MANAGING PARTNER
Jeffrey S. Sharp (Managing Partner) admitted to bar, 1984, Georgia and Illinois; U.S. District Court, Northern District of Illinois; registered to practice before U.S. Patent and Trademark Office. Education: Princeton University (B.S.E., Chemical Engineering, 1980); University of Georgia (J.D., 1984). Jeffrey S. Sharp is the Managing Partner of Marshall, Gerstein & Borun. He has extensive prosecution and opinion experience. He has participated in numerous inter partes patent matters including patent infringement litigation before U.S. District Courts, patent interference proceedings before the U.S. Patent and Trademark Office, and patent opposition work before foreign patent offices. Mr. Sharp's practice emphasizes biotechnology matters, and includes pharmaceuticals, nutraceuticals and immunotherapeutic reagents, and recombinant nucleic acid technologies including plant biotechnology. He also has experience in gene-sequencing and gene therapy technologies, and in vivo and in vitro assay methods. His additional practice focus includes chemical and chemical engineering matters including chemical processing technology and organic and inorganic chemistry. Mr. Sharp also has extensive experience in the areas of carbohydrate chemistry and food and beverage chemistry. Mr. Sharp is a member of The Economic Club of Chicago, sits on the Board of Directors of the Pilot Legis RPG, and serves on the executive committee of the Board of Trustees of The Latin School of Chicago. He has previously served as Chairman of the Committee to Nominate Alumni Trustees for Princeton University and as president of The Princeton Club of Chicago and currently serves on the Executive Committee of the Alumni Council of Princeton University and as co-Class Agent for his Princeton class. He is recommended by his peers as a Leading Lawyer in Illinois. Member: Chicago and American Bar Associations; Intellectual Property Law Association of Chicago; American Institute of Chemical Engineers. Practice Areas: Intellectual Property; Patent Prosecution; Biotechnology Patents; Chemical Patents; Patent Interference Practice; Pharmaceutical Intellectual Property.Email: Jeffrey S. Sharp
PARTNERS
Richard H. Anderson (Partner) admitted to bar, 1973, Illinois; U.S. Court of Appeals, Seventh and Federal Circuits; U.S. District Court, Northern District of Illinois and U.S. Supreme Court; registered to practice before U.S. Patent and Trademark Office. Education: University of Kentucky (B.S., Chemical Engineering, 1968); George Washington University (J.D., 1972). Richard H. Anderson's experience encompasses more than 35 years in the field of intellectual property law, primarily in the chemical and chemical engineering fields. His practice includes preparing and prosecuting patent applications and trademark applications, and handling trademark oppositions and cancellation proceedings as well as preparing domestic and international patent and trademark licensing agreements. He also has prepared numerous infringement opinions in virtually all of the above areas. His work in the chemical arts has proven to be particularly efficient by his practice of scheduling personal interviews with the assistant examiners, often first office action. Mr. Anderson has conducted over 500 personal interviews with U.S. patent examiners in the following technologies: Resin binders, ion exchange resins, plasticizers, and water absorbent polymers; Synthetic blood, drug delivery compositions, and polymeric membranes; Oil-well drilling fluids, PCB and dioxin removal, and gas dehydration; Man-made boards and hair-care formulations; Waste-water and sewage treatment, and heavy metal removal; Anaerobic sealants, radioactive isotope removal, rubber additives, foundry compositions, distillation and heat transfer, and explosive compositions; Separation of protein concentrates from foliage, soil stabilization, and capacitors; Inorganic resins, and glucose and cholesterol diagnostics; Refractory compositions, gaskets, lubricating compositions, and cement compositions. Mr. Anderson joined Marshall, Gerstein & Borun after 17 years as a partner with another Chicago patent law firm. While completing law school, he was a patent examiner in the United States Patent and Trademark Office, responsible for various chemical arts, including paper making, foods, glass manufacturing, polymers, and mass transfer methods and apparatus. Member: American Bar Association; Intellectual Property Law Association of Chicago. Practice Areas: Chemical Patent Prosecution; Intellectual Property; Chemical Intellectual Property; Intellectual Property Portfolio Management; Design Patents; Patent Interference Practice; Trade Secrets; Nanotechnology; Technology Transfers; Opinions and Counseling; Chemistry; Patent Prosecution.
Scott E. Baxendale (Partner) admitted to bar, 1996, Illinois; U.S. District Court, Eastern District of Michigan, U.S. District Court, Northern District of Illinois and U.S. Court of Appeals, Federal Circuit; registered to practice before U.S. Patent and Trademark Office. Education: Case Western Reserve University (B.S., Mechanical Engineering, 1988); John Marshall Law School (J.D., 1996). Scott E. Baxendale performs patent prosecution and intellectual property portfolio management, with particular emphasis in the mechanical and electrical fields. His technical focus encompasses: Mechanical and Electro-Mechanical Toys and Games, Process control valves and regulators, Computer networking software, E-Commerce application, Cellular telecommunications, Automotive seating, Decorative and security window coverings, Video gambling units, and Digital satellite television systems. Prior to attending law school, Mr. Baxendale worked as a senior consultant at Andersen Consulting in Cleveland and Chicago, specializing in the development of large-scale integrated distribution systems for clients in the retail industry. Practice Areas: Patent Prosecution; Computer Software; Intellectual Property Portfolio Management; Electrical Prosecution and Counseling; Mechanical Prosecution and Counseling; Intellectual Property.
Gregory J. Chinlund (Partner) admitted to bar, 1996, Illinois; U.S. District Court, Northern District of Illinois. Education: Iowa State University (B.A., Marketing, 1993); Northern Illinois University (J.D., cum laude, 1996); John Marshall Law School (LL.M., 2000). Gregory J. Chinlund specializes in the areas of trademarks, copyright, design patents, trade secrets and the Internet, including counseling, prosecution, transactions, and litigation. As a trademark specialist, Mr. Chinlund counsels and assists the firm's clients with protecting goodwill that has been developed over many years and helps newer companies develop and protect brands that can become the most valuable assets of the business. During his years of trademark practice, Mr. Chinlund has provided hundreds of opinions to and prosecuted hundreds of applications on behalf of clients as well as represented clients in inter partes proceedings before the U.S. Patent and Trademark Office Trial and Appeal Board and trademark infringement cases. With many of the firm's clients conducting business internationally, Mr. Chinlund also assists with registering and enforcing trademark rights worldwide. Mr. Chinlund also practices extensively in the area of design patents/industrial designs, both domestically and internationally. Whether dealing with the aesthetic of writing instruments, furniture, office products, personal electronic devices, sporting goods, or a wide array of other products, Mr. Chinlund works with clients proactively to anticipate the universe of potential applications of a client's design, and guidance encompassing possible infringement, design-arounds, and potential conflicts with the designs of others. In the area of copyright law, Mr. Chinlund works with marketing professionals, artists, musicians, movie producers, photographers, programmers and software developers, writers and others before, during and after the creative process in order to protect, enforce and derive economic benefit from the rights resulting from clients' artistic endeavors. Mr. Chinlund occasionally works with Lawyers for the Creative Arts, a not-for-profit organization, on a pro bono basis for starving artists in need of legal assistance but without the financial means to pay for it. The ability to bring to the table expertise in several substantive areas uniquely positions Mr. Chinlund to counsel clients regarding the best ways to protect valuable intellectual property assets. Mr. Chinlund's skill set is the result of diverse work experiences including presentation of cases in the state Appellate and Illinois Supreme Court, which resulted in wins for clients in non-IP related cases. His education in Marketing, as well as years of working with marketing professionals, has provided him with an understanding of the business mind set. As a result, Mr. Chinlund understands the necessity of avoiding unnecessary legal posturing when a conflict arises so that the parties can resolve the matter and return to business as usual. Member: Chicago Bar Association; Illinois State Bar Association; American Bar Association; Sports Lawyers Association. Practice Areas: Trademarks; Copyrights; Trade Secrets; Design Patents; Intellectual Property; Intellectual Property Portfolio Management; Litigation; Computers and Software; Internet and E-Commerce.Email: Gregory J. Chinlund
Pamela L. Cox (Partner) admitted to bar, 2000, Illinois; registered to practice before U.S. Patent and Trademark Office. Education: Indiana University, Bloomington (B.S., Biology); University of Notre Dame (J.D., 2000). Pamela L. Cox concentrates on licensing and other transactions related to intellectual property for a wide range of clients from start-up organizations to non-profit institutions to international companies. Ms. Cox works closely with her clients, taking ownership of their problems and remaining passionately engaged until successful resolution. She is talented at unraveling complex problems, proactive counseling and devising creative solutions. An example of the issues Ms. Cox typically handles are as follows: developing licensing strategies and structuring collaborative relationships and harmonizing business goals and agreement language; leading negotiations and persuading others with sensitivity to relationship dynamics and the internal/external politics of the parties; drafting licenses, confidentiality, joint venture, material transfers, research, clinical trial and testing, manufacturing, distribution and supply, consulting, open-source, assignments and other intellectual property agreements; performing thorough due diligence of transferred assets in connection with licensing, assignment or the sale or merger of a business; dispute resolution through settlement agreements effectively balancing competing interests; counseling on employee agreements, invention disclosures and policy considerations related to intellectual property and government funding; and managing out-licensing portfolios, including marketing and licensing activities. Before attending law school, Ms. Cox served as the associate director of technology transfer at Indiana University where one of her responsibilities was managing the university's eight campus patent portfolios. She understands university technology transfer first-hand, the importance of licensing for development and commercialization for the public benefit, and the statutes and regulations implicated in such activity. Prior to IU, Ms. Cox worked in regulatory affairs at DePuy Inc., a Johnson & Johnson Company. In addition to her responsibilities as a microbiology analyst, she drafted the standard operating procedures that supported ISO certification. Her exposure to the medical device regulatory approval process and sterilization guidelines is an asset in counseling clients in the medical device industry. Ms. Cox is a Certified Licensing Professional TM (CLP), a credential issued by the Licensing Executives Society (LES) (USA and