Biernacki, John V.

Current Employment Position(s)

Partner

Lawyer Overview

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. John's work also includes merger and acquisition transactions where intellectual property is a significant factor. He is a coordinator of the Firm's patent prosecution group.

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 Soverain Software (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, CipherTrust, Goldman Sachs, National City Bank, Sherwin-Williams, and Sprint Nextel.

John is an adjunct professor at the University of Detroit Mercy School of Law, teaching a course on intellectual property. He also authored a chapter on business method patents for a book published in 2009: "The Impact of Bilski on Business Method Patents."

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

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

Representative Cases

• Harris Corporation acquires Tyco Electronics Wireless Systems , (2009)
• Maverick Capital affiliates invest in a communications firm , (2009)
• Primus Capital acquires MedHost
• RIM builds global patent portfolio for wireless device and wireless network technologies
• The SAS Institute builds patent portfolio for database, data mining, and data warehousing software applications

West Practice Categories

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

Bar Admissions

• Ohio
• Michigan

Education

• John Carroll University
• 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