T: (847) 873-1116
M: (847) 287-8528
- Intellectual Property
- Litigation – Intellectual Property
- Supreme Court of Illinois
- U.S. District Court for the Northern District of Illinois
- Federal Circuit Court of Appeals
- U.S. Patent and Trademark Office
- Loyola University of Chicago, J.D. 1987
- Iowa State University, B.S. Chemical Engineering 1980
Large Law Firm Experience
- Brinks Hofer Gilson & Lione
- Lewis Brisbois Bisgaard & Smith
I am an intellectual property attorney with over 30 years of diversified experience and a chemical engineering background. My experience includes prosecuting and defending well over a dozen intellectual property lawsuits (both patent infringement and Lanham Act) in federal district courts, inter partes and post grant reviews before the Patent Trial and Appeal Board, inter partes and ex parte reexaminations, reissues, patent prosecution and appeals in the U.S. Patent and Trademark Office, data privacy and security breaches, negotiations for sale and licensing of intellectual property, and intellectual property opinions and consultations.
My technical experience includes chemical and petrochemical processes, polymer science, gas technology, membrane separation, nonwoven fabrics, absorbent articles, coextruded plastic films (including nanolayer films) and related processes, plastic and paper laminates, steel alloys, steelmaking processes, refractory materials, retractable stadium roofs, digital televisions, cellular telephones, wastewater treatment and particleboard manufacturing.
I started my career primarily as a patent litigation associate, from 1987 through 1991. From 1992 until 2006, I prepared over 100 detailed patent right-to-practice opinions and prepared and prosecuted (or supervised the preparation and prosecution of) over 500 patent applications. Starting in 2006 and continuing until now, my practice has included a mixture of District Court litigation, PTAB trials under the America Invents Act, appeals to the Federal Circuit, patent prosecution, right-to-practice opinions, negotiating sales and licensing of intellectual property, and counseling.
Representative Transactions Include
I negotiated the sale of a patent portfolio and related equipment covering a complex process for producing coextruded multilayer films having large numbers of very thin layers, to a large European company.
I served as lead defense counsel in a patent infringement lawsuit involving the retractable stadium roofs at the Arthur Ashe and Louis Armstrong tennis stadiums.
I prosecuted and favorably settled three patent infringement lawsuits involving a design patent for a pocket key organizer sold over the internet. I defeated initiation of a post grant review at the pretrial stage.
I handled two Federal Circuit appeals through oral argument for a large European steel company, one involving an inter partes reexamination and one involving an inter partes review.
For ten years, I was a lead litigator in a small intellectual property firm in suburban Chicago which bore my name. During that time, I defended a U.S. television distributor and a Taiwanese manufacturer in multiple lawsuits brought by non-practicing entities. I represented a small label manufacturer in prosecuting a patent infringement and Lanham Act suit against a large national conglomerate.
I prepared over 100 right-to-practice opinions for a large Fortune 500 company, covering more than 300 U.S. patents in the areas of nowoven fabrics and absorbent materials. By becoming familiar with the patents and their file histories, I was able to efficiently prepare numerous right-to-practice opinions covering multiple new products that were introduced over that period.
Presentations & Teaching Experience
In September 2019, I served as a co-panelist in a CLE ethics webinar entitled “Privilege In IP Litigation: Overcoming Challenges In Review, Applicability to Foreign Attorneys, Disclosure.” The seminar covered ways to review and prevent or minimize inadvertent disclosure in complex litigation involving very large numbers of documents and sometimes multiple defendants.
In September 2016, I presented a CLE webinar entitled “A Stage-By-Stage Guide To AIA Patent Challenge Procedures.”
- June 2019, blog entitled “Privilege Review Presents Unique Challenges In Intellectual Property Litigation.”
- April 2019, blog entitled “The Ongoing Evolution of Patent Venue.”
- 2014, article entitled “A Guide to U.S. Patent Challenge Procedures Under The Leahy-Smith America Invents Act,” Journal of Intellectual Property Law & Practice 2014; doi: 10.1093/jiplp/jpu092
- 2011, article entitled “Patent Law Reform: Highlights of the Leahy-Smith American Invents Act, Northwest Suburban Bar Association Newsbriefs (November 2011), pp. 8-9, 22
- 2011, article entitled “Minimizing Intellectual Property Risks Through Up-Front Due Diligence,” Northwest Suburban Bar Association Newsbriefs (March 2011), pp. 7-8 and 24
- 2008, article entitled “Strategies For Defending International Companies Against U.S. Patent Trolls,” Journal Of Intellectual Property Law & Practice 2008, doi: 10.1093/jiplp/jpn230
- 2008, article entitled “A Time For Inventive Thinking,” Northwest Suburban Bar Association Newsbriefs (December 2008), pp. 17 and 24
- 2006, article entitled “The Coming Tidal Wave of Enhanced Damages Awards,” Intellectual Property Today, Vol. 13, No. 10 (October 2006), pp. 28-9