Headshot image of Thomas Cunningham

Thomas W. Cunningham

Patent, Trademark, Copyright, & Trade Secret Litigation

Michigan

(248) 226-2847

tcunningham@brookskushman.com

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“I value building strong and long-term relationships with my clients to deeply understand their business goals and actively advise them on management, licensing and litigation of intellectual property.”

Practice Areas

Industries

  • Life Science & Medical Device
  • Automotive
  • Chemistry
Tom Cunningham is an accomplished, hands-on attorney who takes a client-centered approach to his practice. Tom has twenty-five years of experience litigating intellectual property cases on behalf of both plaintiffs and defendants in federal courts all over the country. Tom’s cases have involved a wide range of technologies including automotive and locomotive developments, e-commerce systems, light-emitting diode applications, biotechnology, numerous consumer products, dietary supplements and computer software.   Tom has also handled numerous appeals before the Federal Circuit, 5th and 6th Circuit Courts of Appeal. Tom actively advises clients on the management, enforcement and licensing of intellectual property. He has also worked closely with clients to help them avoid the intellectual property of others, including participating in designing around patents. Tom builds the trust of his clients by maintaining close contact. He believes that to adequately counsel his clients, it is necessary to develop a full understanding of the clients’ business and its goals. By doing what he promises and following up on a regular basis, Tom has been successful in building long-term relationships with his clients. Recent highlights: Trial counsel for defendant in patent jury trial, bench trial and IPR proceeding involving LED lighting technology seeking over $100 million in damages.  After jury limited damages to $1.5 million; the patent was declared invalid in IPR. Trial counsel for plaintiff in patent case asserting both design and utility patents on LED bus sign technology.  Jury returned verdict of willful infringement on both patents, awarded damages and permanent injunction was entered. Successfully defended pizza franchisor in patent cases concerning related e-commerce technology with over $100 million at stake.  Three of four asserted patents were held unenforceable in the PTAB; the fourth was found unenforceable on summary judgment in district court. The appealed findings were affirmed at the Federal Circuit.  The obtained award of nearly three million in attorneys’ fees, a finding which was also affirmed at the Federal Circuit. Trial counsel for defendant in patent case and IPRs involving LED lighting technology.  Both patents found unenforceable in IPRs. Successfully defended large furniture manufacturer in patent case concerning adjustable beds.  Awarded summary judgment of non-infringement. Trial counsel for supplement manufacturer and obtained the largest trademark verdict in Michigan history, $22 million. Trial counsel in successful patent litigation defending flashlight manufacturer in the Eastern District of Wisconsin with over $30 million at stake; patent was declared unenforceable for inequitable conduct and attorneys’ fees awarded. States where Tom has litigated: Michigan Texas Delaware California Wisconsin Illinois Virginia Florida Tennessee Ohio Colorado North Carolina South Carolina South Dakota New York New Jersey Outside the office, Tom enjoys spending time with his three boys. He also enjoys following University of Michigan and Detroit sports.

Representative District Court/ITC Matters

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. Summary Judgment on all patents were affirmed on appeal. Court later awarded $2.7M in fees to Domino’s.
Case No. 3:11-cv-01810, 3:12-cv-00733

Innovation Ventures, LLC d/b/a Living Essentials, v. N.V.E., Inc. (Jury Trial – E.D. Michigan): Represented Plaintiff Living Essentials in trademark infringement action involving plaintiff’s 5-Hour ENERGY trademark. The jury found that Defendant N.V.E.’s sale of a competing product named “6 Hour Power” infringed Plaintiff’s trademark and awarded $10.6 million in damages. The jury also awarded an additional $11.5 million in disgorgement of N.V.E.’s profits and fully rejected N.V.E.’s $60 million false advertising claim. Case No: 4:08-cv-11867

Hilgraeve Corporation v. Symantec Corporation (Settlement – E.D. Michigan): Counsel for plaintiff in a patent infringement action involving anti-virus software. Secured a $62.5 million settlement for our client on the eve of trial. Case No. 97-cv-40370

RawCar Group, LLC v. Grace Medical et. al. (S.D. California): Successfully represented plaintiff in patent infringement action on two patents. Court found both patents valid and infringed on summary judgment. At trial, jury awarded damages and found defendants willful. Case No. 13-cv-01105

GeoTag, Inc. v. Domino’s Pizza Inc. (Summary Judgment – E.D. Texas): Successfully defended Domino’s Pizza in a patent infringement action in East Texas which also involved over 600 defendants. After the other defendants settled, Domino’s was sole defendant left in case. Court granted summary judgment of non-infringement in favor of Domino’s on five different grounds. Case No. 10-cv-0572

