John S. LeRoy

Co-Chair Litigation

Michigan OfficeP (248) 226-2754

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John’s practice focuses on complex patent, trade secret and copyright litigation in software and electronic arts. With over 15 years of patent litigation experience and a Master’s degree in electrical engineering, he has represented clients in many different industries.  John has successfully tried patent cases in federal courts nationwide, and has successfully handled appeals before the Federal Circuit.

Leveraging his extensive software litigation experience, John leads the firm’s FRAND licensing and Open Source Software audit and compliance practice. With respect to FRAND licensing, John works with automotive OEMs and suppliers to address licensing standard essential patents for wireless communication technology. John also advises companies regarding effective use of open source software in their commercial products.  He helps companies develop customized corporate policies and strategies for compliance with applicable open source license terms.  John’s team manages source code audits and works closely with software developers and business managers to properly navigate the various open source license terms.  John’s team has undertaken the audit-and-advice service on complex systems in the automotive, consumer electronics, medical device, and computer industries.

John is devoted to his clients’ business interests. He brings a creative approach to his practice to solve the most complex issues his clients face. For example, John worked with several automotive companies to create the SmartDeviceLink Consortium, a thriving new organization of automotive companies managing an open source platform for communication between smart devices and automobiles.

John is admitted to practice before the United States Supreme Court, Federal Circuit Court of Appeals, the Sixth Circuit Court of Appeals, and the U.S. District Courts in the Eastern and Western District of Michigan, the Eastern District of Texas, the Western District of Wisconsin, and Colorado. John is also a registered patent attorney, and is authorized to practice before the U.S. Patent Office.

John holds a Master’s Degree in Electrical Engineering from the University of Michigan, and an undergraduate degree in Mechanical Engineering from the University of Buffalo, where he graduated cum laude. John’s background in both electrical and mechanical engineering allows him to handle patent cases involving many different technologies.

John is a regular guest lecturer on Patent Fundamentals at the University of Michigan.  John has also personally handled six pro bono civil actions, including a pro bono jury trial.

Outside the office, John enjoys fishing and boating with his family in northern Michigan, playing ice hockey, and racing at the M1 Concourse.  He is also a Pack Master for his local scout pack, which according to John, makes IP litigation look easy. Charities John regularly supports through donation and service include Alternatives for Girls, St. Jude, Gleaners Food Bank, and his local humane society.

Representative Matters

Versata Software v. Ford Motor Company (Ongoing – E.D. Michigan): Lead counsel for Ford in lawsuit involving 8 patents, dozens of alleged trade secrets and multiple copyrights relating to enterprise software for vehicle feature management.  Ford filed declaratory judgment action asserting no liability.  Versata asserted infringement and sought over $1 Billion in damages.  Court granted Ford’s two rounds of Daubert motions, excluding all six of Versata’s damages expert reports.  Court also granted Ford’s motion to dismiss all of Versata’s copyright claims and several of Versata’s patent claims.  Case is ongoing.  Case No. 2:15-cv-10628.

Eagle Harbor Holdings/Medius v. Ford Motor Company (Jury Trial – W.D. Washington): Defended Ford in patent infringement trial in which plaintiff was asserting several patents against Ford’s SYNC infotainment system, and Ford’s automatic parking system. Plaintiffs sought damages of $250 million. Jury found patents not infringed, and awarded no damages to plaintiff. Jury also found that plaintiffs had misappropriated Ford trade secrets. Case No. 3:11-cv-05503

Maxchief v. Plastic Development Group (Settlement – E.D. Michigan) – Lead counsel for Defendant, Plastic Development Group (PDG) in a patent infringement matter regarding blow-molded tables. Successfully transferred the case to E.D. Michigan shortly after the Supreme Courts decision in TC Heartland. Also served as counsel to PDG during inter partes review proceedings to challenge the asserted patents validity. The Patent Trial and Appeal Board instituted on all grounds for all challenged claims. The case settled favorably shortly after transferring to PDG’s home forum and institution of the inter partes review.  Case No. 2:17-cv-12662

WP Banquet, LLC et al. v. Target Corporation et al. (Settlement – C.D. California) – Lead counsel for furniture manufacturer Plastic Development Group and retailer Target accused of infringing four patents. Successfully moved to sever and stay the case for Plastic Development Group’s customer Target. Managed to secure a favorable settlement on behalf of Plastic Development Group shortly thereafter. Case No. 2:16-cv-02082

Kar Enterprises v. Ford Motor Company (Settlement – D. Massachusetts): Counsel for defendant Ford Motor Company in patent infringement lawsuit involving speed limiting system for a vehicle. The case concluded in a favorable settlement for Ford. Case No. 4:11-cv-11200

Ancora Techs. v. Apple, Inc. (Federal Circuit): Counsel for Ancora Technologies patent infringement action concerning computer software. Obtained a positive claim construction ruling for the patent holder on appeal to the Federal Circuit. Case No. 744 F.3d 732

AgentWare Systems, Inc. v. Ford Motor Company (Jury Trial – E.D. Michigan): Defended Ford in trade secrets case relating to computer software for assembly line visualization. AgentWare sought $400 million from Ford in damages. The court and the jury found for Ford, rejecting AgentWare’s claims. Case No. 02-cv-71959

Ford Motor Company and Greenleaf LLC v. Technology Solutions Company (Jury Trial – Wayne County Circuit Court ): Obtained a $2.3 million dollar verdict and judgment on behalf of Ford and a former Ford subsidiary in a breach of warranty action against a software supplier. Case No. 01:123853

z4 v. Microsoft and Autodesk (Jury Trial – E.D. Texas): Represented z4 in a patent infringement case involving two patents relating to technology for reducing software piracy. Infringing products included Microsoft’s Windows and Office software, and Autodesk’s AutoCAD software. Brooks Kushman secured a $133 million jury verdict, and a $25 million enhanced damages award for z4. The Federal Circuit affirmed the jury verdict. Case No. 507 F.3d 1340

