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Christopher A. Harkins

Practice Summary

Chris Harkins focuses on litigation and patent prosecution. He has litigated in the areas of patent, trade secrets, copyright, tort and contracts, and has prosecuted patents in the mechanical arts and medical devices.

In addition, his experience has included drafting the firm's pro bono policy and serving on the firm's award-winning pro bono program, as well as representing many pro bono clients.

Honors/Distinctions
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  • 2009 National Burton Award for Legal Writing, given in association with the U.S. Library of Congress and the Law Library of Congress
  • 2008 National Burton Award for Legal Writing, given in association with the U.S. Library of Congress and the Law Library of Congress
  • 2007 citation to Mr. Harkins by the U.S. Congress in support of the "Patent Reform Act of 2007" pending in the Senate
  • 2007 National Burton Award for Legal Writing, given in association with the U.S. Library of Congress and the Law Library of Congress
  • 2007 Leading Intellectual Property Lawyer, Leading Lawyers Network, 31 Chicago Lawyer 64 (May 2008) (recommended by peers in a statewide survey to be among the top intellectual property lawyers in Illinois)
  • 2006 Leading Intellectual Property Lawyer, Leading Lawyers Network, 29 Chicago Lawyer 84 (Sept. 2006)(recommended by peers in a statewide survey to be among the top intellectual property lawyers in Illinois)
  • University of Illinois Law Review
    Articles Editor, Publication of Note
  • Moot Court, Civil Rights Team 1989-1990
Representative Matters
Litigation
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  • Encyclopaedia Britannica, Inc., v. Alpine Electronics of America, Inc., et al., No. 2009-1544, -1545, __ F.3d __ (Fed. Cir. June 18, 2010).  Won a second appeal before the Federal Circuit on an issue of statutory interpretation styled “one of first impression for this court” and which ended in successfully defending the district court’s summary judgment invalidating the asserted “children/continuation” patents under 35 U.S.C. § 120 (benefit of earlier filing date) because an intermediate patent application to those asserted patents had failed to make a “specific reference” to the earliest filed parent patent application
  • Encyclopaedia Britannica, Inc., v. Alpine Electronics of America, Inc., et al., No. 2009-1087, 2009 WL 4458527 (Fed. Cir. Dec. 4, 2009).  Successfully argued the appeal to the U.S. Court of Appeals for the Federal Circuit on behalf of Alpine Electronics of America, Inc. and Alpine Electronics, Inc. after winning a summary judgment invalidating a patent as indefinite even though it was allegedly a pioneering patent for a computerized multimedia database that had survived a 4-year examination and 9-year sua sponte reexamination by the Commissioner of Patents.  The defendants included manufacturers of automobile navigation systems.  The summary judgment was granted in Case No. 05-359 (W.D. Tex.).
  • Facility Wizard Software, Inc. vs. Southeastern Technical Services L.L.C. d/b/a Capital Project System Services and The Charlotte Mecklenburg Hospital Authority vs. Facility Wizard Software, Inc., No. 08-CV-5382, 2009 WL 2059934 (N.D. Ill. July 9, 2009).  Representing multiple parties both defending against and asserting trade secrets and business torts.  Won choice of law motion dismissing plaintiff's North Carolina trade secret, deceptive and unfair trade practices, and unfair competition claims, and defeated plaintiff's motion to dismiss breach of contract claim.
  • Encyclopaedia Britannica, Inc., v. Alpine Electronics of America, Inc., et al., No. 06-578 (W.D. Tex.) (filed 2006).  Represented defendants, including manufacturers of automobile navigation systems, in lawsuit alleging infringement of patents.  Won a summary judgment invalidating asserted patents as anticipated based on a break in co-pendency. On appeal to the U.S. Court of Appeals for the Federal Circuit as case No. 2009-1544, -1545.
  • Western Pennsylvania Conservancy v. Heinz, No. 05-C-294 (N.D. Ill.) (filed 2005).   Represented plaintiff and owner of Frank Lloyd Wright's famous Fallingwater® home in a copyright infringement action.  Settled.
  •  Kim v. Dawn Food Products, Inc., No. 04-C-8141, 2006 WL 695257 (N.D. Ill. Mar. 17, 2006).  Represented the defendant in a trade secret litigation.  Won summary judgment of no misappropriation.
  • Optivus Technology, Inc. v. Ion Beam Applications S.A., 469 F.3d 978 (Fed. Cir. 2006).  Represented the plaintiff licensee asserting five patents relating to proton beam therapy systems for treating cancer.  Won a broad claim construction whereby three patents remained for jury trial. Client also asserted California unfair competition, which the appellate court ruled in favor of client as reported above.
  • Levine v. Honda Motor Company, et al., Civil Action No. 05 CV 1795 (D. Md.).  Represented alleged infringer of a patent for an electronic wireless navigation system. Case dismissed in favor of our client's customer without any payments to the patent owner.
  • Tyco Electronics Corp. ,et al. v. Wang Tai Technology Ltd., No. 03-CV-2557 (D. N.J.) (filed 2003).  Represented plaintiff asserting trademarks and counterfeiting allegations.  Defendant settled.
