I advise people on intellectual property matters and guide them through litigation when necessary.

Jake's core practice area is intellectual property litigation, with over 25 years of experience in patent, trademark, copyright, and software cases. He has acted as lead counsel for some of the largest corporations in the world, for individuals, and for clients of all sizes in between.

Additionally, Jake has been a professor of Trademark Law and Unfair Competition at the University of Detroit Mercy Law School since 2008. He has also served in leadership roles within the State Bar of Michigan IP Section, and the Michigan IP Inn of Court.

Services

Intellectual Property

When ideas translate into products, processes, art, or authorship, we help clients protect their innovations and commercialize their work.

Credentials

Education

  • Wayne State University Law School, 1993
    • J.D.
  • University of Chicago, 1989
    • M.A.
  • University of Michigan, 1988
    • B.A., with high honors
    • B.S., cum laude 

Memberships

  • State Bar of Michigan
    • Intellectual Property Law Section
  • Federal Circuit Bar Association
  • American Intellectual Property Law Association
  • International Trademark Association
  • Michigan Intellectual Property Law Association
  • Michigan IP Inn of Court

Admissions

  • Michigan, 1993
  • Supreme Court of the United States, 2004
  • U.S. Court of Appeals, Sixth Circuit, 2002
  • U.S. District Court, Western District of Michigan, 1996
  • U.S. Patent and Trademark Office,1996
  • U.S. Court of Appeals, Federal Circuit, 1995
  • U.S. District Court, Eastern District of Michigan, 1993

Professional Achievements

  • University of Detroit Mercy School of Law
    • Adjunct Professor, 2008-present
  • “Privileges.” Evidence in Patent Cases, Bloomberg Law, 2018, pp. 18-1 through 18-29.
  • Cases and Materials on Patent Law, Including Trade Secrets, Copyrights, Trademarks. American Casebook Series, Co-author, 6th Ed., 2007.
  • The Best Lawyers in America©, 2013-2020
    • Troy, Litigation-Intellectual Property, "Lawyer of the Year," 2018; 2020
  • dbusiness, "Top Lawyers," 2012-2014; 2018-2019
  • Michigan Super Lawyers, 2006-2015; 2017-2019
  • Michigan Leading Lawyers, 2015; 2018-2019

Experience

Representative Matters

  • Defended several clients against trademark infringement preliminary injunction motions, driving favorable settlements for the clients. Edit
  • Enforced trademark rights on behalf of various consumer goods companies. Edit
  • Represented a client in a complex software matter where high-level employees left and allegedly took source code with them. We positioned our client for litigation by filing key copyright registrations on its software in an expedited manner, taking critical source code discovery, hiring a top-level expert, and filing a compelling motion for preliminary injunction, all of which drove a favorable settlement for our client, including a stipulated injunction against further use of its software. Edit
  • Enforced clients' intellectual property and related rights on Facebook®, YouTube®, and elsewhere. Edit
  • Successfully represented a client in connection with a software audit and caused the software owner consortium to walk away with no payment after initially demanding a five figure payment. Edit
  • Settled a trademark infringement matter and secured the right for our client to keep using its name. We successfully drove the settlement by filing a motion to remove the case to federal court, a motion to dismiss the plaintiff's dilution claim, and advising plaintiff that it had no rights in its mark outside of its local area. Edit
  • Enforced various trademark rights on behalf of automotive OEMs.

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  • Represented a nonprofit veteran's organization against a claim of trademark infringement by persuading the plaintiff to drop its claim. Edit
  • Enforced a client's software copyrights against a range of infringers, some of which involved litigation that ended with the infringers accepting an injunction and paying damages. Edit
  • Successfully secured a dismissal in a patent infringement case after quickly developing several strong defenses including non-infringement, invalidity, failure to state a claim, and low potential for damages. After confronting the patent owner with a letter explaining our defenses, the patent owner dismissed the complaint against our client within two weeks of our being engaged, while maintaining its actions against several other defendants. T-Rex Property AB v. Destination Media, Inc., 1:16-CV-1587 (N.D. IL. 2016). Edit
  • Won a DMCA case against a competitor who was circumventing the client's technological protections against copying. We successfully used a software expert to develop the case before filing the complaint, which caused the defendant to stipulate to a consent judgment. Edit
  • Enforced a client's software copyrights against a competitor and obtained a favorable settlement following months of hard-fought litigation. Edit
  • Secured a dismissal with prejudice in a case against our clients for design patent infringement, false advertising, and tortious interference in exchange for no payment from our client. We brought counterclaims for false assertion of patent coverage and false association under the Lanham Act, which drove the favorable settlement. AirHawk International, Ltd. v. TheRealCraigJ, LLC et al., 8:16-CV-00624 (C.D. Cal. 2016).

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  • Enforced a patent on behalf of a sporting goods company against a competitor, winning an injunction. Edit
  • Represented a supplier in a patent case involving sound-insulated glass for automotive vehicles.

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  • Advised a software company, who specialized in automotive supply chain management, in a patent case and reached a favorable settlement.

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  • Defended a supplier of non-contact wheel alignment systems by discovering knock-out prior art and inequitable conduct evidence to force an immediate walk-away settlement.

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  • Counseled an automotive OEM on a stream of third-party subpoenas for documents and depositions, and helped the OEM minimize its involvement in supplier disputes.

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  • Represented a supplier of wheel and tire assembly lines against a competitor's patents and reached a favorable settlement.

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  • Enforced a patent on a wheel alignment system against a competitor, won a favorable Markman ruling, and obtained a favorable settlement.

