Jon A. Birmingham is a patent attorney and litigator who is particularly skilled at coordinating the prosecution of complex patent families on a global scale. Jon’s practice has a strong focus on mechanical opinion and prosecution matters, including the creation of strategies to protect high-value products.
A wide range of clients rely on Jon’s counsel. For over a decade, he has represented Fortune 500 companies as well as small and midsized companies in intellectual property litigation, opinion matters, and patent prosecution matters (including protecting designs).
Jon has handled complex litigation involving a broad range of technologies. These include electronic medical devices, fluid systems, printing presses, optical recognition software, network management software, and injection-molded automotive components.
Jon maintains an active patent prosecution and client counseling practice in a variety of technologies, particularly those involving the mechanical arts, such as high-speed automated equipment, consumer food product packaging, irrigation devices, automotive timing and transmission systems, household organizational products, and commercial printing equipment. He has participated in a number of intellectual property due diligence studies, product clearance studies, and IP value assessments.
Rain Bird Corporation v. Hit Products Corporation (C.D. Cal. 2004). A patent/trade dress case in which Jon helped Rain Bird to obtain a preliminary injunction based on a contested motion filed over 16 months after the complaint.
Taye, Inc. v. Drum Workshop, Inc. (C.D. Cal. 2007) A patent infringement case in which Jon personally handled the Markman briefing and oral argument. The case settled after a favorable Markman ruling.
Alexsam, Inc. v. UnitedHealth Group Incorporated (E.D. Tex. 2007-11). Represented patentee in claims of infringement under patents relating to systems for conducting transactions for managing medical savings account cards. Obtained settlement on the eve of jury selection.
Liquid Dynamics Corp. v Vaughan Co. Inc. (N.D. Ill. 2001-07; Fed. Cir. 2003, 2006). Patent litigation, two successful Federal Circuit appeals; jury verdict in Fall 2004 at 45% royalty, treble damages, and attorneys’ fees; bench trial for contempt proceeding.