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Home - Merchant & Gould P.C.

John Presper is a registered patent attorney in our litigation group specializing in patent enforcement and defense, particularly in Section 337 investigations before the U.S. International Trade Commission.

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John brings a strong record of success representing both domestic and foreign clients in complex ITC proceedings involving technologies such as medical devices, automotive powertrains, polymers, optics, and smartphones. His precise legal reasoning and practical insights help clients resolve matters with confidence - often at critical moments before or during trial.

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Before joining Merchant &amp; Gould, John was a partner at an IP litigation boutique in Virginia and previously clerked for the Honorable Thomas P. Smith of the U.S. District Court for the District of Connecticut. He earned his J.D. from the University of Connecticut School of Law and holds a B.S. in Chemical Engineering from Bucknell University.

University of Connecticut School of Law, J.D., Intellectual Property, 2003

Bucknell University, B.S. Chemical Engineering, 1997

Washington, D.C. Area

The Federal Circuit recently issued an opinion in <a href="https://www.cafc.uscourts.gov/opinions-orders/24-2335.OPINION.8-1-2025_2553038.pdf">FMC Corp. v. Sharda USA, LLC, No. 24-2335 (Aug. 1, 2025)</a>, vacating a preliminary injunction order barring the defendant from importing, marketing, selling, or distributing its accused insecticide product.



FMC sued Sharda for infringing two patents directed to insecticide compositions and moved for a preliminary injunction. The district court granted the motion based on its construction of “composition” in the asserted claims as limited to “stable compositions” rather than the “well-known unstable compositions” discussed in the prosecution history. The district court rejected Sharda’s invalidity arguments because the asserted prior art disclosed only unstable compositions, which fell outside the scope of the construed claims. The district court also relied on references to “unexpected insecticidal activity” in the specifications of the provisional application and another patent in the same family, which the district court found to have provided adequate disclosure of stable compositions and reasonable certainty as to the scope of the invention. Sharda appealed.



The Federal Circuit vacated and remanded, holding that the district court erred by imposing a stability requirement in the term “composition.” The Court noted that although the provisional application and related patent contained various teachings about stability and stable compositions, “FMC chose to alter the asserted patents’ written specification by deleting every single one of the[se] many references” during prosecution.&nbsp;The Court held that in view of this omission, a skilled artisan would not understand the claimed “composition” to cover only stable formulations.



The Court analogized the case to DDR Holdings, LLC v. Priceline.com LLC, 122 F.4th 911 (Fed. Cir. 2024), where it found that the removal of “services” from a specification that had defined the term “merchant” as “producers, manufacturers, and select distributors of products or services” was highly significant, and a skilled artisan would understand that the term evolved to mean “producers, distributors, or resellers of the goods.” FMC argued that&nbsp;DDR Holdings&nbsp;was limited to situations where such a deletion narrowed a claim term, but the Court found that its reasoning in that case, instead, “turned on the existence of meaningful alterations the patent owner made between the provisional application and the patent-at-issue.”&nbsp;Because the district court relied on an erroneous claim construction, the Court also found error in its anticipation and obviousness analyses.&nbsp;The Court remanded with the instruction to give “composition” its plain and ordinary meaning.

John F. Presper

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