John V. Biernacki

Partner

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.