Canada), Inc. to recognize licensing professionals who are committed to professional development and the attainment of the skills and knowledge necessary to perform at the highest level of quality. Ms. Cox has expertise in biotechnology opinion work and client counseling. She draws on this expertise, as well as her litigation experience, to provide practical agreement solutions. Ms. Cox is also an active participant in professional organizations. She was the 2007 Chair of the Licensing Executives Society, Chicago Chapter. She is also a member/editor of the Technology Transfer Manual Task Force for the Association of University Technology Managers. Ms. Cox is a frequent speaker on licensing and intellectual property matters (representative examples below): "Legal Issues Affecting Deals in the Life Sciences," LESi Annual Meeting, May 4-7, 2008; "Analyze This Contract!" AUTM Annual Meeting, February 28- March 1, 2008; "Non-Profit Issues Affecting Agreements (Bayh-Dole and other regulations)," CLE Seminar, October 9, 2007; "The Negotiation of Material Transfer Agreements," AUTM MTA CLE Seminar, October 4-5, 2007; "Experimental Use Rights and Licensing," 2007 LESi Annual Meeting, June 17-20, 2007; "Really Crummy Deals: Language Surprises to Avoid," American Chemical Society's 233rd National Meeting & Exposition, March 25-29, 2007; "Conflicts of Interest," 2007 AUTM Annual Meeting, March 8, 2007. Member: Illinois State and American Bar Associations; Intellectual Property Owners Association (Former Chair, Licensing Subcommittee); Intellectual Property Law Association of Chicago; American Chemical Society; American Intellectual Property Law Association; University Club. Practice Areas: Intellectual Property; Intellectual Property Licensing; Intellectual Property Portfolio Management; Biotechnology; Nanotechnology.Email: Pamela L. Cox
Paul C. Craane (Partner) admitted to bar, 1993, Illinois; U.S. Court of Appeals, Seventh and Federal Circuits; U.S. District Court, Northern District of Illinois; registered to practice before U.S. Patent and Trademark Office. Education: University of Illinois, Urbana-Champaign (B.S., Mechanical Engineering, with highest honors, 1990); Northern Illinois University College of Law (J.D., magna cum laude, 1993). After beginning his career in litigation, Paul Craane shifted his focus to patent procurement (prosecution) and client counseling. Working with a wide range of technologies, Mr. Craane has successfully executed tailored prosecution strategies both domestically and in a number of foreign jurisdictions. Mr. Craane has a strong commitment to education, believing that understanding is the key to better communication between attorney and client. Technical Depth Mr. Craane's background is in mechanical and electrical engineering, with particular projects covering everything from satellite propulsion to educational toys. Areas of technological emphasis include: Transportation and processing of bulk materials and discrete objects using vibration; Heat transfer within fluids circulating in automotive, residential and industrial systems; Conversion of biomass into biofuel ; Treatment of wastewater and other waste product streams; Administration of pharmaceuticals and fluids; Programming of computers and other electronic devices; Networking of computers and other electronic devices. Geographic Breadth Mr. Craane has a firm foundation in US law and practice. Mr. Craane has appeared before the United States Patent and Trademark Office for well over a decade, and has successfully handled such specialty proceedings as reissues, reexaminations and interferences. As a litigator, Mr. Craane has appeared before judges in various U.S. district courts, and has been involved in appellate work before the Courts of Appeals for the Federal Circuit and the Seventh Circuit. Mr. Craane is also well versed in foreign patent prosecution, and has formulated and successfully implemented prosecution strategies for numerous international filings. He has unique experience with practice before the European Patent Office (EPO), including in briefing and managing EPO opposition proceedings. Mr. Craane has also acted as the coordinating attorney for patent matters being simultaneously prosecuted and litigated in the U.S. and in foreign countries. Client-Oriented Service Alignment of prosecution victories with client goals is the truest measure of success. To improve communication, Mr. Craane works to see that everyone speaks the same language, learning the client's business while educating the client about the legal system. Because client service should not end at the office, Mr. Craane appreciates opportunities to travel and meet with his clients at their places of business. To assist clients further, Mr. Craane is in the process of authoring several articles on topics of interest to small and medium-sized companies. These articles expand on the numerous in-house educational programs he has conducted, including overviews of U.S. prosecution, foreign prosecution, and special issues in joint U.S./foreign prosecution, as well as U.S. clearance opinion preparation. Mr. Craane received his B.S., with highest honors (University Honors and Quest Bronze Tablet), in Mechanical Engineering from the University of Illinois, Urbana-Champaign. He earned his J.D., magna cum laude, from Northern Illinois University College of Law, where he also was a Law Review Notes and Comments editor. Articles and Speaking Engagements Navigating the Intellectual Property Maze, Biomass Magazine (forthcoming October 2009). Intellectual Property Triggers, Law360 (Intellectual Property and Technology Sections), January 2009. Foreign Patent Prosecution Basics, AUTM (Association of University Technology Managers) Regional Meeting, September 2003. Advanced Patent Law Issues, AUTM Regional Meeting, July 2002. At the Boundaries of Law and Equity: The Court of Appeals for the Federal Circuit and the Doctrine of Equivalents, 13 N. Ill. Univ. L. Rev. 106 (1992) (cited in Hilton Davis Chemical Co. v. Warner-Jenkinson Co., 62 F.3d 1512, 1537 n.2 (Fed. Cir. 1995) (J. Plager) and cited and quoted in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 234 F.3d 558, 621 (Fed. Cir. 2000) (J. Linn). Practice Areas: Intellectual Property Counseling; Intellectual Property Licensing; Intellectual Property Litigation; Patent Prosecution; Trademark Prosecution; Electrical Patents; Mechanical Patents; Trademark Registrations; Intellectual Property; Intellectual Property Portfolio Management; Patent Interference Practice; Computers and Software; Medical Technology.Email: Paul C. Craane
Jeffrey H. Dean (Partner) admitted to bar, 1992, Illinois; U.S. Court of Appeals, Third, Seventh and Federal Circuits; U.S. District Court, Eastern District of Wisconsin and U.S. District Court, Northern District of Illinois; U.S. District Court, District of Colorado. Education: University of Chicago (B.A., with honors, 1989); Harvard Law School (J.D., cum laude, 1992). Elected by his peers as a "Leading Lawyer in Patent Litigation," Mr. Dean has successfully represented a wide variety of clients in litigation involving a diverse range of technologies, including DNA sequencing, protein expression, cell transformation, cable television networks, interactive television services, video-on-demand services, injectable pharmaceuticals, industrial power meters, medical devices, and various consumer products. In addition to his trial work, Mr. Dean specializes in the preparation of critical briefs in complex matters and has obtained the early dismissal through summary judgment of five separate patent infringement cases, including three prior to the plaintiff taking significant discovery. Mr. Dean is a member of the Trial Bar of the United States District Court for the Northern District of Illinois, and is admitted to practice in the Supreme Court of Illinois, the United States Courts of Appeals for the Third, Seventh and Federal Circuits, and the United States District Courts for the Northern District of Illinois, the Eastern District of Wisconsin, and the District of Colorado. Mr. Dean is a 1992 alumnus of the Harvard Law School, where he graduated cum laude and co-authored the best brief and argued for the first prize team in the Harvard Law School Ames Moot Court Competition. Mr. Dean is also a 1989 alumnus of the University of Chicago, where he was inducted into Phi Beta Kappa, appointed a Student Marshall in the College, and served as the only undergraduate Junior Fellow in the John M. Olin Center for Inquiry Into the Theory and Practice of Democracy. Reported Cases: Scheppi v. The Thermos Company (D. Minn.) (patent infringement defense); More Corporation v. Wallace Computer Services, Inc. (D. Del. and 3d Cir.) (corporate control contest and antitrust claims); Mycogen Plant Science v. DeKalb Genetics (D. Del.) (patent infringement defense); Novartis v. DeKalb Genetics (D. Del.) (patent infringement defense); Calphalon v. General Housewears N.D. Ill. (patent infringement defense); Dorel Juvenile Products v. Graco Children's Products (N.D. Ind. nd Fed. Cir.) (patent infringement defense); Broadcast Innovation v. Charter Communications (D. Colo.) (patent infringement defense); Gossen v. Marley Mouldings (E.D. Wisc.) (patent infringement defense); EZ Paintr Design Patent Litigation (D.N.J.) (patent infringement defense); Massachusetts School of Law v. American Bar Association (E.D. Pa. and 3d Cir.) (antitrust defense); Rohan v. American Bar Association (E.D.N.Y. and 2d Cir.) (civil rights defense); Avery-Dennison v. Sanford LP (C.D. Cal.) (patent infringement defense). Practice Areas: Litigation; Patent; Copyright; Trade Secrets; Biotechnology; Mechanical Arts; Intellectual Property; Chemistry; Design Patents; Electrical Prosecution and Counseling .Email: Jeffrey H. Dean
Thomas L. Duston (Partner) admitted to bar, 1987, Illinois; 1995, U.S. Court of Appeals, Fifth Circuit; 1997, U.S. District Court, Northern District of Illinois; 2000, U.S. Court of Appeals, Seventh Circuit and U.S. District Court, Eastern District of Michigan; 2002, U.S. Court of Appeals, Federal Circuit; 2003, U.S. Court of Appeals, Third Circuit; admitted to practice pro hac vice in various district courts throughout United States. Education: Columbia University (B.A., 1984); Hastings College of the Law, University of California (J.D., 1987). Mr. Duston's colleagues and opponents alike have praised both his creativity and his tenacity as a trial lawyer. Mr. Duston has litigated patent infringement claims involving diagnostic immunoassays utilizing monoclonal antibodies, hydraulic fittings for aerospace applications, implantable silicone devices for reconstructive surgery, and aluminum alloys used to construct wing surfaces of commercial passenger jets, to name just a few of the areas of technology with which Mr. Duston is experienced. He has tried intellectual property disputes before both judges and juries, as well as handled injunction proceedings, arbitrations, mediations and appeals in such cases. His work on behalf of clients in the medical, pharmaceutical, semiconductor, computer, explosives, automotive, and metals industries, among others, has encompassed not only patent litigation, but also trade secret disputes, the enforcement of non-competition agreements, trademark actions, claims of unfair competition, and contract and negligence claims relating to technology failures. Mr. Duston has authored a number of articles in the areas of patent and trade secret litigation. He was recently voted a "Leading Lawyer in IP Litigation" by his peers. Earlier in his career, he was named by the Law Bulletin Publishing Company as one of "Forty Illinois Attorneys Under 40 to Watch," a list of the State's most talented and well-regarded lawyers. Member: Chicago, Seventh Circuit and American Bar Associations; American Intellectual Property Law Association; American Judicature Society; Intellectual Property Owners Association. Practice Areas: Intellectual Property Litigation; Patent Litigation; Trademark Litigation; Intellectual Property; Litigation; Aerospace Law; Biotechnology; Chemistry; Computers and Software; Medical Technology; Electrical Prosecution and Counseling ; Pharmaceutical .Email: Thomas L. Duston
