Extranet Access  |  Contact Info  |  866.222.0112
When you're serious about intellectual property... UseBrinks

Thomas J. Filarski

Practice Summary

Thomas J. Filarski is chair of the Chemical Group and a shareholder at Brinks Hofer Gilson & Lione. Mr. Filarski's practice centers on litigation in patent, Hatch-Waxman, trade secret and International Trade Commission law. He represents companies in the pharmaceutical, medical device, biotech, chemical, electro-chemical and mechanical industries. He has been named an "Illinois Super Lawyer" in Intellectual Property Litigation for five consecutive years and a "Leading Intellectual Property Lawyer" by the Leading Lawyers Network for the past three years. He was featured in the Business Edition of Leading Lawyers Network magazine in January 2009.

Mr. Filarski has served on the firm's Board of Directors and Executive Committee, and he has spoken at patent, ITC and litigation forums, including programs sponsored by Oxford University, the University of Southern California, East China University and ACI. He authors the chapter "Patent Defenses" in BNA Books' 2005 Patent Litigation Series Handbook, now in its second edition. He is a charter member of the newly-formed Richard Linn American Inn of Court chapter in Chicago, and he serves on the Board of Trustees for the Licensing Executives Society, where he holds the office of secretary.

Honors/Distinctions
  • Best Lawyers in America, 2010
  • Illinois Super Lawyers, Intellectual Property Litigation, 2005-2010
  • Leading Intellectual Property Lawyer, Leading Lawyers Network, Law Bulletin Publishing Company, 2004, 2005, 2007, 2009
Representative Matters
View All
  • Abbott Labs. v. Sandoz Inc., 566 F.3d 1282 (Fed. Cir. 2009) (en banc in part), cert. denied, No. 09-335 (2010). Lead counsel in District Court for Sandoz over patents relating to the antibiotic Omnicef® and generic Cefdinir.
  • Boss v. Cabilly, No. 2009-1264 (Fed. Cir. 2009) (Interference No. 105,531). Successfully represented Genentech in an appeal of the decision by the U.S. Patent and Trademark Office Board of Patent Appeals and Interferences that Genentech’s “Cabilly” patent application (No. 08/422,187) has priority over UCB Pharma’s “Boss” patent application (No. 08/450,727) covering recombinant DNA techniques for manufacturing antibodies. The technology is now a foundation for many top-selling cancer-treatment drugs such as Avastin®, Herceptin® and Rituxan®.
  • Allergan, Inc. v. Sandoz Inc., (D. Del. Filed Jan. 8, 2010) (SLR) (pending). Hatch-Waxman litigation related to bimatoprost ophthalmic solution.
  • Bone Care Int'l LLC v. Sandoz Inc., (D. Del. Filed July 7, 2009) (J. Sleet) (pending). Hatch-Waxman litigation related to doxercalciferol.
  • Genzymne Corp. v. Sandoz Inc., (D. Md. Filed July 2, 2009) (J. Sleet) (pending). Hatch-Waxman litigation related to sevelamer hydrochloride.
  • Pfizer Inc., et al. v. Sandoz Inc., (D. Del. Filed April 29, 2009) (J. Sleet) (pending). Hatch-Waxman litigation related to pregabalin.
  • Edwards Lifesciences LLC, et al. v. Cook Incorporated, et al., Appeal No. 2009-1006 (U.S. Court of Appeals for the Federal Circuit, 2009). Successfully defended long-time client, Cook Incorporated, against claims of patent infringement by Edwards Lifesciences LLC and EndoGAD Research Pty Limited. The U.S. Court of Appeals for the Federal Circuit affirmed the summary judgment of noninfringement ruling of the U.S. District Court for the Northern District of California that Cook Incorporated devices do not infringe Edwards' and EndoGAD's patents for endovascular devices to treat aneurysms.
  • Eli Lilly and Co. v. Sandoz Inc., 08-cv-1548 (S.D. IN, filed Nov. 14, 2008); Eli Lilly and Co. v. Sandoz Inc., 08-cv-6124 (D.N.J., filed Dec. 12, 2008). Representing Sandoz in Hatch Waxman litigation over Eli Lilly's patent relating to the anti-depressant Cymbalta® and accusations of infringement by Sandoz generic duloxetine.
