John P. Rondini

Co-Chair Cybersecurity | Patent Litigation | Post-Grant Proceedings

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John’s practice includes representing clients in patent prosecution, litigation, and cyber security and data privacy matters.

In recognizing the pending threat of cyber-incidents his clients may face, John has worked to help develop Brook Kushman’s Cybersecurity and Data Privacy group.  John’s experience includes assessing a client’s current cybersecurity and data privacy protocols and developing a comprehensive incident response plan to ensure compliance with applicable laws.  John also assists his client’s in determining the potential root cause of a breach and what type of notification may be necessary.  John also has experience in addressing information and data security requirements for his clients during both vendor contractual or M&A transactions.

John has also represented client’s litigation matters at the district court and appellate level, as well as, before the International Trade Commission. John has actively managed each stage of litigation from pre-suit pleadings through trial, and through appeal.  John has also represented his client’s needs in negotiating settlements and licensing agreements.

While representing one client’s litigation needs, John became involved in developing and growing Brooks Kushman’s Post-Grant Proceedings team.  As a result, John was part of a team that handled 25 inter partes review proceedings that invalidated hundreds of patent claims being asserted against that client.

John has also managed the patent prosecution docket for clients that range from Fortune 500 companies to individual inventors. John’s prosecution experience includes handling a patent application from an initial draft through allowance. Relying on his litigation and prosecution experience, John’s has also handled numerous patentability and clearance opinions on behalf of his clients.

Prior to joining Brooks Kushman, John worked for nearly ten years as a hardware design and software engineer in the automotive and semi-conductor industries. This work provided John with invaluable experience that helps him further counsel his client’s intellectual property needs.

Representative Matters

Ameranth, Inc. v. Domino’s Pizza, Inc. (Summary Judgment – S.D. California): Successfully defended Domino’s Pizza in a patent infringement suit relating to menu generation and synchronization of data for mobile devices. Obtained summary judgment of unpatentability on a patent asserted against Domino’s and 30 other parties. Also served as counsel for Covered Business Method proceedings where the Patent Trial and Appeal Board held three other asserted patents unpatentable. Case No. 3:11-cv-01810

In re Certain Hybrid Electric Vehicles (ITC):  Trial counsel for Ford Motor Company in multi-patent investigation directed to hybrid electric vehicles. Settlement after trial. Case No. 337-TA-1042

Ford Motor Company v. Paice LLC (PTAB): Represented Ford during the pendency of the 22 inter partes review proceedings challenging the validity of hundreds of claims across five separate patents.  Managed proceedings through final written decision where the Patent Trial and Appeal Board held 273 patent claims were unpatentable. Case Nos. IPR2014-00571, IPR2014-00904, IPR2015-00722, IPR2015-00790

Paice LLC v. Ford Motor Company Representative (Federal Circuit): Successfully represented Ford in numerous appeals challenging the Patent Trial and Appeal Board decisions that had found hundreds of patent claims as being unpatentable. Case No. IPR2016-1412, IPR2016-1746, IPR2017-1387, IPR2017-1263

Ancora Technologies, Inc. v. Apple (Federal Circuit): Represented Ancora in successful appeal to the United States Court of Appeals for the Federal Circuit reversing district court’s claim construction ruling and affirming district’s court’s finding of no indefiniteness. Successfully briefed opposition to Apple’s petition for certiorari to U.S. Supreme Court. Case No. 2013-1414

Robert Bosch LLC v. Corea Autoparts Producing Corporation et al. (E.D. Michigan & ITC): In re Certain Wiper Blades, lnv: Lead trial counsel for Corea Autoparts (CAP) in multiple patent infringement actions concerning “bracket-less” or “beam” style wiper blades. Favorable settlement was reached prior to trial. Case No: 2:11-cv-14019; lnv. No. 337-TA-816

ElectroJet Technologies, Inc. v. STIHL Incorporated (E.D. Virginia): Representing Electrojet in patent lawsuit relating to engine timing control. Case No. 2:17-cv-00224

STIHL Incorporated et al v. ElectroJet Technologies, Inc. (PTAB): Defending Electrojet relating to inter partes review petitions filed by STIHL. Case No. IPR2018-00018, IPR2018-00020

Bose Corporation v. Lightspeed Aviation (Summary Judgment – D. Massachusetts): Represented Lightspeed Aviation relating to aviation noise cancelling headset technology. Managed litigation through summary judgment and negotiated settlement between Bose and Lightspeed. Case No. 1:09-cv-10222

HTC Corporation v. Ancora Technologies (PTAB): Lead counsel for Ancora in securing order from Patent Trial and Appeal Board denying institution of HTC’s covered business method (CBM) petition. Case No. CBM2017-00054

Ancora Technologies v. Apple (Settlement – N.D. California): Represented Ancora in patent infringement lawsuit relating to software security. Managed litigation through favorable settlement. Case No. 4:11-cv-06357

Organizations and Affiliations

American Bar Association

State Bar of Michigan

American Intellectual Property Law Association

Michigan Intellectual Property Law Association

Intellectual Property Owners Association(IPO)

Michigan Inn of Courts

Recognitions

“Rising Star,” Michigan Super Lawyers, Intellectual Property, 2013 – 2018

Media Coverage

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

Publications

Co-Author, “PTAB Designates Two New Informative Decisions Addressing Its Discretion to Deny Review under 35 U.S.C. § 325(d) Based on Prior Examination,” Client Alert, March 2018

Co-Author, “Supreme Court to Insider Availability of Extraterritorial Patent Infringement Damages,” Client Alert, January, 2018.

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

Presentations

Co-Presenter, “2017 IP Litigation and PTAB Year in Review,” BK Webinar, February 2018

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