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Gary M. Ropski

Practice Summary

Gary Ropski has practiced intellectual property law for over thirty years at Brinks Hofer Gilson & Lione. Since January 2006 he has been the president of the firm. He has participated in over a hundred intellectual property cases, several of which were jury trials. He has litigated in every federal judicial circuit in the United States. He emphasizes the need to make complex topics easily understandable by a jury or judge, and has often used creative visual and computer-generated techniques at trial.

He has also represented numerous German clients and has been involved in German patent litigation, including the taking of evidence in Germany under the Hague evidence convention. Mr. Ropski has extensive experience in presenting and rebutting damage claims in intellectual property litigation.

Mr. Ropski has received numerous awards, including recently being named sixth among the Top Ten Business Litigators in Illinois by Leading Lawyers Network, in addition to being a Top Ten Leading Lawyer in Illinois for several years. Chambers USA has also named him as a Leading Illinois Intellectual Property Lawyer for many years. Mr. Ropski has also been recognized as an Illinois Super Lawyer in Intellectual Property Litigation and was named one of the Top Ten attorneys in Illinois.

His practice now focuses on litigation, but has included patent prosecution and litigation; trademark prosecution, including oppositions and litigation; trade dress litigation; copyright registration and litigation; trade secret litigation; right of publicity counseling and litigation; and related unfair competition and antitrust matters in federal and state courts. He also taught classes in Patents and Copyrights for seventeen years at Northwestern University School of Law.

Prior to joining the firm, Mr. Ropski completed a manufacturing management training program in the Transportation Systems Business Division of the General Electric Corporation in Erie, Pennsylvania, including both work experience and an educational program.

Honors/Distinctions
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  • Chambers USA: America's Leading Lawyers for Business.  2010 review states: Patent litigator Gary Ropski is "overflowing with common sense."  He is skilled in handling cases with a multijurisdictional element, especially those involving Germany.  2009 review states: Brinks' "great reputation across the IP spectrum covers patent and trademark prosecution and litigation... where firm president Gary Ropski impresses with his patent litigation work." Once again, Chambers USA has singled out Mr. Ropski in the individual rankings in the highest tier and he is "lauded as an 'outstanding attorney.'''  2008 review states: Mr. Ropski is singled out in the individual rankings in the highest tier as having "the ability to 'stand up to any case' [which] underscores his reputation as 'a stellar member of the Bar' ... [and] an 'excellent practitioner in any case.' He defends clients on an international level in all patent-related disputes in front of district courts and the ITC."
  • Leading Illinois Intellectual Property Lawyers, 2005-2008 and 2009 (Band 1)
  • Leading Intellectual Property Lawyer, Leading Lawyers Network, Law Bulletin Publishing Company, 2004-2007, 2009
  • #6 among the Top Ten Business Litigators in Illinois, 2009
  • Top 10 Leading Lawyers for Business in Illinois, 2006, 2007, 2009
  • Illinois Super Lawyers, Intellectual Property Litigation, 2005-2010
  • Illinois Super Lawyers, Top 10 Attorneys, 2006, 2007
  • Illinois Super Lawyers, Top 100 Attorneys, 2008-2010 
  • Euromoney Guide to the World's Leading Patent Law Experts, 1997, 1999, 2001, 2003, 2005, 2009.  Reviews state: "'He has a very clear mind; he's good at boiling down complex facts in a very concise way,' says one client from a prominent industrial company, adding: 'He has excellent skills with us as a client and a wonderful presence in the court room.' Another client says the Chicago attorney "has the ability to grip the attention of the judge and of the jury in court, not by using any tricks, but by speaking with such clarity that you just want to listen to him.'"
  • Best of the Best USA: Patents, 2008, 2010 
  • PLC Which lawyer?, Recommended Intellectual Property Lawyer in Chicago, 2006-2010 
  • The Best Lawyers In America, 2006,-2010
  • International Who’s Who of Patent Lawyers, 2001, 2003, 2005, 2007, 2008, 2010 
  • International Who’s Who of Trademark Lawyers, 2001, 2004, 2005, 2007, 2009
  • International Who's Who of Business Lawyers, 2009
  • Who's Who Legal USA: Trademarks, 2006
  • Who's Who Legal Illinois: Patent and Trademark, 2008
  • Managing Intellectual Property's Guide to the World's Leading Trade Mark Law Practitioners, 2006-2008
  • Euromoney Guide to the World's Leading Trade Mark Law Practitioners, 1996, 1998, 2000, 2006, 2008, 2009
  • Stephen P. Ladas Award from the United States Trademark Association for outstanding article in the field of trademark law, 1980
  • Robert C. Watson Award from the American Patent Law Association for outstanding article in the field of patent law, 1977
  • Executive Editor, Journal of Criminal Law and Criminology, Northwestern University, 1975-1976
  • Tau Beta Pi, Carnegie-Mellon University
Representative Matters
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2010

  • Encyclopaedia Britannica, Inc. v. Alpine Electronics of America, Inc., et al., __ F.3d __, 2010 WL 2465439 (Fed. Cir. 2010). Subject: Motion for summary judgment of invalidity of two patents. Resolution: The Federal Circuit affirms a the summary judgment that two continuation patents are not entitled to the patent application filing date of the parent patent due to a break in copendency. Final judgment in favor of our clients invalidating both of the continuation patents. 

    • 2009

  • Encyclopaedia Britannica, Inc. v. Alpine Electronics of America, Inc., et al., No. 2009-1087 (Fed. Cir. Dec. 4, 2009). Subject: Opponent’s appeal from grant of motion for summary judgment of invalidity based on indefiniteness because the means-plus-function limitations in the patent claims related to computer software and there was no specific algorithm in the specification to provide corresponding structure for the function. Resolution: Decision affirmed in favor of our clients holding that the patent is invalid.
  • Encyclopaedia Britannica, Inc. v. Alpine Electronics of America, Inc., et al., No. A-06-CA-578-LY (W.D. Tex., Aug. 3, 2009). Subject: Motion for summary judgment of invalidity of two patents. Resolution: After a previous holding of invalidity due to indefiniteness of the parent patent, court rules that continuation patents are not entitled to the patent application filing date of the parent patent due to a break in copendency. Final judgment in favor of our clients invalidating both of the continuation patents.
  • KBA-Giori, North America, Inc. v. Muhlbauer, Inc., et al., No. 2:08cv34 (E.D. Va. May 20, 2009). Subject: Motion for summary judgment of invalidity of the patent at issue under 35 U.S.C. §§ 101 and 102. Resolution: Motion denied.
  • KBA-Giori, North America, Inc. v. Muhlbauer, Inc., et al., No. 2:08cv34 (E.D. Va. May 11, 2009). Subject/Resolution: Ruling on claim construction after Markman hearing.
  • In the Matter of Certain Automotive Multimedia Display & Navigation Systems, Components Thereof, and Products Containing Some, No. 337-TA-657 (U.S. Int'l Trade Comm'n, May 2009). Subject: Alleged infringement by our clients of four patents relating to multimedia display systems, including a variety of navigation and communication display and processing functions. Resolution: Case settled on confidential terms.
  • Alpine Electronics Inc. v. Honeywell International Inc., et al., No. 2:2007cv03458 (C.D. Cal. 2009). Subject: Alleged infringement by our clients of 14 patents relating to multimedia display systems, including a variety of navigation and communication display and processing functions. Resolution: Case settled on confidential terms.

    • 2008

  • Energizer Holdings, Inc. and Eveready Battery Co. v. Spectrum Brands, Inc., No. 08-CV-431 (W.D. Wis., Oct. 30, 2008). Subject: Motion for preliminary injunction to stop infringement of two patents by Spectrum's Rayovac brand lithium iron disulfide batteries. Resolution: Court grants our client's motion for preliminary injunction with respect to both patents, pending trial in October 2009.
  • Foboha GmbH and Foboha US, Inc. v. Gram Technology, Inc. and Jess Gram, No. 08-C-0969 (N. D. Ill., Oct. 15, 2008). Subject: Complaint for federal and state unfair competition and other torts due to false or misleading statements about the scope of alleged patent rights. Resolution:Court denies defendants' motion under Fed. R. Civ. P. 12(b)(6) and holds that all counts of our clients' complaint are sufficiently alleged.
  • Eaton Corporation v. ZF Meritor LLC, ArvinMeritor, Inc. and ZF Friedrichshafen AG, No. 03-74844 (E. D. Mich., Oct. 3, 2008). Subject: Jury trial regarding infringement of one patent and invalidity of two patents relating to automated mechanical transmissions. Resolution: Unanimous jury verdict for our clients, the defendants, on all issues.
  • Encyclopaedia Britannica, Inc. v. Alpine Electronics of America, Inc., et al., No. A-05-CA-359-LY (W.D. Tex., Sep. 30, 2008). Subject: Motion for summary judgment of invalidity based on indefiniteness because the means-plus-function limitations in the patent claims related to computer software and there was no specific algorithm in the specification to provide corresponding structure for the function. Resolution: Motion granted in favor of our clients holding that the patent is invalid.
  • KBA-Giori, North America, Inc. v. Muhlbauer, Inc., No. 2:08cv34 (E.D. Va. July 24, 2008). Subject: Motion to dismiss or in the alternative for a more definite statement regarding complaint for infringement of patent for method for quality control of printed sheets. Resolution: Motion for more definite statement granted in favor of our client based on the breadth of the phrase "imaging and print inspection equipment and associated methods."
  • Goss International Americas, Inc. v. Graphic Management Associate, Inc., No. 05-C-5622 (N.D. Ill., May 30, 2008). Subject: Third party subpoena of our client, WRH Marketing Americas; Defendant files objections to the Magistrate Judge's denial of all discovery against WRH Marketing Americas. Resolution: District Judge affirms ruling regarding irrelevance as to marking of products and alleged non-infringing substitutes, but remands to the Magistrate Judge for further consideration. On remand, the Magistrate Judge orders only extremely limited discovery.
  • Eaton Corporation v. ZF Meritor LLC, ArvinMeritor, Inc. and ZF Friedrichshafen AG, No. 03-74844 (E. D. Mich., May 1, 2008). Subject: Reconsideration motion concerning decision on summary judgment motion alleging patent invalidity based on a publication in a German library. Resolution: Court denies motion for reconsideration due to questions of fact relating to public accessibility.
  • Eaton Corporation v. ZF Meritor LLC, ArvinMeritor, Inc. and ZF Friedrichshafen AG, No. 03-74844 (E. D. Mich., April 3, 2008). Subject: Motion for summary judgment precluding claim for willful infringement and enhanced damages based on the objective prong of the Seagate test. Resolution: Motion denied.

