Todd W Dishman

Patent Prosecution | IP Litigation | Post-Grant Proceedings

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todd dishman

Todd’s practice includes a blend of both patent prosecution as well as litigation. His prosecution practice largely centers on mechanical and electromechanical arts. With respect to litigation, Todd is experienced in pretrial discovery, motion practice, and trial preparation. He also has managed significant portions of electronic discovery activities, including administering large document productions.

Todd’s blend of prosecution and litigation has allowed him to successfully represent clients in post-grant proceedings. He has served as counsel on behalf of petitioners and patent owners in many inter partes review proceedings, where he has worked to successfully obtain institutions and positive outcomes on behalf of clients.

Prior to joining Brooks Kushman, Todd was in-house intellectual property counsel for a Fortune 50 company. In addition to drafting patent applications and counseling internal clients concerning IP policies and strategic technologies, Todd had success negotiating agreements for joint research and development, academic partnerships, and technical subscriptions and memberships. This agreement practice included resolving myriad issues including intellectual property licensing terms, data management, and international export compliance. He also has worked on international merger and acquisition teams as IP counsel implementing data loss prevention measures, and management of employee and customer data.

Prior to becoming a patent attorney, Todd worked for an automotive OEM for 10 years as a design engineer for body systems, body structures, powered closures, movable glass, sealing, and electromechanical hardware and controls. Todd designed and launched several vehicle systems from start to finish with a focus on system interfaces. He also became a named inventor for several patented innovations related to body closures and sealing. Todd’s background in automotive mechanical engineering provides him with an insight into the complete product development cycle. This has allowed Todd to understand clients’ engineering processes and product portfolios in support of patent prosecution and litigation matters.

Todd teaches patent law as an adjunct professor at Detroit Mercy School of Law.

Representative Matters

JM Enterprises, Inc. V. The Ames Companies, Inc. (Summary Judgment – M.D. Pennsylvania): Successfully represented AMES Companies in patent infringement matter involving lawn and gardening tools. Soon after having the case transferred to the Middle District of Pennsylvania, the Judge granted defendants motion for summary judgment of noninfringement prior to conducting any discovery. Case No: 1:17-cv-01118

TMC Fuel Injection System, LLC v. Ford Motor Company (Summary Judgment – E.D. Pennsylvania) Lead counsel for defendant Ford in a patent infringement action invloving automotive fuel injection systems. Lead counsel for numerous inter partes reviews filed by Ford based on obviousness. Ford used the proceedings before the Patent Office to encourage the district court to construe the claims similarly and grant summary judgment in Ford’s favor. Obtained affirmance on appeal to the Federal Circuit. Case No. 2:12-cv-04971

Lumalier Corp., v. Infection Prevention Technologies LLC (Fed. Cir.): Lead trial counsel for Infection Prevention Technologies patent infringement action concerning ultraviolet sterilization devices. The District Court granted plaintiff`s summary judgment motion. Decision was upheld on appeal to Federal Circuit. Case No: 14-0138

Aquatic AV, Inc. v. The Magnadyne Corp. (Summary Judgement – N.D. California): Represented Magnadyne in defending against infringment allegations concerning sealed audio-video containers for electronic devices. Obtained summary judgment of invalidity with respect to certain claims. Case No. 3:14-01931

Filed petition for inter partes review challenging the patentability of remaining claims of the asserted patents (IPR2015-00312) forcing favorable settlement for the client before trial.

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. IPR2015-00758, IPR2015-00799

Organizations and Affiliations

State Bar of Michigan

Leadership Council on Legal Diversity, ’18 Fellow

Recognitions

“Up & Coming Lawyer”, Michigan Lawyers Weekly, 2017

Frank Murphy Honor Society

Dean’s Honor Society

Presentations

Education

J.D., University of Detroit Mercy, magna cum laude,

B.S., Mechanical Engineering, Michigan State University