Cheetah Omni LLC v. Verizon Services Corporation, et al. (Jury Trial – E.D. Texas): Represented Cheetah Omni in a patent infringement lawsuit concerning fiber optic switching technology. Secured a $5.4 million jury verdict. Case No. 6:11-cv-00160

Omega Patents, LLC v. General Motors LLC et al. (Settlement – N.D. Georgia): Counsel for defendants General Motors and Onstar in a patent infringement lawsuit involving vehicle remote systems. The case concluded in a favorable settlement for defendants. Case No. 1:12-cv-01192

Omega Patents, LLC v. Lear Corp. (Settlement – M.D. Florida): Counsel for defendant Lear Corporation in patent infringement lawsuit involving vehicle remote start technology. The case concluded in a favorable settlement. Case No. 6:07-CV-1422

ST Sales Tech Holdings, LLC v. Ford Motor Company (Summary Judgment – E.D. Texas): Lead counsel for Ford in successful defense of patent infringement action. Case No. CIV.A. 6:07-CV-346

 

Organizations and Affiliations

United States Supreme Court

Intellectual Property Owners (IPO) Association – Open Source Committee

State Bar of Michigan

Recognitions

“IAM Patent 1000 Recommended Individual,” Intellectual Asset Management, 2017 – 2020

“Michigan’s Outstanding IP Litigator of the Year,” Managing Intellectual Property, 2018

“IP Star”, Managing Intellectual Property, 2016-2020

Best Lawyers in America, 2015-2021

“Leader in the Law,” Michigan Lawyers Weekly 2016

“Top Lawyer,” DBusiness Magazine, 2013, 2015-2017, 2019-2021

Michigan Super Lawyers, Intellectual Property, 2014-2020

“Rising Star,” Michigan Super Lawyers, Intellectual Property, 2008-2010, 2012-2013

“Up & Coming Lawyer,” Michigan Lawyers Weekly, 2008

Eastern District of Michigan Pro Bono Service Recognition, 2005, 2007, 2008, 2010 – 2012

Press Releases

    Client Alerts

      Webinars

        Media Coverage

        Featured, “At IAM Auto IP Event, More Evidence of an Industry Struggling with a New SEP Licensing Normal,” IAM Magazine, October 2020

        Featured, “New Injunction Policy Boosts Power of Essential Patents,” Law360, January 2020

        Featured, “The Next Big Patent War? It Likely Won’t Be In Detroit,” Law360, February 2019

        Featured, “Ford Gets Copyright Claims Nixed In Software IP Row,” Law360, January 2019

        Featured, “Automakers need to be ready when licensors come knocking ,” Crain’s Detroit Business, July 2017

        Featured, “2016 Eureka Index: Breaking with Traditional Technologies,” Crain’s Detroit Business, November 2016

        Featured, “Cure for common codes: Devil is in details for open-source auto technology,” Crain’s Detroit Business, June 2013

        Featured, “How to Keep ESI at Bay in E-Discovery,” Corporate Counsel­, November 2012

        Featured, “Career Center Survey Results: Top Partners to Work For – Smaller Legal Markets,” Above the Law, December 2010

        Featured, “How to Keep ESI at Bay in E-Discovery,” Corporate Counsel, November 2010

        Publications

        Co-Author, “Covered Business Method Patent Review Will End as of September 16, 2020.” Client Alert, August 2020

        Co-Author, “Open Source Software (OSS) – What Every Attorney Needs to Know,” Association of Corporate Counsel, October 2014

        Presentations

        Panelist, “FRAND and the Automotive Value Chain,” IPWatchdog SEP2020, November 2020

        Moderator, “The SEP Landscape,” Auto IP Event, Intellectual Asset Management and Brooks Kushman P.C., September 2020

        Co-presenter, “Year In Review: 2019 Intellectual Property Litigation,” BK Webinar, February 2020

        Speaker, “You May Be Exhausted Over Standard Essential Patents (And Not Even Know It),” BK Video Presentation, December 2019

        Co-Presenter, “Navigating License and Joint Development Agreements; Avoiding Litigation,” BK Webinar, September 2019

        Speaker, “Creating Internal Open Source Compliance Strategies: What Every In-House Counsel Should Know,” Association of Corporate Counsel Webinar, July 2017

        Speaker, “Open Source Software: What Every In-house Counsel Should Know,” Association of Corporate Counsel Webinar, February 2017

        Panel Speaker, “Software Patentability,” United States Patent and Trademark Office (USPTO) program at Lawrence Technical University, May 2015

        Speaker, “Open Source Software – The Devil is in the Details,” Society of Manufacturing Engineers’ Big M Manufacturing Convergence, June 2014

        Speaker, “Open Source: Its Free – Terms and Conditions Apply,” ARM TechCon, October 2013

        Speaker, “Open Source Software in the Electric Vehicle,” Electric & Hybrid Vehicle Technology Show, September 2013

        Speaker, “Understanding & Managing Legal Obligations of Open Source Software,” SAE World Congress, April 2013

        Speaker, “Legal Risks Associated with Open Source Software,” Licensing Executives Society: Software Committee, December 2011

        Speaker, “What CIOs Need to Know About the Legal Risks Associated with Open Source Software,” ExecSense Webinar: Intellectual Property, August 2011

        Education

        J.D., University of Dayton

        M.S., Electrical Engineering, University of Michigan, academic excellence

        B.S., Mechanical Engineering, University of Buffalo, cum laude

        Tau Beta Pi Engineering Honor Society

        Pi Tau Sigma Engineering Honor Society

        Practice Area and Industries