Raymond W. Green

Raymond W. Green, a shareholder in the Chicago office of Brinks Hofer Gilson & Lione, joined the firm in 1982, and is currently chair of the firm's Interference Group. Mr. Green's practice is concentrated in patent prosecution, including patent interferences and re-examinations. He has had primary responsibility for about 40 interferences. Several patents written and prosecuted by Mr. Green have been involved in litigation.

Prior to joining the firm, Mr. Green was an in-house patent attorney for Procter & Gamble (Cincinnati, Ohio) for two years and Associate Patent Counsel for The Carborundum Company (Niagara Falls, New York) for 14 years. His practice included U.S. and foreign patent prosecution, including U.S. patent interferences, Canadian conflict proceedings and patent oppositions, and practice before the Federal Trade Commission.

He has worked in technical areas as diverse as food flavorings, detergents, toothpaste, chemical industrial processes, ceramics, abrasives, grinding wheels, sandpaper, refractory fibers, organic chemistry, diamond synthesis, bicycles, infrared detectors, electronic components, chewing gum, animal ear tags, diapers, Internet terminals and biotechnology.

• PLC Which lawyer?, Highly Recommended Intellectual Property Lawyer in Chicago, 2006, 2010
• Illinois Super Lawyers 2005 and 2008, Intellectual Property Law
• Charter Member, Patent Hall of Fame, One of Ten Best Patent Prosecutors in the U.S., IP Law & Business, October 2003, pp. 39-48, 50, 52
• Leading Intellectual Property Lawyer, Leading Lawyers Network, Law Bulletin Publishing Company, 2004, 2005, 2007, 2009

• One of the patent applications prosecuted by Mr. Green early in his career was an application of inventor Leo C. Ehrenreich, which was assigned to The Carborundum Company in Niagara Falls, New York. The invention was the use of boron-containing friction additives for carbon-carbon composites used in aircraft brake disks. The application was involved in an interference that was appealed to the U.S. Court of Customs and Patent Appeals. The Court decision, Nitz and Graham v. Ehrenreich, 537 F.2d 539, 190 USPQ 413 (CCPA 1976), established a fine point of interference practice ("The right to make the count is ancillary to priority.") that was rendered moot by the 1984 amendment to the patent law. The Ehrenreich patent (U.S. Patent 4,119,189) issued October 10, 1978.
• Another early patent application written and prosecuted by Mr. Green was an application of inventor Wesley Q. Richmond, which was also assigned to The Carborundum Company. The invention was the rapid cooling of abrasive materials by pouring the molten material over steel balls (rapid cooling of some materials creates a finer crystal structure, and thus a tougher abrasive material). This application was also involved in an interference that was appealed to the U.S. Court of Customs and Patent Appeals, which transferred the appeal to the docket of the newly-created U.S. Court of Appeals for the Federal Circuit in 1982. The Court decision, Shurie v. Richmond, 699 F.2d 1156, 216 USPQ 1042 (Fed. Cir. 1983), was one of the first four patent decisions by the new Court. It established another rule of interference practice ("Testing, in the United States, of a product that was made in a foreign country, is not reduction to practice or completion of the invention in the United States, of the process that was carried out in a foreign country to make the product"). This rule, while it is still the law, is becoming obsolete, because under the 1994 amendment to the patent law, proof of priority for an invention made in 1996 or later in a World Trade Organization country can be established by proof of reduction to practice in the foreign country. The Richmond patent issued November 15, 1983, as U.S. Patent 4,415,510.
• Another rule was established in litigation of other patents written and prosecuted by Mr. Green. The invention was pressureless sintered alpha silicon carbide, invented by John A. Coppola, Laurence N. Hailey and Carl H. McMurtry, and it was also assigned to The Carborundum Company. The invention was the joining together by the application of heat, but not simultaneous pressure, of submicron sized particles of silicon carbide to make intricately shaped ceramic articles for such products as turbine blades, heat exchangers and pressure seals. The first patent to issue on the product was U.S. Patent 4,179,299. A more basic patent, U.S. Patent 4,312,954, was delayed in issuance because of an interference, Prochazka v. Coppola et al., the decision of which was not published. An infringement suit involving both patents established the rule, still in force, that in determining what is disclosed in a patent specification, one is not limited to what the document says within its four corners, but one may also take into account what a person of ordinary skill in the art would know by reading the specification and repeating the experiments reported as examples in the specification. Kennecott Corp. v. Kyocera International Inc., 835 F.2d 1419, 5 USPQ2d 1194 (Fed. Cir. 1987). The patents were later found to be willfully infringed, and the case was settled for $16,000,000.00.
• Perhaps the best known product made according to patents prosecuted by Mr. Green are the diapers with two pairs of elasticized cuffs for keeping runny B.M. material within the diaper. The first two patents of the series invented by Kenneth M. Enloe (4,704,116 and 4,846,823), assigned to Kimberly-Clark Corporation, were written and prosecuted in-house at Kimberly-Clark. When an interference appeared to be in the offing, the cases were transferred to Mr. Green. Mr. Green obtained three additional patents for various aspects of the invention (U.S. Patents 5,413,570; 5,415,644; and 5,599,338), one of which was involved in an interference (Lawson v. Enloe, 26 USPQ2d 1594 (Board of Patent Appeals and Interferences, 1992)) before it issued as a patent. The rule of the Lawson v. Enloe interference was that the 1984 amendment to the patent law relating to joint invention did not eliminate the need for collaboration among those alleged to be joint inventors. The Enloe invention has been adopted by the entire disposable diaper industry, has resulted in substantial royalties for Kimberly-Clark, and has kept the world safe from runny B.M.s!
• Mr. Green's most recent published court decision is Brand v. Miller, 487 F.3d 862, 2007 U.S. App. LEXIS 11258, 82 U.S.P.Q.2d 1705 (Fed. Cir. 2007), rehearing denied, 2007 U.S. App. LEXIS 14495 (Fed. Cir. June 8, 2007), cert. denied, 2007 U.S. LEXIS 12575, 76 U.S.L.W. 3274 (U.S. Nov. 26, 2007). Brand v. Miller held that interference proceedings are subject to the Administrative Procedures Act, and as such, factual findings in interferences must be supported by substantial evidence.

• "Interference Basics," speaker, Appellate/Interference Practice in the New Millennium: Practicing Under the New Rules Before the Board of Patent Appeals and Interferences, Patent and Interferences Committee, Intellectual Property Owners Association, Washington, D.C., December 7, 2004

• American Intellectual Property Law Association
  Chair, Interference Committee, 1998-99
• Intellectual Property Institute of Canada
• American Bar Association
• Chicago Bar Association
• Intellectual Property Law Association of Chicago

• Managing Intellectual Property Online
• Patent Hall of Fame - Reprint from the October 2003 issue of IP Law & Business.