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.
Express Mobile, Inc. v. GoDaddy.com, LLC (District of Delaware): Co-chaired trial team to defeat $400+ million claim of infringement on patents relating to concepts that allow web designers to integrate third-party services into their websites. Cross-examination of key infringement expert and direct examination of client engineer witnesses. The trial court preserved the defense verdict in denying all post-trial motions.
Data Widget v. USA DATA (S.D.N.Y. and District of Arizona): Invalidated asserted patent on 101 grounds following dispositive motion and secured victory at Federal Circuit affirming lower court judgment in all respects.
The Reinalt-Thomas Corp. (Discount Tire) v. Mavis Tire Supply LLC (U.S. District Court for the Northern District of Georgia) On behalf of Discount Tire, with Ballard team, secured a victory in a nationally followed case obtaining a preliminary injunction barring Mavis from using an infringing mark in its expansion in the Southeast and throughout the West. Made law in protecting one of the Country’s iconic trademarks. Prepared key expert reports and defended expert depositions.
Arden Innovations v. Discount Tire (Western District of Texas): Secured voluntary dismissal of claims and early exit from national enforcement campaign centered in Waco against prominent automotive component suppliers and tire retailers.
Tellagemini Communication LLC v. GoDaddy (Western District of Texas): Obtained effective early outcome amidst numerous defendants pursuing expensive alternatives, avoiding litigation fight over highly questionable patents-in-suit.
Parsons Xtreme Golf LLC v. Taylor Made Golf Co. Inc. (District of Arizona): Achieved extraordinary settlement for Parsons Xtreme Golf LLC a patent infringement lawsuit against TaylorMade Golf Co. Inc. involving 23 patents for golf equipment. Led multiple co-pending IPR proceedings before PTAB. Deposed and defended key engineering witnesses.
GeoTag v. Discount Tire (EDTX and District of Arizona): Represented Discount Tire 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. Lead scribe in successful motion to transfer venue from the Eastern District of Texas to the District of Arizona, Discount Tire’s home turf, resulting in swift settlement.
GoDaddy v. Rpost International (District of Arizona): Lead scribe on successfull summary judgment in nationally followed declaratory judgment action concerning Section 101 unpatentability regarding several patents covering common business methods surrounding email technologies.
BoxNic Anstalt v. Gallerie degli Uffizi, (Europe and District of Arizona). Secured final judgment and permanent injunction against unscrupulous European cyber squatter in internationally reported case that preserved ownership of the famous Uffizi trademark and Uffizi.com domain name in the renowned Florence Museum. Obtained full award of attorney’s fees for Uffizi.

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, Litigation - Intellectual Property (Phoenix), 2025

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, "What's Shaking in IP," The Henry, Phoenix, AZ, April 13, 2024

Speaker, "AI and Your IP," virtual presentation to client in-house counsel team, February 13, 2024

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