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Richard A. Kaplan

Practice Summary

Mr. Kaplan is a trial lawyer concentrating in patent, trade secret and related antitrust, unfair competition and contract matters. He has extensive experience in the litigation of damages in patent infringement and trade secret misappropriation cases and is experienced in jury and bench trials, Federal Circuit appeals and appeals in other federal circuits. His achievements include work in major profile cases resulting in multi-million dollar recoveries, as well as in defending against cases where such amounts were sought and has tried cases resulting in jury verdicts of millions of dollars. He was lead trial counsel in successfully defending against a billion-dollar patent infringement case.

Mr. Kaplan has been named one of the Top 100 Illinois Super Lawyers for 2009 across all practice areas, and has been designated an Illinois Super Lawyer for Intellectual Property Litigation since 2005 by Law & Politics magazine. He has been named a Leading Intellectual Property Lawyer from 2004 to the present by the Leading Lawyers Network and listed in the Guide to the World's Leading Patent Law Practitioners by the Legal Media Group. As a result of a recent trial victory, Mr. Kaplan was named “Litigator of the Week” by The AmLaw Litigation Daily.

Mr. Kaplan organizes and participates in trade missions to Israel and is active in numerous legal, business and civic organizations, including vice-chair, Trade Secrets & Unfair Competition Committee of the Intellectual Property Law Association of Chicago; master, Richard Linn American Inn of Court; first vice president of the America-Israel Chamber of Commerce Chicago. Mr. Kaplan also serves on the national board of directors of American Associates, Ben-Gurion University of the Negev; the Chicago Region board of directors of the Jewish National Fund; the lawyers division committee of the Jewish United Fund; and the board of directors of the Princeton Club of Chicago.

Mr. Kaplan received his B.S.E., magna cum laude, in civil engineering from Princeton University and his J.D. from Albany Law School of Union University. 

Honors/Distinctions
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  • Top 100 Illinois Super Lawyers, Law & Politics, 2009
  • Illinois Super Lawyers, Intellectual Property Litigation, Law & Politics, 2005-2010
  • Leading Lawyer, Intellectual Property Law (2004-2010), and Trade Secrets/Unfair Competition Law (2009-2010), Leading Lawyers Network, Law Bulletin Publishing Company
  • Guide to the World's Leading Patent Law Practitioners, Legal Media Group, 2007, 2009
  • "Intellectual Property Superstars," Albany Law Magazine, Spring 1996
  • Executive Editor, Albany Law Review, Albany Law School of Union University, 1981-1982
  • Recipient, Kenneth H. Condit Prize, Best Senior Thesis submitted to Basic Engineering Department, Princeton University, 1979
  • Columnist, "IP Law" column, Chicago Lawyer
Representative Matters
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  • Star Scientific, Inc. v. R.J. Reynolds Tobacco Company, 2002-Present (D. Maryland, Greenbelt and Baltimore; Federal Circuit Court of Appeals). Lead trial counsel for RJR heading up a team defending against patent infringement case involving two patents relating to tobacco curing barns and methods for treating tobacco to yield low tobacco-specific nitrosamines. Star Scientific sought damages in excess of $1 billion. On June 16, 2009, after a five-week trial, a 12-person jury ruled in favor of RJR on all issues. The jury ruled that tobacco farmers who supplied tobacco to RJR did not infringe the Star patents and that both of the Star patents in question were invalid (based on anticipation, obviousness, failure to disclose the best mode and indefiniteness).
  • Edwards Lifesciences LLC, and EndoGAD Research Party Limited v. Medtronic, Inc., Medtronic AVE, Inc., Cook Incorporated, and W.L. Gore & Associates, Inc., 2003-2009 (N.D. California, San Francisco; Federal Circuit Court of Appeals). Lead trial counsel for Cook defending patent infringement action filed by Edwards Lifesciences with respect to four patents concerning endovascular stent-grafts for treatment of abdominal aortic aneurysms. Achieved a major victory in this case by securing a summary judgment of non-infringement, and successfully arguing the appeal in the Court of Appeals for the Federal Circuit.
  • Techtronic Industries Co., Ltd. and Richard Pando v. Chervon Holdings Ltd., Nanjing Chervon Industrial Co., Ltd., a/k/a Chervon Industry Co., Ltd., Chervon Ltd., and Chervon North America, Inc., 2005 (N.D. Illinois, Chicago). Lead trial counsel for Techtronic Industries and Richard Pando in patent infringement case. After expedited discovery and a series of hearings, obtained a preliminary injunction and secured a settlement to stop Chervon from selling a laser level product with a motor-powered suction base.