    • 2007

  • Eaton Corporation v. ZF Meritor LLC, ArvinMeritor, Inc. and ZF Friedrichshafen AG, No. 03-74844 (E. D. Mich., December 13, 2007). Subject: Reconsideration motions concerning decisions on three summary judgment motions for various issues of infringement and validity on three patents asserted against our clients relating to automated mechanical transmissions. Resolution: All reconsideration motions denied, thereby maintaining the holding of invalidity of one of the three patents. Out of eleven patents originally asserted against our clients, only two remain for trial.
  • Alpine Electronics, Inc. v. Honeywell International, Inc., No. 07-3458-CAS (C.D. Cal., October 29, 2007). Subject: Declaratory judgment action by our client, Alpine, asserting non-infringement and invalidity of 14 patents Honeywell asserted against automobile navigation systems. Resolution: Over the objection of Honeywell's attorneys, the Court orders a relatively early Markman hearing and stays all discovery except that relating to claim construction issues.
  • Eaton Corporation v. ZF Meritor LLC, ArvinMeritor, Inc. and ZF Friedrichshafen AG, No. 03-74844 (E. D. Mich., May 31, 2007). Subject: Six summary judgment motions on various issues of infringement and validity on three patents relating to automated mechanical transmissions. Resolution: Three summary judgment motions granted in our clients' favor, holding non-infringement of two patents by two types of products, and invalidity of the third patent.
  • Jacobs Chuck Mfg. Co. v. Shandong Weida Machinery Co. and One World Technologies, Inc., No. 05 CV 185 (E.D. Tex., April 11, 2007). Subject: Alleged infringement of two patents relating to a chuck for a power drill. Resolution: Case resolved by a confidential settlement agreement and dismissed.
  • Eaton Corporation v. ZF Meritor LLC, ArvinMeritor, Inc. and ZF Friedrichshafen AG, No. 03-74844 (E. D. Mich., March 8, 2007). Subject: Our clients' motion to dismiss plaintiff's lost profits damages recovery theory due to lack of demand for the patented products. Resolution: Summary judgment motion granted in our clients' favor, avoiding millions of dollars in potential damages.

    • 2006

  • One World Technologies, Ltd. v. Rexon Industrial Corp., Ltd., et al, No. 04 C 4337 (N.D. Ill., Nov. 2006). Subject: Infringement of our clients' patents relating to a miter saw having a laser arbor and to a portable power tool support assembly. Resolution: Case resolved by a confidential settlement agreement.
  • One World Technologies, Ltd. v. Rexon Industrial Corp., Ltd., et al., No. 04 CV 00833 (N.D. Ill., Nov. 2006). Subject: Infringement of our clients' patent relating to a power saw handle. Resolution: Case resolved by a confidential settlement agreement.
  • Encyclopaedia Britannica, Inc. v. Alpine Electronics of America, Inc. et al., No. A-05-CA-359-LY (W.D. Tex., Sep. 1, 2006). Subject: Motion to stay action against customer defendants pending resolution of claims against remaining defendants, including manufacturers, in lawsuit alleging infringement of two patents by automobile navigation systems. Resolution: Motion denied.
  • Jacobs Chuck Mfg. Co. v. Shandong Weida Machinery Co. and One World Technologies, Inc., No. 05 CV 185 (E.D. Tex., Aug. 17, 2006). Subject: Motion to dismiss lawsuit, based on lack of standing, for infringement of two patents relating to a chuck for a power drill. Resolution: Motion denied and patent licensor permitted to intervene based on its separate motion.
  • One World Technologies, Ltd. v. Rexon Industrial Corp., Ltd., et al, No. 04 C 4337 (N.D. Ill., May 9, 2006). Subject: Infringement of our clients' patents relating to a miter saw having a laser arbor and to a portable power tool support assembly. Resolution: Summary judgment motions for non-infringement denied, for no inequitable conduct denied, and for invalidity granted in part and denied in part.
  • One World Technologies, Ltd. v. Rexon Industrial Corp., Ltd., et al., No. 04 CV 00833 (N.D. Ill., May 2, 2006). Subject: Infringement of our clients' patent relating to a power saw handle. Resolution: Claim construction ruling in favor of our clients.
  • Levine v. Honda Motor Company et al., Civil Action No. 05 CV 1795 (D. Md.). Subject: Alleged infringement of a patent for an electronic wireless navigation system. Resolution: Case dismissed in favor of our client's customer without any payments to the patent owner.
  • In re Certain Automated Mechanical Transmission Systems for Medium-Duty and Heavy-Duty Trucks, and Components Thereof, No. 337-TA-503 (U.S. Int'l Trade Comm'n, January 10, 2006). Subject: Enforcement and advisory opinion proceeding regarding alleged violation of limited exclusion order and cease and desist order involving a patent relating to automated mechanical transmission systems. Resolution: After a two-day hearing on the merits, the Administrative Law Judge ruled in favor of our clients and held that their redesigned system does not infringe. Our clients were found to have acted in good faith. Over $40 million in requested penalties were denied. It appears that this is the first time in the 75-year history of the ITC's Section 337 investigations that an Administrative Law Judge has ruled for a respondent in an enforcement proceeding.

    • 2005

  • Jacobs Chuck Mfg. Co. v. Shandong Weida Machinery Co. and One World Technologies, Inc., No. 05 CV 185 (E.D. Tex., Dec. 5 and Dec. 22, 2005). Subject: Defendants' motion to dismiss for lack of personal jurisdiction and motion for transfer. Resolution: Motions denied.
  • One World Technologies, Ltd. v. Rexon Industrial Corp. Ltd., No. 04 C 4337 (N.D. Ill., Dec. 13, 2005). Subject: Rexon seeks waiver of attorney-client privilege and production of certain documents based on alleged fraud on the Patent Office. Resolution: Motion denied in favor of our client.
  • One World Technologies, Ltd. v. Porter-Cable Corp., et al., No. 04 C 4337 (N.D. Ill., Nov. 3, 2005). Subject: Infringement of our clients' patent relating to a miter saw having a laser arbor. Resolution: Case settled with respect to Porter-Cable and related defendants on confidential terms.
  • One World Technologies, Ltd. v. Robert Bosch Tool Corporation, et al., No. 04 CV 00833 (N.D. Ill., Oct. 20, 2005). Subject: Infringement of our clients' patent relating to a power saw handle; infringement of Bosch's patent relating to a table saw. Resolution: Case settled with respect to Bosch on confidential terms.
  • Techtronic Industries Co. v. Chervon Holdings Ltd., No. 05 C 4370 (N.D. Ill., Oct. 6, 2005). Subject: Infringement of our clients' patent relating to a suction-mounted laser level product. Resolution: Preliminary injunction granted in favor of our client.
  • One World Technologies, Ltd. v. Rexon Industrial Corp., Ltd., No. 04 C 4337 (N.D. Ill., June 3, 2005). Subject: Infringement of our clients' two patents relating to miter saws and portable power tool supports. Resolution: Claim construction ruling after Markman hearing. Court does not rely on defendant's expert in construing the claims.
  • Drive Financial Services, L.P. v. Progressive Casualty Insurance Company, No. 6-04-CV-558-LED (E.D. Tex. May 16, 2005) and Progressive Casualty Insurance Company v. Drive Financial Services, L.P., No. 1:05CV665 (N.D. Ohio, May 16, 2005). Subject: Alleged infringement of DRIVE trademark and various related trademarks. Resolution: Cases settled on confidential terms.
  • Optivus Technology, Inc. v. Ion Beam Applications S.A., No. CV 03-2052 SJO (VBKx) (C.D. Cal., March 15, 2005). Subject: Infringement of five patents for which our client is a licensee relating to proton beam therapy systems for treating cancer. Issue: Defendant's motion for summary judgment of non-infringement and invalidity. Resolution: Motion denied with respect to non-infringement of four patents and granted as to one. Motion granted with respect to invalidity of two patents. Three patents remain for jury trial.
  • In re Black & Decker/Ryobi Consolidated Patent Litigation, Nos. C.A. 03-1064-GMS and C.A. 04-0141-GMS (D. Del.). Subject: Infringement of three patents asserted by our client and eleven patents asserted against our client. Resolution: Both cases settled on confidential terms.
  • Velcro Indus. B.V. v. Taiwan Paiho Ltd., 2005 U.S. Dist. LEXIS 3179 (D.N.H. 2005). Subject: Infringement of Velcro's patent for a power cord fastener. Resolution: Case settled with respect to our client on confidential terms.
  • In re Certain Automated Mechanical Transmission Systems for Medium-Duty and Heavy-Duty Trucks, and Components Thereof, No. 337-TA-503 (U.S. Int'l Trade Comm'n, January 7, 2005). Subject: Alleged infringement of six patents for automated mechanical transmission systems by our clients. Resolution: After a ten-day hearing on the merits, the Administrative Law Judge ruled in favor of our clients on all but one claim of one patent. Our clients designed around the one remaining claim, and we currently are working with the clients to ensure importation of their redesigned products.

