Jonathan E. Retsky, Partner

Jonathan Retsky is a partner in the Chicago office whose practice primarily focuses on patent litigation and counseling. Mr. Retsky has particular experience working with telecommunications, computer hardware/software, vehicle navigation/location, and semiconductor technologies.

Mr. Retsky’s practice also includes patenting computer software and hardware, licensing and agreement work regarding computer software, counseling for technology transfer/due diligence, as well as providing opinions of counsel regarding non-infringement and invalidity. In addition, he assists clients in intellectual asset management, including developing in-house IP strategies and processes. 

Mr. Retsky previously served as Corporate Vice President and Director of Patent Operations at Motorola, where he was responsible for Motorola’s patent preparation, prosecution, and maintenance activities. He oversaw a worldwide organization, including 50 patent lawyers and a portfolio of more than 25,000 patents. Mr. Retsky also managed Motorola’s defensive IP litigation and matter management practices.

As a design engineer, Mr. Retsky was a member of the architectural team for the Motorola 68030 microprocessor.

Representative Matters

BFGoodrich v. Insight. Represented plaintiff in a preliminary injunction hearing. Patent covered a lightning strike detector for use in small airplanes. After two-day trial, preliminary injunction was granted, which was affirmed on appeal.

Micro Solutions v. Hewlett-Packard, et al. Represented plaintiff-patentee on patent to parallel port interface to computer peripheral devices such as disk drives. Negotiated favorable settlement, which included Hewlett Packard’s exit from the parallel port computer peripheral business.

Oasis Technologies v. Sierra Design. Represented plaintiff patent owner in preliminary injunction hearing. Patent was directed to electronic gaming system with a fixed pool of winning plays. Co-chaired three-day preliminary injunction trial.

SPS Technologies v. Motorola, Inc. Represented defendant in nine-week trial against mis-appropriation of trade secrets claim. Trial resulted in a hung jury.

Vehicle IP v. General Motors, et al. Represented GM in defense of charges of patent infringement for its OnStar service. Patent was directed to server-based vehicle navigation system. Won summary judgment of non-infringement, which was affirmed on appeal. Handled oral argument for GM.

Williams Wireless v. General Motors, et al. Represented GM against charges of patent infringement. Patent was directed to use of fax machines to send digital data. Plaintiff settled with a walk-away dismissal with prejudice for failing to comply with Eastern District of Texas patent disclosure rules.

Activities

Education

Speeches and Publications

• “Best Practices in Budgeting for Patent Litigation,” Vol. 1, No. 6 ABA Landslide (July/August 2009).
• “Patent and Trade Secret Protection of Computer Technology.” VI Software L.J. (2003).
• “Six Steps to Negotiating Successfully Through a Software Audit.” XIII Computer Law Strategist (August 1996). 
• “Computer Software Protection in 1996: A Practitioner’s Nightmare.” J. Marshall L. Review (1996).  
• “Panning for Gold Nuggets in Your Patent/IP Portfolio.” SkyRadio, United Airlines (February 2005).
• “Maxing Out.” IP Law & Business, Panelist (February 2005).
• Adjunct Professor: “Contemporary Technology & Intellectual Property Law (IP 421) – The John Marshall Law School (since 1994).
• Speaker: “Computer Software Protection – A Practitioner’s Nightmare,” 40th Annual Conference on Developments in Intellectual Property, February 22, 1996 (Chicago, IL).
• Speaker: “Licensing in the Electronic Industry,” Licensing Executive Society (USA and Canada), October 1999 (Puerto Rico).
• Moderator: “International Strategies for Patenting Computer Software,” International Bar Association, October 21, 1996 (Berlin, Germany).

Appearances, Quotations, and Committees

• Interviewed on CNBC business news program, “The Money Wheel,” May 14, 1997 regarding Digital Equipment Corp. v. Intel Corp.
• Quoted in “Intel Gets ‘DECKed, But Is It Really Patent Infringement?” Chicago Software Newspaper, July 1997.
• “Digital Targets Ex-Employee Now With Intel,” The Wall Street Journal, June 13, 1997.“Intel’s Designs Go Back Into Dock,” Computer Business Review, June 1997.
• “Digital Suit Trouble for Intel?”, C/Net “Underlying Motive to Digital Suit?” Information Week, May 19, 1997.
• “Cutting Off the Competition,” CardFax, November 26, 1996, News.com (May 1997).
• “Savvy Software Developers Protect Products With Patent Law,” Chicago Software Newspaper, September 1996.
• Co-Chair, Electronics Industry Committee, Licensing Executive Society (USA and Canada) (1996-1999).