Headshot image of John LeRoy

John S. LeRoy

Co-Chair Litigation

Michigan

(248) 226-2754

  • Overview
  • Representative Matters
  • Background
  • Featured Content
  • Insights

Industries

  • Automotive
  • Autonomous & Mobility Technology
  • Consumer Products
  • Life Science & Medical Device
  • Financial Solutions
  • IT Services
  • Electrical & Computer Technology
  • Industrial Manufacturing
  • Entrepreneurs & Start-Ups

John’s practice focuses on complex patent, trade secret and copyright litigation in software and electronic arts. With over 15 years of patent litigation experience and a Master’s degree in electrical engineering, he has represented clients in many different industries. John has successfully tried patent cases in federal courts nationwide, and has successfully handled appeals before the Federal Circuit.

Leveraging his extensive software litigation experience, John leads the firm’s FRAND licensing and Open Source Software audit and compliance practice. With respect to FRAND licensing, John works with automotive OEMs and suppliers to address licensing standard essential patents for wireless communication technology. John also advises companies regarding effective use of open source software in their commercial products. He helps companies develop customized corporate policies and strategies for compliance with applicable open source license terms. John’s team manages source code audits and works closely with software developers and business managers to properly navigate the various open source license terms. John’s team has undertaken the audit-and-advice service on complex systems in the automotive, consumer electronics, medical device, and computer industries.

John is devoted to his clients’ business interests. He brings a creative approach to his practice to solve the most complex issues his clients face. For example, John worked with several automotive companies to create the SmartDeviceLink Consortium, a thriving new organization of automotive companies managing an open source platform for communication between smart devices and automobiles.

John is admitted to practice before the United States Supreme Court, Federal Circuit Court of Appeals, the Sixth Circuit Court of Appeals, and the U.S. District Courts in the Eastern and Western District of Michigan, the Eastern District of Texas, the Western District of Wisconsin, and Colorado. John is also a registered patent attorney, and is authorized to practice before the U.S. Patent Office.

John holds a Master’s Degree in Electrical Engineering from the University of Michigan, and an undergraduate degree in Mechanical Engineering from the University of Buffalo, where he graduated cum laude. John’s background in both electrical and mechanical engineering allows him to handle patent cases involving many different technologies.

John is a regular guest lecturer on Patent Fundamentals at the University of Michigan. John has also personally handled six pro bono civil actions, including a pro bono jury trial.

Outside the office, John enjoys fishing and boating with his family in northern Michigan, playing ice hockey, and racing at the M1 Concourse. He is also a Pack Master for his local scout pack, which according to John, makes IP litigation look easy. Charities John regularly supports through donation and service include Alternatives for Girls, St. Jude, Gleaners Food Bank, and his local humane society.

Representative District Court/ITC Matters

Versata Software v. Ford Motor Company (Ongoing – E.D. Michigan): Lead counsel for Ford in lawsuit involving 8 patents, dozens of alleged trade secrets and multiple copyrights relating to enterprise software for vehicle feature management. Ford filed declaratory judgment action asserting no liability. Versata asserted infringement and sought over $1 Billion in damages. Court granted Ford’s two rounds of Daubert motions, excluding all six of Versata’s damages expert reports. Court also granted Ford’s motion to dismiss all of Versata’s copyright claims and several of Versata’s patent claims. Case is ongoing. Case No. 2:15-cv-10628.