    • 2004

  • Optivus Technology, Inc. v. Ion Beam Applications S.A.,No. CV 03-2052 SJO (VBKx) (C.D. Cal., Dec. 29, 2004). Subject: Infringement of five patents for which our client is a licensee relating to proton beam therapy systems for treating cancer. Issue: Defendant's motion to amend answer to include inequitable conduct defense. Resolution: Motion denied in favor of our client.
  • Ever Win International Corporation v. Motorola, Inc., No. CV04-1059 DSF (AJWx) (C.D. Cal., Dec. 17, 2004). Subject: Ever Win's infringement of our client Motorola's utility patent, design patents and copyrights relating to batteries for mobile devices, such as cellular phones. Resolution: Case resolved by consent judgment affirming the validity of Motorola's patents and requiring Ever Win to pay Motorola a confidential settlement amount.
  • In re Certain Automated Mechanical Transmission Systems for Medium-Duty and Heavy-Duty Trucks, and Components Thereof, No. 337-TA-503 (U.S. Int'l Trade Comm'n, Aug. 23, 2004). Subject: Alleged infringement of six patents for automated mechanical transmission systems by our clients. Issue: Ability of patent owner to prove technical prong of the domestic industry requirement. Resolution:Investigation terminated by the ITC with respect to one of the six patents. The ITC had previously terminated the investigation, at the patent owner's request, with respect to two other patents and several other claims, reducing the claims at issue from approximately 75 to about 10. A hearing on the remaining three patents is pending.
  • One World Technologies, Ltd. v. Robert Bosch Tool Corporation, 2004 U.S. Dist. LEXIS 13007 (N.D. Ill.). Subject: Infringement of our clients' patent relating to a power saw. Issue: Defendant Power Tool Specialist's motion to dismiss for failure to state a claim. Resolution: Motion denied.
  • Optivus Technology, Inc. v. Ion Beam Applications S.A.,No. CV 03-2052 SJO (VBKx) (C.D. Cal., June 22, 2004). Subject: Infringement of five patents for which our client is a licensee relating to proton beam therapy systems for treating cancer. Issue: Defendant's motion for a supplementary protective order to protect source code. Resolution: Motion denied and plaintiffs' order adopted.
  • Ever Win International Corporation v. Motorola, Inc., 71 U.S.P.Q.2d 1697 (C.D. Cal.). Subject: Ever Win's infringement of our client Motorola's utility patent, design patents and copyrights relating to batteries for mobile devices, such as cellular phones. Issue: Motion to dismiss or, in the alternative to transfer from the Central District of California to the Northern District of Illinois. Resolution: Motion denied.
  • Seven Towns Ltd. v. Hazco Promotions Inc., No. 03 C 9252 (N.D. Ill., Feb. 23, 2004). Subject: Design trademark, service mark and trade dress for the RUBIK's CUBE puzzle design. Issue: infringement of our client's rights. Resolution: consent judgment entered in favor of our client ordering injunction against infringement.

    • 2003

  • Zila, Inc. v. Beutlich Pharmaceuticals, Inc., No. 03C-6425 (N.D. Ill). Subject: Patent for a dry handle swab and unit. Issue: Infringement of our client's patent by Beutlich. Resolution: Parties settle before trial by means of a confidential agreement.
  • Rockwell Automation, Inc. v. Schneider Automation, Inc., et al., No. 02-C-1195 (E.D. Wis., Sep. 30, 2003). Subject: Antitrust action regarding enforcement of patent for a computer-based system which allows a company's manufacturing lines to communicate with one another. Issue: Defendants' motions to dismiss. Resolution: Motions denied, but the Court invites a motion to transfer venue to the N.D. Illinois where the underlying and predicate patent case is pending.
  • Zila, Inc. v. Beutlich Pharmaceuticals, L.P., No. CV-03-0035-PHX-FJM (D. Ariz., August 25, 2003). Subject: Patent for a dry handle swab package. Issue: Defendants' motion to dismiss for lack of personal jurisdiction or to transfer venue. Resolution: Motion to dismiss denied, but motion to transfer granted. Our client's temporary restraining order against defendants remains in effect.
  • Schneider Automation, Inc. v. OPTO 22, Inc., No. CV 02-04859 SJO (MANx) (C.D. Cal., May 8, 2003). Subject: Four patents for web-enabled controllers. Issue: Infringement of all four of our client's patents by OPTO 22 and claims for an injunction and for tens of millions of dollars in damages for past infringement. Resolution: With Court supervision, the case is settled prior to a four-week jury trial. The terms of the settlement and license to OPTO 22 are confidential.
  • Schneider Automation, Inc. v. OPTO 22, Inc., No. CV 02-04859 PA (MANx) (C.D. Cal., March 31, 2003). Subject: Four patents for web-enabled controllers. Issue: Schneider's two summary judgment motions to dismiss various invalidity and inequitable conduct defenses. OPTO 22's two summary judgment motions to dismiss Schneider's claims for lost profits and for contributory infringement and inducement. Resolution: Court grants the motions of our client, Schneider, substantially in their entirety. Court denies the motions of OPTO 22.
  • Schneider Automation, Inc. v. OPTO 22, Inc., No. CV 02-04859 PA (MANx) (C.D. Cal., Jan. 7, 2003). Subject: Four patents for web-enabled controllers. Issue: Schneider's motion for sanctions, including attorney fees and costs, for OPTO 22's failure to have a document retention policy in place for more than a year after filing of the lawsuit. Resolution: Court affirms and adopts the Special Master's report granting our client Schneider's motion.

    • 2002

  • Schneider Automation, Inc. v. OPTO 22, Inc., No. CD 02-04859 PA (MANx) (C.D. Cal., Oct.-Nov., 2002). Subject: Four patents for web-enabled controllers. Issue: Six summary judgment motions by OPTO 22 against our client Schneider for non-infringement, invalidity and unenforceability of the patents. Resolution: All motions denied.
  • eSpeed, Inc. and Electronic Trading Systems Corp. v. Board of Trade of the City of Chicago and the Chicago Mercantile Exchange, No. 3:99-CV-1016-M (N.D. Tex., Sep. 4, 2002). Subject: Patent for electronic futures trading system. Issue: Allegations of infringement by our client, Chicago Mercantile Exchange. Resolution: Case settled a month before trial, permitting our client to continue its allegedly infringing activities for a payment of less than 5% of the damages sought by plaintiffs.
  • eSpeed, Inc. and Electronic Trading Systems Corp. v. Board of Trade of the City of Chicago and the Chicago Mercantile Exchange, No. 3:99-CV-1016-M (N.D. Tex., August 15, 2002). Subject: Patent for electronic futures trading system. Issue: Expert testimony on legal issues. Resolution: Court grants our motion to exclude trial testimony of certain of plaintiffs' experts on issues of willfulness and patent law.
  • eSpeed, Inc. and Electronic Trading Systems Corp. v. Board of Trade of the City of Chicago and the Chicago Mercantile Exchange, No. 3:99-CV-1016-M (N.D. Tex., April 15, 2002). Subject: Patent for electronic futures trading system. Issue: Waiver of attorney-client and work product privileges due to reliance on opinions of counsel. Resolution: Court grants plaintiffs' motion in part, requiring limited disclosure of attorney-client communications and work product relating to the subject matter of the opinions of defendants' counsel.
  • Schneider Automation, Inc. v. OPTO 22, Inc., No. EDCS 01-00599-VAP(SGLx) (C.D. Cal., Apr. 8, 2002). Subject: Four patents for web-enabled controllers. Issue: Motion of our clients to compel answers to interrogatories and to appoint a special master to determine the extent of defendant's document destruction. Resolution: Motion granted.
  • Compuware Corp. v. Health Care Service Corp., No. 01-CV-00873 (N.D. Ill., March 29, 2002). Subject: Computer software for debugging computer programs – alleged breach of contract and trade secret and copyright infringement. Issue: Motion of our client, Health Care Service Corp., for sanctions due to plaintiff's failure to comply with discovery orders relating to identification of trade secrets and production of certain licensing agreements. Resolution: Motion granted. Certain of plaintiff's claims are dismissed and plaintiff is ordered to pay our client's attorney fees and costs.
  • Sidel v. Uniloy Milacron, Inc., et al., No. 02-1141 (Fed. Cir., March 14, 2002). Subject: Infringement of U.S. Patent No. 5,968,560 for a Blow Molding Device for Producing Thermoplastic Containers. Issue: Whether a cross-appeal is needed in order for an appellee to argue in support of the district court decision any argument in the record, even though it may involve an attack on the reasoning of the district court or an analysis of matter overlooked by the district court. Resolution: A cross-appeal is not needed. The appellee may nevertheless challenge unfavorable aspects of the district court's order.
  • Schneider Automation, Inc. v. OPTO 22, Inc., No. EDCS 01-00599-VAP(SGLx) (C.D. Cal., Feb. 26, 2002). Subject: Four patents for web-enabled controllers. Issue: Motion of our clients to compel answers to interrogatories and production of documents. Resolution: Motion granted.
  • Compuware Corp. v. Health Care Service Corp., 203 F.Supp. 2d 952 (N.D. Ill., 2002). Subject: Computer software for debugging computer programs – alleged breach of contract and trade secret and copyright infringement. Issue: Motion of our client, Health Care Service Corp., for summary judgment dismissing all counts as untimely. Resolution: Motion granted as to breach of contract count for failure to sue within one year, as to trade secret count for plaintiff's failure to protect trade secrets and as to two-thirds of the copyright count for failure to sue within three years.
  • Edward C. Hill v. AMP, Inc. (USA) and AMP of Canada, Ltd.,No. 2161-S-1999 (Court of Common Pleas, Dauphin County, Pennsylvania); The Whitaker Corp. v. Edward C. Hill, No. 01CV01736 (D.D.C). Subject: Patent and trade secret rights relating to U.S. Patent No. 5,581,051 for a Power Line Insulator. Issue: Hill brought suit in Pennsylvania state court for breach of confidence, unjust enrichment and civil conspiracy. Our client, Whitaker, responded with a federal lawsuit in the District of Columbia asserting ownership rights in Hill's patent as a result of joint inventorship. Hill stayed the Pennsylvania action and filed a motion in the federal case to dismiss for lack of jurisdiction. Resolution: After briefing on the motion, the parties settled both litigations.