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  • Represented a side view mirror supplier by finding a knock-out prior art reference that drove prompt settlement in our client's favor.

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  • Defended a small company in the laser industry against a large company that had filed an aggressive patent infringement case regarding a laser-based measuring device. We identified key defects in the patent owner's position and persuaded it to dismiss the case. Edit
  • Enforced a client's electro-mechanical patent against a competitor and won a favorable settlement following months of intense litigation. Edit
  • Secured a dismissal with prejudice against a patent owner in a large, multi-defendant patent infringement case. After the Markman and discovery phases, we noticed that the patent owner failed to uncover sufficient infringement evidence against our client and confronted the patent owner with a motion for summary judgment, an expert report pointing out the evidentiary deficiency, and a motion challenging the qualification of the patent owner's expert and the validity of the expert's report. Resulted in patent owner dismissing the case with prejudice and with no money paid. Edit
  • Secured a dismissal in a patent infringement case in the Eastern District of Texas by preparing a detailed invalidity and non-infringement analysis and threatening an inter partes review, which caused the patent owner to dismiss the case without prejudice and with no money paid. Rothschild Connected Devices Innovations, LLC v. Protect America, Inc., 2:15-CV-01465-JRG (E.D. Tex. 2015).

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  • Won a key Markman ruling invalidating all of the asserted claims in six different patents, driving a favorable settlement for our client including a dismissal with prejudice. Joao Control & Monitoring Systems, LLC v. Protect America, Inc., 1:14-CV-134-LY, (W.D. Tex. 2015). Edit
  • Settled a complex patent infringement case in the District of Delaware on terms favorable to General Motors where there were multiple patents and multiple indemnifying suppliers. We successfully found strong prior art and developed non-infringement and claim construction arguments that drove settlement.

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  • Enforced a client's patent, which we wrote and prosecuted, against two competitors, and successfully forced them to withdraw their products from the market. Edit
  • Settled a complex patent infringement case in the District of Delaware on terms favorable to General Motors and its suppliers, where the suppliers also supplied multiple other OEM defendants. We coordinated a defense that helped everyone by finding invalidating prior art, and developing noninfringement and claim construction arguments that drove settlement.

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  • Secured a dismissal with prejudice in a patent infringement case by preparing a persuasive motion to dismiss. Before filing the motion, we shared it with the patent owner, who chose to dismiss the case with prejudice and with no money paid. Edit
  • Secured a dismissal with prejudice in a patent infringement case after taking over the case from another firm. We successfully developed a strong prior art position and after confronting the patent owner with this prior art, the patent owner dropped the case with our client, while maintaining its cases against several other defendants. ComCam International, Inc. v. Protect America, Inc., 2:13-CV-00800 (E.D. Tex. 2014). Edit
  • Secured a dismissal in a patent infringement case by preparing a detailed invalidity and non-infringement analysis and arguing that there was no personal jurisdiction in the Western District of North Carolina, which caused the patent owner to dismiss the case without prejudice and with no money paid. EyeTalk365, LLC v. Protect America, Inc., 3:14-CV-525 (W.D. N.C. 2014).

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  • Served as lead counsel for General Motors in a complex on-board computer systems case against a Chinese company where we brought claims for copyright infringement, DMCA violations, computer fraud and abuse, trademark infringement, trade secret misappropriation, and unfair competition and unjust enrichment. The case settled on terms favorable to our client after defeating the Chinese company's motion to dismiss. General Motors LLC, et al. v. Autel.US Inc. et al., C.A. No. 2:14-CV-14864 (E.D. Mich).

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  • Successfully defended a telecommunications client in a complex trademark ownership and infringement case, reaching a favorable settlement after winning key victories in preliminary injunction and discovery motions. Edit
  • Represented a multibillion-dollar automotive supplier and successfully settled a complex patent infringement case in the District of Delaware after filing key motions to dismiss for failure to state a claim, as well as two petitions for inter partes review, both of which drove plaintiff, who was represented by an AmLaw 100 firm, to settle.

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  • Defended a corporate officer in a trade secret matter and won a complete dismissal of all claims during a jury trial on a motion for judgment as a matter of law. Edit
  • Successfully defended a supplier of exterior trim parts in a trade secret case by winning a favorable verdict in a jury trial. Edit
  • Represented a local company against its former VP of Research and Development and his secret offshore company who stole our client's trade secrets, turning the case over to the Department of Justice for criminal prosecution. Edit
  • Enforced the copyrights belonging to a nonprofit drug abuse prevention organization and persuaded the infringer to stop infringing after filing a lawsuit and obtaining critical discovery. Edit
  • Counseled a supplier of lighting equipment for sports fields and won a complete victory after trial and appeal by invalidating three of a competitor's patents. Musco Corp. v. Qualite Inc., 41 U.S.P.Q. 2d 1954 (Fed. Cir. 1997). Edit
  • Enforced a wiper blade patent against a competitor and obtained a substantial monetary settlement.

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  • Defended a supplier of wheel chair restraints against a patent troll and won a finding of no infringement at trial. Queens University at Kingston v. Kinedyne Corp., 910 F.Supp. 527 (D. Kansas 1995). Edit

Presentations

  • Detroit Institute of Arts, The International Law Section of The State Bar of Michigan Annual Meeting, "Protecting and Enforcing IP Rights in Software in China and the U.S.," panelist, September 12, 2016, Detroit, MI.

Community

Community

For decades, I've been affiliated with and supported the Cranbrook Community, including the schools, grounds, and museums.

I am also active at the Detroit Institute of Arts along with my wife, Rebecca, who has served on several councils and boards over the years.