Eagle Harbor Holdings/Medius v. Ford Motor Company (Jury Trial – W.D. Washington): Defended Ford in patent infringement trial in which plaintiff was asserting several patents against Ford’s SYNC infotainment system, and Ford’s automatic parking system. Plaintiffs sought damages of $250 million. Jury found patents not infringed, and awarded no damages to plaintiff. Jury also found that plaintiffs had misappropriated Ford trade secrets. Case No. 3:11-cv-05503

Maxchief v. Plastic Development Group (Settlement – E.D. Michigan) – Lead counsel for Defendant, Plastic Development Group (PDG) in a patent infringement matter regarding blow-molded tables. Successfully transferred the case to E.D. Michigan shortly after the Supreme Courts decision in TC Heartland. Also served as counsel to PDG during inter partes review proceedings to challenge the asserted patents validity. The Patent Trial and Appeal Board instituted on all grounds for all challenged claims. The case settled favorably shortly after transferring to PDG’s home forum and institution of the inter partes review. Case No. 2:17-cv-12662

WP Banquet, LLC et al. v. Target Corporation et al. (Settlement – C.D. California) – Lead counsel for furniture manufacturer Plastic Development Group and retailer Target accused of infringing four patents. Successfully moved to sever and stay the case for Plastic Development Group’s customer Target. Managed to secure a favorable settlement on behalf of Plastic Development Group shortly thereafter. Case No. 2:16-cv-02082

Kar Enterprises v. Ford Motor Company (Settlement – D. Massachusetts): Counsel for defendant Ford Motor Company in patent infringement lawsuit involving speed limiting system for a vehicle. The case concluded in a favorable settlement for Ford. Case No. 4:11-cv-11200

Ancora Techs. v. Apple, Inc. (Federal Circuit): Counsel for Ancora Technologies patent infringement action concerning computer software. Obtained a positive claim construction ruling for the patent holder on appeal to the Federal Circuit. Case No. 744 F.3d 732

AgentWare Systems, Inc. v. Ford Motor Company (Jury Trial – E.D. Michigan): Defended Ford in trade secrets case relating to computer software for assembly line visualization. AgentWare sought $400 million from Ford in damages. The court and the jury found for Ford, rejecting AgentWare’s claims. Case No. 02-cv-71959

Ford Motor Company and Greenleaf LLC v. Technology Solutions Company (Jury Trial – Wayne County Circuit Court ): Obtained a $2.3 million dollar verdict and judgment on behalf of Ford and a former Ford subsidiary in a breach of warranty action against a software supplier. Case No. 01:123853

z4 v. Microsoft and Autodesk (Jury Trial – E.D. Texas): Represented z4 in a patent infringement case involving two patents relating to technology for reducing software piracy. Infringing products included Microsoft’s Windows and Office software, and Autodesk’s AutoCAD software. Brooks Kushman secured a $133 million jury verdict, and a $25 million enhanced damages award for z4. The Federal Circuit affirmed the jury verdict. Case No. 507 F.3d 1340

Cheetah Omni LLC v. Verizon Services Corporation, et al. (Jury Trial – E.D. Texas): Represented Cheetah Omni in a patent infringement lawsuit concerning fiber optic switching technology. Secured a $5.4 million jury verdict. Case No. 6:11-cv-00160

Omega Patents, LLC v. General Motors LLC et al. (Settlement – N.D. Georgia): Counsel for defendants General Motors and Onstar in a patent infringement lawsuit involving vehicle remote systems. The case concluded in a favorable settlement for defendants. Case No. 1:12-cv-01192

Omega Patents, LLC v. Lear Corp. (Settlement – M.D. Florida): Counsel for defendant Lear Corporation in patent infringement lawsuit involving vehicle remote start technology. The case concluded in a favorable settlement. Case No. 6:07-CV-1422

ST Sales Tech Holdings, LLC v. Ford Motor Company (Summary Judgment – E.D. Texas): Lead counsel for Ford in successful defense of patent infringement action. Case No. CIV.A. 6:07-CV-346

 

Education

J.D., University of Dayton

M.S., Electrical Engineering, University of Michigan, academic excellence

B.S., Mechanical Engineering, University of Buffalo, cum laude

Tau Beta Pi Engineering Honor Society

Pi Tau Sigma Engineering Honor Society

Organizations & Affiliations

United States Supreme Court

Intellectual Property Owners (IPO) Association – Open Source Committee

State Bar of Michigan

Recognitions

“IAM Patent 1000 Recommended Individual,” Intellectual Asset Management, 2017 – 2022

