Mind + Muscle

technical minds + legal muscle

Bracket
Sterne Kessler Goldstein Fox
Jonathan Tuminaro, Ph.D.

Mind + Muscle

Jonathan Tuminaro, Ph.D.

Director

 

Jonathan is a director in the firm’s Litigation and Electronics groups, and focuses on patent litigation. He has a unique combination of legal and technical expertise—with a Ph.D. in physics and over ten years of experience handling patent matters. He regularly litigates cases at the International Trade Commission, the U.S. district courts, and the Patent Trials and Appeals Board.

Jonathan’s approach to patent litigation follows Albert Einstein’s words: “If you can’t explain it simply, you don’t understand it well enough.” In each engagement, Jonathan works to understand even the smallest of details to craft compelling stories that inform and persuade both judges and juries. He has applied this approach to a wide range of complex technologies including:

  • Wireless communications;
  • Hand-held devices;
  • Computer architecture and software;
  • Medical devices; and
  • Pharmaceuticals.

Jonathan received his Bachelor’s degree in physics and mathematics from Canisius College, and was a member of the ’95-’96 Men’s Basketball team that won the Metro Atlantic Athletic Conference Tournament and earned an automatic bid to the NCAA Division I Men’s Basketball Tournament. He then went on to earn a Master’s degree and a Ph.D. in physics from the University of Maryland, and he received his J.D. from George Mason University.

Jonathan has been named a 2015, 2016, and 2017 DC Super Lawyers “Rising Star” in IP litigation.

Jonathan is also is a contributing author of Patent Office Litigation, Second Edition, published in 2017, the book provides a fresh and comprehensive exploration of patent office litigation proceedings, including how the proceedings interact with other aspects of patent procurement and enforcement, while delivering practical analysis and advice. This second edition of Patent Office Litigation is the follow up to the first version of the book that was published in 2012 by Thomson Reuters Westlaw that focused on the contested proceedings that were introduced under the America Invents Act that year.

Background Highlights:

  • Named a 2015, 2016 and 2017 DC Super Lawyers “Rising Star” in IP litigation.
  • International Trade Commission - Trial counsel in a broad spectrum of complex technologies, ranging from 4G wireless communications to snake antivenom.
  • Lead or backup counsel in numerous IPR proceedings for both patent owners and petitioners.
  • Giles Rich Moot Court Competition - Intramural winner at George Mason University.
  • Physics Graduate Research Assistant - Quantum field theoretical models of neutrino mass; dissertation research in cognitive models of students’ understanding of mathematics in the context of physics.

Representative ITC Matters

  • Certain Basketball Backboard Components & Products Containing the Same, Inv. No. 337-TA-1040 (representing complainant in a patent suit relating to recreational basketball backboards) (International Trade Commission)
  • Certain Radio Frequency Identification (“RFID”) Products and Components Thereof, Inv. No. 337-TA-979 (representing complainant in a patent suit relating to RFID technology) (International Trade Commission)
  • Certain Antivenom Compositions and Products Containing the Same, Inv. No. 337-TA-903 (represented certain respondents in a patent suit regarding snake antivenom) (International Trade Commission)
  • Certain Wireless Communications Base Stations and Components Thereof, Inv. No. 337-TA-871 (represented complainant regarding 4G LTE wireless-communication technology) (International Trade Commission)

Representative PTAB Matters

  • Tricklestar LLC v. Embertec Pty. Ltd., IPR2016-01336 & IPR2017-00839 (representing patent owner relating to 2 IPR petitions) (PTAB)
  • Ford Motor Co. v. Versata Development Group, Inc., IPR2016-01012, IPR2016-01013, IPR2016-01014, IPR2016-01015, IPR2016-01016, IPR2016-01017, IPR2016-01019, IPR2017-00144, IPR2017-00146, IPR2017-00147, IPR2017-00148, IPR2017-00149, IPR2017-00150, IPR2017-00151 (represented patent owner relating to 14 IPR petitions; the PTAB denied institution on all 14 IPR petitions) (PTAB)
  • LG Electronics, Inc. v. ATI Techs. ULC, IPR2015-00325, -00326, and -00327 (represented patent owner in IPRs relating to graphics-processing technology) (PTAB)
  • Advanced Micro Devices, Inc. v. LG Electronics, IPR2015-01409 (represented petitioner in an IPR relating to power management in a computing system) (PTAB)
  • Fujitsu Network Communications, Inc. v. Capella Photonics, Inc., IPR2015-00726 & -00727 (representing patent owner in IPRs relating to wavelength-selective switches in optical fiber networks) (PTAB)

