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John Rondini is a multi-faceted attorney with extensive knowledge in litigation, negotiating settlements, and licensing agreements.

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

Safe Driving Technologies, LLC v. Ford Motor Company (Patent Trial and Appeal Board): Served as Ford Motor Company’s litigation and Patent Trial and Appeal Board (PTAB) counsel, recently defended Ford in a patent infringement case filed by Safe Driving Technologies, LLC, which alleged Ford infringed four patents related to telematic safety features. Under Brooks Kushman’s direction, Ford filed Inter Partes Reviews (IPRs) against the four asserted patents. The PTAB ultimately held 43 claims unpatentable, with the plaintiff dedicating an additional 10 claims to the public. Brooks Kushman also represented Ford in the appeal, where the judgment was affirmed. Case No. 1:21-cv-00064

Smartrend Manufacturing Group, Inc. v. Opti-Luxx Inc. (Jury Trial – W.D. Michigan): On November 29, a jury in the U.S. District Court for the Western District of Michigan found that Opti-Luxx, Inc., willfully infringed two of our U.S. Patents on LED bus signs. The conclusion of this 2-year-long case against Opti-Luxx came with the jury’s unanimous verdict confirming that both of our client’s patents had been infringed, that Opti-Luxx willfully infringed those patents and that lost profits damages were owed to the client for infringement of the patents.

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

Federal Bar Association Eastern District of Michigan Chapter

Recognitions

“The Best Lawyers in America,” Best Lawyers, 202-2027

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

81 results
“My top priority is developing a strategy for any litigation matter that aligns with my clients' best interests and business plans.”

Practice Areas

Industries