Jonathan Tuminaro, Ph.D. is a director in Sterne Kessler's Trial & Appellate and Electronics Practice Groups, and focuses his practice on patent litigation at the United States International Trade Commission (ITC), the U.S. district courts, and the Patent Trial and Appeal Board (PTAB). Jonathan has served as counsel in nearly a dozen ITC investigations, dozens of district court cases, and over 50 PTAB proceedings. He has defended patents that led to judgments worth nearly $25M, and has defended against patents where the damages were alleged to exceed $50M. Every year since 2015, Jonathan has been selected to the Washington, DC “Rising Stars” list in IP litigation by Super Lawyers.
Jonathan consistently obtains successful results. For example, this past year, Jonathan successfully defended five patents involved in high-stakes patent litigation relating to consumer products that were challenged in seven different post-grant review proceedings. In three of these proceedings, the PTAB denied institution of trial, and in the other four proceedings, the PTAB confirmed the patentability of all challenged claims in Final Written Decisions. Thus, every single challenged claim of all five patents was successfully preserved. Similarly, during the prior year, Jonathan defended seven software patents that were challenged in 14 different inter partes review (IPR) petitions. The PTAB ultimately denied institution of trial in all 14 IPR petitions, preserving all challenged claims in all seven patents.
Jonathan regularly publishes and speaks on patent-litigation matters. 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.” He also has extensive experience handling economics issues in patent litigation—including domestic industry at the ITC, damages in district court, and objective considerations at the PTAB.
Before becoming a practicing attorney, Jonathan received his Bachelor’s degree in physics and mathematics from Canisius College, and was a member of the ’95-’96 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 then went on to earn a Master’s degree and a Ph.D. in physics from the University of Maryland. He received his J.D. from George Mason University.
- Super Lawyers, "Rising Star - Washington D.C." (2019 - 2015)
- Certain Road Construction Machines & Components Thereof, Inv. No. 337-TA-1088 (representing 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 (representing 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)
- Google LLC v. AGIS Software Development, LLC, IPR2018-01079, IPR2018-01080, IPR2018-01081, IPR2018-01082, IPR2018-01083, IPR2018-01084, IPR2018-01085, IPR2018-01086, IPR2018-01087, IPR2018-01088 (representing petitioner in multiple IPRs relating to information sharing between mobile devices) (PTAB)
- Telebrands Corp. v. Tinnus Enterprises, LLC, PGR2016-00030, PGR2016-00031, PGR2017-00015, PGR2017-00024, PGR2017-00040, PGR2017-00051, PGR2017-00052 (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., IPR2016-01012, IPR2016-01013, IPR2016-01014, IPR2016-01015, IPR2016-01016, IPR2016-01017, IPR2016-01019, IPR2017-00144, IPR2017-00146, IPR2017-00147, IPR2017-00148, IPR2017-00149, IPR2017-00150, IPR2017-00151 (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, IPR2015-00325, -00326, and -00327 (represented patent owner in IPRs relating to graphics-processing technology) (PTAB)
- Advanced Micro Devices, Inc. v. LG Electronics, IPR2015-01409 (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)
- TRUSTID, Inc. v. Next Caller, Inc., 18-cv-00172-LPS-CJB (co-lead counsel for plaintiff in a patent suit relating to call-authentication technology) (D. Del.)
- MiiCs & Partners America, LLC et al. v. Funai Electric Co., Ltd. et al. (obtained final judgment in defendant’s favor after Judge Andrews excluded the testimony of plaintiff’s damages expert two days before a jury trial was scheduled to begin; the Federal Circuit affirmed) (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.)
- Nilssen v. Osram Sylvania, Inc. (provided litigation support for defendant in patent litigation in which eleven of plaintiff’s patents were found unenforceable due to inequitable conduct) (N.D. Ill.)