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James R. Sobieraj

Practice Summary

Jim Sobieraj is a licensed patent attorney with over 27 years of experience in the procurement, licensing and enforcement of intellectual property rights. He has been lead counsel in many cases involving patent infringement, ownership of patent rights, license disputes, misappropriation of trade secrets, trade dress infringement, unfair competition, false advertising, defamation, fraud, antitrust, breach of contract and other commercial litigation. His litigation experience includes bench and jury trials, temporary restraining orders, preliminary injunctions, Markman hearings, appeals, arbitrations and mediations.

Mr. Sobieraj has represented companies in a variety of technologies including analog and digital electronics, microprocessors, electrical and optical connectors, avionics, robotics, software, e-commerce, electromechanical transducers and control circuits, medical devices, pharmaceuticals, infant formula, microporous filter membranes, food sterilization, hydraulics, automotive components, carbon block filters, chemical compositions, packaging material, and various consumer goods.

Honors/Distinctions
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  • The Best Lawyers in America, 2007- 2010
  • Illinois Super Lawyers, Intellectual Property Litigation, 2005-2010; Top 100 Lawyers in Illinois, 2009-2010
  • Euromoney Guide to the World's Leading Patent Law Experts, 2005, 2009
  • Leading Intellectual Property Strategist Intellectual Asset Management magazine’s “IAM 250 - A Guide to the World’s Leading IP Strategists,” 2009-2010
  • Leading Intellectual Property Lawyer, Leading Lawyers Network, Law Bulletin Publishing Company, 2003-2007, 2009
  • BTI Client Service All-Star Team for Law Firms, 2004
  • Euromoney Guide to the World’s Leading Technology, Media and Telecommunications Lawyers, 2003
  • Euromoney Guide to the World’s Leading Information Technology Advisors, 1999
Representative Matters
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  • Quixtar Inc. v. Woodward, et al. (Arbitration, Michigan, 2007-Present). Mr. Sobieraj represents Quixtar in an action relating to misappropriation of trade secrets, breach of contract and tortious interference. After a 16-day trial, the arbitration awarded Quixtar over $25 million.
  • Maui Jim, Inc. v. Tommy Bahama Group, et al. (C.D. Ill. 2007-Present). Mr. Sobieraj represents Maui Jim, which sued Serengeti for infringing two design patents for sunglasses. The case settled.
  • Alticor Inc., et al. v. NCR Corp. (W.D. Mich. 2007-Present). Mr. Sobieraj represents the plaintiffs in an action seeking a declaratory judgment of non-infringement and invalidity of seven NCR patents relating to e-commerce. The case settled.
  • Pokorny, et al. v. Quixtar Corp., et al. (N.D. Cal. 2007-Present). Mr. Sobieraj represents Quixtar in a class action based on RICO and California state claims. The case is pending.
  • Pequignot v. Solo Cup Co. (E.D. Va. 2007-08). Mr. Sobieraj represented Solo Cup against a false patent marking claim during discovery and preparation of a summary judgment motion. The claims eventually were dismissed on summary judgment.
  • Delta T Corporation v. Sun-North, et al. (E.D. Ky., and AAA, 2006-Present). Mr. Sobieraj represents several Canadian corporations in an action removed from a Kentucky state court, and then ordered to arbitration. The plaintiff alleges patent infringement, extortion and breach of contract. The case settled.
  • Butler Manufacturing Co. v. Lindab Butler Kft (AAA, 2006-2007). Mr. Sobieraj represents the Hungarian subsidiary of a Swedish manufacturer of metal building products in a dispute over a patent and technology license agreement. The case settled.
  • Nano-Proprietary Inc. v. Till Keesmann (N.D. Ill. 2006). Mr. Sobieraj represents Mr. Keesmann in an action concerning the termination of an exclusive license agreement for a pioneer patent in the field of carbon nanotubes. The case settled.
  • ASC, Inc. v. Dura Convertible Systems, Inc. (E.D. Mich 2006). Mr. Sobieraj represented Dura Convertible Systems, Inc., a subsidiary of Collins & Aikman Corporation, in an adversary proceeding in a bankruptcy court. Dura has been accused of patent infringement. The case settled.
  • New Medium Technologies LLC, et al. v. LG Philips LCD, et al. (N.D. Ill. 2006). Mr. Sobieraj represents LG Philips LCD, which has been accused of infringing three patents relating to LCD panels. The case settled.
