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Chapter 1 — Patenting Inventions
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Chapter 2 — Enforcing and Defending Against Patent Rights Through Litigation
- I. [2.1] Patent Litigation Overview
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II. Prefiling Considerations
- [2.2] Identifying the Business Objectives in Pursuing Litigation
- [2.3] Identifying the Risks and Costs of Patent Litigation
- [2.4] Selecting the Litigation Team
- [2.5] Gathering Evidence and Building the Case
- [2.6] Retaining Experts or Consultants Early in the Process
- [2.7] Identifying the Proper Plaintiff
- [2.8] Investigating the Alleged Infringement
- [2.9] Identifying the Appropriate Defendant
- Evaluating the Extent of Potential Damages and Remedies
- [2.10] Damages Under the Patent Statute
- [2.11] Reasonable Royalty
- [2.12] Lost Profits
- [2.13] Additional Awards Available
- [2.14] Limitations on Damage Recovery
- [2.15] Facts To Investigate in Assessing Damages
- [2.16] Injunctive Relief
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III. Initial Filings and Related Issues
- Where To Bring Suit
- [2.17] Jurisdiction
- [2.18] Venue
- [2.19] District Court’s Intellectual Property Track Record
- [2.20] The International Trade Commission
- [2.21] Preliminary Injunction Motions
- [2.22] Elements of the Complaint
- [2.23] Primer on the Law of Infringement
- [2.24] Direct Infringement
- [2.25] Literal Infringement
- [2.26] Infringement Under the Doctrine of Equivalents
- [2.27] Limitations on the doctrine of equivalents
- [2.28] Prosecution history estoppel
- [2.29] Subject matter disclosed but not claimed
- [2.30] Indirect Infringement
- [2.31] Elements of Inducement Under §271(b)
- [2.32] Elements of Contributory Infringement Under §271(c)
- [2.33] Willful Infringement
- [2.34] Responding to Complaint (Answers, Affirmative Defenses, and Counterclaims)
- [2.35] Defense or Claim of Noninfringement
- [2.36] Affirmative Defense of Invalidity
- [2.37] Section 101 Defenses
- [2.38] Section 102 Defenses
- [2.39] Section 103 Obviousness Defense
- [2.40] Affirmative Defenses Based on §112 Disclosure Requirements
- [2.41] Affirmative Defense Based on License Rights and/or Patent Exhaustion
- [2.42] Affirmative Defense Based on Statutory Bar on Damages, Failure to Mark, and/or Intervening Rights
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[2.43] Affirmative Defense Based on Laches
- [2.45] Affirmative Defense of Patent Unenforceability
- [2.46] Inequitable Conduct
- [2.47] Patent Misuse
- [2.48] Filing of Jury Demands
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IV. Case Management Issues and Discovery
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V. Claim Construction/Markman Hearings
- VI. [2.61] Summary Judgment, Trial, and Appeal
- VII. [2.62] Checklist
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VIII. Forms
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Chapter 3 — Patent Antitrust, Misuse, and Inequitable Conduct
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Chapter 4 — The Attorney-Client Privilege and the Work-Product Immunity Doctrine
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Chapter 5 — Ownership and Management of Patent Rights
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Chapter 6 — Creation and Maintenance of Trademark Rights
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Chapter 7 — Transfer or Loss of Trademark Rights
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Chapter 8 — Enforcement, Remedies, and Defenses in Trademark and Unfair Competition Law
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Chapter 9 — Copyright Subject Matter and Exclusive Rights
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Chapter 10 — Ownership and Transfer of Copyrights
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Chapter 11 — Copyright Infringement, Fair Use, and Remedies
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Chapter 12 — The Identification and Protection of Trade Secrets
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Chapter 13 — Misappropriation of Trade Secrets
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Chapter 14 — Trade Secret Remedies and the Inevitable Disclosure Doctrine
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Chapter 15 — Restrictive Covenants and Post-Employment Restraints
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Chapter 16 — Jurisdiction in the Information Age
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Chapter 17 — Licensing Online
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Chapter 18 — Business Method Patents
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Chapter 19 — Software Licensing
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Chapter 20 — Cybercrime, Digital Evidence, and Your IP Practice
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Chapter 21 — Protecting Intellectual Property in the Global Marketplace
- Index
- List of Forms
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Seth I. Appel
Seth I. Appel
Seth I. Appel is a Partner at Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, in Chicago, where he focuses his practice on all aspects of trademark, copyright, unfair competition, and false advertising law, including IP clearance, prosecution, licensing, and enforcement. Mr. Appel has extensive experience litigating in federal courts and before the Trademark Trial and Appeal Board. He is the Cochair of the Copyright Society of the USA (CSUSA), Midwest Chapter, and serves on the Editorial Board of the CSUSA’s Journal. He is also a regular contributor to AIPPI e-News (the bimonthly newsletter of the International Association for the Protection of Intellectual Property), and he is active in the International Trademark Association (INTA) and ABA, Intellectual Property Law Section. Mr. Appel received his J.D. from Columbia Law School and his B.A. from Cornell University.
