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Saint Clair Patent Lawyers, Michigan

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John S. Leroy Lawyer
Location
150 W 2nd St Royal Oak, MI 48067

Intellectual Property, Patent, Litigation

John LeRoy is a highly skilled litigation professional. He uses his electrical and mechanical engineering background, and two decades of intellectual property litigation experience, to represent his clients in high-tech legal disputes and complex licensing negotiations. John’s practice focuses on patent, trade secret and copyright litigation involving software, electronics, and mechanical systems. With over 20 years of experience, a Master’s degree in electrical engineering, and a Bachelor’s degree in mechanical engineering, he has successfully represented clients in many different industries. He focuses on efficiently resolving litigation disputes outside of the courtroom, leaving the jury trial as a “last resort.” And in the courtroom, John has won, and successfully defended against, multiple “$100+ million dollar” jury trials (and related appeals) involving complex technology and intellectual property claims. 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.

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John Philip Rondini Lawyer
Location
150 W 2nd St Royal Oak, MI 48067

Administrative Law, Intellectual Property, Patent, Litigation

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.

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James N. Kallis Lawyer
Location
150 W 2nd St Royal Oak, MI 48067

Intellectual Property, Patent

James Kallis is an insightful patent attorney who provides his clients with high-quality intellectual property advice and a deep understanding of patent preparation and prosecution tasks. James focuses primarily on domestic and foreign patent prosecution and preparation. He has written over one thousand patent applications for applicants ranging from Fortune 500 companies to small niche companies to independent inventors. James also performs patent analysis in which he has written non-infringement and invalidity opinion letters and conducted a multitude of novelty and state-of-the-art studies. James has a great understanding of a wide array of patent office procedures from handling a multitude of different types of patent preparation and prosecution tasks. He is experienced in all aspects of U.S. patent prosecution including examiner interviews, appeals, petitions, reexaminations, and reissues. In addition to preparing and prosecuting his own patent applications, James is especially adept at prosecuting patent applications based on previously filed foreign patent applications. He regularly collaborates with foreign counsel in obtaining European, German, Chinese, Mexican, and Japanese patents. He has successfully obtained dozens of favorable patent application appeal decisions from the Board of Patent Appeals and Interferences at the U.S. Patent Office. James appreciates the importance of patents to his clients and handles patent prosecution with this appreciation in mind. One patent that James prosecuted (U.S. Patent No. 6,785,825 relating to technology for reducing computer software piracy) was successfully enforced by Brooks Kushman P.C. along with another patent resulting in a $133 million jury verdict that was affirmed by the Federal Circuit (z4 v. Microsoft Corporation and Autodesk, Inc.). From this experience, James understands what it is like to be deposed and testify during a trial and to have patents scrutinized by opposing counsel and trial and appeal courts. James applies this unique perspective in his patent preparation and prosecution practice. James started his employment with Brooks Kushman as a law clerk while a full-time law student at Wayne State University. He then began practicing as an attorney with Brooks Kushman after passing the Michigan State Bar Exam.

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Alena Marconi Lawyer
Location
150 W 2nd St Royal Oak, MI 48067

Intellectual Property, Patent

Alena Marconi is an experienced, hands-on patent prosecution attorney with an extensive background in chemical, materials, and environmental solutions sciences. She guides and advises her clients with high-quality legal advice and strategic thinking. Alena’s practice focuses on domestic and foreign patent prosecution in the chemical, materials science, green tech, and mechanical arts. She counsels clients of all sizes in a wide range of industries including automotive, chemical, horticultural applications, environmental remediation, green technologies, alternative energy generation, industrial processes, medical devices, polymers, coatings, fuel cells, batteries, catalytic converters, packaging, and additives. Alena is admitted to practice in Michigan and before the United States District Court for the Eastern District of Michigan and the United States District Court for the Western District of Michigan. Alena holds a Bachelor of Science in Chemistry and Materials Technology from Tomas Bata University in Zlin, Czech Republic, as well as a Master of Science in Chemistry from Oakland University. Her undergraduate, graduate studies, and research focused on macromolecular chemistry, environmental technology, and toxicology. Ms. Vackova graduated magna cum laude from Western Michigan University Cooley Law School in May 2012 with a Juris Doctor degree. During her law school studies, she earned five certificates of merit and served as an Assistant Board Editor on the Cooley Law School Law Review as well as a Secretary for the Student Intellectual Property Law Association and Veterans Organization. Besides English, Alena is fluent in Czech, Slovak, and has a working knowledge of German and additional Slavic languages. In her free time, she’s an avid photographer who loves to spend time with her family exploring Michigan and the rest of the world or running 5K races.

