Jonathan Tuminaro, Ph.D.

Overview

Jonathan Tuminaro, Ph.D. is a director in Sterne Kessler’s Trial & Appellate and Electronics Practice Groups. Jonathan is an experienced trial lawyer who focuses his practice on complex electronics litigation in the U.S. district courts, the U.S. International Trade Commission (ITC), and the Patent Trial and Appeal Board (PTAB). He has represented some of the leading high-tech companies in patent litigation matters relating to telecommunications, network security, LCD flat-panel displays, computer graphics, automotive technologies, GPS location-based service, and wireless power transfer.

Jonathan is particularly well known for his extensive experience handling economics issues in patent litigation—including damages in district court, domestic industry at the ITC, and objective considerations of non-obviousness at the PTAB. He has defended patents that have led to judgments worth nearly $25M and has defended against patents where the damages were alleged to exceed $100M.

Jonathan is a sought-after writer and speaker on patent-litigation issues. He regularly speaks on the ever-evolving interplay between PTAB proceedings and infringement proceedings at the U.S. district court or the ITC. He is a contributing author of Patent Office Litigation, Second Edition (published 2017), co-authoring a chapter on the interplay between PTAB proceedings and investigations at the ITC. Jonathan is also a contributing author of Evidence in Patent Cases (published 2018), co-authoring a chapter on “Evidence Issues in Investigations at the United States International Trade Commission.”

Before becoming a practicing attorney, Jonathan received his bachelor’s degree in physics and mathematics from Canisius College and was a member of the 1995-1996 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 earned a master’s degree and a Ph.D. in physics from the University of Maryland. Jonathan received his J.D. from George Mason University School of Law.

Representative Matters

Representative District Court Matters:

• TRUSTID, Inc. v. Next Caller, Inc. (co-lead counsel for plaintiff in a trial where the jury returned a verdict of willful false advertising in favor of the plaintiff and awarded both compensatory and punitive damages) (D. Del.)
• Proven Networks, LLC v. Palo Alto Networks Inc. (represented defendant in case involving network security) (W.D. Tex.)
• MiiCs & Partners America, LLC et al. v. Funai Electric Co., Ltd. et al. (obtained final judgment in defendant’s favor after court granted motion to exclude testimony of plaintiff’s damages expert two days before a scheduled jury trial) (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.)

Representative PTAB Matters:

• Palo Alto Networks v. Proven Networks (represented petitioner in multiple IPRs relating to network security) (PTAB)
• Palo Alto Networks v. Sable Networks (represented petitioner in multiple IPRs relating to network security) (PTAB)
• Google LLC v. AGIS Software Development, LLC, (representing petitioner in multiple IPRs relating to information sharing between mobile devices) (PTAB)
• Telebrands Corp. v. Tinnus Enterprises, LLC, (represented patent owner in 7 post-grant review proceedings involving 5 different patents relating to a toy balloon apparatus; the PTAB denied institution on 4 of the PGR petitions and confirmed the patentability of all challenged claims in the other 3 PGR proceedings in Final Written Decisions; thus, all challenged claims of all 5 patents were successfully preserved) (PTAB)
• Ford Motor Co. v. Versata Development Group, Inc., (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, (represented patent owner in IPRs relating to graphics-processing technology) (PTAB)
• Advanced Micro Devices, Inc. v. LG Electronics, (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 (represented patent owner in IPRs relating to wavelength-selective switches in optical fiber networks) (PTAB)

Representative ITC Matters:

• Certain Road Construction Machines & Components Thereof, Inv. No. 337-TA-1088 (represented respondents in a patent suit relating to road-milling machines and pavers and screeds) (International Trade Commission)
• Certain Road Milling Machines & Components Thereof, Inv. No. 337-TA-1067 (represented complainant in a patent suit relating to road-milling machines) (International Trade Commission)
• Certain Basketball Backboard Components & Products Containing the Same, Inv. No. 337-TA-1040 (represented 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 (represented 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)

Education

• J.D., George Mason University Antonin Scalia Law School
• Ph.D., Physics, University of Maryland
• M.S., Physics, University of Maryland
• B.S., Physics and Mathematics, Canisius College, magna cum laude