“Michigan’s Outstanding IP Litigator of the Year,” Managing Intellectual Property, 2018

“IP Star”, Managing Intellectual Property, 2016-2022

Best Lawyers in America, 2015-2023

“Leader in the Law,” Michigan Lawyers Weekly 2016

“Top Lawyer,” DBusiness Magazine, 2013, 2015-2017, 2019-2021

Michigan Super Lawyers, Intellectual Property, 2014-2021

“Rising Star,” Michigan Super Lawyers, Intellectual Property, 2008-2010, 2012-2013

“Up & Coming Lawyer,” Michigan Lawyers Weekly, 2008

Eastern District of Michigan Pro Bono Service Recognition, 2005, 2007, 2008, 2010 – 2012

Industries

  • Automotive
  • Autonomous & Mobility Technology
  • Consumer Products
  • Life Science & Medical Device
  • Financial Solutions
  • IT Services
  • Electrical & Computer Technology
  • Industrial Manufacturing
  • Entrepreneurs & Start-Ups

Presentations

Panelist, “The Evolving Licensing Landscape: SEP and FRAND”, Auto IP USA, IAM, May 2022

Panelist, “Global FRAND Issues: Precious Metals, Auto, and IoT,” Global Series Webinar, Federal Circuit Bar Association, October 2021

Panelist, “Billion Dollar Patent Verdicts: How, Why and Will the Federal Circuit Let Them Stand,” Patent Masters™ Litigation 2021, IPWatchdog, June 2021

Panelist, “FRAND and the Automotive Value Chain,” IPWatchdog SEP2020, November 2020

Moderator, “The SEP Landscape,” Auto IP Event, Intellectual Asset Management and Brooks Kushman P.C., September 2020

Co-presenter, “Year In Review: 2019 Intellectual Property Litigation,” BK Webinar, February 2020

Speaker, “You May Be Exhausted Over Standard Essential Patents (And Not Even Know It),” BK Video Presentation, December 2019

Co-Presenter, “Navigating License and Joint Development Agreements; Avoiding Litigation,” BK Webinar, September 2019

Speaker, “Creating Internal Open Source Compliance Strategies: What Every In-House Counsel Should Know,” Association of Corporate Counsel Webinar, July 2017

Speaker, “Open Source Software: What Every In-house Counsel Should Know,” Association of Corporate Counsel Webinar, February 2017

Panel Speaker, “Software Patentability,” United States Patent and Trademark Office (USPTO) program at Lawrence Technical University, May 2015

Speaker, “Open Source Software – The Devil is in the Details,” Society of Manufacturing Engineers’ Big M Manufacturing Convergence, June 2014

Speaker, “Open Source: Its Free – Terms and Conditions Apply,” ARM TechCon, October 2013

Speaker, “Open Source Software in the Electric Vehicle,” Electric & Hybrid Vehicle Technology Show, September 2013

Speaker, “Understanding & Managing Legal Obligations of Open Source Software,” SAE World Congress, April 2013

Speaker, “Legal Risks Associated with Open Source Software,” Licensing Executives Society: Software Committee, December 2011

Speaker, “What CIOs Need to Know About the Legal Risks Associated with Open Source Software,” ExecSense Webinar: Intellectual Property, August 2011

Publications

Co-Author, “Covered Business Method Patent Review Will End as of September 16, 2020.” Client Alert, August 2020

Co-Author, “Open Source Software (OSS) – What Every Attorney Needs to Know,” Association of Corporate Counsel, October 2014

Insights

Press Releases

Nine Brooks Kushman Attorneys Recognized In Best Lawyers

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Press Releases

Brooks Kushman Recognized as Gold-Standard Firm By 2022 IAM Annual Patent 1000 For The Ninth year In A Row; Eight Attorneys Recognized as Top Practitioners