    • 2001

  • Compuware Corp. v. Health Care Service Corp., No. 01-CV-00873 (N.D. Ill., Dec. 4, 2001). Subject: Computer software for debugging computer programs – alleged breach of contract and trade secret and copyright infringement. Issue: Motion of our client, Health Care Service Corp., to compel discovery relating to Compuware's third party license agreements for the software at issue. Resolution: Motion granted.
  • Schneider Automation, Inc. v. OPTO 22, Inc., No. EDCV 01-00599-VAP(SGLx) (C.D. Cal., Nov. 28, 2001). Subject: Four patents for web-enabled controllers. Issue: Motion of our client, Schneider, for leave to file a supplemental amended complaint to add a plaintiff, another patent, an allegation of willful infringement and allegations of infringement against additional products. Resolution: Motion granted.
  • Schneider Automation, Inc. v. OPTO 22, Inc., No. EDCV 01-00599-VAP(SGLx) (C.D. Cal., Nov. 26, 2001). Subject: Four patents for web-enabled controllers. Issue: Defendant's motion for bifurcation of trial and stay of discovery relating to liability and damages. Resolution: Motion granted in part and denied in part. Trial is bifurcated, but before the same jury. Discovery is bifurcated, but will conclude before the liability trial.
  • Sidel v. Uniloy Milacron, Inc., et al., 61 U.S.P.Q. 2d 1480 (N.D. Ga., 2001). Subject: Patent for plastic molding machine equipment. Issue: Whether a preliminary injunction should be granted against our client, Uniloy Milacron. Resolution: Preliminary injunction denied, based on lack of irreparable harm, as well as the application of the "repair vs. reconstruction" doctrine.
  • Fellowes Manufacturing Co. v. Allsop, Inc., No. 01-CV-02260 (N.D. Ill.). Subject: Two patents for computer keyboard drawers and mounts. Issue: Infringement and validity of our client's patents. Resolution: Consent judgment of validity and infringement entered in our client's favor.
  • Scheffer, Inc. v. Western Printing Machinery Co., No. 00 C 1006 (N.D. Ill.). Subject: Two patents for rotary die cutting machines. Issue: Infringement and validity. Resolution: Case settled on confidential terms.
  • Coolballs.com-DDS, Co. v. Wally Balls, L.L.C., No. C 00-02121 CAL (N.D. Cal.). Subject: Copyright and trade dress for antenna balls. Issue: Infringement. Resolution: Case settled on confidential terms involving a license from our client to the defendant.
  • TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23 (2001). Subject: Trade dress for a "dual spring" design. Issue: Can trade dress be asserted in a design which is the subject of an expired utility patent? Our client, Panduit Corporation, filed an amicus curiae brief. Resolution: The Supreme Court did not resolve the Constitutional question of whether the clash between the trade dress and patent laws prohibits the holder of an expired utility patent from asserting trade dress protection in the claimed subject matter. However, the Court did remove "competitive necessity" and "other design possibilities" as factors in the utilitarian functionality analysis. They held that it is proper to inquire into a "significant non-reputation-related."
  • Hershy the Tin Man v. Avon Products, Inc., 2001 U.S. App. LEXIS 4389 (9th Cir., March 14, 2001); 59 U.S.P.Q. 2d 1520 (D. Mon., 1999, 2001). Subject: Alleged trade dress in a heart-shaped cut-out in a metal figurine. Issue: Was the use of a heart-shaped cut-out on a "greeting book" necklace by our client, Avon, subject to the fair use defense, as the district court held. Resolution: Affirmed. One week after oral argument, the court issued a single-sentence order affirming the district court on all points discussed (such as decorativeness, functionality, and ornamental, non-trademark use) and remanding for findings regarding good faith as it pertains to the fair use defense. After remand, the district court issued the findings showing that Avon acted in good faith.
  • Manitowoc Foodservice Group, Inc. v. Whirlpool Corp., et al., No. 99 C 1435 (E.D. Wis.). Subject: Our client's four patents relating to an automatic cleaning system for an ice-making machine. Issue: Infringement and validity. Resolution: Case settled on confidential terms.
  • DE-STA-CO Industries v. Tünkers, Inc. and Tünkers Maschinenbau GmbH, No. 00-74218 (E.D. Mich.). Subject: Patent for a locking power clamp. Issue: Alleged infringement and validity. Resolution: Case settled on confidential terms.
  • Allcare Health Management System, Inc. v. Argus Health Systems, Inc., et al., No. 400-CV-1683-E (N.D. Tex.). Subject: Patent relating to health management system. Issue: Alleged infringement and validity. Resolution: Case settled on confidential terms.

    • 2000

  • Thomas & Betts Corporation and Thomas & Betts Holdings, Inc. v. Panduit Corporation, No. 94C 2656 (N.D. Ill.). Subject: Trade dress claim relating to shape of the head of a cable tie. Issue: Alleged trade dress infringement and unfair competition due to the use of a particular head shape of a cable tie and the trademark BARB-TY. Resolution: Case settled, permitting our client to use the head shape and the BARB-TY term.
  • Manitowoc Foodservice Group, Inc. v. Whirlpool Corp. et al., No. 99 C 1435 (E.D. Wis.). Subject: Infringement of our client's four patents. Issue: Defendants' motion to bifurcate trial of willfulness and damages from liability and to stay discovery. Resolution: Defendants' motion denied.
  • Thomas & Betts Corporation and Thomas & Betts Holdings, Inc. v. Panduit Corporation, 55 U.S.P.Q. 2d 1698 (N.D. Ill.).Subject: Trade dress claim relating to shape of the head of a cable tie. Issue: Whether the Lanham Act, as amended by the Trademark Amendments Act of 1999, requires the plaintiffs to bear the burden of proving non-functionality as part of their claim of unregistered trade dress infringement. Resolution: Court decides that plaintiff bears the burden instead of our client.
  • Western Printing Machinery Co. v. Powley, et al., No. 99 C 7931 (N.D. Ill.). Subject: Trademark, trade dress and trade secret infringement. Issue: Disposition of all issues in complaint and counterclaims. Resolution: Court enters consent judgment.

    • 1999

  • Western Printing Machinery Co. v. Powley et al., No. 99 C 7931 (N.D. Ill.). Subject: Trademark, trade dress and trade secret infringement. Issue: Preservation of evidence. Resolution: Court enters ex partetemporary restraining order and then later a preliminary injunction to preserve and prevent the destruction of evidence.
  • Micro Solutions, Inc. v. Computer Connections America, Inc. et al., No. 98 C 50140 (N.D. Ill.). Subject: Patents for parallel port peripheral products for use with a personal computer. Issue: Validity and infringement. Resolution: All four defendants agree to consent judgments admitting validity and infringement and injunctions issue against all infringing products. Case resolved in approximately one year from filing.
  • Thomas & Betts Corporation and Thomas & Betts Holdings, Inc. v. Panduit Corporation, 71 F. Supp. 2d 838 (N.D. Ill. 1999). Subject: Trade dress claim relating to shape of the head of a cable tie. Issue: (1) Does the Court have jurisdiction over plaintiff's extraterritorial claims under the Lanham Act. (2) Does the Court have discretion to decline to exercise its jurisdiction. (3) Should adjudication of the extraterritorial Lanham Act claims be delayed. Resolution:(1) Yes; (2) Yes; (3) Yes – the determination of extraterritorial jurisdiction of the Lanham Act claims arising from foreign business activities should be delayed until after a trial on the domestic issues.
  • Navistar International Transportation Corporation v. Freightliner Corp. et al., 1999 U.S. Dist. LEXIS 11876 (N.D. Ill. 1999). Subject: Product comparisons for trucks. Issue: Whether Freightliner's statements about Navistar's trucks were false and misleading. Resolution: On cross motions for summary judgment, Court dismisses Freightliner's laches defense, dismisses Count II and Count IV, holds that Freighliner's statements were material to the decision to purchase goods in interstate commerce and resulted in actual or probable injury to Navistar and leaves for trial the issue of whether Freightliner's statements were literally false. Consent judgment later entered in favor of our client, Navistar.
  • USX Corporation v. U.S. Steel, Inc., et al., 52 U.S.P.Q. 2d 1532 (D. Kan. 1999). Subject: Our client's trademark and trade name U.S. STEEL. Issue: Validity and infringement. Resolution: Court enters consent judgment with detailed findings or fact and conclusions of law enjoining defendant's use or dilution of U.S. STEEL.
  • Thomas & Betts Corporation and Thomas & Betts Holdings, Inc. v. Panduit Corporation, 48 F. Supp. 2d 1088 (N.D. Ill. 1999). Subject: Count I for trade dress infringement and Count II for unfair competition relating to use of the term BARB-TY. Issue: Does the court have subject matter jurisdiction over Count II when the underlying unfair competition claim for likelihood of confusion based on the public's association of the mark BARB-TY with T&B has been waived. Resolution: Court denies summary judgment, based on a related Seventh Circuit decision, and holds that "T&B will be permitted to proceed on the theory that Panduit is unfairly competing because the term barb tie is a generic term which is likely to cause confusion as to the origin or sponsorship of Panduit's cable ties."
  • Micro Solutions, Inc. v. Hewlett-Packard Company, No. 98 C 50135 (N.D. Ill.). Subject: Patents for parallel port peripheral products for use with a personal computer. Issue: Validity and infringement. Resolution: Defendant agrees to consent judgment admitting validity and infringement and injunctions issue against all infringing products. Case resolved in approximately one year from filing.

