John M. Halan
Patent & Trade Secret Litigation & Post-Grant Proceedings
Michigan OfficeP (248) 226-2735jhalan@brookskushman.com
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
Press Releases
Six Brooks Kushman Shareholders Named To 2019 Top Lawyers List
Twelve Brooks Kushman Lawyers Named To 2018 Super Lawyers List; Eight Attorneys Honored as Rising Stars
Twelve Brooks Kushman Lawyers Named To 2017 Super Lawyers List; Ten Attorneys Honored As Rising Stars
Four Brooks Kushman Attorneys Recognized as 2014 Top Lawyers
Twelve Brooks Kushman Attorneys Selected as DBusiness Top Lawyers for 2013
Brooks Kushman Prevails in Patent Infringement Case for $5.4 Million Against Verizon Communications
Halan Contributes Chapter to Book on Intellectual Property Licensing Strategies
Brooks Kushman's John Halan Named to Lawrence Tech Advisory Board
NorthPole Companies Secure Summary Judgment Against Bravo Sports, Inc.
Child's Play Key to New Brooks Kushman Ad Campaign Kid Inventors Bring the Joy of Discovery Back to IP
Client Alerts
Supreme Court Affirms “Broadest Reasonable Interpretation” Claim Construction Standard and Limited Appeals For AIA Trials
Supreme Court Relaxes Standard for Willful Infringement – Higher Risk of Enhanced Damage Awards May Require Clients to Reassess Strategies
“Defend Trade Secrets Act” Signed Into Law Effective May 11, 2016
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