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Richard C. Balough
Richard C. Balough
Richard C. Balough is a Founding Member of Balough Law Offices, LLC, in Chicago, and concentrates his practice on intellectual property, cyberspace, and business law. Mr. Balough is Cochair of the Mobile and Connected Devices Subcommittee of the American Bar Association’s Cyberspace Law Committee, Past Chair of the Chicago Bar Association’s Computer Law Committee, and a former member of the Board of Manager’s for the Intellectual Property Law Association of Chicago. Mr. Balough earned his LL.M. cum laude in addition to his J.D.
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Glen P. Belvis
Glen P. Belvis
Glen P. Belvis is a Partner at Steptoe & Johnson LLP, in Chicago, and practices in patent litigation and high tech startups. Mr. Belvis is a Master of the Richard Linn Inn of Court, an Illinois Super Lawyer, and the author of INTELLECTUAL PROPERTY IN BUSINESS TRANSACTIONS: PROTECTING THE COMPETITIVE ADVANTAGE. He graduated from DePaul University Law School, where he earned the West Publishing Company Hornbook Award, presented to the student with highest academic average in the class; he received his B.S. from the University of Notre Dame; and he was an extern for Judge Bauer, U.S. Court of Appeals for the Seventh Circuit.
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Matthew W. Callahan
Matthew W. Callahan
Matthew W. Callahan is an associate at Schiff Hardin LLP, in San Francisco, where he focuses on general litigation. Mr. Callahan earned his A.B. cum laude from Harvard University and his J.D. from New York University School of Law.
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Keith G. Chval
Keith G. Chval
Keith G. Chval is Founder of Protek International, Inc., in Willowbrook, and focuses on his practice on e-discovery, computer forensics, and investigations. Mr. Chval is an adjunct professor at The John Marshall Law School and a member of the FBI InfraGard Program. He was the first Chief of the High Tech Crimes Investigations Association, and the Association had a 100-percent conviction rate during his 7-year tenure as Chief. Mr. Chval received his B.S. from Indiana University and his J.D. from IIT-Chicago-Kent College of Law.
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Bradley L. Cohn
Bradley L. Cohn
Bradley L. Cohn is a Partner at Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, in Chicago, where he concentrates his practice in the field of trademarks, copyrights, unfair competition, right of publicity, and advertising and marketing law. Before entering private practice, Mr. Cohn served as law clerk to the Honorable Anne C. Conway, U.S. District Court for the Middle District of Florida. Mr. Cohn has served as an adjunct professor at DePaul University College of Law, teaching a seminar on trademark law and writing. He has also served as a Director of the Chicago Bar Association’s 9,000-member Young Lawyers Section and as a Past Chair of the Chicago Bar Association’s Professional Responsibility Committee and the Young Lawyers Section’s Intellectual Property Committee. He received his B.A. cum laude with distinction from Duke University and his J.D. cum laude from the University of Michigan Law School.