  • Energizer Holdings, Inc. and Eveready Battery Co., Inc. v. Spectrum Brands, Inc., No. 08:08-cv-431 (W. Dist. Wis. July 25, 2008). Won a preliminary injunction to prevent infringement of two patents on lithium iron disulfide batteries.
  • Nycomed GmbH and Wyeth v. Sandoz, Inc., No. I:08-02871 (N.D. Ill. May 16, 2008). Successfully represented Sandoz in a settled case against Nycomed and Wyeth related to pantoprazole. This suit included a claim involving antitrust issues arising under the Sherman act.
  • Eaton Corporation v. ZF Meritor LLC, ArvinMeritor, Inc. and ZF Friedrichshafen AG, No. 03-74844 (E.D. Mich., Oct. 3, 2008). Won a unanimous jury verdict of no infringement of one patent and invalidity of two patents relating to automated mechanical transmissions.
  • Abbott Labs. v. Sandoz Inc., 486 F. Supp. 2d 767 (N.D. Ill. 2007). Successfully defended Sandoz Inc. against request for temporary restraining order and preliminary injunction by Abbott and Astellas before Judge Wayne R. Andersen over patents relating to a polymorph of crystalline cefdinir, an antibiotic also sold as Omnicef®.
  • 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 2004). Successfully defended ZF Friedrichshafen AG and Arvin Meritor Corp. in a consolidated enforcement and advisory opinion proceeding related to a design-around truck transmission system. Administrative Law Judge Luckern ruled that ZF's redesign does not infringe. The two-day hearing resulted in the first known favorable ruling for a respondent in an enforcement proceeding.
  • 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 2004). Represented ZF Friedrichshafen AG and Arvin Meritor Corp. in a temporary exclusion order proceeding requested by Eaton Corporation to stop importation of truck transmission systems. After a ten-day hearing involving six patents, Administrative Law Judge Luckern ruled for our clients on five patents and all but one claim of the sixth patent. Our clients attained favorable results by designing around the one remaining claim and gaining approval to import the redesigned system.
  • Filtertek Inc. v. Medex Inc. & Alaris Medical Systems, 01C50084 (N.D. Ill). Successfully represented Filtertek on a patent infringement claim against Medex's and Alaris' needle-free connector. The action settled after a claim construction hearing and ruling by Judge Philip G. Reinhard.
  • Alaris Medical Systems, Inc. v. Filtertek Inc., 00 CV 2404 (S.D. Ca.). Attained dismissal and transfer of a declaratory judgment action brought by Alaris against Filtertek relating to a needle-free connector patent.
  • S.C. Johnson Commercial Markets, Inc. v. The B.F. Goodrich Company, 98 C 0052 S (W.D. Wis.). Infringement and validity of three patents relating to bulk polymerization process for making acrylic copolymers. Decision: Two patent counts withdrawn before trial; the remaining count was settled at beginning of trial.
  • DiscoVision Associates v. Disc Manufacturing Inc., 95-21-SLR (D. Del. 1997). Validity and infringement action of plaintiff's ten patents relating to optical disks, encoding schemes and mastering machines. Counterclaims asserted by Disc Manufacturing Inc. relating to plaintiff's antitrust and anti-competitive behavior were sustained over a motion to dismiss. See, 44 USPQ2d 1749 (D. Del. 1997). After an 8-day bench trial, Judge Sue L. Robinson ruled that nine patents were not infringed and one patent infringed. Prior to appeal, all claims were settled, including the client's antitrust and inequitable conduct counterclaims.
  • Ferag, Inc. v. Grapha-Holding, Inc., 935 F. Supp. 1238 (D.D.C. 1996), aff'd mem., No. 96-1547 (Fed. Cir. Oct. 16, 1997); see also 905 F. Supp. 1 (D.D.C. 1993). Validity and infringement of defendant's patent for a gatherer-stitcher machine used in bindery industry. After a three-week bench trial, obtained a decision from Judge Oberdorfer in favor of Ferag, Inc. that Grapha's patent was invalid and, if valid, then not infringed. Appeal: Affirmed by the Federal Circuit without opinion.
