Headshot image of John Rondini

John P. Rondini

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

Michigan

(248) 226-2913

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

Industries

  • Electrical Engineering

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 District Court/ITC 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

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

Organizations & 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

Industries

  • Electrical Engineering

Presentations

Presenter, “2020 Cybersecurity and Data Privacy Year in Review,” BK Hosted Webinar, February 2021

Co-Presenter, “PTAB Year in Review: New Designated Decisions and Procedures Impact AIA Trial Strategies,” BK Hosted Webinar, January 2021

Moderator, “The Opportunities and the Challenges for Data,” Auto IP Event, Intellectual Asset Management and Brooks Kushman P.C., September 2020

Co-Presenter, “Cybersecurity and Data Privacy Year in Review: Major Breaches, Changes in the Law, and Upcoming Trends,” BK Hosted Webinar, February 2020

Co-Presenter, “PTAB Year in Review – Designated Decisions, Constitutional Challenges, and AIA Procedures,” BK Hosted Webinar, February 2020

Co-Presenter, “The Importance of Cybersecurity During a Merger & Acquisition Transaction,” Cybersecurity & Data Privacy Podcast, January 2020

Co-Presenter, “Cyber Insurance 101: What It Is And Why You Need It,” Cybersecurity & Data Privacy Podcast, November 2019

Co-Presenter, “Managing High-Stakes IP Litigation,” BK Webinar, September 2019

Co-Presenter, “Getting IT and Inside Counsel on the Same Cyber Boat,” April 2019

Co-Presenter, “The Importance of an Information Security Policy,” Cybersecurity & Data Privacy Podcast, April 2019

Co-Presenter, “Legal Trends in Cybersecurity & Data Privacy for Business,” Automation Alley Tech Takeover, April 2019

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

Publications

Author, “CCPA Regulations Now in Full Effect,” Client Alert, August 2020

Author, “Michigan Auto Dealerships Are at Risk of Cyber Attacks During the COVID-19 Crisis—Here’s How to Combat Against the Threats,” Thomas Reuters Westlaw®, April 2020

Author, “Zoom’s Recent Headlines Illustrate Why Privacy and Security are a Critical Element in Product Design,” Blog Post, April 2020

Author, “Limit Cybersecurity Risks When Employees Work From Home Due to COVID-19,” Blog Post, March 2020

Author, “New Federal Legislation Seeks To Appoint A Cybersecurity Coordinator For Each State”, Blog Post, January 2020

Co-Author, “ChargePoint Seeks Supreme Court Review of Patent Ineligibility Ruling in ChargePoint, Inc. v. SemaConnect, Inc. Litigation,” Blog Post, October 2019

Author, “Preparing For A Potential Breach – Tips For Creating An Incident Response Plan,” Blog Post, April 2019

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

Insights

Blog

Arthrex Confirms the Director’s Authority to Take Control of a PTAB Proceeding

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Webinar

Cybersecurity Insights and Trends for Small Businesses

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Client Alerts

Virginia Becomes Second State to Enact Comprehensive Data Protection Law

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Webinar

2020 Cybersecurity and Data Privacy Year in Review

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Webinar

PTAB Year in Review: New Designated Decisions and Procedures Impact AIA Trial Strategies

Read More

Blog

With Threats of Ransomware Attacks Growing in Healthcare Sector, Victims Face Sanctions Risks from Paying Ransom

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Blog

California Residents Are Preparing To Vote On A New and Expanded Data Privacy Law

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Client Alerts

CCPA Final Regulations Now In Full Effect

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Publications

Brooks Kushman Shareholder John Rondini Published in Thomson Reuters Westlaw® Expert Analysis Publication

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Blog

Michigan Auto Dealerships Are at Risk of Cyber Attacks During the COVID-19 Crisis—Here’s How to Combat Against the Threats

Read More

Blog

Zoom’s Recent Headlines Illustrate Why Privacy and Security are a Critical Element in Product Design

Read More

Blog

Limit Cybersecurity Risks When Employees Work From Home Due to COVID-19

Read More

Client Alerts

First Data Breach Lawsuit Filed Based On California Consumer Privacy Act

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Webinar

Cybersecurity and Data Privacy Year in Review: Major Breaches, Changes in the Law, and Upcoming Trends

Read More

Blog

New Federal Legislation Seeks To Appoint A Cybersecurity Coordinator For Each State

Read More

Webinar

PTAB Year in Review – Designated Decisions, Constitutional Challenges, and AIA Procedures

Read More

Blog

ChargePoint Seeks Supreme Court Review of Patent Ineligibility Ruling in ChargePoint, Inc. v. SemaConnect, Inc. Litigation

Read More

Publications

The Countdown Begins on California’s “Internet of Things” Law

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Press Releases

Brooks Kushman Shareholder John Rondini Invited to Join Board of Michigan IP Inn of Court

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Webinar

Technology Licensing Basics – What You Need to Know

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Webinar

Managing High-Stakes IP Litigation

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Blog

Return Mail Inc. v. U.S. Postal Service

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Publications

Preparing for a potential breach – Tips for creating an Incident Response Plan

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Blog

Assignor Estoppel Inapplicable to IPR Proceedings

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Client Alerts

USPTO Adopts Federal Court Claim Construction Standard For All AIA Post Grant Proceedings

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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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Client Alerts

Federal Circuit Clarifies IPR Procedures In Trio Of Cases

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Client Alerts

Federal Circuit Tackles Post-SAS Procedural Tangles – Rules That Patent Owner May Request Remand, Did Not Waive Challenge to Partial Final Written Decision

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Webinar

IP Provisions Made Simple

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Webinar

SAS And Oil States: How New Supreme Court Rulings Will Change Post-Grant Strategy

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Webinar

When Business Meets IP: Six Strategies for Mitigating Risk of IP

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Client Alerts

Supreme Court Upholds Constitutionality of IPR Proceedings, But Strikes Down Partial PTAB Final Written Decisions

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Client Alerts

PTAB Designates Two New Informative Decisions Addressing Its Discretion to Deny Review under 35 U.S.C. § 325(d) Based on Prior Examination

Read More

Webinar

PTAB and IP Litigation 2017 Year in Review

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Client Alerts

Supreme Court to Consider Availability of Extraterritorial Patent Infringement Damages

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Blog

PTAB Appoints Two New Informative Decisions Addressing IPR Filing Issues

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Client Alerts

Federal Circuit Rejects Some USPTO Requirements for Amending Claims During IPR Proceedings

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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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Client Alerts

Statements Made in IPR Preliminary Responses

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Client Alerts

Supreme Court Limits Design Patent Damages, Vacates Apple’s $399 Million Award Against Samsung

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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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Client Alerts

Federal Circuit Rules That PTAB May Base AIA Trial Decision on Facts Outside Petition for Review

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Client Alerts

USPTO Issues Scaled-Down Revised Rules For PTAB Trials

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Media Coverage

Ford Wins More Hybrid Vehicle Patent Appeal Board Reviews- Brooks Kushman

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Media Coverage

Brooks Kushman IP Litigation team mentioned in Law360

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Press Releases

Fifteen Brooks Kushman Attorneys Named 2015 Super Lawyers and Rising Stars

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Press Releases

Brooks Kushman Named One of the Most Active Firms at the PTAB During the First Half of 2015

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Press Releases

Sixteen Brooks Kushman Attorneys Named 2014 Super Lawyers and Rising Stars

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Publications

Murphy and Rondini Review Liberty Mutual Covered Business Method Cases in Law360 Article

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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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Publications

How to Sell and License Post-Quanta

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