  • Wilhelm Karmann GmbH v. Dura Convertible Systems, Inc. (E.D. Mich 2006). Mr. Sobieraj represented Dura Convertible Systems, Inc., a subsidiary of Collins & Aikman Corporation, in an adversary proceeding in a bankruptcy court. Dura has been accused of patent infringement. The case settled.
  • Energy Transportation Group, Inc. v. Sonic Innovations, Inc, et al. (D. Del. 2005-2008). Mr. Sobieraj represented several defendants in a patent infringement case based on two patents relating to electronic hearing aids. The case settled.
  • Tristrata Technology, Inc. v. Alticor Inc., et al. (D.Del. 2005-2006). Mr. Sobieraj represented the defendants in a patent infringement case based on three patents relating to alphahydroxy acids in skin care products. The case settled.
  • Stewart & Assoc. Int’l Inc., et al. v. Quixtar Inc., et al. (AAA.). Mr. Sobieraj represents the defendants in a breach of contract action. The case settled.
  • Brunswick Bowling and Billiards Corp. v. Qubica USA, Inc. (M.D. Fla. 2005-2006). Mr. Sobieraj represented Brunswick, which sued for infringement of two patents related to bowling scoring consoles. The case settled.
  • Dioptics v. Maui Jim, Inc. (N.D. Cal. 2005). Mr. Sobieraj represented Maui Jim in a declaratory judgment action brought by Dioptics seeking a declaration of non-infringement of two Maui Jim design patents for sunglasses. Dioptics has asserted infringement of two of its design patents. The case settled.
  • Tenneco Automotive Inc. v. Visteon Corp. (D. Del. 2003-2005). Mr. Sobieraj represented Visteon, which was accused of infringing two patents on catalytic converters. One patent was dismissed prior to trial. Following a six-day jury trial on the second patent, the case settled before the jury delivered a verdict.
  • Nitro Distributing, et al. v. Alticor Inc., et al. (W.D. Mo. 2003-2010). Mr. Sobieraj represents the defendants in an antritrust case. All claims were dimissed on summary judgment, and the dismissal was affirmed by the 8th Circuit
  • Oxford Gene Technology Limited v. Motorola, Inc. (N.D. Ill. 2002-04). Mr. Sobieraj represented Motorola, which was accused of infringing a patent directed to DNA arrays. The case settled.
  • Charles E. Hill & Associates, Inc. v. Amazon.com, Inc., et al. (E.D. Texas 2002-2005). Mr. Sobieraj represented Quixtar, Inc., one of several defendants accused of infringing three patents directed to electronic commerce. The case settled.
  • Donner Inc. v. Delta Air Lines, et al. (N.D. Georgia 2002). Mr. Sobieraj represented Visteon, Inc., one of several defendants accused of infringing two patents directed audio, telephonic and entertainment systems in vehicles. The case settled.
  • Alticor Inc. v. Ultra-Sun Technologies, Inc. (W.D. Mich. 2002-2004). Mr. Sobieraj represented Alticor in an action based on claims of false advertising under federal and state law, and infringement of two patents relating to water treatment systems. The false advertising claims were settled before trial. The Federal Circuit ruled in Alticor’s favor on the patent claims. The case then settled.
  • Lindab AB v. Eastern Sheet Metal, Inc. (S.D. Ohio 2001-2004). Mr. Sobieraj represented Lindab, which accused the defendant infringing a patent directed to ventilation duct technology. The case was resolved after a Markman hearing.
  • Tyco Electronics Corp. v. Hon Hai Precision Industry Co. Ltd (C.D. Cal. 2001-2002). Mr. Sobieraj represented Tyco in a declaratory judgment action filed against four Hon Hai patents on PGA and BGA connectors that are used with microprocessors. The case settled.
  • Nartron Corp. v. Amway Corp. (Michigan State and Bankruptcy Courts, 1991-2005). Mr. Sobieraj represented Amway in a lawsuit involving claims of ownership of patent rights, breach of contract, and trade secret misappropriation relating to end-of-life indicators for water filters. Following bench trials on liability and damages, the trial court awarded Amway all of the patent rights and damages for Nartron’s breach of contract and trade secret misappropriation. The Court of Appeals affirmed the award of patent rights, affirmed Nartron’s liability for several hundred thousand dollars of damages and interest, and remanded for further proceedings on Amway’s claim for additional damages. Nartron subsequently filed for bankruptcy protection. The case settled with Nartron paying Amway $3.5 million.