Latentier, LLC v. International Paper Co. (Summary Judgment – E.D. Wisconsin & Federal Cicuit): Lead counsel for International Paper in successful defense of patent infringement action. Case No. 08-C-501

Great American Restaurant Company v. Domino’s Pizza (Jury Trial – E.D. Texas): Lead counsel for Domino`s in successful defense of various trademark claims relating to Domino`s sale of its Brooklyn-style pizza. Plaintiff withdrew claims during trial. Case No. 07-cv-00052

DietGoal, Inc. v. Domino’s Pizza, Inc. (E.D. Virginia): Successfully defended Domino’s in patent infringement action. Patent declared invalid as not directed to patentable subject matter. Case No. 2:12-cv-430

PJC Logistics, LLC v. General Motors and OnStar (Settlement – D. Minnessota): Counsel for GM and OnStar in MDL in Minnesota. Successfully defended patent infringement claim. Case No. 12-cv-00234

In re Certain Automotive Navigational Systems (ITC): Counsel for Ford Motor Co. in successful defense of patent infringement action at the ITC. Investigation No. 337-TA-814

Sunbeam Products, Inc. v. HoMedics, Inc. (Summary Judgment – W.D. Wisconsin): Represented HoMedics in patent infringement action in Wisconsin. Successfully moved for summary judgment of non-infringement. The decision was affirmed after Sunbeam appealed to the Federal Circuit. Case No. 08-cv-376

Armament Systems & Procedures v. Zen Design Group (Bench Trial – E.D. Wisconsin): Lead counsel in successful patent litigation defending flashlight manufacturer in the Eastern District of Wisconsin with over $30 million at stake; patent was declared unenforceable for inequitable conduct before the PTO and attorneys’ fees were rewarded. Case No. 00-C-1257

FTD, Inc. v. Fleurop Interflora (Settlement – E.D. Michigan): Successfully represented Swiss floral association, Fleurop Interflora, in trademark infringement action in the Eastern District of Michigan resulting in favorable settlement. Case No. 01-70954

Benedict v. General Motors (Summary Judgment – E.D. Michigan): Successfully defended General Motors patent litigation in the Northern District of Florida with over $25 million at stake; patent was declared invalid on summary judgment. Case No. 01-73026; 184 F. Supp.2d 11997

General Motors v. The Wildside (Summary Judgment – E.D. Michigan): Successfully represented General Motors in trademark litigation resulting in finding of infringement on summary judgment. The finding was affirmed by the Sixth Circuit. Case No. 00-cv-483

Education

J.D., University of Michigan, cum laude

M.S., Molecular Biology, Washington University

B.S., Biology, University of Michigan

Organizations & Affiliations

State Bar of Michigan

Michigan Intellectual Property Law Association

Federal Bar Association Eastern District of Michigan Chapter

University of Michigan Victors Club

Intellectual Property Owner’s Association (IPO)

 

 

Industries

  • Life Science & Medical Device
  • Automotive
  • Chemistry

Publications

Co-Author, “Current Lighting Wins at Patent Trial and Appeal Board,” Brooks Kushman Client Alerts, October 2023

Co-Author, “Domino’s Pizza $2.7 Million Attorneys’ Fee Award Upheld on Appeal,” Brooks Kushman Client Alerts, September 2023

Co-Author, “A Practical Guide To Anti-Counterfeiting Resources In The United States,” World Trademark Review, May 2021

Co-author, “Patenting or Copyrighting Software, which to Choose,” Intellectual Property Counselor, February 2000

Co-author, “Pathway for the Formation of D-3 Phosphate Containing Inositol Phospholipids in PDGF Stimulated NIH 3T3 Fibroblasts,” Biochemical Biophysical Research Communications, March 1991

Co-author, “The Phosphatidylinositol Pathway of Platelets and Vascular Cells,” Annals of the New York Academy of Sciences, 1991

Co-author, “Pathway for the Formation of D-3 Phosphate Containing Inositol Phospholipids in Intact Human Platelets,” The Journal of Biological Chemistry, December 1990

Co-author, “Recent Insights in Phosphatidylinositol Signaling,” Cell, November 1990

Co-author, “Treatment of A431 Cells with Epidermal Growth Factor (EGF) Induces Desensitization of EGF-Stimulated Phosphatidylinositol Turnover,” The Journal of Biological Chemistry, 1989

Insights

Client Alerts

Current Lighting Wins at Patent Trial and Appeal Board

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Client Alerts

Domino’s Pizza $2.7 Million Attorneys’ Fee Award Upheld on Appeal

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Press Releases

5-hour ENERGY® Named “Top Verdicts of 2016”

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Press Releases

Brooks Kushman Successfully Defends Patent Infringement Case for Domino’s Pizza in Landmark Patent Litigation Case

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