage services).
• Represented national franchise owner of mall-based cookie stores for several years in trademark acquisition and portfolio maintenance until acquisition by another cookie company, for various types of products and marketing campaigns, including work with primary franchise counsel on various franchise agreement issues, and defending against various assertions by third parties of trademark rights.

Honors and Affiliations

Atlanta and American Bar Associations (Member, Science & Technology; Patent, Intellectual Property Sections)

State Bar of Georgia (Member and Chairman, Intellectual Property Section, 1990-91; Member, Computer Law Section)

Institute of Electrical and Electronics Engineers

Computer Law Association

Co-Chairman, Georgia Institute of Technology Southeastern Computer Law Institute, 1984 and 1985

Board Member, Goizueta Alumni Association

Board Member, Association of Emory Alumni Board of Governors

Speaking Engagements

• Trademark Fundamentals: Selection and Protection of Valuable Marks December 2nd, 2009 - 12:00 PM
• Cyber-Liability Insurance Discussion Panel August 12th, 2009
• Protecting Intellectual Property – Insights into the Legal Process February 12th, 2009 - 8:30 AM
• Big Changes on the Horizon for Computer and Software Patents November 7th, 2008 - 7:30 AM
• ATDC Brown Bag Lunch “How to Obtain Patent Protection -- Economically and Practically” September 17th, 2008 - 11:30 AM

Webinars

• Managing IP Risks December 14th, 2011
• Patent Reform Bill Webinar September 14th, 2011 - 12:00 PM
• What Does the Supreme Court’s Bilski v Kappos Decision Mean? July 7th, 2010
• Trademark Fundamentals: Selection and Protection of Valuable Marks December 2nd, 2009

Recent News

• MMM’s John Harris Speaks at Entrepreneurs and Innovation Summit January 29th, 2009
• Basics, Fine Points of Intellectual Property Among Topics in New Book October 30th, 2008

Articles

• How Valuable is Your Trademark? List of 500 Most Valuable Worldwide Brands Released
• Managing the Risks of Business Method Patents
• Supreme Court Makes It Harder To Obtain Valid Patents
• Patent Reform 2007 - A Needed Fix or a Threat to American Innovation?
• Willful Patent Infringement and Treble Damages: The Reason for Legal Opinions

Newsletters

• IP NewsFlash June 2011 : Supreme Court Rules that Inventors Initially Own Their Patents, Not Their Employers Bayh-Dole Act Did Not Change This Long-Standing Principle - Stanford University Loses Argument That It Owned Collaborative Faculty Invention
• IP NewsFlash January 2011 : USPTO Announces Pilot Program for Extension of Provisional Patent Application Time Period New Program May Provide More Time to File Regular Patent Application – But The Risks of Provisionals Still Remain
• IP Newsflash December 2010 : Appeals Court in RCT v. Microsoft Determines Software Invention is Not Too "Abstract"
• IP Newsflash September 2010 : First Post-Bilski District Court Decision Finds Internet-Implemented Process Is Not Patentable Subject Matter
• IP Newsflash January 2010 : Supreme Court Decision in Bilski v. Kappos Likely to Affect Software and Medical Method Patents

Books

• Protecting Intellectual Property – Insights into the Legal Process