    • 1998

  • Navistar International Transportation Corp. v. Freightliner Corp., 52 U.S.P.Q. 2d 1074; 49 U.S.P.Q. 2d 1116; 49 U.S.P.Q. 2d 1108 (N.D. Ill. 1998). Subject: Infringement of registered trademark EAGLE. Issue: Affirmative defenses of fair use, priority, laches and estoppel. Resolution: Court grants our client's summary judgment motion on Freightliner's defenses of priority, fair use, laches, and estoppel. Court denies Freightliner's motion for summary judgment on priority due to tacking and no likelihood of confusion.
  • Harriss v. Avon Products, Inc., No. 97 CV 02886 (D.D.C.).Subject: Right of privacy over use of person's photograph in advertising. Issue: Extent of damages of unintentional use of photograph. Resolution: Case settled for substantially less than the plaintiff's demand.
  • Out of Line Sports, Inc. v. Rollerblade, Inc., No. 96 B 2406 (D. Colo.). Subject: Patent infringement. Issue: Infringement and validity. Resolution: Case settled on the day of a scheduled Markman and summary judgment hearing.

    • 1997

  • Micro Solutions, Inc. v. Dyna Micro, Inc. et al., No. 97 C 50167 (N.D. Ill.). Subject: Patents for parallel port peripheral products for use with a personal computer. Issue: Validity and infringement. Resolution: All four defendants agree to consent orders admitting validity and infringement and injunctions issue against all infringing products. Case resolved in less than one year from filing.
  • Navistar International Transportation Corporation v. Freightliner Corp., et al., No. 97 C 3792 (N.D. Ill.). Subject: Product comparisons for trucks. Issue: Whether Freightliner's statements about Navistar's trucks were false and misleading. Resolution: Temporary restraining order granted in favor of our client Navistar against Freightliner's false statements.
  • Navistar International Transportation Corp. v. Freightliner Corp., 44 U.S.P.Q. 2d 1382 (N.D. Ill. 1997). Subject: Product comparisons for trucks. Issue: (1) Whether Navistar's claims for injunctive relief in an action for false advertising are moot because defendants claim there is no reasonable expectation that the offending conduct will resume. (2) Whether Navistar's claim for monetary damages under the Lanham Act for false advertising should be dismissed because Navistar has not affirmatively pleaded that it has been damaged, only that it is likely to be damaged. Resolution: (1) No. (2) Yes.

    • 1996

  • Alpine Lace Brands, Inc. v. Borden, Inc., Schreiber Foods, Inc., et al., No. 95-1131 (JWB) (D.N.J. 1996), aff'd, Nos. 96-1511, 97-1047 (Fed. Cir. Oct. 22, 1998). Subject: Patent for low-fat cheese. Issue: Patent infringement. Resolution: Court interprets patent claims as a matter of law in a manner favorable to our clients, the alleged infringers. Summary judgment granted in favor of our clients; affirmed by the Federal Circuit after appeal.
  • Ferag, Inc. v. Grapha-Holding, Inc., 935 F. Supp. 1238 (D.D.C. 1996), aff'd mem., 129 F.3d 135 (Fed. Cir. 1997); see also 905 F. Supp. 1 (D.D.C. 1993). Subject: Patent for gatherer-stitcher machine for bindery industry. Issue: Patent infringement and validity.Resolution: After denial of summary judgment for invalidity based on anticipation and grant of summary judgment of non-infringement of certain patent claims, a three-week bench trial was held. The decision was in favor of our client, Ferag. Grapha's patent was held invalid and, if valid, then not-infringed. Affirmed by the Federal Circuit without opinion.
  • Caterpillar, Inc. v. Fuji Heavy Industries, Inc., Arbitration No. 90-03, Tokyo (Japanese Commercial Arbitration Association). Subject: Patent for automobile turbocharger. Issue: Patent infringement and breach of license agreement relating to United States and Japanese patents. Arbitration proceeding in Japan. Resolution: Preliminary decision in favor of Caterpillar.
  • General Mills, Inc. v. Farley Candy Company, No. 3-95-1026 (D. Minn.). Subject: Patents for apparatus, method and product relating to a rolled fruit candy. Issue: Patent infringement and validity. Resolution: Case settled.
  • Hops Grill and Bar, Inc. v. Hart Brewing, Inc., No. 95-2121-CIV-T-23A (M.D. Fla.). Subject: Trademark infringement of HOPS trademark. Issue: Trademark infringement through the use of a NASDAQ trading symbol identical to the trademark of our client, Hops. Resolution: Case settled requiring the defendant to cease using its NASDAQ trading symbol HOPS.
  • Storck, USA, LP and August Storck, KG v. Farley Candy Company, No. 92-CV-552 (N.D. Ill.). Subject: Trade dress for butter cream hard candy packaging. Issue: Trade dress infringement and damages. Resolution: Appeal to the Seventh Circuit after case was handled by another firm who lost a jury trial and received a judgment of $4.3 million against our client. Case was settled after briefing on appeal in a manner favorable to our client.
  • Glascraft, Inc. v. Graves Spray Supply, Inc., No. 95-662-CIV-T-25C (M.D. Fla.). Subject: Patents for fiberglass resin/catalyst spray guns. Issue: Infringement and validity of patents owned by both parties. Resolution: Case settled.

    • 1995

  • Minco, Inc. v. Combustion Engineering, Inc., 903 F. Supp. 1204 (E.D. Tenn. 1995), aff'd, 95 F. 3d 1109 (Fed. Cir. 1996). Subject: Patent on furnace for making fused silica. Issue: Patent infringement and validity. Resolution: After two week bench trial, court finds patent infringed and not invalid. Damages are awarded, but only less than 15% of the amount sought by the patent owner.
  • The Manitowoc Company v. Mile High Equipment Company, No. 94-C-1393 (E.D. Wis.). Subject: Patent infringement for automatic ice-making machine. Issue: Patent infringement and validity. Resolution: After discovery, infringer agrees to consent judgment with injunction against infringement of the patent of our client, Manitowoc.
  • In re Certain Electrical Connectors and Products Containing Same, No. 337-TA-374 (U.S. Int'l Trade Comm'n). Subject: Patents for electrical connectors, particularly for SIMM memory modules. Issue: Temporary Exclusion Order requested against importation of infringing connectors. Resolution: After a TEO hearing lasting twelve days and over 100 hours, the temporary exclusion order is denied as to two respondents. Those respondents settle and agree not to import the allegedly infringing connectors for a certain period of years. The remaining two respondents are permanently enjoined from importation of infringing connectors. Proceeding concluded within one-year from issuance of patent to our client.
  • Franklin International, Inc. v. Borden, Inc., No. C-2-94-235 (S.D. Ohio). Subject: Product labeling for household glue. Issue: Whether Borden's statements about its household glue on its product labeling were misleading. Resolution: After conference regarding pending preliminary injunction motion, the court ordered neutral, joint testing of the product for compliance with the statement. Parties reached a settlement after testing concluded.
  • Marianna Imports v. Helene Curtis, Inc., 873 F. Supp. 308 (D. Neb. 1994). Subject: Patent for permanent hair-waving compound. Issue: Should the patent infringer's second-filed, but first-served declaratory judgment action prevail over the patent owner's first-filed, but second-served assertive action. Resolution: The patent infringer's second-filed action is dismissed in favor of our client, the patent owner's, first-filed assertive action. Case later settles in favor of our client, Helene Curtis, by Marianna's cessation of infringement and payment of damages.

    • 1993

  • The Carborundum Company v. Stackpole Corporation, No. 93-155 Erie (W.D. Pa.). Subject: Patent for sintered alpha silicon carbide. Issue: Patent infringement and validity. Resolution: After hearing on defendant's motion for summary judgment, the case is settled.
  • Helene Curtis, Inc. v. Ken Lange, Stylors, Inc., New Horizons Labs, Ltd., and J. Cannon, Inc., Nos. 3 C 7388-7391 (N.D. Ill.). Subject: Patent for permanent hair-waving compound. Issue: Patent infringement and validity. Resolution: Four cases settled after discovery; defendants agree to cease patent infringement. Our client, Helene Curtis, receives monetary damages.
  • Inland Steel Company v. LTV Steel Company and USX Corporation, No. 91CV4451 (N.D. Ill.). Subject: Patents for antimony-containing steel. Issue: Bifurcated infringement trial over objection of our client, USX. Resolution: After two-week jury trial on the issue of infringement, jury returns verdict in favor of Inland Steel. Verdict is later mooted before entry of judgment in view of favorable decision on reexamination request before the Patent and Trademark Office that the patents are invalid. Case is dismissed.
  • American National Can Company v. Ball Corp., 846 F. Supp. 729 (S.D. Ind. 1993), 27 U.S.P.Q. 2d 1958 (S.D. Ind. 1993). Subject: Patent on construction of can end. Issue: Necessity of trial for invalidity after a jury verdict of non-infringement. Resolution: Court dismisses defendant's declaratory judgment action for invalidity of our client's patent in view of verdict of non-infringement after five week jury trial.