Representative District Court Matters

  • MiiCs & Partners America, LLC et al. v. Funai Electric Co., Ltd. et al. (representing defendants in litigation regarding LCD flat-panel televisions) (D. Del.)
  • Galderma Labs. Inc. v. Amneal Pharms., LLC (represented defendant in Hatch-Waxman litigation regarding an oral-dosage form for treating rosacea) (D. Del)
  • 3M Innovative Props. Co. v. EnvisionWare, Inc. (represented defendant in patent litigation over library-automation equipment) (D. Minn)
  • Nilssen v. Osram Sylvania, Inc. (provided litigation support for defendant in patent litigation in which eleven of plaintiff’s patents were found unenforceable due to inequitable conduct) (N.D. Ill.)
  • Representative Matters

      Representative ITC Matters

      • Certain Basketball Backboard Components & Products Containing the Same, Inv. No. 337-TA-1040 (representing complainant in a patent suit relating to recreational basketball backboards) (International Trade Commission)
      • Certain Radio Frequency Identification (“RFID”) Products and Components Thereof, Inv. No. 337-TA-979 (representing complainant in a patent suit relating to RFID technology) (International Trade Commission)
      • Certain Antivenom Compositions and Products Containing the Same, Inv. No. 337-TA-903 (represented certain respondents in a patent suit regarding snake antivenom) (International Trade Commission)
      • Certain Wireless Communications Base Stations and Components Thereof, Inv. No. 337-TA-871 (represented complainant regarding 4G LTE wireless-communication technology) (International Trade Commission)

      Representative PTAB Matters

      • Tricklestar LLC v. Embertec Pty. Ltd., IPR2016-01336 & IPR2017-00839 (representing patent owner relating to 2 IPR petitions) (PTAB)
      • Ford Motor Co. v. Versata Development Group, Inc., IPR2016-01012, IPR2016-01013, IPR2016-01014, IPR2016-01015, IPR2016-01016, IPR2016-01017, IPR2016-01019, IPR2017-00144, IPR2017-00146, IPR2017-00147, IPR2017-00148, IPR2017-00149, IPR2017-00150, IPR2017-00151 (represented patent owner relating to 14 IPR petitions; the PTAB denied institution on all 14 IPR petitions) (PTAB)
      • LG Electronics, Inc. v. ATI Techs. ULC, IPR2015-00325, -00326, and -00327 (represented patent owner in IPRs relating to graphics-processing technology) (PTAB)
      • Advanced Micro Devices, Inc. v. LG Electronics, IPR2015-01409 (represented petitioner in an IPR relating to power management in a computing system) (PTAB)
      • Fujitsu Network Communications, Inc. v. Capella Photonics, Inc., IPR2015-00726 & -00727 (representing patent owner in IPRs relating to wavelength-selective switches in optical fiber networks) (PTAB)

      Representative District Court Matters

      • MiiCs & Partners America, LLC et al. v. Funai Electric Co., Ltd. et al. (representing defendants in litigation regarding LCD flat-panel televisions) (D. Del.)
      • Galderma Labs. Inc. v. Amneal Pharms., LLC (represented defendant in Hatch-Waxman litigation regarding an oral-dosage form for treating rosacea) (D. Del)
      • 3M Innovative Props. Co. v. EnvisionWare, Inc. (represented defendant in patent litigation over library-automation equipment) (D. Minn)
      • Nilssen v. Osram Sylvania, Inc. (provided litigation support for defendant in patent litigation in which eleven of plaintiff’s patents were found unenforceable due to inequitable conduct) (N.D. Ill.)
  • Admissions
      • District of Columbia

      • Maryland

      • United States District Court for the District of Columbia

      • United States Patent and Trademark Office 

  • Education
    • J.D., George Mason University

    • Ph.D., Physics, University of Maryland

    • M.S., Physics, University of Maryland

    • B.S., Physics and Mathematics, Canisius College magna cum laude

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