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.
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.
Patenting Digital Health Innovations Incorporating AI in View of USPTO's Recent Subject Matter Eligibility Guidance
PTAB Rejects "Real Party in Interest" Challenge to Apple’s Inter Partes Review Petition, PTAB Litigation Blog
Jones Day Talks - Trump's Artificial Intelligence Initiative: Implications, Impact, and Industry Reactions
Court of Federal Claims: Patents Are "Public Franchises, Not Private Property", PTAB Litigation Blog
Publications Prior to Jones Day
Post-Octane and Highmark, Will District Courts Flex Their Muscle on Fee-Shifting? Bloomberg BNA: Patent, Trademark & Copyright Journal (2014)
Appellate Advocacy at the Federal Circuit: Selectivity Remains the Name of the Game, ABA's Appellate Practice Journal, Vol. 32, Issue 1 (December 2012)
"Where does 'Twombly/lqbal' fit in with patent claims?" Michigan Lawyer's Weekly (June 25, 2012)
"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)
Extraterritorial Technology in a Territorial Regime: Challenges After Cardiac Pacemakers v. St. Jude Medical, WIPO Publication (2010)
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)
Meeting the Goal for a Successful IP Settlement, chapter contained in MAXIMIZING INTELLECTUAL PROPERTY VALUE (Aspatore Books, June 2007 (co-author)
Recent Development in the Law Governing Patent Claim Interpretation (Skadden advisory memorandum) (July 21, 2005)
Is Competition Good Medicine? (N.Y.L.J., July 15, 2003) (co-author)
- June 6, 2019Using and Protecting Artificial Intelligence, Machine Learning, and Big Data (Jones Day University)
- February 22, 2019Hot 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, 2018Protecting Artificial Intelligence IP: Patents, Trade Secrets, or Copyrights? (University of Minnesota Law School)
- June 7, 2018IP Right Now: Hot Topics in Patent & Trademark Law (Jones Day University)
- April 26, 2018Trends 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
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)
"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)
- L'Università degli Studi di Torino (in conjunction with the World Intellectual Property Organization) (LL.M. in International Intellectual Property with highest honors 2010); University of Michigan (J.D. 2002; Editor, Michigan Law Review; B.S. with distinction 1999; Phi Kappa Phi; James B. Angell Scholar; William J. Branstrom Prize)
- Michigan; New York; U.S. Court of Appeals for the Federal Circuit; U.S. District Courts for the Eastern and Western Districts of Michigan, Eastern and Southern Districts of New York, Eastern District of Texas, and Eastern District of Wisconsin; and registered to practice before the U.S. Patent and Trademark Office
Notable Women Lawyers in Michigan 2017, Crain's Detroit Business (December 11, 2017)
President and co-founder, Michigan IP Inn of Court
Fellow, American Bar Foundation
Fellow, Federal Circuit Bar Association
Board of Directors, Federal Circuit Bar Association (2013-2017)
Recognized multiple times in DBusiness and Michigan Super Lawyers
Profiled in "Giving Back — Love for Michigan Drives IP Attorney" (Detroit Legal News, December 2012)