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Presentations

John LeRoy to Speak on IP Panel at Upcoming Auto IP Event

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Press Releases

Co-Chair of Litigation John LeRoy Named One of Michigan’s Go-To Lawyers for Intellectual Property Law

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Presentations

Co-Chair of Litigation John LeRoy Panelist in Federal Circuit Bar Association Global Series Panel on Global FRAND Issues

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Presentations

Brooks Kushman Shareholder John LeRoy Panelist at IPWatchdog Patent Masters™ Litigation 2021 Event

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Presentations

Brooks Kushman Shareholder John LeRoy Panelist at IPWatchdog SEP2020 Event

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Media Coverage

SEP Panel from Brooks Kushman’s Co-Hosted IAM Auto IP Event Featured in IAM Article

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Blog

Ninth Circuit Reverses Antitrust Ruling Against Qualcomm in FTC v. Qualcomm Inc.

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Media Coverage

In Law360, Brooks Kushman Shareholder John LeRoy Provides an “In the Trenches” Perspective on Challenges Adopters Typically Face Licensing Standard Essential Patents, and a Potential Solution

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Blog

A Musical Solution For Negotiating Wireless FRAND Rates

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Media Coverage

Brooks Kushman Shareholder John LeRoy Discusses New Policies Boosting the Power of Standard Essential Patents in Law360

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Webinar

Year in Review: 2019 Intellectual Property Litigation

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Blog

You May Be Exhausted Over Standard Essential Patents (And Not Even Know It)

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Blog

Nokia’s U.S. Standard Essential Patents are Exhausted Against Qualcomm Chipsets

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Press Releases

Ten Brooks Kushman Shareholders Named To 2020 Top Lawyers List

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Press Releases

Nine Brooks Kushman Attorneys Ranked As 2020 Best Lawyer; Two Attorneys Recognized As 2020 Lawyer Of The Year

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Webinar

Navigating License and Joint Development Agreements; Avoiding Litigation

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Client Alerts

Federal Court Criticizes Qualcomm Licensing Methods for SEP Patents, Finds Antitrust Violations

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Presentations

John LeRoy To Speak On IP Panel At Automotive Legal Summit

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Presentations

Shareholder John LeRoy to Speak at George Washington University Law School Global Anti-Corruption and Compliance Program

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Media Coverage

Brooks Kushman Shareholder Says Auto Makers Likely Won’t Battle One Another Like the “Smartphone Wars”

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Presentations

Brooks Kushman Shareholder to Speak at SDL Developer Conference in Los Angeles

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Press Releases

Twelve Brooks Kushman Lawyers Named To 2018 Super Lawyers List; Eight Attorneys Honored as Rising Stars

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Press Releases

Brooks Kushman Hosts Chinese Delegation in Partnership With Michigan State University

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Press Releases

Nine Brooks Kushman Attorneys Ranked As Best Lawyer; Two Attorneys Recognized as Lawyer of the Year

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Press Releases

Brooks Kushman Recognized as Gold-Standard Firm By IAM Annual Patent 1000; Six Attorneys Recognized as Top Practioners

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Media Coverage

John LeRoy Quoted in IAM Article on Recent Speaking Engagement at IP Auto USA Event

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Presentations

Brooks Kushman Shareholder to Speak on IP Panel at Automotive Legal Summit

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Press Releases

Brooks Kushman Shareholder to Speak at IP Counsel Café Annual Silicon Valley Conference; Four Shareholders to Attend

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Press Releases

Brooks Kushman Shareholder Recognized as Michigan IP Litigator of the Year

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Press Releases

Brooks Kushman Ranked In The 2018 Best Law Firms List; Nine Attorneys Ranked As Best Lawyer

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Press Releases

Twelve Brooks Kushman Lawyers Named To 2017 Super Lawyers List; Ten Attorneys Honored As Rising Stars

