Jon R. Trembath

303.357.1631  |  Email  |  vCard  |  Biography

Denver Office
1050 Seventeenth Street
Suite 1950
Denver, CO
80265-0100 USA

ph: 303.357.1670
fax: 303.357.1671

Education

Bar Admissions

Professional Affiliations

Publications

Notable Cases

Jon has 20 years of intellectual property litigation experience, including several trials and appeals. Along the way, he has dealt with the complex, including managing a suit involving 37 patents in the semiconductor and telecommunication arts, and has represented several small clients depending on their intellectual property for survival. Jon has strong analytic and communication skills. He explains complex technologies using simple, understandable language and tells a compelling story while preparing his cases for appellate success. Objective indicators of these skills are Jon's record of success at both the trial stage of litigation and his success with appeals before the United States Court of Appeals for the Federal Circuit. He has won all of the Federal Circuit appeals he controlled. Another objective indicator of Jon's communication skill is a comment recently made by a Judge in one of Jon's cases. The Judge informally confided that the case was the first patent case he understood well. The Court's subsequent ruling made it obvious that it was Jon's presentation of the case that was understood.

Jon has represented Motorola, Freescale, Robert Bosch Tool Corp., Microsoft, Siemens, 3M, Honeywell, Harman Kardon, Terex, OfficeMax, Vermeer Manufacturing Co., U.S. Ecology, Trophy Ridge, Grouser, Department 56, Adaptec, KV33, Featherlite, Smash, Bay West Paper Co., Digital River, Halo Innovations, Cold Spring Granite, Pari, Carbo Ceramics, Connect-A-Dock, Intercept Corp. and Onset Pipe, among others, in litigation. While the focus of Jon's practice is on patent litigation, he has successfully obtained ex parte seizure orders, even with unregistered trademarks, and has litigated color, and other trademarks and right of publicity claims. Jon has experience working with customs to block importation of counterfeit goods, litigating at the ITC and with TTAB opposition and cancellation proceedings.

Jon clerked for the Honorable Randal R. Rader (now Chief Judge), at the United States Court of Appeals for the Federal Circuit. Chief Judge Rader recently selected Jon to speak at his official portrait unveiling. Of Chief Judge Rader's numerous former clerks, Jon was one of only three former clerks invited to speak and was the only attorney in private practice selected. Jon also served as Vice-Chair of the IPO committee on U.S. patent law and is a founding board member of the Colorado I.P. Inn of Court. Jon speaks and writes often on intellectual property issues and was an adjunct professor at the University of Minnesota.

Education

Brigham Young University
B.S.C.E., 1988 (Minor Portuguese)

Brigham Young University
J.D., cum laude, 1991

Judicial Clerk, Honorable Randall R. Rader, U.S. Court of Appeals for the Federal Circuit, 1991-92
Adjunct Professor, University of Minnesota Law School, 1999

Bar Admissions

Texas Supreme Court, 1991
Minnesota State Bar, 1999
Colorado Supreme Court, 2007
U.S. Patent and Trademark Office, 1994
United States Court of Appeals for the Federal Circuit 1992

Professional Affiliations

Intellectual Property Owners Association (IPO) Vice-Chair Patent Law (U.S.) Committee 2007-2010
Minnesota State Bar Association
Texas State Bar Association
Colorado State Bar Association
AIPLA

Publications

KSR International Co. v. Teleflex, Inc. - Obviousness Revisited, The Colorado Lawyer, March 2008.

The Devil Is in the Details: Managing Technology in the Courtroom, Law.com (Nov. 3, 2005)

Recent Developments in Patent Law, Intell. Prop. L.J. 115 (1995)

Notable Cases

On appeal, reversed erroneous claim constructions, including Black & Decker v. Robert Bosch Tool Corp., 2007-1243, 1244 (Fed. Cir. 2008) leading to favorable settlements.

On appeal, had summary judgments of invalidity and noninfringement affirmed, including New Railhead Mfg. v. Vermeer Mfg. Co., 298 F.3d 1290 (Fed. Cir. 2002).

Used a Daubert motion to preclude Plaintiff's damages expert from testifying about lost profits on the eve of trial. The case settled favorably after opening argument.

In one case, in the middle of Jon's direct of his client's CEO, the Judge stopped testimony, and requested that the parties meet in chambers. The Judge advised the Plaintiff that "This is the most ridiculous case I have seen in 18 years on the bench." Not surprisingly, the case settled favorably mid-trial for Jon's client, the Defendant.

After inheriting an erroneous claim construction from prior counsel, Jon tried an electronic consumer product patent case to a split verdict against a leading plaintiff's patent attorney. Jon corrected the claim construction on appeal and the case settled favorably on remand.

Managed a 20+ semiconductor and telecommunication patent case to favorable settlement.

Used a preliminary injunction to cost-effectively compel a medical device company to stop selling its market-leading product.

Used a preliminary injunction to cost-effectively encourage several alleged infringers to take licenses, including the manufacturer of the ubiquitous paper dispensers that produce paper when a hand is waved near the front of the dispenser.

Devastating cross-examination of the Defendant's CEO and issuance of an injunction resulted in the favorable settlement of multi-district patent dispute.

Several cases, including a complex software patent case, settled favorably on the eve of trial.

Obtained an ex parte seizure to stop counterfeiting of an unregistered trademark on memory chips.

Recently selected by a multi-billion dollar company to handle an appeal of a multi-million dollar verdict.