Patrick D. Ertel (Partner) admitted to bar, 1973, Minnesota; 1974, Illinois; U.S. Court of Appeals, Federal Circuit and U.S. Supreme Court; registered to practice before U.S. Patent and Trademark Office. Education: University of Notre Dame (B.S., Aerospace Engineering, cum laude, 1970); Northwestern University (J.D., cum laude, 1973). Patrick D. Ertel has significant experience in the field of intellectual property law, from a career spanning decades both as a name partner in a prior law firm as well as his many years with Marshall, Gerstein & Borun. Mr. Ertel has cultivated a niche practice in counseling major corporations and technology-based start-ups on strategic planning issues centered on intellectual property. He has developed systems to evaluate, protect, exploit and regularly reevaluate intellectual property in a cost-effective manner. In so doing, Mr. Ertel has become known for negotiating and drafting technology-related agreements to extract full value from his client's intellectual property. In addition, Mr. Ertel has written numerous articles on technology transfer focusing on the philosophical and ethical issues which can facilitate the implementation of effective license agreements. These issues are less frequently discussed in technology transfer practice, but when considered they can result in the strongest possible business relationships because fairness is at the heart of each deal. In more than thirty five years of practice, Mr. Ertel also has been involved in nearly every aspect of litigation, prosecution and opinion work in a wide range of technical areas including: Aerospace systems and components Bindery systems and equipment Printing presses Concrete forming systems and components Automotive and agricultural drive systems Medical and surgical equipment Vibratory processing equipment Faucets and valves Fiber optics Consumer products Mr. Ertel has most recently focused on intellectual property dispute resolution on behalf of indemnified parties, including major retailers and wholesalers. He also regularly represents licensors and licensees in negotiating and drafting technology related license agreements, advises on non-disclosure and employment agreements, and counsels on all manner of patent, copyright and trademark related matters. Mr. Ertel also has mediated patent infringement disputes and advised clients involved in patent litigation. Mr. Ertel was appointed by former Governor Thompson to the Technology Innovation and Commercialization Grants-in-Aid Council of the Department of Commerce and Community Affairs to advise on the development of technology-based businesses in the state of Illinois. He also was a founder and served as both Secretary and a member of the Board of Directors of the Inventors' Council of Chicago, a non-profit corporation established to assist independent inventors to understand the process of protecting and commercializing an invention. A popular and sought-after speaker, Mr. Ertel frequently addresses audiences at industry meetings, small business development seminars, and academic programs on topics ranging from the basics of intellectual property law to the strategic significance of identifying, protecting and commercially exploiting intellectual assets. Mr. Ertel was recently identified as one of the world's leading Intellectual Property strategists by Intellectual Asset Management Magazine, was recommended by peers as a Leading Lawyer, and was voted an Illinois Super Lawyer. A 1970 cum laude graduate of the University of Notre Dame, Mr. Ertel was awarded a J.D. degree, cum laude, from the Northwestern University School of Law. Member: Chicago Bar Association; American Bar Association; American Intellectual Property Law Association; Intellectual Property Law Association of Chicago (Treasurer, 1985-1987); Licensing Executives Society. Practice Areas: Intellectual Property Licensing; Intellectual Property Litigation; Intellectual Property Counseling; Electro-Mechanical Patents; Mechanical Patents; Intellectual Property; Intellectual Property Portfolio Management; Mechanical Patent Prosecution; Litigation; Aerospace Law; Medical Technology.Email: Patrick D. Ertel
Kevin M. Flowers (Partner) admitted to bar, 1997, Illinois; U.S. Court of Appeals for the Federal Circuit; U.S. District Court, Northern District of Illinois including Trial Bar; admitted to practice pro hac vice in various district courts throughout the U.S.; registered to practice before U.S. Patent and Trademark Office. Education: Ohio State University (B.S., Biological Sciences, 1986; M.A., Exercise Physiology, 1991; J.D., with honors, 1997); Pennsylvania State University (Ph.D., Cellular and Molecular Physiology, 1994). Over the last decade, Kevin Flowers has been successfully representing clients such as Amgen, Danisco, Home Depot, ICOS, Illumina, Novartis, and Serono as first-chair trial counsel in patent infringement cases involving products with sales in the hundreds of millions to billions of dollars per year. These include Amgen v. Hoechst Marion Roussel and TKT and Amgen Inc. v. F. Hoffmann La Roche (patents covering Epogen®); Schering v. Geneva Pharmaceuticals et al. (generic versions of Claritin®); Vanderbilt Univ. v. ICOS Corporation (patents covering Cialis®); Pfizer Inc. et al. v. Teva Pharms. USA, Inc. et al. (patents covering Lyrica®); Cell Genesys Inc. v. Applied Research Systems and Applied Research Systems v. TKT (patents covering methods of endogenous gene activation); Danisco v. Novozymes (patents covering recombinant food processing enzymes); Abbott GmbH v. Yeda Research and Development (patents covering recombinant TNF-binding proteins); Hyseq v. Affymetrix and Affymetrix v. Hyseq (patents covering "gene chips"); Applera Corp., Applied Biosystems, Inc. v. Illumina, Inc. et al. (patents covering ligation-based DNA sequencing methods); Default Proof Credit Card System v. Home Depot et al. and RealSource Communications v. Home Depot et al. (retail gift-card systems). He has also successfully represented clients such as Monsanto and Amgen in high-stakes interference and appeal proceedings in the Patent Office, and has served as first-chair trial counsel in trademark infringement cases in the District Courts.
Dr. Flowers received his law degree from The Ohio State University Moritz College of Law, where he was a Managing Editor and contributing author for the Ohio State Journal on Dispute Resolution. While in law school, he worked full-time as a law clerk in a high-profile criminal defense practice. He received his undergraduate degree in Biology and a Master's degree in Health Education from The Ohio State University, and earned his Ph.D. from the Cellular and Molecular Physiology program at the Pennsylvania State University College of Medicine and Graduate School. His scientific research led to eleven peer-reviewed scientific publications. He is a member of the Trial Bar for the U.S. District Court for the Northern District of Illinois, a member of the bar of the Federal Circuit Court of Appeals, and is registered to practice in the U.S. Patent and Trademark Office. Member: American Bar Association (Litigation Section). Practice Areas: Intellectual Property Litigation; Biotechnology Patents; Patent Litigation; Pharmaceutical Patent Prosecution; Intellectual Property; Patent Interference Practice.Email: Kevin M. Flowers
David A. Gass (Partner) admitted to bar, 1992, Illinois; U.S. District Court, Northern District of Illinois; registered to practice before U.S. Patent and Trademark Office. Education: University of Michigan (B.S., Cellular and Molecular Biology, with highest honors and highest distinction, 1988); Boalt Hall School of Law, University of California (J.D., 1992). David A. Gass performs domestic and international patent prosecution, with a particular emphasis in biotechnology-related matters. His patent law experience includes interference proceedings before the U.S. Patent and Trademark Office and advising foreign counsel in foreign patent prosecution and opposition proceedings. Mr. Gass also counsels clients concerning all aspects of intellectual property as they relate to business strategies and patent life cycle management, and prepares opinions directed to patent validity, infringement, and freedom to operate. Mr. Gass assists clients with the negotiation and drafting of licenses and other agreements pertaining to patent, trademark, copyright, and other intellectual property rights. Mr. Gass has handled matters in a wide variety of biotechnology disciplines, such as: recombinant DNA, protein, and antibody technologies; genomics and proteomics; recombinant growth factors, enzymes, chemokines, and cell surface receptors; angiogenesis and anti-angiogenesis technologies and circulatory disorders; gene therapy, interfering RNA, and antisense technologies; genetic engineering of plants and animals; cancer and oncogenes; polymerase chain reaction and mass spectrometry; nanotechnology and industrial biopolymers; transgenic organisms; prions, Alzheimer's disease, and neural regeneration; inflammation and arthritis; therapeutic methodologies and formulations; medical diagnostics and kits that involve both traditional and genetic methodologies; food and beverage formulations; and restriction endonuclease reactions. Prior to attending law school, Mr. Gass worked for two years at the University of Michigan as a researcher studying plant mitochondrial genetics. Author: "An Analysis of Decisional Law Governing the Use of DNA Evidence," in DNA On Trial - Genetic Identification and Criminal Justice, ed. Paul R. Billings, Cold Spring Harbor Press, 1992; "Variable Intron Content of the NADH Dehydrogenase Subunit 4 Gene of Plant Mitochondria," Curr. Genet. 21:423-430 (1992). Member: American Bar Association; Intellectual Property Law Association of Chicago. Practice Areas: Intellectual Property; Patent Interference Practice; Pharmaceutical Intellectual Property; Nanotechnology; Biotechnology; Intellectual Property Portfolio Management; Patent Prosecution.Email: David A. Gass
Robert M. Gerstein (Partner) admitted to bar, 1988, Illinois; U.S. District Court, Northern District of Illinois; admitted to practice pro hac vice in various district courts throughout the U.S.; registered to practice before U.S. Patent and Trademark Office. Education: University of Michigan (B.S., Nuclear Engineering, with honors, 1985; J.D., cum laude, 1988). Robert M. Gerstein has been with Marshall, Gerstein & Borun since 1988 and has been a partner since 1995. His practice focuses on transactions involving intellectual property, particularly patent and trademark licenses. He also is involved in patent, trademark, copyright, unfair competition and contract litigation, and has experience in patent and trademark prosecution. Mr. Gerstein is also currently a member of the firm's executive committee.
Mr. Gerstein strives to get a deep understanding of each client's business and technology, so that he can provide advice that is not only legally accurate, but that is also practical and economical for that client's business. The best solution for one client may not work for another due to their size, corporate cultures, product types and competitive landscape. Knowing as much as possible about the client leads to a recommendation that the client can use most easily, while still affording the best legal protection.
Mr. Gerstein has prepared numerous legal opinions for clients, primarily involving patent validity, patent infringement or patentability. He has also provided opinions for due diligence of intellectual property transactions, as well as the intellectual property aspects of mergers, acquisitions and public offerings. His patent prosecution work relates to U.S., foreign and international patent applications and has included reexaminations and appeals before the Board of Patent Appeals and Interferences.