    • 1992

  • AMP Incorporated v. Augat, Inc., No. 92-10066-WD (D. Mass.). Subject: Patents for electrical connectors, particularly for SIMM memory modules. Issue: Patent infringement and validity. Resolution: Case settled after preliminary injunction hearing; Augat ceases manufacture of connector that infringed the patents of our client, AMP.
  • Dotson Wheel Corp. v. Topy Industries, Ltd., No. 89-0197-A (W.D. Va.); Caterpillar, Inc. v. Dotson WheelCorp., No. 90-1010 (C.D. Ill.).; Titan Wheel International, Inc. v. Dotson Wheel Corp., No. 91-3180 (C.D. Ill.). Subject: Patent for wheel rim. Issue: Patent infringement and validity. Resolution: After discovery and denial of summary judgment motion of non-infringement and validity, case settled permitting our client, Caterpillar, to continue to make, use and sell the allegedly infringing wheel rim.
  • Molins PLC v. Textron, Inc., 821 F. Supp. 1551 (D. Del. 1992), 840 F. Supp. 306 (D. Del. 1993), aff'd inpertinent part, 48 F.3d 1172 (Fed. Cir. 1995). Subject: Patents for flexible manufacturing systems. Issue: Inequitable conduct of the U.S. patent attorney and the U.K. patent agent in prosecuting the patent in suit. Resolution: After two week severed bench trial on the issue of inequitable conduct, judgment in favor of our client finding inequitable conduct on the part of the U.S. patent attorney and the U.K patent agent. Decision narrowed on appeal to find inequitable conduct only against U.K. patent agent. Patent held unenforceable.

    • 1991

  • AMP, Inc. v. American Telephone & Telegraph Co., No. 1:CV-90-1446 (M.D. Pa.). Subject: Patent for card edge electrical connector for telephone uses. Issue: Interpretation of patent license. Resolution: After summary jury trial verdict in favor of our client, AMP, the case settled with payment to AMP.

    • 1990

  • Lucia Eames Demetrios v. Herman Miller, Inc., No. 89-3362 JPV (N.D. Calif.). Subject: Trademark EAMES and right of publicity for EAMES name. Issue: Alleged infringement of trademark and right of publicity rights in the name EAMES, after assignment of certain rights to Herman Miller. Resolution: Case settled after discovery and motions, permitting our client, Herman Miller, to continue to use the EAMES trademark.
  • University of Illinois, et al. v. Pioneer Hi-Bred International, Inc., No. 90-2038 (C.D. Ill.). Subject: Trade secrets in seed corn germplasm. Issue: Alleged violation of Illinois Trade Secrets Act due to acquisition of seed corn by Pioneer from University of Illinois. Resolution: Preliminary injunction granted after three-day hearing; case settled on appeal.

    • 1989

  • Wallace Computer Services Inc. v. Sun Microsystems Inc., 13 U.S.P.Q. 2d 1324 (N.D. Ill. 1989). Subject: TOPS trademark. Issue: Plaintiff's motions to strike defenses based on lack of bona fide commercial transaction for alleged first use, lack of existence of the product and reverse palming off. Resolution: Motion denied in favor of our client, Sun Microsystems.
  • Pogue v. Allied Products Corp., 14 U.S.P.Q. 2d 1329 (N.D. Ill. 1989). Subject: Patents and copyrights for computer software for machine control operator interfaces. Issue: Amendment of copyright infringement claim to include a patent infringement claim. Resolution: Motion granted. Case later settled permitting our client, Allied, to continue to use its computer software.
  • Tenman Systems, Inc. v. The Ziegelman Organization, No. 89 CH 43 (N.D. Ill. 1989). Subject: Trade secrets for computer software. Issue: Whether an alleged contract can be enforced on the basis of supposed underlying trade secrets when the signatures on the contract were forged. Resolution: After a document examiner reports that the signatures on the alleged contracts are not genuine, the case settles permitting our client, Ziegelman, to continue to use the computer software.

    • 1988

  • Precision Metal Fabricators, Inc. v. Jetstream Systems Co., 693 F. Supp. 814 (N.D. Cal. 1988). Subject: Patent for air conveyors. Issue: Patent non-infringement based on the reverse doctrine of equivalents, even though literal infringement is found on some claims. Resolution: Summary judgment motion granted in favor of our client, Jetstream.
  • Lemelson v. United States, 6 U.S.P.Q. 2d 1657 (Cl. Ct. 1988). Subject: Patents for robotics. Issue: Motion to dismiss for improper institution of lawsuit and motion for summary judgment of non-infringement of patents. Resolution: Motions denied. Case later settled granting our client Cincinnati Milacron a license under the patents.
  • Medtronic, Inc. v. Intermedics, Inc. No. G-80-295 (S.D. Tex.). Subject: Patent for leads to attach cardiac pacemakers to the heart. Issue: Damages trial before a Special Master after liability trial. Resolution: Medtronic sought $150,000,000 in damages and pre-judgment interest. After the case was fully tried for 15 days and briefed, the case settled for $39.2 million, including a paid-up license for our client, Intermedics.

    • 1987

  • Tempco Electric Heater Corporation v. Omega Engineering, Inc., 819 F.2d 746 (7th Cir. 1987), aff'g No. 85 C 4369 (N.D. Ill. 1985). Subject: TEMPCO trademark for electric heaters. Issue: Did the district court err in dismissing a declaratory judgment on discretionary grounds, because a trademark action involving the same parties and issues was filed by our client shortly after the declaratory judgment action. Resolution: No. The first-filed declaratory judgment action does not take precedence when it merely anticipates of an assertive action filed by our client for trademark infringement.
  • Shiley, Inc. v. Bentley Laboratories, 115 F.R.D. 169 (C.D. Cal. 1987). Subject: Patent for bubble-blood oxygenators. Issue: Motion for relief from judgment due to fraud of patent owner. Resolution: Motion denied.
  • Illinois Tool Works v. Fastec Industries Corp., 1987 U.S. Dist. LEXIS 14099 (N.D. Ill. July 1, 1987). Subject: Trademark FASTEC. Issue: Fastec's motion to dismiss or transfer for improper venue. ITW's motion to compel discovery. Resolution: Fastec's motion to dismiss or transfer denied. Discovery granted for our client, ITW.

    • 1986

  • Shiley, Inc. v. Bentley Laboratories, Inc., 782 F. 2d 992 (Fed. Cir. 1986). Subject: Patents for bubble-blood oxygenators. Issue: Appeal from the denial of a stay of injunction pending an appeal on the merits. Resolution: Appeal dismissed.
  • Ransburg Corporation v. Champion Spark Plug Company, 648 F. Supp. 1040 (N.D. Ill. 1986). Subject: Patent for incipient spark detector for electrostatic spray painting equipment. Issue: Disqualification of law firm based upon concurrent representation of parties. Resolution: Motion to disqualify granted.
  • USX Telecenters Corp. v. USX Corp., 2 U.S.P.Q. 2d 1238 (N.D. Cal. 1986). Subject: Trademark USX. Issue: Remand of state trademark action and disposition of Lanham Act claim. Resolution: Court remands state trademark action but retains defendant's counterclaim for non-infringement of same trademark USX TELECENTERS under the Lanham Act. Court orders sanctions against plaintiff and in favor of our client. After our client's summary judgment motion filed in response to plaintiff's motion for preliminary injunction, the parties entered into a settlement in favor of our client permitting continued use of the trademark USX just minutes before the court was going to announce its ruling on the motions.
  • Shiley, Inc. v. Bentley Laboratories, Inc., 794 F.2d 1561 (Fed. Cir. 1986). Subject: Patents for bubble-blood oxygenators. Issue: Appeal from jury verdict of patent infringement and validity and $44.7 million award (Bentley was represented by another firm at trial). Resolution: Affirmed.
  • Ambrit, Inc. v. Kraft, Inc., 812 F.2d 1531 (11th Cir. 1986). Subject: Trade dress for ice cream bars. Issue: Trade dress infringement. Resolution: Lower court holding of infringement after three-week bench trial affirmed. Injunction modified on appeal to permit our client, Kraft, to use the color royal blue on an ice cream bar wrapper.

    • 1985

  • The Isaly Company v. Kraft, Inc., 227 U.S.P.Q. 415 (M.D. Fla. 1985). Subject: Trade dress for packaging of ice cream bars. Issue: Stay of injunction pending appeal. Resolution: Because our client Kraft will present substantial issues on appeal and denying the stay will effectively moot the appeal, the stay is granted.
  • Gemini Engines Co. v. Solar Turbines, Inc., 225 U.S.P.Q. 662 (T.T.A.B. 1985). Subject: Trademark GEMINI for natural gas engines. Issue: Applicant's motion for dismissal of opposition based upon collateral estoppel. Resolution: Motion granted in favor of our client, Gemini.
  • Shiley, Inc. v. Bentley Labs, Inc., 621 F. Supp. 105 (C.D. Cal. 1985). Subject: Patents for bubble-blood oxygenators. Issue: After $44.7 million award for alleged infringement of Shiley's patents relating to blood oxygenators (Bentley was represented by another firm at trial), we took over the post-judgment matters and appeal. A two-day contempt hearing was held for use of modified oxygenator by Bentley after injunction. Resolution: For our client, Bentley, no contempt.
  • Ransburg Corp. v. Hermann Behr & Sohn (E.D. Mich.). Subject: Patent for electrostatic spray painting.Issue: Evidentiary hearing on witness tampering by infringer Behr. Resolution: No decision by the court; case settled with infringer Behr paying our client Ransburg for license under the patent.

