- Our Firm
John P. Rondini
Co-Chair Cybersecurity | Co-Chair Litigation | Post-Grant Proceedings
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
Presentations
Co-Presenter, “Navigating the Evolving Landscape of Cybersecurity, Data Privacy & AI Compliance – A Year in Review and What’s Ahead for 2025 & Beyond,” BK Hosted Webinar, January 2025
Co-Presenter, “Year in Review: 2024 Intellectual Property Litigation,” BK Hosted Webinar, January 2025
Co-Presenter, “2024 PTAB Year in Review: New Procedures and Potential Changes Impact AIA Trial Strategies,” BK Hosted Webinar, January 2025
Moderator, “Masterclass: The Role of Trade Secrets”, Auto IP USA, IAM, May 2024
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, “Understanding the Global Impact of the European Artificial Intelligence Act,” Brooks Kushman Trending IP Blog, October 2024
Author, “Navigating AI Compliance: How California’s AB 2013 Reshapes GenAI Operations,” Brooks Kushman Trending IP Blog, October 2024
Co-Author, “The USPTO’s Proposed Rule on Terminal Disclaimers: A Change from the Status Quo,” Brooks Kushman Trending IP Blog, August 2024
Author, “Where did you get that information? The Generative AI Copyright Disclosure Act of 2024,” Brooks Kushman Trending IP Blog, May 2024
Author, “Utah’s Artificial Intelligence Act swings into full-force May 1st,” Brooks Kushman Trending IP Blog, April 2024
Author, “Artistic Freedom” v. Trademark Protection: MSCHF’s First Amendment defense face-plants on appeal,” Brooks Kushman Trending IP Blog, February 2024
Co-Author, “Current Lighting Wins at Patent Trial and Appeal Board,” Brooks Kushman Client Alerts, October 2023
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