Thomas W. Cunningham

Patent, Trademark, Copyright, & Trade Secret Litigation

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Tom's litigation practice involves all aspects of intellectual property and Tom has litigated cases on behalf of both plaintiffs and defendants in federal courts all over the country. Tom`s cases have involved a wide range of technologies from automotive and locomotive developments to flashlights, biotechnology, numerous consumer products, dietary supplements and computer software. Tom has also defended clients accused of violating the Digital Millennium Copyright Act.

Tom has an active practice advising clients on the management and licensing of intellectual property. He has also worked closely with clients to help them avoid the intellectual property of others, including actively participating in designing around patents.

Tom builds the trust of his clients by maintaining close contact. He believes that to adequately counsel his clients, it is necessary to develop a full understanding of the clients` business and its goals. By doing what he promises and following up on a regular basis, Tom has been successful in building long-term relationships with his clients.

Recent highlights:

  • Trial counsel in successful patent litigation defending flashlight manufacturer in the Eastern District of Wisconsin with over $30 million at stake; patent was declared unenforceable for inequitable conduct before the PTO and attorneys' fees were rewarded.
  • Represented Fortune 50 automobile manufacturer in successful patent litigation in the Northern District of Florida with over $25 million at stake; patent was declared invalid.
  • Represented Fortune 50 automotive manufacturer in successful trademark litigation resulting in finding of infringement on summary judgment. The finding was affirmed by the Sixth Circuit.
  • Represented large consumer product manufacturer as plaintiff in successful trade dress litigation in the Eastern District of Michigan resulting in favorable settlement.
  • Represented Swiss floral association in trademark infringement action in the Eastern District of Michigan resulting in favorable settlement.
  • Representing patent holder in patent infringement action against Fortune 50 software developer in the Eastern District of Texas.

States where Tom has litigated:

  • Michigan
  • Wisconsin
  • Texas
  • California
  • Florida
  • Ohio
  • Colorado
  • North Carolina

Outside the office, Tom enjoys spending time with his three boys, including both coaching and watching them in various athletics.  He also enjoys following Michigan and Detroit sports.

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

Innovation Ventures, LLC d/b/a Living Essentials, v. N.V.E., Inc. (Jury Trial – E.D. Michigan): Represented Plaintiff Living Essentials in trademark infringement action involving plaintiff’s 5-Hour ENERGY trademark. The jury found that Defendant N.V.E.’s sale of a competing product named “6 Hour Power” infringed Plaintiff’s trademark and awarded $10.6 million in damages. The jury also awarded an additional $11.5 million in disgorgement of N.V.E.’s profits and fully rejected N.V.E.’s $60 million false advertising claim. Case No: 4:08-cv-11867

Hilgraeve Corporation v. Symantec Corporation (Settlement – E.D. Michigan): Counsel for plaintiff in a patent infringement action involving anti-virus software. Secured a $62.5 million settlement for our client on the eve of trial. Case No. 97-cv-40370

RawCar Group, LLC v. Grace Medical et. al. (S.D. California): Successfully represented plaintiff in patent infringement action on two patents. Court found both patents valid and infringed on summary judgment. At trial, jury awarded damages and found defendants willful. Case No. 13-cv-01105

GeoTag, Inc. v. Domino’s Pizza Inc. (Summary Judgment – E.D. Texas): Successfully defended Domino’s Pizza in a patent infringement action in East Texas which also involved over 600 defendants. After the other defendants settled, Domino’s was sole defendant left in case. Court granted summary judgment of non-infringement in favor of Domino’s on five different grounds. Case No. 10-cv-0572

Latentier, LLC v. International Paper Co. (Summary Judgment – E.D. Wisconsin & Federal Cicuit): Lead counsel for International Paper in successful defense of patent infringement action. Case No. 08-C-501

Great American Restaurant Company v. Domino’s Pizza (Jury Trial – E.D. Texas): Lead counsel for Domino`s in successful defense of various trademark claims relating to Domino`s sale of its Brooklyn-style pizza. Plaintiff withdrew claims during trial. Case No. 07-cv-00052