    • 1984

  • Borden, Inc. v. Kraft, Inc., 224 U.S.P.Q. 811 (N.D. Ill. 1984). Subject: False advertising claim for broadcast commercial. Issue: Whether Kraft's advertising campaign for "five full ounces of milk in every slice" was a violation of the Lanham Act. Resolution: For our client, Kraft, preliminary injunction denied after several day hearing.

    • 1983

  • Tempo Communications Inc. v. Columbian Art Works, Inc., 223 U.S.P.Q. 721 (N.D. Ill. 1983). Subject: Trade dress for layout and appearance of a calendar. Issue: Whether the failure to renew copyright registrations for certain trade dress elements puts them in the public domain. Resolution: No. Partial summary judgment for our client Tempo; affirmative defense stricken.
  • Solar Turbines Incorporated v. Gemini Engine Company, 218 U.S.P.Q. 854 (T.T.A.B. 1983), aff'd mem., 727 F.2d 1118 (Fed. Cir. 1983). Subject: Trademark GEMINI for natural gas engines. Issue: Opposition to registration of trademark GEMINI II and design based upon use of GEMINI trademark. Resolution: Opposition sustained. Our client, Solar Turbines, Incorporated, had priority in the use of the goods and the registration was likely to cause purchaser confusion; affirmed on appeal to the Court of Appeals for the Federal Circuit.

    • 1982

  • Zerostat Components, Ltd. v. Shure Brothers, Inc., 220 U.S.P.Q. 752 (N.D. Ill. 1982). Subject: Patent for anti-static devices for records. Issue: Discovery of defendant's profits and earnings from devices allegedly infringing Zerostat's patent. Resolution: Discovery compelled in favor of our client, Zerostat.
  • Koppers Co., Inc. v. Krupp-Koppers GmbH, 676 F.2d 686 (3d Cir. 1982). Subject: Trademark KOPPERS. Issue: Infringement of trademark KOPPERS by prior owner of trademark whose rights were taken by the Alien Property Custodian. Resolution: Lower court holding of infringement affirmed.
  • Technicon Medical Information Systems Corp. v. Green Bay Packaging Inc., 687 F. 2d 1032 (7th Cir. 1982).Subject: Trade secrets in financial accounting computer programs. Issue: Whether the acts of (1) affixing to certain documents a statutory notice of copyright including the prescribed year date of first publication and (2) publishing the documents, estop the party who affixed the notice and published the documents from subsequently asserting that such documents have not been generally published as represented by the copyright notice, but instead contain subject matter which is "trade secret." Resolution: No estoppel.

    • 1981

  • Zerostat Components Ltd. v. Shure Brothers, Inc., 91 F.R.D. 164 (N.D. Ill. 1981). Subject: Patent for anti-static device for records. Issue: Motion for leave to file amended counterclaim to present antitrust violation. Resolution: Motion granted.
  • Eirenberg v. CBS Inc., 521 F. Supp. 450 (N.D. Ill. 1981).Subject: Service mark "YOUR DOLLARS." Issue: Request for injunction against the use of "YOUR DOLLARS" based upon Eirenberg's use of "YOUR DOLLAR'S WORTH." Resolution: Injunction denied in favor of our client CBS.
  • National Association of Realtors v. RealPro (T.T.A.B). Subject: Trademark REALTOR. Issue: Opposition to registration of the trademark REALPRO. Resolution: Opposition denied.

    • 1980

  • Kian v. Mirro Aluminum Company, 88 F.R.D. 351 (E.D. Mich. 1980). Subject: Patent for pizza-making device. Issue: In a case that would normally be tried to a jury, is the denial of a jury trial justified in a case because of the complexity of the patent infringement matter. Resolution: No. Motion to strike jury demand or for appointment of impartial expert witness denied. Case settled at pre-trial conference permitting our client, Mirro, to continue making its product.
  • Swanson-Erie Corp. v. Assembly Machines, Inc. (W.D. Pa. and Pa. Court of Common Pleas). Subject: Ownership of patent for assembly machines conceived while employee was at Swanson-Erie before starting Assembly Machines, Inc. Issue: State court action for assignment of patent. Federal district court action for patent infringement. Resolution: After bench trial, court declines to assign patent to former employer, Swanson-Erie.
  • Medallion v. Airguide Instrument Company (N.D. Ill.). Subject: Trade dress for appearance of a marine depth-measuring device. Issue: Preliminary injunction hearing. Resolution: Preliminary injunction granted after several day hearing; case settled on appeal.

    • 1979

  • Discwasher, Inc. v. McBrady Engineering, No. 79 C 706 (N.D. Ill. 1979). Subject: Trade dress for record cleaning equipment. Issue: Trade dress infringement. Resolution: Consent judgment in favor of our client, Discwasher.
  • Ecodyne Corporation v. Croll-Reynolds Engineering Co., 206 U.S.P.Q. 601 (D. Conn. 1979). Subject: Patent for condensate polishing apparatus. Issue: Declaratory judgment of future infringement of patents and for patent infringement. Resolution: Complaint dismissed because action is premature.
  • Anti-Monopoly, Inc. v. General Mills Fun Group, 611 F. 2d 296 (9th Cir. 1979), reversing 195 U.S.P.Q. 634 (N.D. Cal. 1977), aff’g 195 U.S.P.Q. 633 (N.D. Cal. 1977); on remand, 511 F. Supp. 448 (N.D. Cal. 1981), rev’d 684 F. 2d 1316 (9th Cir. 1982). Subject: Trademark MONOPOLY. Issue: Is the MONOPOLY trademark infringed by the use of the trademark ANTI-MONOPOLY for a real-estate board trading game. Resolution: No infringement. The MONOPOLY trademark is generic. We provided advice and brief-writing assistance in the first appeal.
  • Dresser Industries, Inc. v. Coupling Systems, Inc., 206 U.S.P.Q. 756 (T.T.A.B. 1979). Subject: Trademark MAXI-HOLD for couplings. Issue: Opposition by our client, Dresser, owner of POSI-HOLD trademark. Motion for summary judgment of no proper use of the trademark (void ab initio). Resolution: Opposition of our client sustained, holding that application is void ab initio.
  • Contemporary Books, Inc. v. Columbia Pictures Industries, Inc. et al., No. 78 C 2304 (N.D. Ill.). Subject: Copyright infringement relating to the movie “Close Encounters of the Third Kind.” Issue: Whether the alleged similarities between the movie and the book “The UFO Encounter--A Scientific Inquiry” is based upon similarities of facts or copyrighted subject matter. Also, whether rights in the allegedly infringed work were properly transferred to the defendants by the author after certain transfers were made to Contemporary Books. Resolution: Case settled after summary judgment motion filed by our clients, the defendants.
  • Novo Terapeutisk Laboratorium A/S v. Baxter Travenol Laboratories, Inc., 607 F.2d 186 (7th Cir. 1979). Subject: Patent for microbial rennet for cheese-making. Issue: Disqualification of counsel. Resolution: Seminal ruling in the Seventh Circuit that the presumption of shared client confidences among attorneys in a law firm is rebuttable. Disqualification of our law firm reversed.

    • 1978

  • Hemstreet v. Spiegel, Inc., 211 U.S.P.Q. 598 (N.D. Ill. 1978). Subject: Patent for optical recognition equipment. Issue: Stay of patent infringement action against customer pending resolution of action for infringement on same patent against manufacturer. Resolution: Motion denied.