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James Andrew Bertino Lawyer
Location
150 W 2nd St Royal Oak, MI 48067

Intellectual Property, Patent

James Bertino is an experienced patent attorney who prioritizes quality and high value results for his clients. James focuses his practice on domestic and foreign patent prosecution. He prepares, prosecutes, and advises on patents in several technical areas including the automotive, automation, and manufacturing industries. Specifically within the automotive industry, James has extensive experience in automotive technology relative to hybrid vehicles, powertrains, HVAC, safety systems, solar power, and plant automation. He counsels clients of all sizes, ranging from Fortune 500 Corporations to small start-ups, on a wide range of technologies. Because of James’s extensive engineering experience, James is technically proficient, being able to understand and put on paper what the invention is without having to rely solely on the inventor. He has extensive experience in novelty, validity, invalidity, state of the art, and clearance studies. As an experienced advisor, James counsels his clients honestly on their patent portfolio. In his practice, James conducts extensive research on existing technology to determine the white space within a specific technology market to ensure a client’s concept falls within the determined white space to recommend whether the client should pursue patent protection. James is also highly skilled at formulating opinions on the validity or invalidity of a particular patent during litigation proceedings, determining the current state of the art in a specific technology market, and formulating opinions on whether a client has the freedom to operate in a particular technology market. Prior to the legal profession, James worked for an automation manufacturer as a mechanical engineer. He was responsible for the mechanical design of powertrain assembly equipment. The design process included using computer aided design programs to generate the required mechanical drawings. James also worked for a large automotive OEM as a powertrain production supervisor. He was responsible for the daily operations of the department that produced the output shaft of the transmission. This included ensuring the efficiency and troubleshooting of the production machinery when a problem occurred. James is a graduate from the University of Toledo Law School. He holds a bachelor’s degree from the University of Michigan in Mechanical Engineering. James is a registered patent attorney and a member of the bar for the State of Michigan and the Federal District Court of the Eastern District of Michigan. In his free time, James likes to spend time on the water in his boat. He also enjoys the non-motorized time on the water and is an experienced oarsman. In 2015, he competed and won a master’s national championship in rowing.

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Amy Colleen Leshan Lawyer
Location
150 W 2nd St Royal Oak, MI 48067

Industry Specialties, Intellectual Property, Patent, Lawsuit & Dispute

Amy helps clients develop and implement intellectual property enforcement strategies across online and offline channels. Her work spans targeted actions—such as UDRP actions, cease and desist letters, and reporting infringement to marketplaces, social media platforms, ISPs, and payment processors—to broader enforcement programs. For large-scale efforts, she assists clients to set up streamlined, tech-enabled solutions, including AI-driven automation, and manages relationships with brand enforcement vendors. She also maintains contacts at major online platforms to escalate issues when needed. On the criminal enforcement side, Amy works closely with federal agencies and law enforcement to build cases against IP offenders. She also designs programs to register IP with U.S. Customs and international customs offices to intercept counterfeit goods at borders. Amy is an experienced litigator who has successfully tried patent, trademark, trade secret, and copyright cases in federal courts nationwide and before the International Trade Commission. Her litigation practice focuses on discovery and eDiscovery in IP disputes. She also advises on trademark clearance, prosecution, and proceedings before the Trademark Trial and Appeal Board. Before joining Brooks Kushman, Amy worked in the intellectual property department of a major automotive company, gaining valuable insight into client expectations from an in-house perspective. This experience enables her to anticipate internal corporate considerations and approach legal issues with an understanding of both in-house counsel and business team priorities.

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Kyle Gordon Konz Lawyer
Location
150 W 2nd St Royal Oak, MI 48067

Intellectual Property, Patent

Kyle Konz is an experienced patent attorney who takes the time to fully understand his clients’ technologies and business strategies to provide his clients with high-quality and tactical advice. Kyle focuses his practice on patent prosecution, post grant proceedings, and patent and trademark litigation. Kyle also manages trademark portfolios for several small businesses. Kyle works with a wide range of clients including Fortune 100 Corporations and small businesses. Kyle writes and prosecutes patent applications related to automotive, manufacturing, domestic appliances, and heating and cooling systems. A large part of Kyle current post grant and litigation practices relate to vehicle safety systems, connectivity, connected services, lighting, and exercise equipment. Kyle leverages his past engineering and hands-on experience to quickly learn inventions without requiring substantial time investments from inventors. Kyle’s practical experience allows him to understand how a particular invention fits within the larger system enabling him to fully capture the invention in context with the client’s overall goals. This provides the client with a more cohesive and valuable patent portfolio. Prior to joining the firm, Kyle worked for a consulting firm, assisting in the design of commercial and residential developments. While there, Kyle focused on sewer systems, residential roadways, and drainage systems. Kyle is also a certified auto mechanic. Outside of the office, Kyle enjoys action sports. In the winter, he is often found on the slopes with his snowboard, while in the summer he can be found behind a boat on his wakeboard.

