901 Lakeside Avenue
Cleveland, Ohio 44114
John Biernacki has extensive experience with software and business method patents, including patent portfolio strategy, patent prosecution, freedom-to-practice opinions, reexamination, litigation, and licensing. His work also includes merger and acquisition transactions where intellectual property is a significant factor.
John's representative work includes developing the patent portfolios of SAS Institute (data mining, artificial neural networks, high-performance forecasting models, and e-commerce) and Research In Motion (encryption and wireless network technology), as well as reexamination work for IBM and SAS Institute (e-commerce patents). Representative transactional work includes sale of the San Jose Sharks hockey franchise to an investor group, Harris Corporation's acquisition of Tyco Electronics Wireless Systems, and advising Maverick Capital on a stock purchase in an online-based communications company. Other clients include Chevron, Goldman Sachs, PNC, Progressive Insurance, Sherwin-Williams, and Sprint Nextel.
In addition to articles and presentations on Section 101 topics, John has more recently authored chapters in 2009, 2011, and 2012 for Aspatore's Inside the Minds series that focused on the impact of Bilski on business method patents. John is an adjunct professor of intellectual property law at the Case Western Reserve University School of Law and the University of Detroit Mercy School of Law.
Prior to entering the legal field, John worked as a software engineer for DuPont at a U.S. Department of Energy facility that produced plutonium and tritium, focusing on relational database management systems and statistical modeling to analyze nuclear material accountability and safeguard issues. He then worked at NASA's Lewis Research Center as a software and systems engineer contractor on NASA's Space Station, Mars Nuclear Rocket, and Space Shuttle programs.
|Areas of Practice||1) Intellectual Property, 2) Licensing & Technology Transactions, 3) Patent Prosecution & IP Counseling, 4) Post Grant Review and 5) FDA Regulatory & Compliance Counseling|
|Law School||University of Detroit Mercy|
|Education||University of Detroit (B.Ch.E., 1987)|
|Bar Member / Association||Michigan, Ohio, and registered to practice before the United States Patent and Trademark Office|
|Most recent firm||Jones Day|
Ms. Fitzgerald represents employers in a wide range of industries, including the entertainment, financial services, hospitality, manufacturing, retail, and transportation industries.
Barton W.S. Bassett is the leader of Morgan Lewis's Tax Practice. Mr. Bassett's practice focuses on international tax planning for both the outbound operations of U.S. multinationals and the inbound operations of foreign multinationals.