  • In re Certain Electrical Connectors and Products Containing Same, No. 337-TA-374 (U.S. Int'l Trade Comm'n 1995). Temporary exclusion order requested by AMP to stop importation by three parties of single in-line memory module connectors (SIMM) because of patent infringement. Primarily responsible for proceedings against respondents Hon-Hai and Foxconn. After a 12-day hearing, Administrative Law Judge Luckern issued a recommendation to permanently enjoin Hon-Hai and Foxconn from importing infringing connectors. The remaining respondents settled, agreeing not to import the connectors.
  • Richardson-Vicks Inc. v. The Upjohn Co., 44 USPQ2d 1181 (D. Del. 1997). Validity and infringement of plaintiff's patents relating to a cold and pain relief pharmaceutical containing ibuprofen and pseudoephedrine. After a 13-day jury trial, Judge Sue L. Robinson subsequently granted Upjohn's JMOL motion for invalidity (obviousness and prior invention) and intervening rights. Appeal: Affirmed by Federal Circuit that patent invalid for obviousness.
Other Litigation Matters
View All
  • Arthrocare Inc. v. Cardinal Health, Inc., et al., 2:07-CV-92 (E.D. Tex). Subject: Action by Arthrocare for infringement five patents on an applicator and cement for vertebroplasty. Resolution: Settled.
  • Shen Wei Inc., et al. v. Cardinal Health, Inc., et al.,05-C-6002 (N.D., Ill). Subject: Action by Shen-Wei for infringement of patent on a skin-enhancing medical glove. Resolution: Settled.
  • Halkey-Roberts Corp. v. Filtertek Inc. 8:04 CV 01041-RAL-MAP (M.D. Fla., Tampa Div.). Subject : Declaratory judgment action by Halkey Roberts, and counterclaim by Filtertek, relating to Halkey Roberts' needle-free valve. Resolution: Settled.
  • Sharper Image Corp. v. Shanghai NeoTec Electron Co., 04 C 2108 (N.D., Ill.). Subject: Action by Sharper Image for patent infringement over Shanghai NeoTec's ionic air purifiers. Resolution: Settled.
  • Edwards Lifesciences LLC et al. v. Medtronic, Inc. et al. C-03-3817 (N.D., Cal.). Party Represented: Cook, Inc. Subject: Action by Edwards for patent infringement over Cook's endovascular stent for treatment of aortic aneurysm. Status: Pending.
  • Schneider v. Opto 22, CV-02-4859 PA (MANx) (C.D. Calif.). Subject: Action by Schneider for patent infringement over Opto 22's controllers having an embedded web server. Resolution: Settled.
  • Pall Corporation v. PTI Technologies, Inc. and Kurabo Industries v. Pall Corporation, 97 CV-1134 (DGT)(RML) & 98 CV-2871(DGT)(RML) (E.D. N.Y.). Subject: Actions by both parties for patent infringement over filter cartridges. Resolution: Settled.
  • EAC v. City of Chicago, O1C6028 (N.D. Ill.). Subject: Action against City of Chicago for patent infringement by the City's Blue Bag recycling program. Resolution: Settled.
  • McKeown v. City of Chicago, 01-1200 (Fed. Cir.). Subject: Appeal by McKeown of dismissal of Illinois patent infringement action over the Wacker Drive reconstruction project. Resolution: Affirmed.
  • McKeown v. City of Chicago, OOC4840 (N.D. Ill.). Subject: Action against City of Chicago for patent infringement by roadway design for the Wacker Drive reconstruction project. Resolution: Dismissed.
  • McKeown v. City of Chicago Dept. of Transportation et al., OOCV00790 (D.D.C.). Subject: Action against City of Chicago for patent infringement by roadway design for the Wacker Drive reconstruction project. Resolution: Dismissed.
  • HemaSure Inc. v. Pall Corporation v. Filtertek Inc., 99-M-675 (D. Co.). Subject: Action by Pall against Filtertek for infringement of seven patents on leukocyte filtration from blood. Resolution: Settled.
