Morris Manning & Martin, LLP

John Harris

John R. Harris

Senior Counsel
Phone: 404.504.7720
Fax: 404.365.9532
jharris@mmmlaw.com
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John R. Harris is senior Counsel in the Technology/Intellectual Property Practice and a registered patent attorney. For more than 30 years, Mr. Harris has advised clients in the electronics, manufacturing, financial services, medical device, computer, and Internet sectors 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, power protection 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.

Representative Experience

Patent

  • Currently assisting privately-funded client Innovolt, Inc. in developing extensive world-wide patent portfolio directed to voltage and current surge protective components for use in protecting various types of electronic equipment and power supplies.
  • Prepared, filed, and currently prosecuting family of patents for VC-funded client Cardlytics, Inc., directed to transaction-driven targeted marketing systems for use by banks and product marketers.
  • Prepared and filed family of patents for client Vitrue, Inc., directed to social media marketing platform and social relationship management (SRM); company acquired by Oracle, Inc. in 2012.
  • Prepared and filed comprehensive family of patents for Firethorn, LLC 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 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 and filed complex family of patents for Oversight Systems, Inc., 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 and prosecuted large family of 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 First Data Corporation, at the time a 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.
  • 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 agricultural equipment, Internet content distribution systems, scanning electronic microscopes, Internet protocol filtering, identity verification using a central biometric authority, and others.

Trademark

  • Represented VC-funded alternative biofuels company Renmatix, Inc. in determining and establishing world-wide portfolio of trademarks and registrations, including numerous Madrid Protocol international registrations, until company HQ moved out-of-state.
  • Representing VC-funded private company in home services arrangements industry in trademark opposition proceeding involving a similar mark adopted by a direct competitor.
  • Represented 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; Charter Member, Computer Law Section)
  • Institute of Electrical and Electronics Engineers (IEEE); Association of Computing Machinery (ACM)
  • Former Board Member, Goizueta Business School Alumni Association, Association of Emory Alumni (AEA)

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