Technological subject matters with which he has dealt include:
Computer and software
Medical devices
Vacuum cleaners
Superconductors
Video games
Radio frequency filters
Mr. Gerstein was selected as one of the world's leading intellectual property strategists by Intellectual Asset Management magazine. Mr. Gerstein is listed in Martindale-Hubbell's 2009 Bar Register of Preeminent Lawyers, and has achieved the highest rating for legal ability in Martindale-Hubbell. He has been recommended by his peers as a Leading Lawyer, and voted an Illinois Super Lawyer. Mr. Gerstein is a member of the Intellectual Property Law Association of Chicago, the American Bar Association, the Illinois State Bar Association and the Chicago Bar Association.
In 1988, Mr. Gerstein graduated from The University of Michigan Law School, cum laude, and received his B.S.E., with honors, in Nuclear Engineering from the College of Engineering at the University of Michigan in 1985. Member: Chicago Bar Association; Illinois State Bar Association; American Bar Association; Intellectual Property Law Association of Chicago. Practice Areas: Intellectual Property; Licensing; Intellectual Property Counseling and Opinions; Intellectual Property Litigation; Computer and Software Patents; Patent Litigation; Medical Technology; Trade Secrets; Trademarks; Patent Prosecution; Patent Interference Practice; Copyrights; Electrical Patent Prosecution; Mechanical Patent Prosecution.Email: Robert M. Gerstein
Michael R. Graham (Partner) admitted to bar, 1986, Illinois; U.S. District Court, Central and Northern Districts of Illinois. Education: Miami University, Ohio (B.S.Ed., 1974); Ohio University (M.A., English, 1978); Fordham University (J.D., 1986). Michael R. Graham focuses his practice on trademarks, copyrights, cyberlaw, licensing and intellectual property transactions and litigation. He provides clients with counseling related to all phases of trademark, trade name, domain name, and copyright clearance, registration and protection. He also has extensive experience negotiating and preparing intellectual property and software licenses, assignments, and other agreements, assisting clients in developing trademark and copyright use and protection programs, and in educating legal staff, marketing departments, and other employees on intellectual property issues. He represents individuals, corporations, and associations in a wide range of industries including: consumer products, apparel, and pharmaceuticals; internet content providers and software developers; printing processes and equipment; artists, architects and designers; entertainment and media, including both artists, musicians and writers, and publishers and producers; metal and steel fabrication; and market and media research and investigation. Mr. Graham has litigated trademark opposition and cancellation proceedings before the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office, and has litigated trademark, copyright and unfair competition cases before U.S District Courts. He has successfully aided clients in protecting their rights in trademarks, copyrighted works, and agreements, and guided clients through Internet domain name disputes under ICANN's Uniform Dispute Resolution Policy. Mr. Graham was one of the earliest attorneys to recognize the value and challenges facing companies on the Internet, and has long been one of the leading innovators in dealing with trademarks and copyrighted materials on the Internet. Active in the International Trademark Association (INTA), Mr. Graham was instrumental in the development of the INTA ONLINE web site. He also chaired INTA's Web Site Policy and Oversight Subcommittee, and has been a member of the Member Communications Advisory Board, Programs Committee, and Membership Committee. He is currently a member of INTA's Information Resources Committee and Member Client Education Subcommittee and was the co-chair of INTA's Trademarks In Cyberspace 2005 forum. He is also a member of the Piracy and Counterfeiting Committee of the Intellectual Property Owners (IPO) association. Recommended by his peers as a "Leading Lawyer," Mr. Graham was also named a "Super Lawyer" in the area of Intellectual Property. He is a frequent speaker and has written numerous articles and presentations on trademark, Internet, and copyright law. Practice Areas: Internet Law; International Trademarks; Trademark Litigation; Trademark Protection; Trademark Registration; Copyrights; Intellectual Property Portfolio Management; Intellectual Property; Pharmaceutical Intellectual Property; E-Commerce.Email: Michael R. Graham
Julianne Hartzell (Partner) admitted to bar, 2001, Illinois; U.S. District Court, Northern District of Illinois; registered to practice before U.S. Patent and Trademark Office. Education: Duke University (B.S., Mechanical and Biomedical Engineering, 1998); University of Michigan (J.D., 2001). Julianne M. Hartzell is an associate with Marshall, Gerstein & Borun whose practice comprises all aspects of intellectual property litigation. Ms. Hartzell's technical experience includes: absorbent consumer products, automotive components, internet technology, medical devices, and on-site waste systems. Ms. Hartzell received her B.S. in Mechanical and Biomedical Engineering from Duke University in 1998. As an undergraduate, she interned with Procter & Gamble, Visteon (then a division of Ford Motor Company), and worked as a research assistant focusing on MRI imaging technology and failure analysis. She received her J.D. from the University of Michigan in 2001, and participated in the Intellectual Property Students Association, The Criminal Law Society and the Child Advocacy Law Clinic. As a student, she also interned for the Wayne County Prosecutor's Office, where she received valuable courtroom experience. Ms. Hartzell devotes much of her time to volunteer services. She serves on Marshall, Gerstein & Borun's Pro Bono and Diversity Committees. Ms. Hartzell is a member of the Board of Directors for the Coalition of Women's Initiatives in Law Firms. In addition, she presently provides pro bono legal services through the Chicago Volunteer Legal Services as a guardian ad litem, representing minor children in the Probate Court. She also served as lead trial counsel in copyright litigation involving military-themed motivational posters through the Lawyers for Creative Arts. Member: Chicago, Illinois State and American Bar Associations; Intellectual Property Lawyers Association of Chicago. Practice Areas: Intellectual Property; Intellectual Property Litigation; Trade Secrets; Medical Technology; Pharmaceutical Intellectual Property.Email: Julianne Hartzell
Roger A. Heppermann (Partner) admitted to bar, 1992, Illinois; U.S. District Court, Northern District of Illinois; registered to practice before U.S. Patent and Trademark Office. Education: University of Missouri, Rolla (B.S., Electrical Engineering, summa cum laude, 1986); Northwestern University (J.D., cum laude, 1992). Roger A. Heppermann's practice focuses on patent prosecution. His technical educational background and legal experience is in electronics and digital processing techniques. Examples of electronics-related technologies handled by Mr. Heppermann include: computers - hardware and software; imaging and communication systems; robotics; design and implementation of consumer electronics, computer electronics; mass spectrometers; image recognition systems; power and process control systems; and laser, printing, radar and communication systems. Mr. Heppermann also has been involved in procuring U.S. and foreign patent protection and has participated in patent reissue and reexamination, patent interference and both patent and trademark opposition proceedings. Mr. Heppermann is a member of the firm's Executive Committee and chairs the Diversity Committee. He graduated from Northwestern University Law School in 1992 where he received his J.D., cum laude. While at Northwestern, he received the Excellence in Intellectual Property Law Award, 1991. Mr. Heppermann performed his undergraduate work at the University of Missouri-Rolla where he received his B.S. in Electrical Engineering, summa cum laude, in 1986. Phi Kappa Phi; Tau Beta Pi; Eta Kappa Nu. Member, Institute of Electrical and Electronic Engineers, 1985-1989. Member: Chicago Bar Association; Intellectual Property Law Association of Chicago. Practice Areas: Intellectual Property Litigation; Computer and Software Patents; Electrical Patent Prosecution; Patent Infringement; Intellectual Property; Patent Prosecution; Patent Interference Practice; Computers and Software; Mechanical Patent Prosecution.Email: Roger A. Heppermann
Richard B. Hoffman (Partner) admitted to bar, 1973, Illinois and U.S. District Court, Northern District of Illinois; U.S. Court of Appeals, Seventh, Ninth and Federal Circuits; registered to practice before U.S. Patent and Trademark Office. Education: University of Illinois (B.S., General Engineering, 1970); DePaul University (J.D., 1973); John Marshall Law School (LL.M., 1981). Richard B. Hoffman is widely regarded for his experience in intellectual property law in the U.S. and abroad. His career spans more than 35 years, with emphasis on patent application preparation, patent prosecution, design, trade secrets, and related opinions, counseling, intellectual property audits and agreements. He regularly advises domestic and foreign clients and foreign associates. His practice includes large and small corporations, professional associations, foundations, entrepreneurs and other law firms. Mr. Hoffman handles patent prosecution and an opinion practice within a wide range of mechanical and related technologies, and maintains a substantial practice devoted to handling U.S. rights for foreign clients. He also counsels clients on intellectual property rights issues in a diverse range of industries, including: food processing, beverage bottling, automated industrial machinery, sports and outdoor recreation equipment, horticultural seed products and processes, biomass/biofuels processing, onsite waste and drainage, industrial hardware and tools, gravity-fed shelving, packaging, metal fabrications, clean/green technologies and machines, and insurance and financial service business methods. Mr. Hoffman prepares and reviews numerous contracts for product and invention licensing, joint commercialization, trade secrets, know-how and confidential information, and intellectual property aspects of employment-related contracts. He has also represented clients in patent and trademark infringement litigation, including counterfeiting and knock-off matters. Mr. Hoffman is listed in Who's Who in America, Who's Who in the Midwest, Who's Who in the World and Who's Who in American Law. He was also voted by his peers as a Leading Lawyer in the state of Illinois. Member: Chicago, Illinois State and American Bar Associations; International Trademark Association; American Intellectual Property Law Association; Intellectual Property Law Association of Chicago (Former Secretary); Lawyers Club of Chicago. Practice Areas: Intellectual Property Litigation; Patent Infringement; Patent Prosecution; Mechanical Patents; Trade Secrets; International Intellectual Property; Medical Technology; Intellectual Property.Email: Richard B. Hoffman
Kevin D. Hogg (Partner) admitted to bar, 1984, Illinois; 1999, Ohio; U.S. District Court, Northern District of Illinois; U.S. District Court, District of Colorado; U.S. District Court, Eastern District of Michigan; U.S. Court of Appeals for the Federal Circuit; registered to practice before U.S. Patent and Trademark Office. Education: University of Cincinnati (B.S.M.E., magna cum laude, 1979; J.D., with honors, 1984). Kevin D. Hogg has been litigating patent cases for more than 20 years. A number of those cases have proceeded through trial and appeal, on both liability and damages, including for clients such as The Procter & Gamble Company and others. The technologies involved have ranged from simple mechanical devices to complex electronics and communication systems. He has also practiced before the U.S. Patent and Trademark Office in reissue, reexamination and interference proceedings, many involving proceedings in parallel to related litigation. Member: Chicago and American Bar Associations; Intellectual Property Law Association of Chicago. Practice Areas: Intellectual Property; Intellectual Property Litigation; Computers and Software; Patent Interference Practice.Email: Kevin D. Hogg