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Press Releases

Nine Brooks Kushman Attorneys Ranked as 2018 Best Lawyers

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Media Coverage

John LeRoy Featured in Crain’s Detroit Business

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Webinar

Creating Internal Open Source Compliance Strategies

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Press Releases

Gold in IAM Annual Patent 1000

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Press Releases

Six Shareholders Named “IP Stars” By Managing IP

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Webinar

Open Source Software: What Every In-house Counsel Should Know

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Press Releases

Five Brooks Kushman Lawyers Named To 2017 Top Lawyers List

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Press Releases

Brooks Kushman Ranked in the 2017 Best Law Firms List; Eight Attorneys Ranked as Best Lawyers

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Media Coverage

Brooks Kushman Shareholder Quoted in Crain’s Detroit Business

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Press Releases

Eight Brooks Kushman Lawyers Named To 2016 Super Lawyers List; Eight Attorneys Honored As Rising Stars

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Press Releases

Brooks Kushman Congratulates 7 Attorneys Named as 2017 Best Lawyers In America

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Press Releases

Brooks Kushman Attorneys Named “IP Stars” by Managing IP

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Press Releases

Brooks Kushman Intellectual Property Litigation Attorney Honored as a 2016 “Leader in the Law”

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Press Releases

Eleven Brooks Kushman Attorneys Named Top Lawyers

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Press Releases

Fifteen Brooks Kushman Attorneys Named 2015 Super Lawyers and Rising Stars

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Press Releases

Five Brooks Kushman Attorneys Recognized as 2016 Best Lawyers in America

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Client Alerts

Federal Circuit Panel Reaffirms “Single Entity Rule” – One Infringer Must Be Responsible For Performing All Steps Of Methods Claims

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Presentations

Brooks Kushman Shareholder to Discuss Software Patentability on USPTO Panel

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Press Releases

Brooks Kushman Recognized by U.S. News & World Report as a 2014 “Best Law Firm”; Five Shareholders Named as “Best Lawyers”

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Publications

Brooks Kushman Attorneys Discuss Open Source Software Compliance

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Press Releases

Sixteen Brooks Kushman Attorneys Named 2014 Super Lawyers and Rising Stars

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Media Coverage

Five Brooks Kushman Attorneys Recognized as 2015 Best Lawyers in America ®

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Presentations

Brooks Kushman Shareholders to Present at The Big M Manufacturing Convergence

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Presentations

Brooks Kushman Shareholder John LeRoy to Discuss Open Source License Compliance at ARM TechCon

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Media Coverage

Four Brooks Kushman Lawyers Named to 2013 Super Lawyers List; Ten Attorneys Honored as Rising Stars

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Presentations

Brooks Kushman Shareholder, John LeRoy to Discuss Open Source License Compliance at the Electric & Hybrid Vehicle Technology Expo

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Media Coverage

Brooks Kushman’s LeRoy Discusses Open Sourcing Compliance in Crain`s Detroit Business

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Presentations

LeRoy Presents on the Legal Risks of Open Source Software

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Media Coverage

LeRoy Offers Insight on Cost Effective E-Discovery for Corporate Counsel

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Media Coverage

Six Brooks Kushman Lawyers Named to 2009 Super Lawyers List; Two Up-and-Coming Lawyers Named Rising Stars

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Press Releases

Brooks Kushman’s John LeRoy Named “Up & Coming Lawyer” by Michigan Lawyers Weekly

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Press Releases

Brooks Kushman’s John LeRoy Named “Up & Coming Lawyer” by Michigan Lawyers Weekly

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Press Releases

Six Brooks Kushman Lawyers Named to 2008 Super Lawyers List; Five Up-and-Coming Attorneys Named Rising Stars

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Press Releases

NorthPole Companies Secure Summary Judgment Against Bravo Sports, Inc.

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Press Releases

Commerce Township Entrepreneur Prevails in Case Against Microsoft for Willful Infringement of Anti-Piracy Software Patents

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Press Releases

Brooks Kushman Lawyers Honored for Local Pro Bono Work

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Press Releases

Four Lawyers from Brooks Kushman Named to Intellectual Property Owners Association Committees

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