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Jafon Fearson
Jafon Fearson
Jafon Fearson is an associate at Brinks, Gilson & Lione, in Chicago, where he concentrates his practice on patent and copyright litigation. Mr. Fearson is a member of the Federal Circuit, Chicago, and American Bar Associations. He received his B.S. from the University of Alabama at Birmingham and his J.D. from the University of Missouri-Columbia.
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Steven E. Feldman
Steven E. Feldman
Steven E. Feldman is a Partner at Hahn Loeser & Parks LLP in Chicago, where he concentrates his practice on complex intellectual property litigation and counseling involving patents, trade secrets, trademarks and unfair competition, and copyrights. Mr. Feldman is a member of the Intellectual Property Law Association of Chicago, the Licensing Executives Society, and the Executive Counsel of the Northwestern University Institute for Sustainability and Energy. He served as Chairman of the Intellectual Property Law Association of Chicago Section on Trade Secrets and Unfair Competition from 1999 – 2003 and as Secretary from 2006 – 2008. Mr. Feldman received his undergraduate degree from Northwestern University and his J.D. with honors from the George Washington University Law School.
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R. Mark Halligan
R. Mark Halligan
R. Mark Halligan is a Partner at FisherBroyles, LLP, in Chicago, where he concentrates in intellectual property litigation. Mr. Halligan has been selected by Corporate Live Wire as the 2017 Commercial Litigator of the Year in North America, and Legal 500 ranks him as a Leading Lawyer in trade secrets litigation in the United States. Mr. Halligan has been inducted into The Legal 500 Hall of Fame. Chambers USA: America’s Leading Lawyers for Business ranks him for his exceptional standing in intellectual property law, and Managing Intellectual Property recognizes him as an “IP Star.” He earned his J.D. from Northwestern University School of Law and B.A. from the University of Cincinnati summa cum laude.
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John L. Hines, Jr.
John L. Hines, Jr.
John L. Hines, Jr. is a member of Clark Hill PLC’s Intellectual Property Practice Group, in Chicago, where he focuses on IP and technology transactions. Mr. Hines was selected as an Illinois Leading Lawyer in Computer & Technology Law and Intellectual Property Law (Illinois Leading Lawyers Network, 2016). He serves as a trustee of the Erikson Institute (a graduate school in early childhood development) and of the Chicago Institute of Psychoanalysis. Mr. Hines earned his J.D. from Northwestern University School of Law and his A.B. from Princeton University.
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Blake W. Jackson
Blake W. Jackson
Blake W. Jackson is a member of DLA Piper LLP (US), in East Palo Alto, California. He concentrates his practice on creating intellectual property strategies and solutions for his clients, while focusing on intellectual property as a real business asset. Mr. Jackson is involved in strategic patent prosecution, counseling, and patent litigation support. He has been involved in patent sales and negotiations, patent licensing, acquisition diligence analysis, and corporate training in patents and other IP. He is a former U.S. Naval officer and enjoys working on numerous veteran’s pro bono projects. Mr. Jackson received his B.S. from the United States Naval Academy and his J.D. from Chicago-Kent College of Law.
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Daniel F. Lanciloti
Daniel F. Lanciloti
Daniel F. Lanciloti is a Partner at Freeborn & Peters LLP, in Chicago, where he focuses on trial work and counseling in the areas of trade secrets and restrictive covenants litigation. Prior to joining Freeborn, Mr. Lanciloti was a Partner at Seyfarth Shaw, LLP, where he was a member of the firm’s Trade Secrets, Computer Fraud and Non-Compete Practice Group. Mr. Lanciloti also worked as an Assistant Attorney General in the Illinois Attorney General’s Office. He received his B.A. with honors from Knox College and his J.D. magna cum laudefrom Valparaiso University School of Law.
