John M. Halan

Patent & Trade Secret Litigation & Post-Grant Proceedings

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John M. Halan has been practicing with the intellectual property law firm of Brooks Kushman P.C. since 1990, where he has been a shareholder for many years and is the head of the firm`s trade secrets group.

As a litigator, he specializes in high-stakes intellectual property litigation, including patent, trade secret, and related commercial litigation.  He has tried many cases as lead or team trial counsel and has also successfully argued cases before the United States Court of Appeals for the Federal Circuit. He also has considerable experience handling various matters before the PTAB, including inter partes reviews and appeals.

In addition to litigation, John has negotiated and prepared numerous intellectual property and commercial agreements, including patent and technology license agreements.  He has also prepared many infringement and validity patent opinions and has been called upon to act as a patent dispute mediator.

As a licensed professional engineer, prior to attending law school and joining Brooks Kushman, John managed a number of industrial construction projects from initial design through to completion.

Representative Matters

Bravo Sports, Inc. v. North Pole (US) LLC. et al. (Summary Judgment – C.D. California):  Bravo alleged NorthPole was infringing a Bravo patent relating to collapsible canopies.  As lead counsel for NorthPole, John moved and argued for summary judgment of non-infringement and the case was ultimately dismissed. Case No. 8-05-cv-00418

Syncorp v. Lear Corporation (American Arbitration Association): Syncorp alleged Lear  misappropriated trade secrets and breached a supply agreement relating to blow molded cargo covers and sought over $40 million in damages.  Lear, represented by John, counterclaimed for breach of contract.  The arbitration panel found for Lear. American Abritration No. 54-181-00553-97

Lear Corporation v. Bertrand Faure Technical Center, Inc. (Settlement – E.D. Michigan):  Lear sued Bertrand Faure for infringement of a patent directed to self-aligning head rest technology.  The trial court granted summary judgment of non-infringement in favor of Bertrand Faure.  Lear, represented by John, appealed to the Federal Circuit and obtained a reversal.  The case subsequently settled. Case No. 2-00-cv-72895

Expeditors International v. Vastera, Inc. (Jury Trial – E.D. Michigan):  In a case watched closely by the customs industry (See Customs Brokerage Industry Narrowly Escapes Restructuring, Intellectual Property Litigation Reporter, October 4, 2004), Expeditors alleged Vastera had misappropriated over 325 trade secrets relating to the customs brokerage industry and sought $150 million in  damages.  John represented Vastera.  The jury found for Vastera and the Court ordered Expeditors to pay over $400 thousand in fees to Vastera. Case No. 2 -01-cv-71000

Wiand v. Minnesota Mining and Manufacturing Co. (3M) (Settlement – E.D. Michigan):  John represented Wiand in suing 3M for infringement of a patent relating to abrasive pads.  After establishing liability and damages through aggressive discovery, the matter was resolved on terms that are confidential. Case No. 99-72870

TracTec, Ltd. v. Lear Corporation (6th Cir. Michigan): TracTec alleged that Lear had misappropriated trade secrets and breached a confidentiality agreement relating to racing car seat technology.  John represented Lear.  After aggressively litigating the case over several months, TracTec agreed to a voluntary dismissal.

Bombardier, Inc. v. Venture Industries Corp. (Settlement – E.D. Michigan):  Bombardier sued Venture, alleging claim and delivery for certain mold tooling.  Venture, represented by John, countersued, asserting misappropriation of trade secrets relating to the molding of snowmobile components in thermoplastic olefin (TPO), breach of confidentiality agreements, various liens, unjust enrichment and fraud.  Bombardier eventually settled and paid damages sought by Venture. Case No. 2-99-cv-70072

Smith v. Johnson Propeller Co., Inc. (Summary Judgment – E.D. Michigan):  Smith alleged infringement of a patent relating to boat propeller blades.  In representing Johnson Propeller, John successfully moved and argued for summary judgment based on patent invalidity. John was also successful in having that decision affirmed by the Federal Circuit.

Accurate Detailing v. Haven Busch Co. (17th Cir. Michigan):  John represented Accurate Detailing in a bench trial seeking damages from Haven Busch for construction extras.  The claims were based on breach of contract and unjust enrichment.  The Judge found for Accurate Detailing and awarded all damages requested.

Organizations and Affiliations

State Bar of Michigan

Michigan Intellectual Property Law Association

Intellectual Property Owner’s Association (IPO)

Licensing Executives Society

Lawrence Technological University, Advisory Board Member, 2008 – Present

Recognitions

“Top Lawyer,” DBusiness Magazine, 2012-2016, 2018-2019

Michigan Super Lawyers, Intellectual Property, 2017-2018

Media Coverage

Featured, “Top IP Law Firms selected by Fortune 100 Companies.” IP Law & Business, January 2010

Featured, “IP Law Bulletin,” Crain’s Detroit Business, January 2005

Featured, “Innovative Ad Campaign,” Detroit Legal News, February 2004

Publications

Author, “Blog: Attention Businesses: The Defend Trade Secrets Act Demands Your Attention,” DBusiness Magazine, May 2016

Author, “Patent Protection,” DBusiness Magazine, January 2013

Author, “The ‘Secrets’ to Maintaining a Sometimes-Unrecognized Business Asset: Trade Secrets,” Bloomberg Law Report, February 2012

Book Chapter Author, “Drafting a License Agreement with an Eye to the Future,” Inside the Minds: Intellectual Property Licensing Strategies, February 2011

Author, “Filing Down the Design Patent Infringement Test to Ensure a Picture Is Worth a Thousand Words,” IPLS Proceedings, Vol. 20, Issue 1, February 2009

Co-author, “Protecting the Crown Jewels: IUntangible Company Assets-Trademark Protection,” 2008-2009 Michigan Business Review, August 2008

Author, “Protecting Trade Secrets: Steps Every Trade Secret Owner Should Know,” Employee Relations Law Journal, December 2004

Presentations

Master Class Panelist, “Tackling The Changing Patent Landscape in The U.S.– A  Proactive Guide to Enforcement/Defensive Measures To Succeed,” Best Practices in Intellectual Property, March 2018

Panelist, “Trade Secrets: How to Implement an Effective TS Policy in an Israeli Company,” Best Practices in Intellectual Property, March 2018

Co-presenter, Legal Issues for Michigan Professional Engineers seminar, July 2006 

Guest lecturer, “Intellectual Property,” Lawrence Technological University, 1994 – Present

Education

J.D., Wayne State University, Law Review

B.S., Civil Engineering, Michigan State University, with High Honors