  • Cook Critical Care, Inc. v. Ffrench Emergency Pocket Airway, Inc., POO-1595C (S.D. Ind.) and Ffrench Emergency Pocket Airway, Inc., 00-2883 (E.D. La.). Subject: Declaratory judgment action and counter suit over infringement of a patent on an emergency tracheostomy device. Resolution: Settled.
  • The Dow Chemical Company v. The United States, 97-5035, -5038 (Fed. Cir.). Subject: Petition for rehearing en banc over a patent infringement and contract dispute related to a process for filing an abandoned mine. Resolution: Dismissed.
  • Boston Scientific v. Wilson-Cook, 00-40085 (D. Mass.). Subject: Action and request for preliminary injunction by Boston Scientific for infringement of patents on a multiple band ligature for treating esophageal varicies. Resolution: Preliminary injunction denied, settled.
  • Zip Dee Inc. v. The Dometic Corporation, 93C3200 (N.D. Ill.). Subject: Action against Dometic Corp. for infringement of a patent on a connector for an awning cover. Resolution: Settled.
  • Seron Manufacturing Company v. IRIS Ltd., Inc., 99C7001 (N.D. Ill.). Subject: Action by Seron Manufacturing for infringement of a patent on a lanyard. Resolution: Settled.
  • Schreiber Foods v. Saputo Cheese USA, 99C2083 (N.D. Ill.) Subject: Action by Schreiber for infringement of its patent for making imitation cheese. Resolution: Dismissed.
  • Rodel, Inc. v. Cabot Corporation, 98-352-JJF (N.D. Ill.). Subject: Action by Rodel for infringement of its patent for a polishing slurry for metal surfaces. Resolution: Settled.
  • Rodel, Inc. v. Cabot Corporation, 99-256-JJP (N.D. Ill.). Subject: Action by Rodel for infringement of its patents for polishing slurries for silica composites. Resolution: Settled.
  • Learning Resources Inc. v. Frank Schaffer Publications, 99C7632. Subject: Action by Learning Resources for infringement of a patent on a children's time teaching clock. Resolution: Settled.
  • In re Certain Two-Handle Centerset Faucets and Escutcheons, No. 337-TA-422 (U.S. Int'l Trade Comm'n 1999). Party Represented: Hometek International Group Subject: Action by Moen Incorporated against several parties for unauthorized importation and infringement of a design patent on a faucet. Resolution: Settled.
  • Freidrich Zettl GMBH v. Bloomingdale's Inc., et al., 99C3605 (N.D. Ill.) Subject: Action against Bloomingdale's for infringement of a patent on a fastener for a pierced earring. Resolution: Settled.
  • Micro Solutions, Inc. v. Hewlett-Packard, et al., 98C50135, 98C50140 (N.D. Ill., Western Division). Subject: Action by Micro Solutions for infringement of its patents on a general purpose parallel port interface for a personal computer. Resolution: Settled.
  • UFS Corporation v. Walker, et al., 2:98CV-563JM (N.D. Ind.). Party Represented: PTI Advanced Filtration Inc. and others. Subject: Action by UFS for infringement of its patents on membrane electrodes used in electrocoating. Resolution: Settled.
  • Houston Processing Inc. v. Thorn Apple Valley, Inc., H-97-4038 (S.D. Tex.). Subject: Declaratory Judgment action by Houston Processing for invalidity and non-infringement of Thorn Apple's patent on an upright-standing food package. Resolution: Settled.
  • Union Special Corporation v. Atlanta Attachment Company, No. 3:96-CV-417-P (D. N.C.). Subject: Validity and infringement of Union Special's patents relating to a fold-in-half device for automatic hemming and seaming machines. Resolution: Settled.
  • The Ertl Company, Inc. v. Trendmasters, Inc., 94 C 1992 (N.D. Ill.). Subject: Infringement and validity of patent for a self-propelled bouncing ball toy. Resolution: Voluntarily dismissed during discovery.
  • Marianna Imports v. Helene Curtis, Inc., 873 F. Supp. 308 (D. Neb. 1994). Subject: Infringement of Helene Curtis' patent for a permanent hair-waving compound. Decision: Settled after dismissing the patent infringer's second-filed action in favor of Helene Curtis' first filed assertive action.