DietGoal, Inc. v. Domino’s Pizza, Inc. (E.D. Virginia): Successfully defended Domino’s in patent infringement action. Patent declared invalid as not directed to patentable subject matter. Case No. 2:12-cv-430

PJC Logistics, LLC v. General Motors and OnStar (Settlement – D. Minnessota): Counsel for GM and OnStar in MDL in Minnesota. Successfully defended patent infringement claim. Case No. 12-cv-00234

In re Certain Automotive Navigational Systems (ITC): Counsel for Ford Motor Co. in successful defense of patent infringement action at the ITC. Investigation No. 337-TA-814

Sunbeam Products, Inc. v. HoMedics, Inc. (Summary Judgment – W.D. Wisconsin): Represented HoMedics in patent infringement action in Wisconsin. Successfully moved for summary judgment of non-infringement. The decision was affirmed after Sunbeam appealed to the Federal Circuit. Case No. 08-cv-376

Armament Systems & Procedures v. Zen Design Group (Bench Trial – E.D. Wisconsin): Lead counsel in successful patent litigation defending flashlight manufacturer in the Eastern District of Wisconsin with over $30 million at stake; patent was declared unenforceable for inequitable conduct before the PTO and attorneys’ fees were rewarded. Case No. 00-C-1257

FTD, Inc. v. Fleurop Interflora (Settlement – E.D. Michigan): Successfully represented Swiss floral association, Fleurop Interflora, in trademark infringement action in the Eastern District of Michigan resulting in favorable settlement. Case No. 01-70954

Benedict v. General Motors (Summary Judgment – E.D. Michigan): Successfully defended General Motors patent litigation in the Northern District of Florida with over $25 million at stake; patent was declared invalid on summary judgment. Case No. 01-73026; 184 F. Supp.2d 11997

General Motors v. The Wildside (Summary Judgment – E.D. Michigan): Successfully represented General Motors in trademark litigation resulting in finding of infringement on summary judgment. The finding was affirmed by the Sixth Circuit. Case No. 00-cv-483

 

Organizations and Affiliations

State Bar of Michigan

Michigan Intellectual Property Law Association

Federal Bar Association in the Eastern District of Michigan

American Bar Association

Washtenaw County Bar Association

University of Michigan Victors Club

Intellectual Property Owner’s Association (IPO)

Publications

Co-author, “Patenting or Copyrighting Software, which to Choose,” Intellectual Property Counselor, February 2000

Co-author, “Pathway for the Formation of D-3 Phosphate Containing Inositol Phospholipids in PDGF Stimulated NIH 3T3 Fibroblasts,” Biochemical Biophysical Research Communications, March 1991

Co-author, “The Phosphatidylinositol Pathway of Platelets and Vascular Cells,” Annals of the New York Academy of Sciences, 1991

Co-author, “Pathway for the Formation of D-3 Phosphate Containing Inositol Phospholipids in Intact Human Platelets,” The Journal of Biological Chemistry, December 1990

Co-author, “Recent Insights in Phosphatidylinositol Signaling,” Cell, November 1990

Co-author, “Treatment of A431 Cells with Epidermal Growth Factor (EGF) Induces Desensitization of EGF-Stimulated Phosphatidylinositol Turnover,” The Journal of Biological Chemistry, 1989

Education

J.D., University of Michigan, cum laude

M.S., Molecular Biology, Washington University

B.S., Biology, University of Michigan

Admissions

U.S. District Court, Eastern District of Michigan 

U.S. District Court, Western District of Michigan

U.S. District Court, Eastern District of Texas 

U.S. District Court, District of Colorado 

U.S. District Court, Western District of New York 

U.S. District Court, Eastern District of Wisconsin

U.S. District Court, Western Dist. of Wisconsin 

U.S. Court of Appeals – 5th Circuit   

U.S. Court of Appeals – 6th Circuit

Michigan Supreme Court  

U.S. Court of Appeals – Federal Circuit