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Rebecca J. Cantor Lawyer
Location
150 W 2nd St Royal Oak, MI 48067

Intellectual Property, Patent, Trademark, Litigation

Rebecca Cantor is a registered patent attorney with an extensive background in patent litigation as well as trademark protection and enforcement. Rebecca serves as the Chair of Brooks Kushman's life science practice group. She concentrates her practice on intellectual property litigation, with a focus on patent litigation involving a wide range of technologies including pharmaceuticals and other life sciences technologies. Rebecca also has experience in trademark disputes, both in Federal Court and in the USPTO. In addition, Rebecca counsels clients in developing strategies to protect their intellectual property. As a registered patent attorney, Rebecca is authorized to practice before the U.S. Patent and Trademark Office. Prior to joining Brooks Kushman, Rebecca was a patent litigator at Vinson & Elkins LLP in New York. While there, Rebecca participated in several patent litigations, including a Hatch-Waxman litigation where she was part of a trial team that received a favorable outcome for its client. Rebecca also worked on a number of due diligence projects, many of which involved technologies related to life sciences.

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John M. Halan Lawyer
Location
150 W 2nd St Suite 400N Royal Oak, MI 48067

Intellectual Property, Patent

John Halan is an IP litigator who has extensive knowledge in patent, trade secret, and related commercial litigation. John M. Halan has been practicing with the intellectual property law firm of Brooks Kushman P.C. since 1990, where he has been a shareholder for many years and is the head of the firm`s trade secrets group. As a litigator, he specializes in high-stakes intellectual property litigation, including patent, trade secret, and related commercial litigation. He has tried many cases as lead or team trial counsel and has also successfully argued cases before the United States Court of Appeals for the Federal Circuit. He also has considerable experience handling various matters before the PTAB, including inter partes reviews and appeals. In addition to litigation, John has negotiated and prepared numerous intellectual property and commercial agreements, including patent and technology license agreements. He has also prepared many infringement and validity patent opinions and has been called upon to act as a patent dispute mediator. As a licensed professional engineer, prior to attending law school and joining Brooks Kushman, John managed a number of industrial construction projects from initial design through to completion.

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James W. Proscia Lawyer
Location
150 W. Second St Suite 400N Royal Oak, MI 48067

Health Care, Industry Specialties, Intellectual Property, Patent

James Proscia is a talented IP attorney with over 20 years of patent prosecution experience and degrees in chemistry, biotechnology, electrical engineering and physics. Jim, serving as the Chair of Brooks Kushman's Applied Physics Practice Group and Co-Chair of the Chemistry Practice Group, brings over 20 years of patent prosecution experience to the table. His degrees in chemical physics, physics, chemistry, electrical engineering, and biotechnology, coupled with his diverse expertise across a broad range of industries, make him a reliable and proficient professional. Jim's specialization lies in working with universities, where he represents technology transfer departments to protect and monetize their inventions. His unique background as a former adjunct professor and researcher equips him with deep knowledge of both sides of this relationship. He excels in collaborating closely with professors and scientists to draft and prosecute patent applications, leveraging his diverse educational background to work effectively on a wide range of technologies. Jim has substantial experience in various sub-fields of physics, including solid-state physics, optics, electricity and magnetism, mechanics, and atomic and molecular physics. His expertise extends to optical systems, medical resonance imaging, and image processing, as well as circuit design. He has drafted patent applications in areas related to photonic emission, Brillouin light scattering, the photoacoustic effect, single photon sources for scalable quantum optical circuits, parity-time (PT) symmetric wireless telemetric sensors and systems, and multi-spectral scattering-matrix tomography. His expertise also extends to solid-state physics, electricity and magnetism, mechanics, atomic and molecular physics, and optical communication. In addition to his physics expertise, Jim has a strong technical background in organic chemistry and has collaborated with clients in the chemical and pharmaceutical industries on small-molecule therapeutics, drug formulation and delivery technologies, and chemical process technologies. His patent prosecution and opinion work encompass medical and diagnostic devices and biotechnology. Specific examples include methods for treating diseases, diagnostic assays, biomarkers, pharmaceuticals, diagnostic agents, blood analysis methods, food processing techniques, and biofuel technologies. With nearly 20 years of laboratory experience before transitioning to patent law, Jim conducted extensive research in semiconductor films and modeled the optical properties of multilayer films. ‎Jim applies his considerable technical experience to the procurement of patents, both ‎foreign and domestic, and to assist in client counseling and patent portfolio management. His deep understanding of an inventor’s work language allows him to draw out the essential information required to obtain patents with excellence. In addition to preparing and prosecuting patent applications, Jim consults clients on developing patent portfolio strategies and preparing freedom to operate opinions, particularly in relation to the chemical and electrical arts. Jim has graduate degrees in chemical physics (Harvard), physics (Harvard), biotechnology (Johns Hopkins), and electrical engineering (Ohio University). His completed graduate courses include quantum mechanics, electromagnetic theory, statistical mechanics, and signal processing. Prior to joining Brooks Kushman, Jim worked as a research scientist and technical specialist at a large automotive OEM for ten years. Over his career, he was awarded fourteen patents in thin film technologies and co-authored several scientific articles. Jim has also been an in-house patent attorney at Pfizer and an adjunct professor of chemistry at Wayne State University.

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