  • Zeevi v. Pioneer North America, Inc., et al., No. 03-1908 (C.D. Cal.) (filed 2003).  Represented defendant in patent infringement lawsuit involving aftermarket vehicle navigation systems.  The plaintiff settled during discovery.
  • Systems Material Handling Co. v. Tyco Electronics Corp., No. 02 CV 04389 (Kan. St. Ct.) (filed 2002).  Represented the defendant in a trade secret litigation.  Won a motion for a more definite statement and the plaintiff settled in response.
  • Rony v. Overture Services Inc., et al., 02 CvS 104 (N.C. St. Ct.) (filed 2002).  Represented the defendant and dot-com defendants in a trade secret litigation.  Settled
  • Tumbleweed Communications Corp. v. E*Trade Group, Inc., No. 02-5087 (N.D. Cal.) (filed 2002).  Patent.  Settled.
  • The Whitaker Corp. v. Edward C. Hill, No. 01CV01736 (D. D.C.) (filed 2001).  Patent. Defendant settled after summary judgment briefing on co-inventorship and joint ownership.
  • Tyco Electronics Corp. v. Hon Hai Precision Industry Co. Ltd., No. 01-09733 (C.D. Calif.) (filed 2001).  Represented plaintiff suing defendant for a declaration that plaintiff's computer electronics products do not infringe any valid patent.  Defendant settled after plaintiff's second-filed summary judgment motion of invalidity.
  • RDV Sports, Inc. v. Logo Connections, Inc., No. 99-CV-1346 (M.D. Fla.) (filed 1999).  Represented professional hockey team in copyright and trademark infringement action.  Defendant settled after defeated its motion to dismiss.
  • Edward C. Hill v. AMP, Inc. (USA) and AMP of Canada, Ltd., No. 2161-S-1999 (Pa. Super. Ct.) (filed 1999).  Represented the defendant in an action involving a breach of confidence, unjust enrichment and patent.  The plaintiff settled in response to a federal declaratory judgment action asserting co-inventorship and joint ownership.
  • John Preston v. Coatings and Chemicals Corp., No. 99 C 5213 (N.D. Ill.) (filed 1999).   Represented the defendant in a breach of contract action.  Asserted counterclaim for unfair competition.  Defeated plaintiff's motion to dismiss.  Plaintiff settled after defendant won a motion for judgment on the pleadings.
  • McKinley Medical L.L.L.P. v. Zdeb, 200 F.R.D. 648 (D. Colo. 2001).  Represented the plaintiff asserting tortious interference, business torts, contracts and patents.  Discovery dispute published as reported above.
Authored Patents
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  • U.S. Pat. No. 7,717,923 entitled, "Over the Endoscope Introducer for Stents"
  • U.S. Pat. No. 7,641,638 entitled, "Flexible Elongate Surgical Needle Device Having a Tissue Engaging Section Being of Greater Flexibility than an Intermediate Section, and Methods of Using the Device"
  • U.S. Pat. No. 7,637,873 entitled, "Wire Guides Having Novel Outer Surface Areas and Reservoirs for Enhancing Hydrophilic Properties and Delivering Therapeutic Agents"
  • U.S. Pat. No. 7,608,056 entitled, "Steerable Catheter Devices and Methods of Articulating Catheter Devices"
  • U.S. Pat. No. 7,601,147 entitled, "Catheter Connector Assemblies and Methods for Attaching a Catheter and Luer Assembly"
  • U.S. Pat. No. 7,588,225 entitled, "Portable Devices for Detachably Securing Cans and Other Objects"
  • U.S. Pat. No. 7,566,300 entitled, "Endoscopic Surgical Access Devices and Methods of Articulating an External Accessory Channel"
  • U.S. Pat. No. 7,153,324 entitled, “Prosthetic Valve Devices and Methods of Making Such Devices”
  • U.S. Pat. No. 7,121,280 entitled, “Medical Devices and Methods of Selectively and Alternately Isolating Bronchi or Lungs”
  • U.S. Pat. No. 6,776,644 entitled, “Lever Actuated ZIF Processor Socket”
  • U.S. Pat. No. 6,635,121 entitled, “Method and Apparatus for Controlling the Decarburization of Steel Components in a Furnace”
  • U.S. Pat. No. 6,342,013 entitled, “Apparatus and Method for a Child’s Suspended Merry-Go-Round”
  • Canadian Pat. No. 2,092,741 entitled, “In-Line Isolator”
Authored Published Patent Applications
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  • U.S. Pub. No. 2006/0264906 entitled, “Melt-Bonded Joint for Joining Sheaths Used in Medical Devices, and Methods of Formig the Melt-Bonded Joint”
  • U.S. Pub. No. 2006/0263145 entitled, “Internal Cannulated Joint for Medical Delivery Systems”
  • U.S. Pub. No. 2006/0259118 entitled, “Delivery System and Devices for the Rapid Insertion of Self-Expanding Devices”
  • U.S. Pub. No. 2006/0259117 entitled, “Tapered Inner Compression Member and Tapered Inner Guide Channel Member for Medical Device Delivery Systems”
  • U.S. Pub. No. 2006/0259063 entitled, “Improved Wire Guides Having Distal Anchoring Devices”
  • U.S. Pub. No. 2006/0247755 entitled, “Internal Joint for Medical Devices, and Methods of Making the Internal Joint”
  • U.S. Pub. No. 2006/0247661 entitled, “Joint for Operatively Coupling a Contoured Inner Compression Member and an Inner Guide Channel Member for Medical Device Delivery System”
  • U.S. Pub. No. 2006/0004436 entitled, “Stent Having Arcuate Struts”
Publications
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Presentations
  • “Attorney Panel Workflow Discussion,” Wolters Kluwer Legal Markets Conference, Chicago, Illinois, April 12-14, 2010
  • "Where is the Next Opportunity?," IP Counsel Café, Palo Alto, California, April 1-2, 2009
Legal Experience
  • Brinks Hofer Gilson & Lione, Chicago, Illinois
  • Skadden, Arps, Slate, Meagher & Flom, New York, New York