Jonathon A. Talcott

Partner

Phoenix

Tel 602.798.5485
Fax 602.798.5595

Minneapolis

Tel 612.371.3211
Fax 612.371.3207

Jonathon A. Talcott is an experienced trial attorney and intellectual property counselor. He specializes in high stakes patent litigation, also representing clients in a broad range of other intellectual property and related commercial disputes, technologies, and transactions. He advocates for his clients throughout the country, from courtrooms to boardrooms.

Jon has a firm grasp on technology from his years as a professional engineer and master’s degree in electrical engineering. His patent litigation experience has spanned a broad range of technologies and industries, including software and hardware for computers, the internet, electronics, financial transactions, cannabis, medical systems, and sporting equipment.

Jon has been on the forefront of legal developments in artificial intelligence (AI). He has advised on novel contract terms, corporate policies, and litigation issues involving AI, particularly with various recently prominent forms of generative AI such as ChatGPT. In doing so, he leverages his background in software, engineering, intellectual property, and litigation.

Services

Experience

Representative Matters

Jon has represented many large and small technology firms, national retailers, and innovative startup companies. His matters have included:

Advised in all areas of technology and IP law, advising on novel contract terms, corporate policies, and litigation issues involving AI, particularly with generative AI such as ChatGPT.
Advised on AI-related terms for engineering client’s internal corporate policies, including terms governing ownership of AI-created works, AI tools created in-house, and indemnities for potential liability arising from workplace use of ChatGPT and other AI tools.
Advised on and negotiated terms in various license and settlement agreements for numerous software companies, covering ownership and indemnity rights relating to new and pre-existing intellectual property created or infringed by AI-assisted employees and contractors.

Litigated various technologies incorporating AI algorithms and technologies, including successful Section 101 patent-ineligibility challenge to email-tracking software patents and “bet the farm” competitor litigation over patents for analyzing HIPPA compliant de-identified health care data.
Represented a charitable health care institution in bet-the-company breach of contract and business torts dispute with major hospital network.
Represented closely held executive employee relocation services company in software trade secrets dispute against competitor.
Secured voluntary dismissal of claims and early exit from national patent enforcement campaign centered in Waco, Texas against prominent automotive component suppliers and tire retailers.
Obtained effective early outcome amidst numerous defendants pursuing expensive alternatives, avoiding software patent litigation fight over highly questionable patents-in-suit.
Achieved extraordinary settlement for major golf equipment retailer in a patent infringement lawsuit against competitor involving 23 patents for golf equipment.
Represented major national tire retailer in complex bet-the-company patent litigation, with a nationally reported successful result involving a complete walkaway by plaintiff in the face of a summary judgment. Succeeded in extraordinary win transferring venue from the Eastern District of Texas to the District of Arizona, the client’s home turf.
Won summary judgment in nationally followed declaratory judgment action concerning Section 101 unpatentability regarding several patents covering common business methods surrounding email technologies.
Secured a preliminary injunction barring competitor from using major national tire retailer client’s name in Georgia and Florida locations. Made law in the Southeast protecting one of the Country’s most prominent trademarks.
Secured final judgment and permanent injunction against unscrupulous European cyber squatter in internationally reported case that preserved ownership of famous client museum name in the renowned Florence Museum. Obtained full award of attorney’s fees for client.

Professional Highlights

Professional Activities

Arizona Technology Council, Board of Directors, Board Secretary

Phoenix Men's Arts Council

Institute of Electrical and Electronics Engineers (IEEE)

Recognition & Accomplishments

The Best Lawyers in America, "Ones to Watch," Commercial Litigation, Litigation - Intellectual Property (Phoenix), 2021-2024

Named as "America's Top 100 High Stakes Litigators" for Arizona, 2018

Speaking Engagements

Speaker, “AI and Your IP,” Association of Corporate Counsel – MN Chapter, June 15, 2023

Speaker, “IP and You,” Las Vegas World IP Day, May 5, 2023

Speaker, “What’s Shaking in IP? The Complex Cocktail of Post-Pandemic Intellectual Property Developments,” The Henry, Phoenix, AZ, April 19, 2023

Publications

"Protecting Trade Secrets: As the Phoenix Startup Scene Heats Up, How Do You Keep Your IP from Melting?" AZ Business, March-April issue 2017

Co-author, "How to Prove it to the PTAB," Managing Intellectual Property, January 26, 2016

"Civil Procedure: A Discussion of the Arizona Supreme Court's 2008-2009 Decisions," 42 Ariz. St. L.J. 583, 583-99, 2010

Related Insights

Credentials

Education

Arizona State University, Sandra Day O'Connor College of Law (J.D. 2010, cum laude)
Pedrick Scholar

University of California, San Diego (M.S.E.E. 2003, electrical engineering)
Recipient, Powell Fellowship

University of Iowa (B.S. 2001, physics and astronomy, with highest distinction)
Member, Phi Beta Kappa; Recipient, Undergraduate Scholar Award

Admissions

Arizona

Minnesota

Federal Circuit Court of Appeals

U.S. Patent and Trademark Office

U.S. District Court for the District of Arizona

U.S. District Court for the District of Minnesota

U.S. District Court for the Eastern District of Texas