  • Engate, Inc. v. Esquire Deposition Services, LLC, Atkinson-Baker Inc., Spherion Corp., The Reporters Group, and Wordwave, Inc., 2001-2002 (N.D. Illinois, Chicago). Lead trial counsel for Spherion defending against patent infringement case involving fifteen patents relating to real-time court reporting and transcription. Negotiated favorable settlement on behalf of Spherion.
  • Boston Scientific Corp. and SCIMED Life Systems, Inc. v. Wilson-Cook Medical Incorporated, 2000-2001 (D. Massachusetts, Boston; Federal Circuit Court of Appeals). Lead trial counsel for Wilson-Cook defending against patent infringement case involving three patents relating to multiple band ligator technology. Boston Scientific and SCIMED Life Systems sought a preliminary injunction to bar Wilson-Cook from selling one of its MBL products. After expedited discovery and extensive briefing, the district court conducted a three-day hearing, and denied the preliminary injunction motion. While an appeal was pending, the parties negotiated a settlement agreement, and the case settled on terms favorable to Wilson-Cook.
  • AMP Incorporated and The Whitaker Corporation v. Jay L. Caton and Dovatron International, Inc., 1998 (Texas State Court, Round Rock). Lead trial counsel for AMP and Whitaker in a case to enforce a non-competition agreement against a former employee and his new employer, and to protect trade secrets and confidential information. The case involved technology for backplane assemblies. After filing a request for a temporary injunction, negotiations resulted in a settlement agreement. As part of the settlement, the defendants agreed to a consent judgment that included provisions and certain restrictions on the defendants designed to protect AMP’s trade secrets and confidential information.
  • The Procter & Gamble Company & The Procter & Gamble Distributing Company v. Amway Corporation et al., 1997-2003 (S.D. Texas, Houston; Fifth Circuit Court of Appeals). P&G asserted claims against Amway of defamation, violations of the Lanham Act and RICO statutes, tortious interference with business relations, fraud and vicarious liability. The claims were based on alleged statements made by Amway distributors about P&G, comparative advertising of Amway and P&G products, and Amway’s business activities. Represented Amway and was responsible for developing defense against P&G’s damages claims seeking in excess of $1.5 billion. Some of the claims were dismissed at the pleadings stage, and others by summary judgment. After a two-week jury trial in Houston, Texas, the district court granted Amway’s motion for judgment as a matter of law, and dismissed all of P&G’s claims. The Fifth Circuit Court of Appeals affirmed the dismissal of all claims against Amway.
  • North American Philips Corporation, and Lockheed Sanders, Inc. v. Data East U.S.A., Inc., Leland Corporation, Taito America Corporation, and Tradewest Inc., 1996-1998 (N.D. Illinois, Chicago). Defended Taito America in patent infringement case involving video games. The case settled on terms favorable to Taito America.
  • Tec Air, Inc. v. Denso Manufacturing Michigan and Denso Corporation, 1992-1999 (N.D. Illinois, Chicago; Federal Circuit Court of Appeals). One of lead trial counsel for Tec Air in patent infringement case against Denso Ltd. and Denso Mfg. USA Company. The case involved two patents owned by Tec Air relating to fan assemblies used with radiators and condensers in automobiles. After seven years of litigation, and three separate trials involving two separate juries (involving approximately seven weeks of trial), obtained three jury verdicts – infringement, validity and damages – all in favor of our client, Tec Air. In the final phase, the jury returned a damages verdict for $25.2 million in favor of Tec Air; this was increased to more than $40 million due to prejudgment interest. Denso appealed. The verdict, and the trial court decision upholding the verdict, was affirmed by the Federal Circuit in all respects.
  • In re Convertible Rowing Exerciser Patent Litigation, 1991-1993 (D. Delaware, Wilmington; Federal Circuit Court of Appeals). This was a multi-district patent infringement case against Roadmaster Corp. and Ajay Enterprises, Inc., and seven other defendants, alleging infringement of a patent on a convertible rower. The issue was whether a decision by the International Trade Commission that the patent was invalid, was binding in a later federal district court action involving the same patent. Ultimately, the Delaware district court entered summary judgment for the defendants holding that the facts underlying the ITC invalidity decision were binding on the patentee under the doctrine of collateral estoppel, and therefore could not be retried in federal court.