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Michael R. Levinson
Michael R. Levinson
Michael R. Levinson is a Partner at Seyfarth Shaw LLP, in Chicago, focusing his practice on litigation, with particular experience in commercial and intellectual property lawsuits. He has handled cases in federal and state courts and in private arbitrations, in Illinois and throughout the country, involving sporting goods, financial services and products, electronics, food products, construction, business forms, and consulting services, among many others. Mr. Levinson has represented dozens of employers and employees at temporary restraining order and preliminary injunction hearings and at trials in fiduciary duty, noncompete, trade secrets, and computer fraud cases. Mr. Levinson earned his undergraduate degree at Claremont-McKenna College, his M.B.A. from the University of Chicago, and his J.D. from Harvard Law School.
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Timothy W. Lohse
Timothy W. Lohse
Timothy W. Lohse is a Partner at DLA Piper LLP (US) in East Palo Alto, California, where he concentrates his practice in patent prosecution, litigation, and counseling. Mr. Lohse is a member of the Institute of Electrical and Electronics Engineers, has been a member of the Law Practice Management Committee of the California Bar Association, and has been an instructor of “Crafting and Drafting Winning Patents” for the Patent Resources Group. Mr. Lohse also serves as a board member for the Resource Area for Teaching, which is a nonprofit organization dedicated to providing teachers in California with teaching materials and lesson plans. Mr. Lohse also participates as a judge in the Giles Rich Moot Court Competition. Mr. Lohse has a BSEE from Tufts University College of Engineering and a J.D. from Golden Gate University School of Law.
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William T. McGrath
William T. McGrath
William T. McGrath is a Partner at Davis McGrath LLC, in Chicago, where his areas of concentration are copyright, trademark, and Internet law, as well as publishing law, trade secret law, and software licensing. Mr. McGrath serves as an arbitrator for the AAA on intellectual property and other commercial disputes and is a mediator for the Lanham Act Mediation Program in the U.S. District Court for the Northern District of Illinois. He is an adjunct professor and Associate Director of the Center for Intellectual Property Law at The John Marshall Law School and writes a column on intellectual property law for the Chicago Daily Law Bulletin, for which he has twice won the Lisagor Award from the Chicago Headline Club. Mr. McGrath is Past President of the Intellectual Property Law Association of Chicago and has served on the Board of Trustees of the Copyright Society of the USA and the Board of the Lawyers for the Creative Arts. He received his B.A. from the University of Notre Dame and his J.D. from Washington University in St. Louis.
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Laura Beth Miller
Laura Beth Miller
Laura Beth Miller is a Shareholder at Brinks Gilson & Lione, in Chicago, where she serves as Chair of the firm’s International Trade group and is a member of the firm’s China Task Force. She regularly represents clients in both Section 337 investigations and federal court litigation involving a variety of patent, trademark, unfair competition, trade secret, and copyright issues. In addition, she has extensive commercial litigation experience in the areas of contract, antitrust, RICO violations, and bankruptcy. She is a frequent speaker on intellectual property issues and an adjunct professor at The John Marshall Law School. She also was guest lecturer on intellectual property issues at St. Peter’s College, Oxford University. Ms. Miller received her B.A. from the University of Virginia and her J.D. from the Marshall-Wythe School of Law at the College of William and Mary.
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D. James Nahikian
D. James Nahikian
D. James Nahikian is Managing Principal of Nahikian Global Intellectual Property & Technology Law Group, in Chicago, where he serves clients in respect to patent, trade identity, trade secrets, copyright, and digital rights matters. Mr. Nahikian received his undergraduate degree from the University of Michigan at Ann Arbor, M.S. from DePaul University, and J.D. with concurrent LL.M. coursework in intellectual property law from The John Marshall Law School, where he was editor of the Journal of Computer and Information Law and received the first prize award for copyright paper in the ASCAP-sponsored Nathan Burkan Competition.