Mark H. Izraelewicz (Partner) admitted to bar, 2001, Illinois; U.S. Court of Appeals, Federal Circuit and U.S. District Court, Northern District of Illinois, including Trial Bar; registered to practice before U.S. Patent and Trademark Office. Education: State University of New York at Buffalo (B.S., cum laude, Biochemistry, 1995); University of California, San Diego (M.S., Chemistry, 1997); University of Chicago (J.D., 2001). Mark Izraelewicz assists clients in all aspects of patent practice, with an emphasis on patent litigation in the U.S. District Courts. His technical knowledge includes biotechnology and chemistry. Mr. Izraelewicz received his law degree from The University of Chicago Law School, where he was a Baker Scholar. Prior to law school, Mr. Izraelewicz was a chemist at Abbott Laboratories in North Chicago, where he was involved in the process of producing large quantities of drug candidates for use in biological testing. Mr. Izraelewicz has served as litigation counsel in two cases through trial, and a number of cases that were concluded by favorable summary disposition. He has also argued a variety of substantive motions, drafted Markman briefs and prepared motions for summary judgment. While receiving a Masters of Science from the University of California-San Diego, Mr. Izraelewicz was the recipient of the Harold C. Urey Graduate Fellowship. As a graduate student, Mr. Izraelewicz engaged in cutting edge research at The Scripps Research Institute under the direction of Professor K.C. Nicolaou. Mr. Izraelewicz's primary research interests focused on the total synthesis of complex naturally occurring compounds. He received a Bachelors of Science in Biochemistry from the State University of New York at Buffalo. At Buffalo, Mr. Izraelewicz conducted research in both Chemistry and Biochemistry and was the recipient of the Ronald E. McNair Undergraduate Research Fellowship for the promotion of undergraduate scientific research. Practice Areas: Intellectual Property; Intellectual Property Litigation; Pharmaceutical Intellectual Property; Chemistry.Email: Mark H. Izraelewicz
William J. Kramer (Partner) admitted to bar, 1992, Illinois; U.S. District Court, Northern District of Illinois; registered to practice before U.S. Patent and Trademark Office. Education: University of Illinois (B.S., Finance, with high honors, 1989); Northwestern University (B.S., Computer Science; J.D., 1992). William J. Kramer concentrates his practice in patent prosecution and client counseling, primarily related to computer software. Mr. Kramer has litigated, provided opinions and prosecuted cases involving a variety of specialized technologies including computer software, cable television systems, creation and encoding of compact discs, software used in genomic research and video gaming systems. Through significant experience and review, he has developed an in-depth understanding of: creation and encoding of compact discs and DVD discs; technology used in modern telephone call centers; software used in electronic stock and futures exchanges; software used to analyze genomic sequences; technology used in modern cable television systems; software used in modern gaming systems; peer to peer network software systems; hack resistant systems and methods; and business accounting software. In addition to his software background, Mr. Kramer has a background in finance, making him well qualified to prosecute and litigate business process patents, especially in the complex financial products area. He is active in rendering patentability, right-to-use, infringement, and invalidity opinions. He has also participated in the creation and maintenance of several joint defense groups. Prior to joining Marshall, Gerstein & Borun, Mr. Kramer was the General Counsel for Trio Foundry, Inc., and was also formerly associated with a large law firm in Chicago. His prior experience also includes serving as a clerk for the U.S. Bankruptcy Court for the Northern District of Illinois. Mr. Kramer received his J.D. from Northwestern University Law School in 1992, where he was a member and the Coordinating Executive Editor of the Journal of Criminal Law and Criminology. He received his B.S. in Finance with high honors from the University of Illinois at Urbana/Champaign in 1989, and received his Bachelors in General Science, majoring in Computer Studies, from Northwestern University in 2000. Publications: Data Treasury Patent Litigation: The Impact on Payment Systems; Securitization of Intellectual Property Assets in the U.S. Market. Practice Areas: Intellectual Property; Intellectual Property Litigation; Patent Prosecution; Electrical Patents; Computer and Software Patents; Business Method Patents; Internet Law; E-Commerce; Medical Technology.Email: William J. Kramer
Jeremy R. Kriegel (Partner) admitted to bar, 1995, Michigan; 1996, Illinois; U.S. Court of Appeals, Seventh and Federal Circuits; registered to practice before U.S. Patent and Trademark Office. Education: University of Rochester (B.S., Mechanical Engineering, with distinction, 1992); Washington University (J.D., 1995). Jeremy R. Kriegel prepares and prosecutes U.S. and foreign patents in a wide range of mechanical arts and in addition, provides counseling regarding patent and trademark infringement, licensing, patent validity, right-to-make issues, and product marking. Mr. Kriegel has also represented clients in patent litigation matters, including participation in all phases of discovery, Markman hearings, and settlement negotiations. In addition, he is experienced in patent and trademark licensing, trademark litigation and prosecution matters, as well as Internet domain name disputes. Mr. Kriegel's practice includes particular emphasis on: catheters, ostomy products, wound dressings, and other medical devices; dental instruments; gravity-feed shelving; furniture components; in-line bottling technology; ink jet printing technology; meat processing equipment; label printers; fluid control systems; on-site waste systems; retail displays; railcar decking and door hangers; consumer products; hardware; and manufacturing equipment technology. Mr. Kriegel's article entitled "A Close Shave - In A 2-1 Decision, Gillette Gets A Second Chance At A Preliminary Injunction Against The Quattro Razor" was featured as a guest column in "IP Law 360" - the "Newswire for IP Professionals." Mr. Kriegel also lectured at the America-Israel Chamber of Commerce, Young Entrepreneurs Forum on the topic of "What You Need to Know About IP To Help Your Business Grow and Thrive." Mr. Kriegel served as a law clerk to the Hon. Edward M. Thomas of the Wayne County Circuit Court in Detroit. Mr. Kriegel received his J.D. in 1995 from Washington University School of Law (St. Louis, MO). He received his B.S., with distinction, in Mechanical Engineering and a Certificate in Management Studies, with a specialization in Public Sector Analysis, from the University of Rochester (Rochester, NY) in 1992, where he was inducted into the honors society Tau Beta Pi. While in law school, Mr. Kriegel served on the law review editorial board as Notes and Comments editor for the Journal of Urban and Contemporary Law. Member: Chicago Bar Association (Former Co-Chair, National Moot Court Competition). Practice Areas: Intellectual Property; Counseling; Intellectual Property Portfolio Management; Patent Prosecution; Medical Technology.Email: Jeremy R. Kriegel
Richard M. LaBarge (Partner) admitted to bar, 1985, Illinois; U.S. Court of Appeals, Second, Seventh and Federal Circuits; U.S. District Court, Central and Northern Districts of Illinois; U.S. District Court, District of Colorado; registered to practice before U.S. Patent and Trademark Office. Education: University of Illinois (B.S.C.E., 1982); Wake Forest University (J.D., 1985). Richard M. LaBarge has broad experience in trademark prosecution and litigation, and also works extensively in patent prosecution of designs and in the mechanical arts. Mr. LaBarge prepares and prosecutes both routine and unusual applications for trademark registration. He successfully opposed a leading motorcycle manufacturer's attempt to register the sound of its motorcycles as a trademark. He works closely with foreign agents in obtaining and enforcing foreign trademark rights, and uses the Madrid protocol to obtain inexpensive foreign protection when circumstances permit. His litigation practice brought him before U.S. district courts throughout the nation, as well as before the Trademark Trial and Appeal Board for the U.S. Patent and Trademark Office and the U.S. International Trade Commission. Mr. LaBarge was recommended by his peers as a Leading Lawyer. Member: Chicago Bar Association; Intellectual Property Law Association of Chicago; U.S. International Trade Commission. Practice Areas: Intellectual Property; Trademark Prosecution; Trademark Litigation; Patent Prosecution; Mechanical Patents.Email: Richard M. LaBarge
John R. Labbé (Partner) admitted to bar, 2002, Illinois; U.S. Court of Appeals, Seventh Circuit, U.S. District Court, Southern District of Ohio, U.S. District Court, Eastern District of Wisconsin and U.S. District Court, Northern District of Illinois; registered to practice before U.S. Patent and Trademark Office. Education: Northwestern University (B.A., Biological Sciences, 1998; J.D., cum laude, 2002). John Labbé represents clients in intellectual property disputes including patent, trade secret, and trademark cases. He has broad experience in all phases of litigation from pre-litigation counseling through trial and appeal. In addition to his intellectual property experience, Mr. Labbé has represented clients in antitrust, securities, and media litigation. Mr. Labbé is also a patent attorney admitted to practice before the U.S. Patent & Trademark Office. Before entering private practice, Mr. Labbé served as a judicial law clerk to the Honorable Algenon L. Marbley of the U.S. District Court for the Southern District of Ohio. He graduated cum laude from Northwestern University School of Law in 2002 where he served as the executive editor of the Northwestern University Law Review and was a quarter-finalist in the Julius H. Miner Moot Court Competition. His Law Review comment, Louisiana's Blanket Primary After California Democratic Party v. Jones, is published at 96 Nw. U. L. Rev. 721 (2002). Member: American Bar Association. Practice Areas: Intellectual Property; Intellectual Property Litigation; Pharmaceutical Intellectual Property; Biotechnology; Computers and Software; Internet Law; E-Commerce.Email: John R. Labbé
Andrew M. Lawrence (Partner) admitted to bar, 1999, Colorado; 2001, Illinois; registered to practice before U.S. Patent and Trademark Office. Education: University of Notre Dame (B.S., Chemistry, 1993); University of Colorado (M.S., Chemistry, 1998; J.D., 1999). Andrew M. Lawrence is involved primarily in patent prosecution, client counseling, and opinion practice, with particular emphasis on the areas of chemistry/chemical engineering, consumer products, pharmaceuticals, and nanotechnology. Mr. Lawrence has handled matters involving: light-emitting polymers and display devices using the polymers; coatings, such as ink compositions, correction fluids, lubricious coatings for medical devices, and paint compositions; new pharmaceuticals and formulation technologies; methods of fabricating semiconductor devices; and methods of treating various disease states. Prior to joining the firm in 2000, Mr. Lawrence was associated with the University of Colorado's Office of Technology Transfer and Industry Outreach where he performed patentability assessments, and investigated the commercial applicability of various technologies. Mr. Lawrence was awarded his J.D. from the University of Colorado School of Law in 1999. In 1998, he received a M.S. in Chemistry from the University of Colorado, where his graduate research focused on the synthesis and characterization of phthalocyanine compounds. Mr. Lawrence graduated from the University of Notre Dame in 1993 with a B.S. in Chemistry. Practice Areas: Intellectual Property; Patent Prosecution; Chemical Intellectual Property; Mechanical Intellectual Property; Pharmaceutical Intellectual Property; Intellectual Property Portfolio Management; Nanotechnology.Email: Andrew M. Lawrence