  • Procter & Gamble v. Randy Haugen and Amway Corporation (D. Utah, 1995-2003). Mr. Sobieraj represented Amway against P&G’s claims based on the Lanham Act, defamation per se, tortious interference with business relations, unfair competition, negligent supervision and vicarious liability. All of P&G’s claims were dismissed at the pleading stage or by summary judgment, and the 10th Circuit affirmed.
  • AMP Incorporated v. Teradyne, Inc. (M.D. Pa. 1998-1999). Mr. Sobieraj represented AMP, which sued Teradyne for infringing two AMP patents and for misappropriating trade secrets related to high density/high speed electrical connectors. The case involved a two-day Markman hearing. The case settled shortly after AMP filed its oppositions to Teradyne’s motions for summary judgment.
Other Litigation Matters
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  • Nitro Distrib., Inc. v. Alticor Inc., 565 F.3d 417 (8th Cir. 2009)
  • Nitro Distrib., Inc. v. Alticor Inc., 453 F.3d 995 (8th Cir. 2006)
  • Alticor Inc. v. Ultra-Sun Technologies, Inc., 269 F.Supp. 2d 936 (W.D. Mich. 2003)
  • Procter & Gamble v. Haugen and Amway Corp., 317 F.3d 1121 (10th Cir. 2003)
  • Procter & Gamble v. Haugen and Amway Corp., 158 F. Supp.2d. 1268 (D. Ut. 2001)
  • Procter & Gamble v. Haugen and Amway Corp., 222 F. 3d 1262 (10th Cir. 2000)
  • Procter & Gamble v. Amway Corp., 80 F.Supp. 2d 639 (S.D. Tex. 1999)
  • Procter & Gamble v. Haugen and Amway Corp., 179 F.R.D. 622 (D. Ut. 1998)
  • Procter & Gamble v. Haugen and Amway Corp., 947 F. Supp. 1551 (D. Ut. 1996)
  • Nike Inc. v. Wolverine World Wide, Inc., 43 F. 3d 644 (Fed. Cir. 1994)
  • Amway Corp. v Nartron Corp., 32 USPQ 2d 1757 (W.D. Mich. 1994)
  • Wolverine World Wide Inc. v. Nike Inc., 38 F. 3d 1192 (Fed. Cir. 1994)
  • Amway Corp. v. Nartron Corp., 29 USPQ 2d 1314 (Fed. Cir. 1993)
  • Amway Corp. v. Nartron Corp., 25 USPQ 2d 1944 (W.D. Mich. 1992)
  • Cuno Inc. v. Pall Corp., 729 F. Supp. 234 (E.D. N.Y.1989)
  • Michod v. Walker Magnetics Group Inc., 115 FRD 345 (N.D. Ill. 1987)
  • Dana Corp. v. American Precision Co., 221 USPQ 1098 (N.D. Ill. 1984)
Publications
Presentations
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  • "Evaluating and Managing the Risks of IP Litigation in the U.S," Freshfields Bruckhaus Deringer and Brinks Hofer Gilson & Lione Litigation Seminar on What Every European Company Should Know About Litigation in the U.S, Munich, Germany, June 21, 2007
  • "Resolving International Licensing Disputes Through Mediation," Licensing Executives Society International Conference, Zurich, Switzerland, June 20, 2007
  • "International Arbitration," Licensing Executives Society (USA & Canada) 2006 Annual Meeting
  • "The Quilt Work of Damages Methodologies in Matter's within the Circuit's Preview," The Federal Circuit Bar Association Bench and Bar Conference, Albuquerque, New Mexico, July 1, 2006
  • "Managing The Risks of IP Litigation," Lorman Seminar, Chicago, Illinois, May 4, 2006
  • "Antitrust Issues in Patent and Technology Licensing," Licensing Executives Society International Conference, Seoul, Korea, April 12, 2006
  • "Dispute Resolution Alternatives in the Pacific Rim," Licensing Executives Society International Conference, Seoul, Korea, April 10, 2006
  • "Assessing and Managing the Risks of IP Litigation," Brinks Hofer Gilson & Lione Litigation Seminar, October 25, 2005
  • "What Business Executives Must Know About IP Litigation," Licensing Executives Society (USA & Canada) 2005 Annual Meeting
  • "Leaders of Licensing Panel Discussion," Licensing Executives Society (USA & Canada) 2005 Annual Meeting
  • "IP Bankruptcy: A Dastardly Deed," Meeting of the Licensing Executives Society International, Paris, France, March 31, 2004
  • "The Doctrine of Equivalents in Europe and the U.S.: A Case Study," Licensing Executives Society International Conference, Olso, Norway, June 18, 2003
