John P. Rondini

Shareholder

Michigan, Washington D.C. OfficeP (248) 226-2913

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John’s practice focuses on intellectual property prosecution and litigation with a primary emphasis on patent litigation, patentability opinions, and infringement investigation. John also has extensive experience in the preparation and prosecution of patent applications in the electrical and electro-mechanical arts.  John further has experience in... see more >

John’s practice focuses on intellectual property prosecution and litigation with a primary emphasis on patent litigation, patentability opinions, and infringement investigation. John also has extensive experience in the preparation and prosecution of patent applications in the electrical and electro-mechanical arts.  John further has experience in performing due diligence analysis.

John is a registered patent attorney authorized to practice before the U.S. Patent and Trademark Office. He has represented clients from Fortune 500 companies to start-ups and individual inventors in a variety of industries. He has represented clients across a variety of technologies and industries including, automotive, computer, software, telecommunication, medical device, and alternative energy.

John has entered appearances as trial counsel before multiple federal district courts throughout the country, including, California, Massachusetts, Michigan, and Texas.  John also has experience litigating before the International Trade Commission in Section 337 proceedings.  John’s litigation experience further includes Post-Grant Proceedings before the U.S. Patent and Trademark Office.

Prior to joining Brooks Kushman, John spent nearly ten years as a hardware and software design engineer. More particularly, he has worked for both a large computer company and a small design company as a lead application specific integrated circuit (ASIC) design engineer. While working at such companies, John’s tasks involved both front end and back end design implementation of semiconductor processors containing over 1 million logical circuits. His tasks also included logical placement and timing analysis of each microprocessor design. John’s work experience has helped him gain valuable knowledge of the computer, telecommunication, and aerospace industries.

John has also gained valuable engineering expertise in hardware design and software implementation while working at several tier-one automotive companies. This hands-on experience included the design and implementation of user interfaces for touch screen applications and data acquisition hardware. < see less

Education

J.D., University of Detroit Mercy School of Law, cum laude

B.S., Electrical Engineering, University of Detroit Mercy, magna cum laude, Tau Beta Pi

Representative Matters

Bose Corporation v. Lightspeed Aviation, (D. Mass. 2009-2011)
Defended Lightspeed Aviation in patent infringement lawsuit in the District of Massachusetts relating to aviation noise cancelling headset technology. Managed litigation through summary judgment and negotiated settlement between Bose and Lightspeed.

Robert Bosch LLC v. Corea Autoparts Producing Corporation et al., (D. Nev. & E.D. Mich 2011-2013.); In re Certain Wiper Blades, (International Trade Commission 2012-2013) -Defended Corea Autopart in multiple patent infringement actions concerning “bracket-less” or “beam” style wiper blade technology. Managed litigation through pre-trial briefing and settlement.

American Bar Association

State Bar of Michigan

American Intellectual Property Law Association

Michigan Intellectual Property Law Association

Intellectual Property Owners Association(IPO)

“Rising Star,” Michigan Super Lawyers, Intellectual Property, 2013 – 2015

  • Eight Brooks Kushman Lawyers Named To 2016 Super Lawyers List; Eight Attorneys Honored As Rising Stars
    Thursday, September 15, 2016

    SOUTHFIELD, Mich. – Brooks Kushman is pleased to announce that several of the firm’s attorneys have been named to the 2016 Super Lawyers and Rising Stars list for their work in intellectual property law. The annual listing honors outstanding lawyers from more than 70 practice areas who have attained a high degree of peer...

  • Fifteen Brooks Kushman Attorneys Named 2015 Super Lawyers and Rising Stars
    Wednesday, September 09, 2015

    SOUTHFIELD, Mich. – Brooks Kushman is pleased to announce that several of the firm’s attorneys have been named to the 2015 Super Lawyers and Rising Stars list for their work in intellectual property law. The annual listing honors outstanding lawyers from more than 70 practice areas who have attained a...

  • Brooks Kushman Named One of the Most Active Firms at the PTAB During the First Half of 2015
    Monday, August 31, 2015

    Southfield, Mich. – Brooks Kushman was named as one of the most active firms in the Patent Trial and Appeal Board (PTAB) in a special report published by Managing IP during the first half of 2015. In addition to the firm’s listing, four of the firm’s attorneys were listed in...

  • Brooks Kushman Congratulates Six New Shareholders
    Sunday, January 04, 2015

    Southfield, Mich. - Brooks Kushman is pleased to announce that Erin Bowles, Molly Crandall, Brian Doughty, John Rondini, Christopher Smith, and Martin Sultanahave all been promoted to Shareholders of the firm. Erin Bowles focuses her practice on domestic and foreign patent prosecution. Her practice also includes patentability investigations, infringement and right-to-use analysis and IP transactions and...

  • Sixteen Brooks Kushman Attorneys Named 2014 Super Lawyers and Rising Stars
    Monday, September 08, 2014

    SOUTHFIELD, Mich. – Brooks Kushman is proud to announce that several of the firm`s attorneys have been named to the 2014 Super Lawyers and Rising Stars list for their work in intellectual property law. The annual listing honors outstanding lawyers from more than 70 practice areas who have attained a...

    • Statements Made in IPR Preliminary Responses May Trigger Later Prosecution Disclaimer
      Tuesday, May 16, 2017

      Aylus Networks, Inc. v. Apple Inc., No. 2016-1599 (Fed. Cir. May 11, 2017) In a case of first impression, the U.S. Court of Appeals for the Federal Circuit has held that a patent owner’s statements made in a preliminary statement during an AIA inter partes review (IPR) proceeding may create prosecution...

    • Supreme Court Limits Design Patent Damages, Vacates Apple’s $399 Million Award Against Samsung
      Wednesday, December 07, 2016

      In a 8-0 ruling, the U.S. Supreme Court ruled that damages for infringement of design patents under 35 U.S.C. § 289 can be limited to the defendant’s “total profits” from the article of manufacture that contains the patented design, which may only be one component of a commercial product, rather than...

    • Federal Circuit Rules That PTAB May Base AIA Trial Decision on Facts Outside Petition for Review
      Thursday, June 23, 2016

      The U.S. Court of Appeals for the Federal Circuit recently affirmed a decision by the USPTO Patent Trial and Appeal Board (PTAB) invalidating two patents after an inter partes review proceeding, even though the decision partially rested on references and evidence not disclosed in the challenger’s petition for review or...

    • USPTO Issues Scaled-Down Revised Rules For PTAB Trials
      Tuesday, April 05, 2016

      On April 1, 2016, the U.S. Patent and Trademark Office published final rules modifying some procedures used in AIA trials before the Patent Trial and Appeal Board (PTAB). The revised rules arise from comments received from practitioners over the last two years that existing PTAB procedures put patent owners at...

      Featured, “Ford wins PTAB challenge over hybrid vehicle tech,” Law360, November 2015

      Featured, “Ford Wins More Hybrid Vehicle Patent Appeal Board Reviews,” Law360, November 2015

      Featured, “Ford Wins Another PTAB Review Of Paice Hybrid Car Patent,” Law360, November 2015

      Featured, “USPTO Rules For Ford In Dispute Over Hybrid Vehicle Tech,” Law360, September 2015

      Featured, “2013 Rising Stars List,” Super Lawyers, September 2013

      Co-Author, “PTAB Confirms Viability of Priority-Based Challenges,” Law360, February 2014

      Co-Author, “How to sell and license post-Quanta,” Managing IP, January 2010