Bradford P. Lyerla (Partner) admitted to bar, 1980, Illinois; U.S. Court of Appeals, Second, Federal and Seventh Circuits; U.S. District Court, Central, Northern and Southern Districts of Illinois, U.S. District Court, District of Colorado, U.S. District Court, District of Nebraska, U.S. District Court, Eastern District of Wisconsin, U.S. District Court, Northern District of California, U.S. District Court, Northern District of Indiana and U.S. Supreme Court. Education: University of Illinois, Urbana-Champaign (B.A., 1976; J.D., 1980). Brad Lyerla is a trial lawyer who focuses on patent and trade secret litigation. Mr. Lyerla has been lead counsel in numerous trials and arbitrations, often on behalf of some of the most sophisticated companies in the U.S. He has successfully tried cases for Solo Cup Company, AM International, U.S. Robotics, MCI, The Quaker Oats Company, Business Records Corporation, Loewen International, Classics Entertainment, FutureSource and Monosol, among many others. Mr. Lyerla also has led litigations that ended successfully through summary judgment or negotiated business arrangements for such clients as Hospira, General Electric, Charter Communications, Sara Lee, Ameritech, ChrisCraft Industries, Tenneco, Millennium Information Services, Whitman Corporation, Shopko, General Dynamics, Wolfram Research, Glidewell Laboratories, Pentech Pharmaceuticals, and many more. In addition to his trial work in the intellectual property arena, Mr. Lyerla has tried more than a dozen criminal trials, including the successful defense of two death penalty cases. In a career that has spanned more than 27 years and has included hundreds of trial days, he has had some unique experiences. A few of the highlights include: Mr. Lyerla led the successful defense of the Solo Cup Company in Fort James Company v. Solo Cup Company. Fort James alleged that Solo Cup infringed 3 patents relating to the microstructure of pleats in the rims of paper plates. Fort James sought nearly $100 million, including treble damages and attorneys fees. Flouting recent Federal Circuit opinions rejecting the defense as legally unsound, Mr. Lyerla made the centerpiece of the defense that Solo was merely "practicing the prior art". The Milwaukee, Wisconsin jury was out less than two hours before returning a verdict of non-infringement giving Mr. Lyerla's client a total victory. The jury's verdict was not appealed. Mr. Lyerla took over the defense of MCI in the second day of an emergency injunction trial when his partner could not continue because of the unexpected early arrival of her baby. This trial included an unusual cross examination by Mr. Lyerla. Illinois Bell alleged that MCI's advertising that its rates for local toll phone calls were "always lower" than Bell's was misleading. With no deposition or notes, Mr. Lyerla cross-examined Bell's expert who had testified concerning a consumer survey. By the end of the free-wheeling cross-examination, the expert conceded, among other things, that he could not consistently distinguish between leading and non-leading questions in a consumer survey. When Bell's lawyer did not re-direct the witness, Judge Joan Gottschall of the Federal Court in Chicago told Bell's lawyer to call his "next victim". Mr. Lyerla was one of three lawyers (from 3 different law firms) who represented Ron Katz and MCI in the very unique Markman hearing in RAKTLP and MCI v. AT&T, et al. The hearing in Philadelphia lasted nine full trial days - which included expert testimony and attorney argument. Judge Lowell Reed's opinion exceeded 100 pages and found for Mr. Lyerla's clients on virtually every contested issue. Mr. Lyerla took over the defense of a trade secrets case after prior counsel had lost a preliminary injunction trial. Mr. Lyerla counter-claimed and won a $6.25 million judgment in a bench trial on the counterclaim. The high-point of the trial came when the plaintiff attempted to testify about imaginary conversations that he had envisioned with potential buyers of the business in question. Judge Harry Leinenweber, while laughing out-loud, over-ruled Mr. Lyerla's objection that no foundation for such testimony could be laid 'unless the witness had been on drugs or suffering from a head injury' at the time of the imaginary conversations. The end result was another complete victory for Mr. Lyerla's client. Mr. Lyerla was asked by Quaker Oats to defend Bill Redmond, Quaker's newly-hired VP of Operations, in an emergency injunction trial brought by Pepsi. This case has become the leading case for a trade secrets doctrine known as the inevitable disclosure doctrine. Pepsi, Redmond's former employer, sought to block him from working for Quaker. After an eight day trial (that began only a week after the complaint was filed), the court denied Pepsi's request to prohibit Redmond from working at Quaker, but did restrict Redmond's areas of responsibility for approximately five months. The case is known not only for breaking new ground in trade secrets law, but also for the stories surrounding Mr. Lyerla's cross-examination of Pepsi's CEO, Craig Weatherup. For some of the inside story, see Lyerla, Thirteen Rules for Inevitable Disclosure Trials, The Computer Lawyer, Vol. 15, no. 6, June, 1998. Mr. Lyerla represented Business Records Corporation in a jury trial in Danville, Illinois. BRC contended that its former regional president stole trade secrets and used those trade secrets to gain the business of 16 former BRC customers. However, BRC did not authorize the depositions of the customers before the trial. When 13 of the former customers appeared at the trial and testified against BRC - a nightmarish scenario that Mr. Lyerla had foreseen - he performed radical surgery on his theory in mid-trial and secured a 5 year injunction against the former president and recovered his client's attorneys fees. The case now is a leading case in Illinois regarding the enforcement of non-compete agreements that are ancillary to the sale of a business. Business Records Corporation v. Lueth, 981 F.2d 957 (7th Cir. 1992). Mr. Lyerla was part of a team of lawyers who represented General Dynamics in what is believed to have been the largest ADR mini-trial ever conducted up to that point. The night before the closing arguments, the lead lawyer for GD became too ill to argue the next morning. Mr. Lyerla prepared all night and argued for GD the following day on the critical liability issues. Mr. Lyerla's argument was singled out for praise by his client's Chairman of the Board. The ADR neutral (a retired federal district court judge who presided at the mini-trial) wrote an advisory opinion finding for GD on the key issues and recommending a substantial settlement in GD's favor. The case later settled for a nine figure settlement. Mr. Lyerla represented a seller of paper products in a jury trial in Wheaton, Illinois. When the opposing party argued that it's interpretation of the sales contract at issue precluded liability based on a trade usage, Mr. Lyerla responded that a trade usage is like the argument one hears from a child, "all the other children get to. . . ." The jury of mostly parents found for Mr. Lyerla's client. Mr. Lyerla's philosophy is that to achieve excellence as a counselor and advocate, a lawyer must litigate with joy and enthusiasm not only for his client, but also for the law. Good luck doesn't hurt either. Mr. Lyerla is listed in Who's Who in America, Who's Who in American Law, and Who's Who in the World, and has been named one of America's Leading Lawyers by the American Research Corporation. A recent survey named Mr. Lyerla a "Super Lawyer." A past recipient of the John Powers Crowley Justice Award for his pro bono trial work, Mr. Lyerla is a life fellow of the American Bar Foundation. He is also a member of the Cribbett Society of the University of Illinois College of Law. He was editor in chief of Intellectual Property Litigation from 1990 to 2005 and now serves as editor at large. Mr. Lyerla also is a contributing author to Claim Construction In The Federal Circuit, Manzo, ed., West Legal Works (2005 and 2006). Mr. Lyerla received his B.A. from the University of Illinois in 1976 and was elected to Phi Beta Kappa. He graduated from the University of Illinois College of Law in 1980 where he received honors and was a member and editor of the law review, 1978-1980. Member: Chicago (Member, Professional Responsibility Committee), Illinois State (Chair, 1996-1997) and American (Member, Sections on: Litigation; Business; Intellectual Property) Bar Associations; American Intellectual Property Law Association (Member, Patent Litigation Committee); Intellectual Property Law Association of Chicago (Board Member, 2007; Chair, Patent Litigation Committee, 2005-2007). Practice Areas: Intellectual Property; Litigation; Biotechnology; Aerospace Technology; Chemistry; Computers and Software; Internet Law; E-Commerce; Medical Technology; Nanotechnology; Pharmaceutical Intellectual Property.Email: Bradford P. Lyerla
William K. Merkel, Ph.D. (Partner) admitted to bar, 1994, Illinois; U.S. District Court, Northern District of Illinois; registered to practice before U.S. Patent and Trademark Office. Education: Knox College (B.A., Economics and Psychology, 1977); University of Illinois, Chicago (Ph.D., Biological Sciences, 1991); New York University (J.D., 1994). William K. Merkel, Ph.D. works with an array of biotechnology clients extending from industry leaders to start-up enterprises. His practice includes foreign and domestic patent prosecution, litigation, and oppositions, as well as validity, infringement and patentability opinions. Dr. Merkel's areas of technical focus include medical diagnostics and therapeutics, agricultural and pharmaceutical products and methods, genomics, and medical and agricultural biotechnology. Dr. Merkel has secured intellectual property rights in subject matters such as: nucleic acid hybridization and amplification methodologies; recombinant expression systems for a variety of biologically active compounds such as growth factors, transcription factors, and signal proteins; molecular immunological methodologies including immunocontraceptive proteins; anti-HIV therapeutics; plant-based systems for environmental remediation; and cell growth technologies. Representative litigation includes Abbott Laboratories v. Biosite Diagnostics, Inc., Civil Action No. 94-C-2808 (N.D. Ill.) and Hyseq, Inc. v. Affymetrix, Inc., Civil Action No. C-97-20188 (N.D. Cal). Dr. Merkel's contributions to the field of biotechnology include graduate-level research that has contributed to our understanding of the molecular genetics of vitamin biosynthesis in prokaryotes. As a Research Fellow, Dr. Merkel discovered the Pan Operon, revealing the organization of genes involved in pantothenate biosynthesis, as reported in the professional literature. This research experience and advanced training and education provide him a deep level of understanding of complex scientific systems and methodologies. Dr. Merkel has also been recognized by his peers as a Leading Lawyer. Member: Illinois State and American Bar Associations; American Society of Microbiology. Practice Areas: Intellectual Property; Patent Prosecution; Patent Interference Practice; Biotechnology Patents; Patent Infringement; Pharmaceutical Patents; Medical Technology.Email: William K. Merkel, Ph.D.
