Current Employment Position(s)

Partner

Lawyer Overview

John Biernacki practices patent, copyright, and trademark law, with a specialization in computer software and Internet patent prosecution and freedom-to-practice opinions. This practice includes creating and maintaining clients' patent portfolios and analyzing competitors' patent portfolios. John provides prelitigation intellectual property counseling to clients in order to maximize the value of clients' patent portfolios and to avoid the valid rights of others.

During college, John worked in the polymer laboratories for the Finishes and Fabricated Products Division of DuPont and was awarded Engineering Co-Op Student of the Year. At the polymer laboratories, John worked on computer statistical designs of experiments for polymer coatings, polymer reaction computer modeling, and color matching algorithms for polymer coatings.

Upon graduation, he worked as a software engineer for DuPont at a U.S. Department of Energy facility that produced plutonium and tritium for national defense purposes. His work focused on relational database management systems and statistical modeling to analyze nuclear material accountability and safeguard issues. He then worked at the NASA Lewis Research Center as a software and systems engineer contractor on the NASA Space Station program, Mars Nuclear Rocket program, and Space Shuttle maintenance program. John has published several technical papers and was presented with a NASA certificate of appreciation award in 1992. While working at NASA, John attended John Carroll University and earned a master's degree in ancient Greek and Latin.

Since 1994, John's work has focused on software patent prosecution. Examples of the technical areas of his patent prosecution include:

• artificial neural networks

• fuzzy logic

• computer operating systems

• computer thread management

• computer agents

• relational database systems

• data mining applications

• object-oriented applications (Java, C++)

• business methods

• speech recognition and synthesis

• vehicle finite element analysis modeling

• vehicle engine control algorithms

• virtual reality rendering/warping algorithms

• satellite control algorithms

• cruise missile guidance systems

• stock trading computer systems

• computer microprocessor electronics

• wireless communication devices and

• CNC process algorithms.

In addition to software patent prosecution, he has litigated patent, trademark, copyright, and trade secret matters. On behalf of a major automotive company, John established and operated a program for protecting the company's trademarks on the Internet. John also helped authors of the following intellectual property law treatises in their research and issue analysis: Software Patents, Business Method Patents, and Intellectual Property Litigation — Pretrial Practice.

Areas of Practice

• Intellectual Property
• Licensing & Technology Transactions
• Patent Prosecution
• Life Sciences

Representative Cases

• Acquisition of Tyco Electronics Wireless Systems , (2009)
• Issuance of Shares
• Patent Prosecution
• Patent Prosecution

West Practice Categories

Copyrights, Intellectual Property Law, International Intellectual Property, Patents, Technology Licensing, Trade Dress, Trade Secrets, Trademarks

Bar Admissions

• Michigan
• Ohio

Education

• U of Detroit Mercy

Published Works

• Patent Eligible Subject Matter Revisited: Tracking the Development of Business Method Patentability, coauthor, Patent World, Issue 208, p. 18., 2008
• Patent-Eligible Subject Matter Revisited: In re Bilski, 2008
• Microsoft Corp. v. AT&T Corp.: The US Supreme Court Reins in the Extraterritorial Effects of US Patent Law, reprinted in IP Litigator, 2008
• Microsoft Corp. v. AT&T Corp.: The United States Supreme Court Reins in the Extraterritorial Effects of United States Patent Law, 2007
• The Evolution of Business Method Patents, Cleveland Bar Journal, 2004

Address

North Point
901 Lakeside Avenue
Cleveland, OH 44114-1190

Phones

1.216.586.7747 (Business Phone)

Faxes

1.216.579.0212 (Business Fax)

Emails

Contact Us (Business Email)

Websites

http://www.jonesday.com