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Gary M. Ropski
Gary Ropski has practiced intellectual property law for nearly 35 years at Brinks Hofer Gilson & Lione and has been President of the firm since January 2006. During his tenure as president, in 2009 Brinks became the first intellectual property law firm in the Midwest and the second in the country to receive the Thomas L. Sager Diversity Award for the Midwest Region from the Minority Corporate Counsel Association. Mr. Ropski is a trial lawyer and has participated in more than 100 intellectual property cases, including several jury trials. He has litigated in every federal judicial circuit in the United States and in almost all of the top ten districts for patent litigation. 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. Mr. Ropski has extensive experience in presenting and rebutting damage claims in intellectual property litigation. He also taught classes in Patents and Copyrights for 17 years at Northwestern University School of Law. 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 named him 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. 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 View All
- Chambers USA: America's Leading Lawyers for Business. The 2010 review places him in Tier 1 (Illinois) and states that "[p]atent litigator Gary Ropski is 'overflowing with common sense.' He is skilled in handling cases with a multijurisdictional element, especially those involving Germany." The 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.''' And, the 2008 review, stating that "President of the firm, Gary Ropski's ability to 'stand up to any case' [which] underscores his reputation as 'a stellar member of the Bar'" also singles out Mr. Ropski in Tier 1 (Illinois) of the individual rankings as "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 International Trade Commission."
- 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.'"
- Leading Illinois Intellectual Property Lawyers, 2005-2008 and 2009, 2010 (Band 1)
- Leading Intellectual Property Lawyer, Leading Lawyers Network, Law Bulletin Publishing Company, 2004-2007, 2009, 2010
- #6 among the Top Ten Business Litigators in Illinois, 2009
- Top 10 Leading Lawyers for Business in Illinois, 2006, 2007, 2009, 2010
- Illinois Super Lawyers, Intellectual Property Litigation, 2005-2010
- Illinois Super Lawyers, Top 10 Attorneys, 2006, 2007
- Illinois Super Lawyers, Top 100 Attorneys, 2008-2010
- Best of the Best USA: Patents, 2008, 2010
- PLC Which lawyer?, Recommended Intellectual Property Lawyer in Chicago, 2006-2010
- The Best Lawyers In America, Intellectual Property, 2006-2011
- 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, 2010
- International Who's Who of Business Lawyers, 2009
- 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
Patent Litigation View All
- Affirmance of two summary judgments granted for defendants in Austin, Texas with minimal discovery expense. The plaintiff had been trying unsuccessfully to get the court to rule that electronic encyclopedia patents also covered automobile and hand-held navigation systems.
- Settlement of an ITC proceeding and district court action in Los Angeles relating to 14 aviation-related patents asserted to cover automobile and hand-held navigation systems.
- Obtained a preliminary injunction in Madison, Wisconsin to enforce two patents on lithium iron disulfide batteries.
- Successfully defended German and U.S. companies in ITC proceedings in Washington, DC and district court actions in Detroit, alleging infringement of 11 patents relating to automated mechanical transmissions, including summary judgment for the defendant companies on several patents and a jury verdict of non-infringement and invalidity on the remaining patents. Also obtained the first known positive advisory opinion and enforcement proceeding result from the ITC for a respondent who redesigned a product.
- Settlement of a four-patent lawsuit in Los Angeles involving web-enabled controllers after various summary judgment motions in favor of our client.
- Settlement of a patent infringement lawsuit for an electronic futures trading system a month before trial in Dallas, involving the leading futures exchanges in the country, permitting our client to continue its activities for a payment of less than 5% of the damages sought by plaintiffs.
- Obtained dismissal of a district court case in Chicago in which the plaintiff alleged breach of contract as well as trade secret and copyright infringement regarding health insurance computer software for debugging computer programs, based on untimely submission of the claims and failure to protect trade secrets.
- Defeated preliminary injunction motion in Atlanta for a plastic molding machine equipment patent based, in part, on the “repair vs. reconstruction” doctrine.
- Obtained consent judgments in Rockford, Illinois against nine companies infringing patents for parallel port peripheral products for use with a personal computer.
- Obtained summary judgment in Newark holding noninfringement of a patent for low-fat cheese asserted against four of the largest U.S. cheese manufacturers; affirmed on appeal.
- Won a trial in Washington, DC holding a patent invalid and non-infringed for our Swiss client, which was affirmed without opinion one week after oral argument on appeal.
- Protected our client in Greeneville, Tennessee by limiting a trial judgment to less than 15% of the amount sought by the patentee relating to a furnace used in making fused silica.
- Completed an ITC proceeding within a year of patent issuance with permanent injunctions against two respondents and favorable settlements against the others for a patent relating to SIMM memory modules.
- Obtained judgment of inequitable conduct after a two-week bench trial in Delaware on a patent asserted against several large machine tool manufacturers relating to flexible manufacturing systems—inequitable conduct affirmed on appeal.
- Obtained a summary judgment in San Francisco of non-infringement of a patent for air conveyors, based on the reverse doctrine of equivalents even though literal infringement was found on some claims.
Trademark and Copyright Litigation View All
- Successfully stopped infringement of the famous design trademark, service mark and trade dress for the RUBIK’s CUBE puzzle design in district court and at the U.S. Border Patrol (Customs) in Washington, DC.
- Obtained summary judgment dismissing all counts of copyright and trade secret infringement and breach of contract for computer software for debugging computer programs used in the insurance industry.
- Won an appeal in the Ninth Circuit affirming our client’s fair use of alleged trade dress in a heart-shaped cut-out in a metal figurine on issues of decorativeness, functionality and ornamental, non-trademark use.
- Settled a case between major competitors relating to trade dress in the shape of the head of a cable tie and a related trademark.
- Obtained a consent judgment after successful summary judgment motions thwarted a significant competitor’s product comparisons involving false statements about our client’s trucks.
- Received summary judgment eliminating defendant’s defenses of fair use, priority, laches and estoppel in a trademark lawsuit relating to fire trucks and heavy duty trucks.
- Prevented our client’s competitor from using a NASDAQ trading symbol identical to the trademark of our client.
- Settled a right of publicity and trademark lawsuit permitting our client to continue to use the name EAMES for furniture.
- Established the rule in the Seventh Circuit that a first-filed declaratory judgment action does not take precedence when it merely anticipates an assertive action filed for trademark infringement.
- Developed a courthouse-steps settlement just prior to a judge announcing his decision on a preliminary injunction motion. A non-competitive business had been seeking to prevent our client from using its new trademark based on reverse confusion.
- Obtained denial of a preliminary injunction against our client on a false advertising claim for “five full ounces of milk in every slice.”
- Argued one of the first cases in the Federal Circuit, which affirmed a TTAB decision awarding priority and deciding likelihood of confusion in favor of our client.
Publications
Published Articles View All
- “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," 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
- "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, Buenos 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 View All
- 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
- 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
- Brinks Hofer Gilson & Lione, Chicago, Illinois
1976-Present
President, 2006-Present
- Northwestern University School of Law, Chicago, Illinois
Adjunct Professor, Patents and Copyrights
1981-1997
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