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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 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.

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.

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.

Before joining Merchant, 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.

Before joining Merchant, 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. 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 DDR Holdings 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.” Because the district court relied on an erroneous claim construction, the Court also found error in its anticipation and obviousness analyses. The Court remanded with the instruction to give “composition” its plain and ordinary meaning.

CAFC Vacates Preliminary Injunction in Insecticide Case

Last week, the U.S. Court of Appeals for the Federal Circuit issued a precedential opinion in <a href="https://www.cafc.uscourts.gov/opinions-orders/23-2427.OPINION.2-2-2026_2641318.pdf">Range of Motion Products, LLC v. Armaid Company Inc., No. 2023-2427 (Feb. 2, 2026)</a>, affirming summary judgment of noninfringement entered by the U.S. District Court for the District of Maine. 



Range of Motion (“RoM”) sued Armaid alleging infringement of U.S. Design Patent No. D802,155, which claims “[t]he ornamental design for a body massaging apparatus”.  RoM’s “Rolflex” device embodies the patented design, while Armaid’s “Armaid2” was the accused product. 



 On appeal, RoM challenged the district court’s claim construction, arguing that it improperly eliminated structural elements—specifically the clamshell shape of the arms—from the claimed design.  The Federal Circuit disagreed, holding that the district court properly identified the clamshell shape of the arms as functional—enabling the device to open and close around a user’s limb for massage—while considering that “other features ‘appear to be largely ornamental,’ such as ‘the thick ridged outline’ of the design (which includes the arms).”  The Court rejected RoM’s assertion that “all elements depicted by the solid lines [in the D’155 patent drawings] are ornamental, and all elements depicted by the dotted lines are functional.”



Regarding infringement, the Court applied the “ordinary observer” test—which asks whether an observer familiar with the prior art would find the claimed and accused designs “substantially the same”—and found that the district court’s analysis properly focused on the designs’ overall ornamental appearance and whether the nonfunctional, ornamental aspects of the two designs were “plainly dissimilar.”  The Court noted that key differences between the D’155 patent and Armaid2 include: (1) the hinge apparatus of the Armaid2 that makes up proportionally more of the device and forms the entire base of the product; (2) the Armaid2’s “overall segmented appearance,” unlike the D’155 patent; (3) the Armaid2’s larger size-selection slots; and (4) the blunter, less rounded end of the hinge apparatus in the Armaid2. The Court criticized RoM’s approach of “focusing primarily on the shapes of the arms” for “failing to ensure that functional aspects of the design do not play a role in the infringement analysis.”



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Chief Judge Moore dissented, stating that a reasonable jury could find the designs substantially similar, and criticizing the Court’s “plainly dissimilar/sufficiently distinct” framework as improperly shifting the focus of the infringement analysis from similarities to differences between the claimed and accused designs.

John F. Presper

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