John S. LeRoy
Co-Chair Litigation
Michigan OfficeP (248) 226-2754jleroy@brookskushman.com
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 – 2021
“Michigan’s Outstanding IP Litigator of the Year,” Managing Intellectual Property, 2018
“IP Star”, Managing Intellectual Property, 2016-2022
Best Lawyers in America, 2015-2022
“Leader in the Law,” Michigan Lawyers Weekly 2016
“Top Lawyer,” DBusiness Magazine, 2013, 2015-2017, 2019-2022
Michigan Super Lawyers, Intellectual Property, 2014-2021
“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
Co-Chair of Litigation John LeRoy Named One of Michigan’s Go-To Lawyers for Intellectual Property Law
Nine Brooks Kushman Attorneys Ranked In Best Lawyers And Four Ranked In Best Lawyers: Ones To Watch
Nine Brooks Kushman Lawyers Named To 2021 Super Lawyers; One Attorney Honored As Rising Star
Brooks Kushman Recognized As Gold-Standard Firm By IAM Annual Patent 1000 For The Eighth Year In A Row; Six Attorneys Recognized As Top Practitioners
Brooks Kushman Recognized In The Top Tier of IP Firms in the Country By Managing IP; Seven Shareholders Named “IP Stars”
Eight Brooks Kushman Shareholders Named To 2021 Top Lawyers List
Eight Brooks Kushman Lawyers Named To 2020 Super Lawyers; Five Attorneys Honored As Rising Stars
Nine Brooks Kushman Attorneys Ranked in Best Lawyers and Four Ranked in Best Lawyers: Ones to Watch; Frank Angileri Named Lawyer of the Year
Brooks Kushman Recognized As Gold-Standard Firm in the IAM Patent 1000 For The Seventh Year In A Row; Seven Attorneys Recognized As Top Practitioners
Brooks Kushman Recognized In The Top Tier of IP Firms in the Country By Managing IP; Six Shareholders Named “IP Stars”
Ten Brooks Kushman Shareholders Named To 2020 Top Lawyers List
Nine Brooks Kushman Attorneys Ranked As 2020 Best Lawyer; Two Attorneys Recognized As 2020 Lawyer Of The Year
Brooks Kushman Recognized As Gold-Standard Firm By IAM Annual Patent 1000 For the Sixth Year in a Row; Six Attorneys Recognized As Top Practioners
Brooks Kushman Recognized In The Top Tier Of Each IP Rankings Category By Managing IP; Six Shareholders Named “IP Stars”
Six Brooks Kushman Shareholders Named To 2019 Top Lawyers List
Federal Circuit Rules in Favor of Brooks Kushman Client Ancora Technologies, Inc.
Brooks Kushman Ranked In The 2019 Best Law Firms List; Nine Attorneys Ranked As Best Lawyer
Twelve Brooks Kushman Lawyers Named To 2018 Super Lawyers List; Eight Attorneys Honored as Rising Stars
Brooks Kushman Hosts Chinese Delegation in Partnership With Michigan State University
Nine Brooks Kushman Attorneys Ranked As Best Lawyer; Two Attorneys Recognized as Lawyer of the Year
Brooks Kushman Recognized as Gold-Standard Firm By IAM Annual Patent 1000; Six Attorneys Recognized as Top Practioners
Brooks Kushman Recognized in the Top Tier of Each IP Rankings Category by Managing IP; Six Shareholders Named “IP Stars”
Brooks Kushman Shareholder to Speak at IP Counsel Café Annual Silicon Valley Conference; Four Shareholders to Attend
Brooks Kushman Shareholder Recognized as Michigan IP Litigator of the Year
Brooks Kushman Ranked In The 2018 Best Law Firms List; Nine Attorneys Ranked As Best Lawyer
Twelve Brooks Kushman Lawyers Named To 2017 Super Lawyers List; Ten Attorneys Honored As Rising Stars
Nine Brooks Kushman Attorneys Ranked as 2018 Best Lawyers
Gold in IAM Annual Patent 1000
Six Shareholders Named “IP Stars” By Managing IP
Brooks Kushman Ranked in the 2017 Best Law Firms List; Eight Attorneys Ranked as Best Lawyers