Michael Muczynski (Partner) admitted to bar, 1998, New York; 1999, Illinois; U.S. District Court, Northern District of Illinois; registered to practice before U.S. Patent and Trademark Office. Education: Michigan State University (B.S., Chemical Engineering, 1993); University of Michigan (J.D., 1997).
Michael Muczynski advises clients on all issues relating to patent strategy and portfolio management, with particular emphasis in the chemical and pharmaceutical sciences. Mr. Muczynski's practice includes patent application preparation, domestic and foreign patent prosecution, and validity and infringement opinions. A substantial part of Mr. Muczynski's practice involves counseling clients on strategic decisions for patenting of inventions relating to pharmaceutical products in view of FDA regulations and related exclusivity provisions. Mr. Muczynski's prior litigation practice included substantial experience in generic pharmaceutical litigation relating to ANDA filings under the Hatch-Waxman amendments to the Federal Food, Drug and Cosmetic Act. Mr. Muczynski's technical areas of experience include analytical instruments and techniques (including microscopy (e.g., AFM, SEM, and CLSM) and spectroscopy (e.g., FTIR)) chemical process engineering (including environmental pollution control and minerals processing), formulation chemistry (including pharmaceutical dosage forms, cosmetics and other personal care products, inks, and polymer films), engineered paper and wood products, fuel chemistry (including biofuels and other synthetic fuels), medical methods of treatment and diagnosis, and nanocomposites. Mr. Muczynski chairs the firm's docketing committee, serves on the firm's marketing and technology committees, and is active in associate mentoring and education within the firm. Mr. Muczynski is admitted to practice in the state of Illinois and the state of New York, the U.S. District Court for the Northern District of Illinois, and before the U.S. Patent and Trademark Office. Additionally, he is a member of various law-related organizations including the American Intellectual Property Law Association, and he serves on the American Bar Association's Advisory Panel. Mr. Muczynski holds a J.D. degree from The University of Michigan Law School since 1997 and a B.S. degree in Chemical Engineering from Michigan State University since 1993.
Member: American Bar Association (Member, Advisory Panel); American Intellectual Property Law Association.
Practice Areas: Intellectual Property; Patent Prosecution; Intellectual Property Litigation; Intellectual Property Portfolio Management; Pharmaceutical Intellectual Property; Patent Interference Practice; Chemistry.Email: Michael Muczynski
James J. Napoli, Ph.D. (Partner) admitted to bar, 1991, Illinois; registered to practice before U.S. Patent and Trademark Office. Education: The Ohio State University (B.S., Chemistry, cum laude, 1968); Northwestern University (M.S., Organic Chemistry, 1970; Ph.D., Physical Organic Chemistry, 1973); DePaul University (J.D., with honors, 1991). Dr. Napoli primarily prepares and prosecutes chemically related patents in fields such as polymers, polymer catalysts, coatings, nanotechnology, fuel additives, food additives and casings, diagnostic tests and kits, pharmaceuticals, radio-chemical and other contrast agents, personal care and medical products. He also counsels clients in intellectual property matters, analyzes intellectual property for validity, enforceability, and infringement, and provides support in litigation matters. Dr. Napoli has worked in the intellectual property field since 1986. Prior to his admission to the bar, Dr. Napoli was employed in the chemical industry as a research chemist and in technical services. He also was involved in federal and state regulatory affairs relating to the chemical industry, especially in the areas of pesticide use and registration, hazardous waste generation and disposal, toxic substances control and employee exposure levels to chemical substances. His previous research interests centered on the synthesis of organic compounds and organic reaction mechanisms. Dr. Napoli has industrial experience in the coatings industry and in the pesticide industry. Dr. Napoli has been recommended by peers as a Leading Lawyer. He has been registered to practice before the U.S. Patent and Trademark Office since 1986. Member: American Bar Association; Intellectual Property Law Association of Chicago; American Chemical Society. Practice Areas: Patent Prosecution; Chemical Intellectual Property; Pharmaceutical Intellectual Property; Chemical Patent Prosecution; Medical Technology; Intellectual Property.Email: James J. Napoli, Ph.D.
Matthew C. Nielsen (Partner) admitted to bar, 1999, Illinois; U.S. District Court, Northern and Central Districts of Illinois; registered to practice before U.S. Patent and Trademark Office. Education: University of Notre Dame (B.S., Biological Sciences, 1996; J.D., cum laude, 1999). Matthew C. Nielsen counsels clients and litigates on their behalf in the areas of patent litigation and disputes concerning trade secrets and licenses. He has had extensive litigation experience in a variety of patent infringement cases, including preparing and arguing dispositive motions and motions on evidentiary and discovery issues, assisting experts in preparing reports, taking and defending expert and fact depositions, and managing pretrial discovery. He has also had experience in preparing and prosecuting patent applications, and in providing opinions regarding the validity and infringement of patents. Technical areas in which Mr. Nielsen has experience include recombinant DNA technologies, pharmaceutical compositions, dental compositions, medical devices, manufacturing equipment, and various mechanical devices. Mr. Nielsen received his J.D., cum laude, from Notre Dame Law School in 1999, where he was a member of the Appellate Moot Court Board and a lead articles editor for the Notre Dame Journal of Law, Ethics & Public Policy. He received his B.S. in Biological Sciences from the University of Notre Dame in 1996. Practice Areas: Intellectual Property; Patent Litigation; Biotechnology; Pharmaceutical Intellectual Property.Email: Matthew C. Nielsen
Sandip H. Patel (Partner) admitted to bar, 1996, Illinois; U.S. District Court, Northern District of Illinois; U.S. Court of Appeals for the Federal Circuit; registered to practice before U.S. Patent and Trademark Office. Education: Michigan State University (B.S., Chemical Engineering, with honors, 1993); Indiana University School of Law - Bloomington (J.D., 1996). Sandip H. Patel is a partner of the firm, having joined the firm as an associate following his graduation from law school in 1996. While at the firm, he has drafted and prosecuted hundreds of patent applications, and has served as counsel in numerous inter partes proceedings. Mr. Patel also has served as chairperson of the firm's recruiting committee since 2002. Mr. Patel has drafted and prosecuted patent applications in the U.S. Patent and Trademark Office, primarily in the chemistry and chemical engineering fields such as, for example, chemical vapor deposition solvents, fiberboard and gypsum building products, fuel chemistry and process engineering, mass transfer/separation unit operations, pharmaceutical compounds and formulations, polymer composite articles, and semiconductor devices. He drafted and prosecuted these applications for a diverse group of companies, including BP Corporation, The Dow Chemical Company, Hynix Semiconductor Corporation, Intel Corporation, International Paper Company, Pfizer Inc., The Procter & Gamble Company, and Raytheon Company. He also has prepared numerous opinions analyzing U.S. patents relating to chemistry and chemical engineering processes for validity, enforceability, and infringement. Mr. Patel has served as counsel in numerous interference proceedings in the U.S. Patent and Trademark Office and in associated appeals to the U.S. District Court for the District of Columbia or the Court of Appeals for the Federal Circuit. These proceedings involved a variety of sciences including, for example, biotechnology (e.g., avirulent vaccines, DNA sequencing methods, genetically-engineered plants, and kerotinocyte growth factors), chemistry (e.g., pharmaceutical compounds), mechanical engineering (e.g., railcar shock absorbers, correction-tape dispensers, and infant diapers), and electrical engineering (e.g., piezoelectric ink-jet printers, and object-oriented process control systems and software). He has also served as counsel in patent litigations involving biotechnology patents (e.g., recombinant erythropoietin, and recombinant growth hormone), and pharmaceutical chemistry patents (e.g., platinum coordination compounds and methods of treating malignant tumors). Mr. Patel also has experience in assisting foreign counsel in opposition and appeal proceedings before foreign patent offices. Mr. Patel received his J.D. from Indiana University (Bloomington) in 1996. During law school he served as a Notes and Comments Editor of the Indiana Law Journal, 1995-1996. He received a B.S. degree (with honors) in Chemical Engineering from Michigan State University in 1993. Publications: Author, "Graduate Students' Ownership and Attribution Rights in Intellectual Property," 71 Ind. L.J. 481, 1996. Member: Chicago Bar Association; Federal Circuit Bar Association; American Bar Association; American Intellectual Property Law Association; Richard Linn American Inn of Court; Intellectual Property Law Association of Chicago. Practice Areas: Intellectual Property; Patent Prosecution; Patent Litigation; Patent Interference Proceedings; Biotechnology; Chemistry; Pharmaceutical Intellectual Property.Email: Sandip H. Patel
Aaron M. Peters (Partner) admitted to bar, 2000, Illinois; U.S. District Court, Northern District of Illinois; registered to practice before U.S. Patent and Trademark Office. Education: University of Michigan (B.S., Electrical Engineering); Franklin Pierce Law Center (J.D., 2000). Aaron M. Peters is a partner with Marshall, Gerstein & Borun. Mr. Peters is involved in preparing and prosecuting patent applications, patent validity and infringement analyses, patent strategy, and counseling on various intellectual property matters. His educational background and legal experience is in electronics and software, with an emphasis in: process control systems, enterprise resource management systems, communication/networking systems and signal processing, flash memory circuit design and fabrication, optoelectronic circuit design, wireless circuit design, medical systems and devices, and healthcare information management. Prior to joining the firm, Mr. Peters worked in the legal department at EMC Corporation in Hopkinton, Massachusetts. At EMC, he was involved in prosecution, technology licensing, auditing the company's patent portfolio and assisting in litigation. While an undergraduate, he worked on the University of Michigan Light Detection and Ranging Project as a research assistant. Mr. Peters received his J.D. from Franklin Pierce Law Center and his B.S. in Electrical Engineering from the University of Michigan with an academic concentration in optics and optoelectronics. Practice Areas: Intellectual Property; Patent Prosecution; Computers and Software; Internet Law; E-Commerce; Medical Technology; Business Method Patents; Electrical Patent Prosecution.Email: Aaron M. Peters
