Emily J.Tait

Partner

(T) + 1.313.230.7920

For more than 15 years, Emily Tait has served as a trusted advisor in complex intellectual property disputes and transactions, earning recognition as one of Michigan’s "Notable Women in the Law." Her matters involve diverse technologies, including vehicle software, health care data, fintech, medical devices, telecommunications, pharmaceuticals, biotech, and consumer products. Through her work in Detroit and around the globe, Emily has developed a deep understanding of issues related to autonomous vehicles, artificial intelligence, connected mobility, and protection and enforcement of rights in software and data.

A registered patent attorney with an advanced degree in international IP, Emily has substantial experience handling patent, copyright, trade secret, and trademark disputes, including cases involving infringement of copyrighted software, data theft, and cybersecurity breaches. She also has participated in successful appeals to the Federal Circuit. Outside of litigation, Emily devises IP protection and enforcement strategy, negotiates and structures transactions and agreements involving IP rights, and conducts due diligence related to the acquisition and licensing of IP.

Emily brings an IP perspective to Jones Day's global, cross-practice Autonomous Vehicles, Artificial Intelligence, and Robotics (AVAIR) team and frequently writes and speaks about AVAIR-related topics and other emerging IP issues. She is a founding member and the 2019-2020 president of the Michigan Intellectual Property Inn of Court and has served the Inn as a "Master" and in various roles on its executive committee since 2012. She is also a Fellow for the Federal Circuit Bar Association.

Experience

  • USG acquired by Gebr. Knauf for $7 billionJones Day advised USG Corporation in the acquisition by Gebr. Knauf KG ("Knauf") of all of the outstanding shares of USG in a transaction valued at $7 billion.
  • Vascular Solutions enforces catheter patents against QXMédicalJones Day represents Vascular Solutions, LLC, Teleflex Innovations Sarl, and Arrow International, Inc in ongoing patent litigation.
  • ION Geophysical wins appeal holding 30 of competitor's patent claims unpatentableION Geophysical, represented by a cross-office, cross-practice team of Jones Day lawyers, obtained a complete victory on appeal against one of its competitors when the Federal Circuit affirmed six final written decisions of the U.S. Patent Office's Patent Trial and Appeal Board (PTAB) holding unpatentable a total of 30 claims across three WesternGeco patents in inter partes review proceedings.
  • The following represents experience acquired prior to joining Jones Day.

    Represented the plaintiff in a complex matter involving misappropriation of software in China that included claims of copyright infringement, trademark infringement, trade secret misappropriation, unlawful circumvention under the Digital Millennium Copyright Act, computer fraud and abuse, and breach of contract. Secured favorable ruling in the Eastern District of Michigan, which led to a settlement.

    Drafted district court and appellate briefs arguing that the U.S. Patent and Trademark Office had erred in calculating a client's Patent Term Adjustment (PTA). Received a favorable judgment from the Court of Appeals for the Federal Circuit that secured additional "B Period" PTA for the client and future patent holders.

    Provided strategic advice on appellate strategy related to security tag manufacturer's challenge to district court's "exceptional case" finding and award of $10.3 million in attorney fees; the Federal Circuit reversed, finding the district court had abused its discretion.

    Provided strategic guidance to a health care nonprofit on its relationship with a third-party software developer and drafted agreements to formalize that relationship and achieve client's objectives.

    Defended a client in a patent infringement case brought by a notorious patent assertion entity in the Southern District of Florida. The patent assertion entity dismissed its own case with prejudice with no money paid by the client.

    Secured a favorable settlement, admission of liability, and a permanent injunction against a seller of counterfeit goods originating in China on behalf of a global automobile manufacturer.

    Defended a client in a multidefendant patent infringement case brought by a patent assertion entity in the Eastern District of Texas. Secured a favorable settlement and dismissal with prejudice.

    Helped U.S. and European arbitrators resolve a complex, global patent dispute involving cardiac stent technology with more than $600 million in damages at stake.

    Represented the plaintiff in a patent infringement case involving laboratory control systems that culminated with entering into a favorable license and settlement.

    Represented the plaintiff in trademark infringement and anti-cybersquatting matter in the Western District of Texas that resulted in a favorable settlement in which the defendant ceased use of the infringing mark and domain name.