  • The Carborundum Company v. Stackpole Corporation, No. 93-155 Erie W.D. Pa.). Subject: Infringement and validity of patent for sintered alpha silicon carbide. Resolution: Settled.
  • Interface, Inc. v. Shaw Industries, Inc., 3:91-CV-53 (N.D. Ga.). Subject: Infringement and validity of patents for carpets and carpet tiles. Resolution: Settled.
  • Tri-Seal Corp. v. J.S. Plastics, 90 C 2593 (N.D. Ill.). Subject: Contract and patent dispute related to extruded plastic liners for bottle caps. Resolution: Settled.
  • The Budd Co. v. The Complax Corp., 90 CV 70622 DT (E.D. Mich.). Subject: Infringement and validity of patents for compression molding process for automobile parts. Resolution: Settled.
  • Commercial Pantex, Inc. v. The Dosco Corporation, 89-405-JRR (D. Del.). Subject: Infringement and validity of patent for frame girder for underground drift and shaft construction. Resolution: Settled.
  • Wafer Shave, Inc. v. The Gillette Co., 89-0720-WF (D. Mass.). Subject: Infringement of patent relating to the use of a lubricant in shaving. Decision: Dismissed on summary judgment; claim barred by equitable estoppel. See 29 USPQ2d 1419 (D. Mass. 1993). Appeal: Affirmed.
  • Nalco Chemical Co. v. Calgon Corp., 88-1824 (W.D. Pa.). Subject: Infringement and validity of patent for using acrylate polymers to maintain the inside surface of boilers. Resolution: Settled.
  • Metallgesellschaft A G v. Dorr-Ofiver Inc., 86-232 (D. Del.). Subject: Infringement and validity of patent for fluidized bed, coal-burning reactor and co-generation process. Resolution: Settled.
  • From 1987-1990, several guardianship cases in the Circuit Court of Cook County, Illinois for indigent parties. Voluntary work through the Chicago Volunteer Legal Services Foundation.
Publications
Feature Profiles
Published Articles
  • "Patent Defenses," Patent Litigation Strategies Handbook, BNA Books, 2009, Cumulative Supplement
  • "Patent Defenses," Patent Litigation Strategies Handbook, BNA Books, 2005, Second Edition
  • "Patent Enforcement in the Courts of the United States," co-author, Butterworths Patent Litigation: Enforcing a Global Patent Portfolio, Butterworths, 1995
  • "Claim Interpretation and Patent Infringement Under United States Patent Law," Mitteilungen Der Deutschen Patentänwalte, 42, February, 1993
Presentations
View All
  • "An Overview of Dispute Resolution Mechanisms Under PHS §351," American Conference Institute's Follow-On Biologics, New York, New York, June 21-22, 2010
  • "Throwing Down the Gauntlet: The Paragraph IV Notice Letter - Delivery and Receipt," American Conference Institute's 4th Annual Paragraph IV Disputes Conference, New York City, New York, April 27-28, 2010
  • “Current Issues in Hatch-Waxman Litigation,” LexisNexis’ Pharma & Biotech Patent Lifecycle Management Conference, Shanghai, China, December 3-4, 2009
  • "Uncovering Current Trends and Predicting Future Changes Facing Biotech Patent Practitioners," American Conference Institute's 11th Advanced Forum on Biotech Patents, Boston, Massachusetts, September 30-October 1, 2009
  • "The Impact of Patent Purchase and Patent Reform on Enforcement Damages," ICAP Ocean Tomo IP Markets 2009 Summer Event, Chicago, Illinois, July 22, 2009
  • Panel discussion on recent major case decisions that have shifted the intellectual property landscape, Law Bulletin Seminars' Annual Corporate Intellectual Property Conference, Chicago, Illinois, July 15, 2009
  • "IP Life Sciences," Federal Circuit Bar Association's 11th Annual Bench & Bar Conference, White Sulphur Springs, West Virginia, June 18, 2009
  • "Attorney-Client Privilege, Work Product Immunity, and Ethical Issues in Paragraph IV Settings," American Conference Institute's 3rd Annual Paragraph IV Disputes, New York, New York, April 27, 2009