Five Brooks Kushman Lawyers Named To 2017 Top Lawyers List
Eight Brooks Kushman Lawyers Named To 2016 Super Lawyers List; Eight Attorneys Honored As Rising Stars
Brooks Kushman Congratulates 7 Attorneys Named as 2017 Best Lawyers In America
Brooks Kushman Attorneys Named “IP Stars” by Managing IP
Brooks Kushman Intellectual Property Litigation Attorney Honored as a 2016 Leader in the Law
Eleven Brooks Kushman Attorneys Named Top Lawyers
Brooks Kushman Recognized as 2016 Best Law Firm
Fifteen Brooks Kushman Attorneys Named 2015 Super Lawyers and Rising Stars
Five Brooks Kushman Attorneys Recognized as 2016 Best Lawyers in America
Brooks Kushman Recognized by U.S. News & World Report as a 2014 Best Law Firm; Five Shareholders Named as Best Lawyers
Sixteen Brooks Kushman Attorneys Named 2014 Super Lawyers and Rising Stars
Brooks Kushman Shareholder John LeRoy to Discuss Open Source License Compliance at ARM TechCon
Twelve Brooks Kushman Attorneys Selected as DBusiness Top Lawyers for 2013
LeRoy Presents on the Legal Risks of Open Source Software
Brooks Kushman Prevails in Patent Infringement Case for $5.4 Million Against Verizon Communications
LeRoy Offers Insight on Cost Effective E-Discovery for Corporate Counsel
The Fab Five: Five Brooks Kushman Lawyers Named to 2010 Super Lawyers List; Two Attorneys Honored as Rising Stars
Brooks Kushman's John LeRoy Named Up & Coming Lawyer by Michigan Lawyers Weekly
Six Brooks Kushman Lawyers Named to 2008 Super Lawyers List; Five Up-and-Coming Attorneys Named Rising Stars
NorthPole Companies Secure Summary Judgment Against Bravo Sports, Inc.
Commerce Township Entrepreneur Prevails in Case Against Microsoft for Willful Infringement of Anti-Piracy Software Patents
Brooks Kushman Lawyers Honored for Local Pro Bono Work
Four Lawyers from Brooks Kushman Named to Intellectual Property Owners Association Committees
Client Alerts
Covered Business Method Patent Review Will End as of September 16, 2020
Federal Court Criticizes Qualcomm Licensing Methods for SEP Patents, Finds Antitrust Violations
In Win for Brooks Kushman Client Ancora Technologies, Federal Circuit Rules that Software Security Invention Is Patent-Eligible
Federal Circuit Panel Reaffirms Single Entity Rule One Infringer Must Be Responsible For Performing All Steps Of Methods Claims
Webinars
Year in Review: 2019 Intellectual Property Litigation
Navigating License and Joint Development Agreements; Avoiding Litigation
Creating Internal Open Source Compliance Strategies
Open Source Software: What Every In-house Counsel Should Know
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, “Global FRAND Issues: Precious Metals, Auto, and IoT,” Global Series Webinar, Federal Circuit Bar Association, October 2021
Panelist, “Billion Dollar Patent Verdicts: How, Why and Will the Federal Circuit Let Them Stand,” Patent Masters™ Litigation 2021, IPWatchdog, June 2021
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
- Automotive
- Autonomous and Mobility Technology
- Consumer Products
- Life Science & Medical Device
- Financial Solutions & IT Services
- Post-Grant Review
- Electrical & Computer Technology
- Industrial Manufacturing
- Entrepreneurs & Start-Ups
- Open Source Compliance
- Covered Business Methods
- Licensing
- Ex Parte Reexamination
- IP Due Diligence
- Compliance & E-Discovery
- Legal IT Consulting
- Inter Partes Review
- Patent Litigation
- Commercial Litigation
- FRAND and Other Licensing Disputes
- Trademarks
- Cybersecurity & Privacy