    Registered a client's software with the U.S. Copyright Office and enforced the client's rights to the software against a range of infringers. Handled litigation related to the software in the Northern District of Georgia and Northern District of California. Both actions involved claims of copyright infringement, trade secret infringement, and unlawful circumvention under the Digital Millennium Copyright Act.

    Represented the manufacturer of mechanically locking laminate flooring products in a jury trial in the Eastern District of Wisconsin.

    Defended one of the nation's largest banks in a patent infringement case involving check imaging technology in the Eastern District of Texas.

    Advised clients on: software submission requirements for prospective employee programmers; agreements pertaining to software development and source code ownership; software audits; legal issues related to cybersecurity and data piracy protection measures; requirements for international privacy policy.

    Additional Publications

    Publications Prior to Jones Day

    2014

    Post-Octane and Highmark, Will District Courts Flex Their Muscle on Fee-Shifting?  Bloomberg BNA:  Patent, Trademark & Copyright Journal (2014)

    December 2012

    Appellate Advocacy at the Federal Circuit:  Selectivity Remains the Name of the Game, ABA's Appellate Practice Journal, Vol. 32, Issue 1 (December 2012)

    June 2012

    "Where does 'Twombly/lqbal' fit in with patent claims?"  Michigan Lawyer's Weekly (June 25, 2012)

    2011

    "Understanding the Cultural Complexities of IP Issues in Cross-Border Business Deals,"  Inside the Minds:  Protecting IP Rights in International Business Transactions (Aspatore Books, 2011)

    2010

    Extraterritorial Technology in a Territorial Regime:  Challenges After Cardiac Pacemakers v. St. Jude Medical, WIPO Publication (2010)

    2007

    Rethinking the Written Description Requirement:  Whatever Happened to "Possession is Nine-Tenths of the Law"?  8 MINN. J.L. SCI. & TECH. 357-408 (2007) (co-author)

    June 2007

    Meeting the Goal for a Successful IP Settlement, chapter contained in MAXIMIZING INTELLECTUAL PROPERTY VALUE (Aspatore Books, June 2007 (co-author)

    2005

    Recent Development in the Law Governing Patent Claim Interpretation (Skadden advisory memorandum) (July 21, 2005)

    2003

    Is Competition Good Medicine?  (N.Y.L.J., July 15, 2003) (co-author)

    Speaking Engagements

    • June 6, 2019
      Using and Protecting Artificial Intelligence, Machine Learning, and Big Data (Jones Day University)
    • February 22, 2019
      Hot Topics in Copyright Law - panelist in conjunction with a presentation by the Acting Register of Copyrights, Karyn A. Temple. (University of Detroit Mercy Law School)
    • November 8, 2018
      Protecting Artificial Intelligence IP: Patents, Trade Secrets, or Copyrights? (University of Minnesota Law School)
    • June 7, 2018
      IP Right Now: Hot Topics in Patent & Trademark Law (Jones Day University)
    • April 26, 2018
      Trends and Developments in Industrial Technology M&A: IP Aspects of M&A Transactions
    • April 10, 2018
      "Federal Circuit Practice and Insights: A Town Hall with Federal Circuit Judge Kara Stoll" (University of Detroit Mercy Law School, April 10, 2018)
    • November 2017
      "Hot Patent Law Topics", presented to the judges, magistrate judges, and clerks of the Eastern District of Michigan, co-sponsored by the Michigan Intellectual Property American Inn of Court and the Federal Bar Association

    Speaking Engagements Prior to Jones Day

    September 2016

    Protecting and Enforcing IP Rights in Software in China and the US:  Practice Tips and Legal Challenges, International Law Section Meeting, State Bar of Michigan (Detroit Institute of Arts, September 2016)

    September 2012

    "The Federal Circuit Comes to Michigan" (featuring two Federal Circuit Judges, a number of district court judges, the sitting director of the USPTO, and numerous other distinguished participants)

    We use cookies to deliver our online services. Details of the cookies and other tracking technologies we use and instructions on how to disable them are set out in our Cookies Policy. By using this website you consent to our use of cookies.