John P. Rondini

Electrical & Software 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...

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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.

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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

Ameranth, Inc. v. Domino’s Pizza, Inc., Case No. 3:11-cv-01810 (S.D. California 2018) –  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.

Hybrid Electric Vehicles and Components Thereof, Investigation No. 337-TA-1042 (International Trade Commission) – Represented Ford in patent lawsuit relating to hybrid vehicles before the International Trade Commission.

Paice LLC v. Ford Motor Company Representative Case Nos.: 2016-1412, 2016-1746, 2017-1387, 2017-1263 (Fed. Cir. 2016-2017). Successfully represented Ford in numerous appeals challenging the Patent Trial and Appeal Board decisions that had found hundreds of patent claims as being unpatentable.

Ford Motor Company v. Paice, Representative Case Nos.: IPR2014-00571, IPR2014-00904, IPR2015-00722, IPR2015-00790 (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.

In re Certain Wiper Blades, lnv. No. 337-TA-816 (International Trade Commission) – Trial counsel for Corea Autoparts (CAP) in multiple patent infringement actions concerning “bracket-less” or “beam” style wiper blades. Settlement was reached prior to trial.  Related case: Robert Bosch LLC v. Corea Autoparts Producing Corporation et al., Civil Action No. 2:11-cv-14019 (E.D. Mich.))

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

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

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

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

Ancora Technologies, Inc. v. Apple, Appellate Case No. 2013-1414 (Fed. Cir.) – 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.

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

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

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

  • Federal Circuit Rules in Favor of Brooks Kushman Client Ancora Technologies, Inc.
    Tuesday, November 20, 2018

    Southfield, Mich. – On November 16, 2018, the U.S. Court Appeals for the Federal Circuit ruled that a software security patent owned by Ancora Technologies, Inc. is eligible for patent protection. The decision reverses a prior district court ruling. Brooks Kushman shareholders Marc Lorelli, Mark Cantor, John LeRoy and John...

  • Twelve Brooks Kushman Lawyers Named To 2018 Super Lawyers List; Eight Attorneys Honored as Rising Stars
    Monday, September 10, 2018

    SOUTHFIELD, Mich. –Brooks Kushman is pleased to announce that twenty of the firm’s attorneys have been named to the 2018 Michigan Super Lawyers and 2018 Michigan Rising Stars list for their accomplishments in intellectual property law by Super Lawyers Magazine. The annual listing honors outstanding exceptional lawyers from more than 70 practice areas who...

  • Twelve Brooks Kushman Lawyers Named To 2017 Super Lawyers List; Ten Attorneys Honored As Rising Stars
    Tuesday, September 19, 2017

    SOUTHFIELD, Mich. – Brooks Kushman is pleased to announce that twenty-two of the firm’s attorneys have been named to the 2017 Michigan Super Lawyers and 2017 Michigan Rising Stars list for their accomplishments in intellectual property law by Super Lawyers Magazine. The annual listing honors outstanding lawyers from more than 70 practice areas who...

  • 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...

      • IP Provisions Made Simple
        Wednesday, May 23, 2018

        In-house counsel sometimes feel intimidated by IP clauses, especially if they lack the background.  This Webcast will discusses and analyzes IP considerations that arise in common business transactions, including how to identify, address, and analyze key intellectual property issues in a transaction.  The Webcast reviews sample clauses to use, identifies...

      • SAS And Oil States: How New Supreme Court Rulings Will Change Post-Grant Strategy
        Tuesday, May 01, 2018

        The Supreme Court’s recent decisions in SAS and Oil States mark a milestone in the evolution of AIA post grant proceedings. Although the Court affirmed the constitutionality of USPTO administrative review of issued patents, the Court also signaled that AIA trial procedures must adhere closely to the statutory framework. As...

      • When Business Meets IP: Six Strategies for Mitigating Risk of IP
        Monday, April 30, 2018

        In many businesses, intellectual property assets, including patents, copyrights, trademark, and trade secrets, represent critical assets essential to success in the marketplace. Protecting IP assets often requires careful planning and oversight. Missteps can result in the loss of rights or, in some instances, liability for infringing the IP rights of...

      • PTAB and IP Litigation 2017 Year in Review
        Wednesday, January 31, 2018

        2017 was another remarkable year for intellectual property disputes, including IP litigation and proceedings before the USPTO Patent Trial and Appeal Board. Landmark Supreme Court decisions and cases argued, but not yet decided, should cause parties in AIA post grant proceedings to reassess their strategies. In addition, the Federal Circuit’s...

        • Episode 2: Getting IT and Inside Counsel on the Same Cyber Boat
          Friday, April 12, 2019

          John Rondini and Ben Harel discuss the importance of teaching your IT people cybersecurity to enhance your security operations, the silliness of phishing attacks, and the new trend of insider-threat red team engagements. Music is "It Was Just Cold" by Andrew Codeman.

        • Episode 1: The Importance of an Information Security Policy
          Thursday, April 11, 2019

          For their first podcast John Rondini and Ben Harel discuss creating an information security policy, breach management, knowing federal and state cyber laws, managing outside vendors and cyber insurance gotchas.   Featured music is "It Was Just Cold" by Andrew Codeman.

          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 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

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