  • Kelsey-Hayes Corporation v. Motor Wheel Corporation, 1990-1991 (W.D. Michigan, Kalamazoo). Represented Kelsey-Hayes in declaratory judgment action concerning Motor Wheel patent relating to full face wheels, and responsible for defending against Motor Wheel damages claim for in excess of $200 million. After a court-ordered mediation process, the case settled on terms favorable to Kelsey-Hayes.
  • Kennecott Corporation v. Kyocera International, Inc. and Kyoto Ceramic Co., Ltd., 1987-1991 (S.D. California, San Diego; Ninth Circuit Court of Appeals; Federal Circuit Court of Appeals). Represented Kennecott in patent infringement case against Kyocera, and developed damages part of the case. At issue were two patents relating to a ceramic product of pressureless sintered submicron-sized grains of silicon carbide. The district court found one of the patents invalid on summary judgment. On appeal, the Federal Circuit reversed the invalidity decision. Subsequently, the case went to trial before a jury on both patents. After a five-week jury trial, the jury awarded Kennecott actual damages of $7,000,000 and found the infringement was willful. Ultimately, the judgment was increased to $16,000,000 on account of the willfulness and to reimburse Kennecott’s attorneys’ fees.
  • A.B. Chance Company v. RTE Corporation, 1986-1988 (E.D. Wisconsin, Milwaukee; Federal Circuit Court of Appeals). RTE was found guilty of willful patent infringement, after a bench trial, in a case brought against it by A.B. Chance, involving pad-mounted, double-fused switchgear, especially adapted for use in underground electrical distribution systems. After the trial loss, we were retained to represent RTE, and located previously undiscovered evidence. Acting on our post-trial motion, the district court set aside its earlier judgment of willful infringement, granted summary judgment that A.B. Chance’s patent was invalid, and dismissed the complaint against RTE. On appeal, the Federal Circuit remanded for further proceedings on certain issues. Subsequently, the case settled on terms favorable to RTE.
  • Dennison Manufacturing Company v. Panduit Corp., 1985-1987 (Federal Circuit Court of Appeals and U.S. Supreme Court). The case involved patent infringement charges against Dennison over the sale of cable ties, which are small plastic parts used to bundle wires together in a wide-range of devices, such as automobiles, aircrafts, and ships. Assisted team on behalf of Dennison in appeal phase of the case in the Federal Circuit, as well as in the preparation of one of the petitions for certiorari filed in the Supreme Court. One of the major issues focused on the extent to which the obviousness determination in patent law is one of fact or law.
  • East Coast Enterprises, Inc. v. American International Sound Products, Inc., 1983-1986 (C.D. California, Los Angeles). Represented East Coast Enterprises in case involving patents for rear deck mounting adapters for car speakers. After filing suit against American International, the defendant filed a bankruptcy petition that automatically stayed the case. Obtained order setting aside the automatic stay, and a consent judgment admitting patents were valid and infringed. Subsequently, defendants failed to comply with the injunction, and we moved to hold it in contempt. That motion was granted, and the court entered summary judgment and awarded monetary relief in favor of East Coast Enterprises.
  • Presto Products, Incorporated v. Peter J. Gietman, Jr., Custom Machinery Design, Inc., and U.S. Industries, Inc., 1982-1983 (Wisconsin State Court, Appleton; E.D. Wisconsin, Milwaukee). Represented Presto in this case for trade secret misappropriation involving machinery for manufacturing rolls of plastic film bags that dispense one-at-a-time. After a bench trial, Presto was awarded monetary and injunctive relief.