  • "Business Method Patents: Introduction and Strategies," Chicago Bar Association Corporate Law Department Committee, June 5, 2003
  • "Protecting Your Turf: Tips and Traps for Ownership of IP Rights," Meeting of the Licensing Executives Society, Silicon Valley Chapter, San Jose, California, March 26, 2003
  • "Intellectual Property Issues Arising From Joint Development Projects," Joint Meeting of the Licensing Executives Society of Korea and AIPPI, Seoul, Korea, October 7, 2002
  • "The Role of Intellectual Property in E-commerce and the Internet," Licensing Executives Society, USA & Canada, Annual Meeting, 2001
  • "Winners and Losers – Finding the Right Intellectual Property and E-Business Strategies," Licensing Executives Society,USA & Canada, Winter Meeting, 2001
  • "Innovation at the Speed of E-Commerce: Strategic Business and Intellectual Property Perspectives," University of Chicago Graduate School of Business Symposium, Chicago, Illinois, September 7, 2000
  • "Strategic Alliances in the Electronics Industry," Licensing Executives Society, USA & Canada, Annual Meeting, 1994
  • "Contracting for Alternative Dispute Resolution: An Application to Intellectual Property," American Intellectual Property Law Association Annual Meeting, 1993
  • "Structuring the Licensing Agreement," Licensing Executives Society, USA & Canada, Seminars, Chicago, Illinois, 1992 and 1990
  • "Reasonable Royalties – What Does Reasonable Mean?" Licensing Executives Society, USA & Canada, Annual Meeting, 1991
  • "Building a Damages Claim," Licensing Executives Society, USA & Canada, Annual Meeting, 1990
Memberships & Affiliations
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  • Licensing Executives Society
    President, 2002-2003
    President-Elect, 2001-2002
    Secretary, 1998-2001
    International Delegate, 1997-Present
    Board of Trustees, 1996-2004
    Meeting Chairman, 1999 Annual Meeting; 1995 Winter Meeting
    Workshop Program Chairman, 1996 Annual Meeting; 1992 Western Meeting
    Arrangements Chairman, 1995 Annual Meeting; 1994 Winter Meeting
    Chicago Chapter Chairman, 1995-1996
    Committee Meetings Chairman, 1993 Annual Meeting
    Electronics Committee Chairman, 1992-1994
  • Licensing Executives Society Foundation
    Board of Directors, 2003-Present
  • Licensing Executives Society International
    Chair, 2008 LES International Conference
    Vice Chair, Dispute Resolution Committee, 2005-Present
    Co-Chair, Meetings Committee, 2004-2005
    Vice-Chair, Meetings Committee, 2002-2004
    Vice-Chair, European Committee, 2000-2002
  • Intellectual Property Law Association of Chicago
    President, 2007
    President-Elect, 2006
    Vice President, 2005
    Judges Dinner Chair, 2004-2005
    Public Relations Committee Vice Chair, 2003
  • National Inventors Hall of Fame Foundation
    Board of Directors, 2004-Present
  • National Inventors Hall of Fame, Inc.
    Board of Directors, 2005-Present
  • American Intellectual Property Law Association
    Chairman, Contracting for ADR Committee, 1990-1993
    Judge, Giles S. Rich Moot Court Competition
  • Richard Linn American Inn of Court
  • Federal Circuit Bar Association
  • Federal Bar Association
  • The Lawyers Club of Chicago
  • Intellectual Property Owners Association
Civic Activities
  • St. Edward’s Church Parish Council
    President, 2006-present
  • Union League Club of Chicago
  • Chicago Volunteer Legal Services
  • Lincoln Park Tower Condominium Association
    President, 1988-1990
    Board of Directors, 1987-1991
Legal Experience
  • Brinks Hofer Gilson & Lione, Chicago, Illinois
    Member, Board of Directors, 1990, 1994, 1995, 2000, 2001
    Chair, Litigation Group, 2002-Present
    Shareholder, 1987-Present
    Associate, 1982-1986
Non-Legal Experience
  • IBM Corporation, Burlington, Vermont
    Engineering Intern, Summers 1979 and 1980