    • 1977

  • National Acceptance Company of America v. Demes, 446 F. Supp. 388 (N.D. Ill. 1977). Subject: Creditor suit against guarantors upon debtor’s default. Issue: Whether creditor could proceed directly against guarantors and not join the debtor. Resolution: Summary judgment for creditor.
  • Goldberg v. Cordis Corporation, 567 F. 2d 392 (7th Cir. 1977), aff’g 203 U.S.P.Q. 717 (N.D. Ill. 1976). Subject: Patent for leads for cardiac pacemakers. Issue: Whether an inventor can require acknowledgement of his contribution to a product after the contract requiring such acknowledgment has been terminated. Resolution: Affirmed summary judgment for Cordis.
  • Environmental Protection Agency v. Illinois Pollution Control Board, 69 Ill. 2d 394, 373 N.E. 2d 50 (1977). Subject: Pollution control. Issue: Whether the Illinois Pollution Control Board may employ private counsel to represent it and have fees paid by the Attorney General. Resolution: No.
  • Caterpillar Tractor Company v. Illinois Pollution Control Board and Illinois Environmental Protection Agency, 48 Ill. App. 3d 655, 363 N.E. 2d 419 (3d Dist. 1977). Subject: Variance from pollution control board standards. Issue: Whether denial of a variance from emission standards would cause arbitrary and unreasonable hardship on petitioner. Resolution: Reversed the denial of the variance by the Illinois Pollution Control Board.
Publications
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  • “Civil Law, Uncivil Lawyers: Inequitable Conduct Before the U.S. Patent and Trademark Office,” Patentrecht—Festschrift für Thomas Reimann, 2009
  • "IP Asset Management and Litigation Costs," Executive Counsel, Vol. 3, No. 3, May/June 2006 at 29
  • "En Banc Decision-Making in the Federal Circuit," co-author, April 1, 2005
  • "Will An Admission of Patent Validity Preclude A Later Validity Challenge," BNA Patent, Trademark and Copyright Journal, Vol. 66, no. 1632 August 1, 2003 at 416-419; The Metropolitan Corporate Counsel, Vol. 11, No. 9, September 2003 at 68
  • "Civil law, uncivil lawyers," An International Who's Who of Patent Lawyers 7, Law Business Research Ltd., 1998
  • "Claiming and Defending Against Monetary Awards for Trademark Infringement," Intellectual Property Lawcast, Vol. 111, No. 18, September 29, 1997
  • "Celebrity Status and Right of Publicity," New York Law Journal, Entertainment Update Section, p 5, January 31, 1997
  • "Important Decisions, Trends, and Events in United States Patent Trademark Law: 1993 and 1994," Mitteilungen der Deutschen Patentanwälte, October 1995
  • "Butterworths Patent Litigation: Enforcing a Global Patent Portfolio," editor, December 1994
  • "Damages in US Patent Litigation," 21 International Business Lawyer 467, November 1993
  • "Claim Interpretation and Patent Infringement Under United States Patent Law," Mitteilungen der Deutschen Patentanwälte, February 1993
  • "The Stars' Wars: Names, Pictures and Lookalikes," Schweizerische Mitteilungen Uber Immaterialgüterrecht (SMI), August 1990
  • "Damages in USA Intellectual Property Litigation," GRUR Internationaler Teil, June 1990
  • "Damages in USA Intellectual Property Litigation," 72 Journal of the Patent and Trademark Office Society 181, March 1990
  • "The Stars' Wars: Names, Pictures and Lookalikes," 17 A.I.P.L.A. Quarterly Journal 81, 1989
  • "The Right of Publicity and the Celebrity Look-Alike: Now Section 43(a) Proscribes Faces That Deceive," 77 The Trademark Reporter 31, January - February 1987
  • "A Primer on Intellectual Property Rights: The Basics of Patents, Trademarks, Copyrights, Trade Secrets and Related Rights," 50 Albany Law Review, No. 3, p 405, Spring 1986
  • Contributor to "Fraud in the Trademark Office: A TMR Panel," 74 The Trademark Reporter 50, 1984
  • "A 'Non-Obvious' Framework for Analyzing Proof of Secondary Meaning," 11 A.P. L.A. Journal 211, 1983
  • "Further Comments on the Development of the Right of Publicity -- A Matter of Life, Death, and Sometimes the First Amendment," 73 The Trademark Reporter 278, 1983
  • "The Right of Publicity -- The Trend Towards Protecting a Celebrity's Celebrity," 72 The Trademark Reporter 251, 1982; Handbook of the American Patent Law Ass'n, Continuing Legal Education Institute on Business and Intellectual Property Law, 1982 at p M-1
  • "Jury Selection In A Patent Case: Who Will Not Sit In The Jury Box," co-authored with Roy E. Hofer, published in the Handbook of the American Patent Law Ass'n Continuing Legal Education Institute on Patent Jury Litigation, 1981 at p D-1; revised version published in the Practising Law Institute Handbook on Patent Litigation, from a session on December 1-2, 1983 at pp 361-434
  • "The Federal Trademark Jury Trial: Awakening Of A Dormant Constitutional Right," 70 The Trademark Reporter 177, 1980; 1980 Southwestern Legal Foundation Patent Law Annual 227; outline reprinted in the Bulletin of the American Patent Law Association, January-February, 1981, p 75
  • "Constitutional And Procedural Aspects Of The Use Of Juries In Patent Litigation," 58 Journal of the Patent Office Society, 1976, pgs 609, 673
  • Contributor to Gilson, Trademark Protection and Practice, Section 2.15 entitled "The Right of Publicity" and Section 8.06 entitled "Federal Trademark Jury Trials"
  • "Amendments to the Federal Rules of Criminal Procedure: Expansion of Discovery," 66 Journal of Criminal Law & Criminology 23, 1975
  • "Recent Trends -- Entrapment," 66 Journal of Criminal Law & Criminology 325, 1975
Presentations
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  • "Comparison of Patent Litigation in the United States, Germany and Japan," Illinois State Bar Association, Chicago, Illinois, June 12, 2008
  • Minority Corporate Counsel Association Diversity Roundtable Discussion, Washington, D.C., August 7, 2007
  • "Litigating Software Patents," Moderator, Intellectual Property Committee of the American Bar Association Section of Litigation Roundtable Discussion, Chicago, Illinois, April 27, 2006
  • "ITC: Battles at the Border," Brinks Hofer Gilson & Lione Litigation Seminar, Chicago, Illinois, October 25, 2005
  • "The ITC Rocket Docket," Brinks Hofer Gilson & Lione Seminar, Glenview, Illinois, May 31, 2005
  • "Patent Infringement Issues," Law Seminars International, Patent Law for Business People and Non-Patent Lawyers, Chicago, Illinois, July 26, 2004
  • "Client Relationship Management: Improving the In-House/Outside Counsel Relationship," LexisNexis, Law Firm Marketers' Roundtable, Phoenix, Arizona, November 4, 2003
  • "Proof of Monetary Recovery Under the Lanham Act," LexisNexis, Advanced Trademark Strategies Conference, Chicago, Illinois, April 15-16, 2002
  • Trial Practice Program, demonstrated direct examination techniques and acted as instructor, International Trademark Association, Chicago, Illinois, July 11-13, 2000
  • "Grey-Market Goods and Parallel Imports," International Bar Association, Section on Business Law Conference, Barcelona, Spain, September 20-22, 1999
  • "Claiming and Defending Against Monetary Awards for Trademark Infringement," International Trademark Association 119th Annual Meeting, San Antonio, Texas, May 3-7, 1997
  • "Patenting of Computer Software," co-chair, International Bar Association 26th Biennial Conference, Berlin, Germany, October 14-18, 1996
  • "Remedies In USA Patent Litigation," International Bar Association 25th Biennial Conference, Melbourne, Australia, October 9-14, 1994
  • "Intellectual Property Rights in the United States," Wirtschaftsverband Industrieller Unternehmen Baden e.V., Freiburg, Germany, March 29, 1990
  • "Intellectual Property Litigation in the United States," Deutscher Verband der Patentingenieure und Patentassessoren e.V., Wiesbaden, Germany, November 9, 1989
  • "Intellectual Property Litigation in the United States," Gewerblicher Rechtsschutz und Urheberrecht – Bezirksgruppe Südwest, Stuttgart, Germany, October 4, 1989
  • "Damages in Intellectual Property Litigation and the Right Of Publicity," International Bar Association's 22nd Biennial Conference, Buenoa Aires, September 28 and 29, 1988
  • "Revolutionary Changes In Liability and Rewards of New Product Development," Albany Law School/Rensselaer Polytechnic Institute Center for Industrial Innovation Conference, Albany, New York, June 4, 1986
  • American Chemical Society, Division of Chemistry and The Law, 1985 Annual Meeting, Chicago, Illinois, September 10, 1985
  • "Recent Developments in Trademark and Unfair Competition Law," Bureau of National Affairs Seminar, June 21, 1984
  • "The Right of Publicity," United States Trademark Association Forum, New York, New York, March 16, 1983
  • The American Patent Law Association's Annual Meetings, Miami, Florida, January 26, 1981; Scottsdale, Arizona, January 30, 1982
  • 18th Annual Institute on Patent Law of the Southwestern Legal Foundation, Dallas, Texas, March 14, 1980
Memberships & Affiliations
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  • American Bar Association
    Intellectual Property Section
    Litigation Section
  • American Intellectual Property Law Association
    Acting Judge, Giles S. Rich Moot Court Competition
  • Chicago Bar Association
  • Chicago Committee on Minorities in Large Law Firms
    Inaugural Mentorship Academy, Mentor
  • Federal Circuit Bar Association
  • Fédération Internationale des Conseils en Propriété Industrielle
  • Institute for Inclusion in the Legal Profession
    Advisory Board Member, 2010-Present
  • Intellectual Property Law Association of Chicago
    Chair, Antitrust Committee, 1995-1997
  • Intellectual Property Litigator Editorial Board, 1997-2002
  • Intellectual Property Owners Association
    Member, Annual Meeting Program Committee, 2009
    Member, Damages and Injunctions Committee, 2009
    Vice-Chair, Committee on Discovery in Litigation, 2000-2004
  • International Association for the Protection of Intellectual Property
  • International Bar Association
    Chair, Patent Subcommittee of the Intellectual Property Committee,1994-1997
  • International Intellectual Property Association
  • International Trade Commission Trial Lawyers Association
  • International Trademark Association
    Special Advisor to U.S. Legislation Committee regarding drafting a federal right of publicity statute, 1994-1998
    Editorial Board, The Trademark Reporter, 1981-1984; 1987-1989
  • Licensing Executives Society
  • Patent and Trademark Institute of Canada
  • Richard Linn American Inn of Court
    Master, 2006-Present
Legal Experience
  • Brinks Hofer Gilson & Lione, Chicago, Illinois
    1976-Present
    President, 2006-Present
Teaching Experience
  • Northwestern University School of Law, Chicago, Illinois
    Adjunct Professor, Patents and Copyrights
    1981-1997
Civic Activities
  • Chicago and Northern Illinois Region of the National Conference for Community and Justice(formerly the National Conference of Christians and Jews)
    Executive Committee, 1986-2006
    Board of Directors, 1986-2006
  • Northwestern University School of Law
    Law School Fund Board, 2003-2007