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John S. Paniaguas
John S. Paniaguas
John S. Paniaguas is a Partner at Clark Hill PLC, in Chicago, and focuses his practice on patent law. Mr. Paniaguas is Chair of the International Patent Law Committee of the Intellectual Property Law Association of Chicago; is Chair Emeritus: Center for Intellectual Property Law and Information Technology at DePaul University College of Law; and is on the Board of Governors for the Lake County (IN) Bar Association. He is also an adjunct professor of law at DePaul University College of Law (Advanced Patent Law) and at The John Marshall Law School (Intellectual Property Licensing). Mr. Paniaguas earned his B.S.E. from Purdue University-Calumet and his J.D. from DePaul University College of Law.
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Matthew F. Prewitt
Matthew F. Prewitt
Matthew F. Prewitt is a Partner at Schiff Hardin LLP, in Chicago, and concentrates his practice on trade secrets, data security and privacy, and employee mobility. Mr. Prewitt is a Certified Information Privacy Professional (CIPP-US) and a member of the Sedona Conference Working Groups 1 and 11; Drafting Team Commentary on Bring Your Own Device (BYOD) Security, Privacy, and Discovery; and Drafting Team for U.S. Data Privacy Law Primer. He is an adjunct professor at Chicago-Kent College of Law. Mr. Prewitt received his B.A. from Delta State University and his J.D. with honors from the University of Chicago School of Law.
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Marc V. Richards
Marc V. Richards
Marc V. Richards is a Shareholder at Brinks Gilson & Lione, in Chicago and concentrates on intellectual property law and patents. Mr. Richards is Vice-Chair of the International Association for the Protection of Intellectual Property — U.S. Division, a board member of the Patent Trial and Appeal Board Bar Association, and former Treasurer and board member of the Intellectual Property Law Association of Chicago. He received his J.D. from Loyola University of Chicago, M.B.A. from the University of Chicago, and B.S. from Washington University in St. Louis.
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Sherry L. Rollo
Sherry L. Rollo
Sherry L. Rollo is a Partner at Hahn Loeser & Parks LLP, in Chicago, where she concentrates her practice on patents, trade secrets, trademarks and unfair competition, copyrights, and associated licensing issues, both domestically and internationally. Ms. Rollo is a member of the International Association for the Protection of Intellectual Property (AIPPI), is on the Board of Managers and Chair of the Trade Secrets and Unfair Competition Committee of the Intellectual Property Law Association of Chicago (IPLAC), is the YMC Chair Elect and Vice-Chair Communications for the Licensing Executives Society International, is a Pro Bono Committee Member of the International Trademark Association, and is a Member of Women in BIO. Ms. Rollo received her undergraduate degree from the University of Texas at Austin and her J.D. from The John Marshall Law School with a certificate from the Center for Intellectual Property Law.
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Linda K. Stevens
Linda K. Stevens
Linda K. Stevens is a Partner at Schiff Hardin LLP, in Chicago, and is a Cochair of the firm’s Trade Secrets and Restrictive Covenants Client Service Team. Ms. Stevens has served as an adjunct faculty member at Northwestern University School of Law and for the National Institute for Trial Advocacy, as well as Chair of the Trade Secrets Subcommittee of the ABA Litigation Section’s Intellectual Property Committee. She received her B.A. cum laude from Kalamazoo College and her J.D. cum laude from the University of Michigan Law School.
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Keith D. Weiss
Keith D. Weiss
Keith D. Weiss is an associate at Brinks Gilson & Lione, in Ann Arbor, Michigan, where his focus is intellectual property law and patents. Mr. Weiss has over 20 years of corporate research and development experience and is listed as an inventor on more than 30 patents. He received his B.S. magna cum laude from Clemson University, where he was the recipient of the Mark Bernard Hardin Award; his Ph.D. from the University of Florida; and his J.D. cum laude from Thomas Cooley Law School, where he was the recipient of an Honors Scholarship.
Intellectual Property Law (ARCHIVED 2013 EDITION)
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