  • "ITC Practice," Richard Linn Inn of Court, Chicago, Illinois, April 16, 2009
  • "ITC Overview," Beijing and Shenzhen, China, April 2009
  • "Broadcom v. Qualcomm: Updates of the Federal Appeal and the Overall Status of Downstream Products," American Conference Institute's Advanced Forum on ITC Litigation, Washington, D.C., January 27, 2009
  • "Ethical Issues in IP Litigation," 1st Intellectual Property Institute, Chicago, Illinois, December 11-12, 2008
  • Panel discussion on discovery and courtroom challenges and hot topics in trade secret litigation, Fourth Annual Meeting for the American College of Business Court Judges, Chicago, Illinois, November 18, 2008
  • "Overseas Intellectual Property Issues and Intellectual Property Dispute Resolution Mechanisms," Forum on Technological Barriers and Intellectual Property Rights Strategies, Panel Moderator, Shanghai, China, April 8, 2008
  • "Innovative Structures for Acquiring Intellectual Property," Program Co-Chair, Law Seminars International, Chicago, Illinois, July 17, 2006
  • "Expert Testimony in Patent Litigation in the United States," International Intellectual Property Law Symposia, Vancouver, British Columbia, Canada, July 14-15, 2006
  • "Pharmaceutical Patents in the United States: Their Scope and Their Infringement," International Intellectual Property Law Symposia, St. Peters' College and the Oxford Intellectual Property Research Centre June 24-25, 2005
  • "Electronic Discovery in U.S. Litigation – Think Before You Hit the Send Button," Brinks Hofer Gilson & Lione's Patent Strategies for High Tech Companies: U.S., European and Global Perspectives, Hilton Munich City, Munich, Germany, June 14, 2005
  • "Patent Enforcement in the Courts of the United States,"Butterworths Patent Litigation: Enforcing a Global Patent Portfolio, Butterworths, 1995, presented by co-author at the International Bar Association 25th Biennial Conference, Melbourne, Australia, October 9-14, 1994
  • "Valuing Intellectual Property to Add to Your Balance Sheet," Licensing Executives Society (USA and Canada) 1994 Annual Meeting, October 16-19, 1994
  • "Litigation Considerations in Patent Prosecution," William Brinks 75th Anniversary Seminar, September 10-11, 1992
  • "Career Planning and Job Search Techniques," DePaul University College of Law, March 1987 and September 1987
Memberships & Affiliations
View All
  • Licensing Executives Society
    Treasurer, 2009-Present
    Secretary, 2005-2009
    Board of Trustees, 2001-Present
    VP USA/Canada, 2004-2005
    VP Communications, 2002-2004
    Chair, Annual Meeting, San Francisco 2009, Chicago 2002
    Co-Chair, Meeting Coordination Committee, 2001-2005
    Annual and Seasonal Meeting Committees, 1994-1997, 1999
    Chair, Publications Committee, 1998-2000
  • Richard Linn American Inn of Court
  • American Intellectual Property Law Association
  • Intellectual Property Law Association of Chicago
  • Intellectual Property Owners Association
  • American Bar Association
  • Chicago Bar Association
  • Federal Circuit Bar Association
Civic Activities
  • Chicago Volunteer Legal Services Foundation
  • Seven Bridges Estates Homeowners' Association, President, 1996
  • Giles S. Rich Moot Court Competition, Chicago, Illinois, 1987-1988
Legal Experience
  • Brinks Hofer Gilson & Lione, Chicago, Illinois
    1986-Present
    Partner since 1992
    Chair, Chemical Practice Group
  • UOP, Inc., Des Plaines, Illinois
    Patent Attorney Trainee, 1981-1986
    Patent Agent, 1984-1986
Non-Legal Experience
  • UOP, Inc., Des Plaines, Illinois
    Chemical Engineer, 1980
Teaching Experience
  • The John Marshall Law School, Chicago, Illinois
    Co-Instructor, Fall 2001-Intellectual Property Licensing
    Basics of intellectual property licensing and negotiation