Publications
Feature Profiles
  • "Litigator of the Week," The AmLaw Litigation Daily, June 18, 2009
  • "Super Lawyer Kaplan Doesn't Want the Cape," Albany Law Magazine, Fall 2006
Published Articles
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  • "Festo brings questions about the doctrine of equivalents," Chicago Lawyer, October 2002, p 71
  • "Competitors find it easier to avoid liability for infringement,"Chicago Lawyer, March 2001, p 24
  • "Playing dress up," Chicago Lawyer, July 2000, pages 15, 70
  • "IP Issues Grab Supreme Court's Attention," Chicago Daily Law Bulletin, July 26, 1999
  • "Patent owners free to toot own horns – if they stay on key,"Chicago Lawyer, April 1999, pgs 67, 70 (article excerpt reprinted in Intellectual Property Law Association of Chicago Newsletter, May 1999; see also The Lawyer's Journal, "Patently Federal," in Illinois Bar Journal, June 1999)
  • "Patenting business methods becomes a more viable option,"Chicago Lawyer, January 1999, pages 7, 58
  • Author of note, "Close Corporation Shareholders' Agreements and the Signal of Zion v. Kurtz: Frustration of the Statutory Notice Requirement," 46 Albany Law Review 198 (Fall 1981), reprinted in 24 Corporate Practice Commentator 201 (Summer 1982)
Presentations
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  • "Obviousness - Litigation Considerations, and a Perspective," Utah Intellectual Property Law Summit, Salt Lake City, Utah, February 12, 2010
  • "Time for a Fresh Look: A Resurgence for Trade Secrets," 2009 IPLAC 20th Annual Trade Secrets Seminar," Chicago, Illinois, December 10, 2009
  • "Time to Give Your Trade Secret Weapon a Fresh Look: A Resurgence for Trade Secrets," Brinks Hofer Gilson & Lione, Intellectual Property Law Seminar, Glenview, Illinois, June 24, 2008
  • "Intellectual Property Law," The State of Illinois Reception and Biotechnology Roundtable, Tel Aviv, Israel, May 25, 2008
  • "Israel-Chicago Investment Opportunities and Business Cooperation," round-table panelist, Gateway Israel Trade Show, Tel Aviv, Israel, November 8, 2006
  • "Recently Acquired IP Assets: Maximizing Value and Minimizing Risks," Brinks Hofer Gilson & Lione, Intellectual Property Law Seminar, Glenview, Illinois, July 11, 2006
  • "Medical Devices," program moderator, America - Israel Business Exchange, AIBEx® 2006 - Life Science Event, Skokie, Illinois, April 6, 2006
  • "Complex Litigation," Brinks Hofer Gilson & Lione, Managing the Risks of IP Litigation, Litigation Group Seminar, October 25, 2005
  • "Patent Litigation," guest lecture to patent law class, University of Chicago, May 15, 2002
  • "Damages in Patent Infringement Litigation," Brinks Hofer Gilson & Lione, Client Luncheon Seminar Program, Chicago, Illinois, October 24, 1996
  • "Litigation Support," Brinks Hofer Gilson & Lione, Internal Firm Luncheon, Continuing Education Seminar, Chicago, Illinois, October 26, 1995
  • "Case Study of Complex Patent Litigation," Brinks Hofer Gilson & Lione, 75th Anniversary Seminar, Chicago, Illinois, September 10-11, 1992
  • "Trade Secrets/Technology Licensing," Brinks Hofer Gilson & Lione, 75th Anniversary Seminar, Chicago, Illinois, September 10-11, 1992
Memberships & Affiliations
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  • Scribes, The American Society of Writers on Legal Subjects
  • American Bar Association
  • Illinois State Bar Association
  • Chicago Bar Association
  • American Intellectual Property Law Association
  • Intellectual Property Law Association of Chicago
    Vice-Chair, Trade Secrets & Unfair Competition Committee
  • The Federal Circuit Bar Association
  • Intellectual Property Owners Association
    Trade Secret Committee
  • The Decalogue Society of Lawyers
  • Richard Linn American Inn of Court
    Master
Civic Activities
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  • America Israel Chamber of Commerce Chicago
    First Vice President
  • Jewish National Fund
    Member, Chicago-Region Board of Directors
    Vice President, Travel and Missions (Chicago)
  • Chicago Loop Professional Forum
  • Jewish United Fund
    Member, Lawyers Division Committee
  • Chicago-Israel Business Initiative (America-Israel Chamber of Commerce Chicago), Mission Participant, 2005, 2006, 2007, 2008, 2010 Delegations
  • American Associates, Ben-Gurion University of the Negev
    Member, National Board of Directors
  • Princeton Club of Chicago
    Member, Board of Directors
  • United Way of the North Shore, Highland Park-Highwood Chapter
    Campaign Chair, 2007-2009
  • North Suburban Synagogue Beth El
Legal Experience
  • Brinks Hofer Gilson & Lione, Chicago, Illinois
    1982-Present
  • New York State Energy Research & Development Authority, Albany, New York
    Summer 1980
Non-Legal Experience
  • Princeton University, Princeton, New Jersey
    Researcher
  • Prior to joining Brinks, Mr. Kaplan was responsible for the development of a transportation project to analyze costs for the New Jersey bus transit system, sponsored by the Tri-State Regional Planning Commission. The project was completed under the direction of Professor Reggie J. Caudill, Princeton University.