David C. Read (Partner) admitted to bar, 1992, Indiana; 1998, Illinois; U.S. Court of Appeals, Federal Circuit and U.S. District Court, Northern and Southern Districts of Indiana; registered to practice before U.S. Patent and Trademark Office. Education: Purdue University (B.S., Civil Engineering, 1986); Valparaiso University (J.D., 1992). David C. Read focuses his practice primarily on the prosecution of U.S. and foreign patents in a variety of subject matters, including the mechanical and electro-mechanical arts. He also has experience in patent litigation matters, including post trial proceedings and appeals, as well as a variety of post-issuance matters, regarding patent reexaminations and reissues. Additionally, Mr. Read has extensive experience in non-infringement, invalidity, and freedom to operate opinions and related counseling. Among his areas of his technical experience are: construction equipment and heavy machinery (Asphalt paving, rock crushing), diesel engine technology and fuel injectors, brake systems, electronics, plastics, recreational and commercial vehicles, sporting goods and snowmobiles, medical devices, control valves and process control equipment, consumer products and toys, retail displays, manufacturing equipment technology, and printing industry. Mr. Read was formerly associated with Baker & Daniels, and has served as an Adjunct Professor of Law at Valparaiso University School of Law. While receiving his J.D. from Valparaiso University in 1992, Mr. Read served on the Law Review (Note Editor). He received his B.S. in Civil Engineering from Purdue University in 1986. Author: "The Comprehensive Environmental Response Compensation and Liability Act After United States v. Fleet Factors: New Guidelines for Lender Liability." Practice Areas: Intellectual Property; Patent Prosecution; Intellectual Property Litigation; Mechanical Patents; Electro-Mechanical Patents; Patent Infringement; Nanotechnology; Medical Technology; Aerospace Technology; International Patent Prosecution; Patent Litigation.Email: David C. Read
Li-Hsein (Lily) Rin-Laures, M.D. (Partner) admitted to bar, 1993, Illinois; U.S. Court of Appeals for the Federal Circuit; registered to practice before U.S. Patent and Trademark Office. Education: Johns Hopkins University (B.A., Chemistry, with honors, 1984); Northwestern University Medical School (M.D., 1988); Harvard University (J.D., cum laude, 1992). Lily Rin-Laures has managed global intellectual property portfolios and provided comprehensive strategic counseling for a variety of clients ranging from startups to Fortune 500 companies. She draws on her experience as former General Counsel of a publicly held biotechnology company to assist clients to achieve their intellectual property and business goals. A substantial part of her practice involves counseling clients on patent strategy relating to new pharmaceutical/biotechnology product development, product life cycle management, and the interface with FDA regulations and related exclusivity provisions. Dr. Rin-Laures' practice involves patent prosecution, freedom-to-operate searches, validity and infringement opinions, patent opposition proceedings, reexamination, protests, interferences, and appeals to the Federal Circuit, where she clerked from 1992-1993. Dr. Rin-Laures also advises clients in a variety of transactions from due diligence to term sheet negotiations and drafting complex agreements. Her experience includes agreements dealing with licenses, collaborations and other strategic alliances, sponsored research, technology and material transfer. In her patent prosecution practice, Dr. Rin-Laures focuses on biotechnology and traditional pharmaceutical and medical technologies. Representative examples of her technology experience include: antibodies; antisense and RNAi; recombinant biological drug products, including hemopoietic factors, growth factors, chemokines, neurotrophic factors, cellular adhesion molecules, enzymes, macrophage and neutrophil products, and bacterial antigens; small peptides and chemically modified derivatives; vaccines and immune therapies; chemical pharmaceutical products; pharmaceutical formulations, including aqueous compositions, lyophilized compositions, hydrogels and transdermal delivery; therapeutic methods using traditional pharmaceuticals or biologicals; processes and vectors for recombinant protein production in bacteria, cell lines and plants; diagnostic methods, e.g., for cancer, infection and autoimmune diseases; and GMO plants. Dr. Rin-Laures was named one of "Forty Illinois Attorneys Under 40 to Watch," a list of the state's most talented and well-regarded young lawyers published by the Law Bulletin Publishing Company, and has been voted an "Illinois Super Lawyer" for a number of years, a list which identifies the top five percent of the lawyers in Illinois based on a survey and research conducted by Law & Politics. In the past she was a frequent speaker on patent and licensing issues. Presentations include "Mastering Hot New Issues that Arise from New Technology" at Complex Intellectual Property Licensing seminar in Chicago, in April 2006 and on "Creating an Intellectual Property Framework for your Collaboration" at National Pharmaceutical and Biotech IP Licensing and Dealmaking Forum in Boston, in June of 2005. Dr. Rin-Laures was the youngest woman graduate at Johns Hopkins University where she received her B.A. in Chemistry, with honors, in 1984. She completed her medical school studies in 1988 when she received her M.D. from Northwestern University Medical School. Dr. Rin-Laures graduated in 1992 from Harvard Law School, cum laude, where she was Executive Editor and Managing Editor of Harvard Journal of Law and Technology and Editor-in-Chief of "Recent Developments in Health Law" in Law, Medicine & Health Care. She served a clerkship with the Hon. S. Jay Plager at the Court of Appeals for the Federal Circuit after graduation from law school. In 2001-2002, while on leave of absence from the firm, Dr. Rin-Laures served as General Counsel of Hyseq Pharmaceuticals, Inc. (now known as Nuvelo, Inc.). In her position as General Counsel, Dr. Rin-Laures was responsible for settling litigation and negotiating numerous strategic alliance and license agreements. Dr. Rin-Laures has written articles including "Industries Await Exemption Verdict", published in Managing IP, No. 148, April 2005, by Patel and Rin-Laures, and "Incentives to foster new antibiotics are proposed", published in The National Law Journal, August 29, 2005, by Rin-Laures and Flowers. Practice Areas: Intellectual Property; Patent Prosecution; Biotechnology; Pharmaceutical; Patent Interference Proceedings; Chemistry/Chemical Engineering; Intellectual Property Licensing; International Intellectual Property.Email: Li-Hsein (Lily) Rin-Laures, M.D.
Thomas I. Ross (Partner) admitted to bar, 1979, Illinois; U.S. District Court, Northern District of Illinois including Trial Bar; U.S. Court of Appeals, Sixth, Seventh and Federal Circuits; U.S. District Court, Eastern District of Wisconsin; U.S. District Court, District of Connecticut; U.S. Supreme Court; registered to practice before U.S. Patent and Trademark Office. Education: Purdue University (B.S., Mechanical Engineering, 1974); Georgetown University (J.D., 1979). Thomas I. Ross is an experienced trial lawyer in the field of intellectual property litigation, and handles both jury trials and bench trials throughout the U.S. He likewise has extensive experience in the Courts of Appeals, having argued on multiple occasions in the Court of Appeals for the Federal Circuit and the Seventh Circuit Court of Appeals. Mr. Ross also has participated in patent-based actions before the U.S. International Trade Commission. His litigation experience encompasses patent, trademark, and copyright infringement, trade secret misappropriation, antitrust and unfair competition, breach of license, and ownership of intellectual property rights. His cases cover a wide range of technical disciplines and diverse industries. Illustrating his broad range of experience, Mr. Ross' litigations involve subject matters including: plastic injection molding machines, mechanical seals, semiconductor manufacturing equipment, head technology for magnetic recording, wireless communications network systems, computer power supply circuitry, medical devices and technology, pharmaceutical compounds, feedback controls, operational circuitry, metals alloying and casting equipment, hook and loop fasteners, digital subtraction angiography, and cryogenic cooling systems. Mr. Ross was an examiner in the U.S. Patent and Trademark Office (1974-1979) and also served as a law clerk at the Patent Office Board of Patent Appeals. In 2003, he was elected to Barristers of the Patent Law in recognition of his outstanding ability as a trial lawyer in the area of patent litigation. He has also been recognized by his peers as a Leading Lawyer in Illinois and is listed with Who's Who in American Law. His experience has also led to his serving as a litigation expert witness on patent law and Patent Office practices. Mr. Ross is a member of the Trial Bar for the U.S. District Court for the Northern District of Illinois, and has been admitted to practice before many other federal courts throughout the U.S. Publications: Author, "Protect It or Lose It," Entrepreneurship Institute, 1984. Member: American Bar Association; Federal Circuit Court of Appeals Bar Association; International Trade Commission Trial Lawyers Association; Association of Trial Lawyers of America. Practice Areas: Intellectual Property; Intellectual Property Litigation; Biotechnology; Chemistry; Medical Technology; Nanotechnology; Computers and Software; Internet Law; E-Commerce; Pharmaceutical Intellectual Property.Email: Thomas I. Ross
Randall G. Rueth (Partner) admitted to bar, 1998, Illinois; U.S. District Court, Northern District of Illinois; registered to practice before U.S. Patent and Trademark Office. Education: Western Illinois University (B.S., Mathematics, cum laude, 1988); University of Illinois, Urbana-Champaign (B.S., Electrical Engineering, 1990); DePaul University (J.D., 1998). Randall G. Rueth is involved in patent prosecution, counseling on the strategic use of patents, pre-litigation management of patent disputes, patent validity and infringement analyses, due diligence analysis of patent portfolios, and patent litigation. His technical background is in electronics and software, with an emphasis in: computer software, architecture and networking; flash memory circuit design and fabrication; healthcare information management software; extensible firmware interfaces for server networks; database management software; eElectronic gaming technology; process control systems; e-commerce system architectures and business processes; modeling algorithms for pharmacy industry; GPS navigational systems; and medical imaging systems/software/methods in various modalities including X-Ray, 3D Computed Tomography, and Ultrasound. Mr. Rueth has managed numerous patents related to front-end and back-end inventions on behalf of FORTUNE 100 companies involving complex web-based product orders, tracking, distribution, and accounting. He has drafted patent applications for business transactions for risk management companies related to electronically perfecting premium finance agreements, business practice audits, and portfolio management. Prior work experience for Mr. Rueth includes working at AT&T as an electrical engineer and in technical sales from 1990 to 1995. While there, he received AT&T's Engineering Achievement Award and AT&T's Sales Manager of the Year Award. Prior to joining the firm, he was a patent attorney with a patent litigation firm in Chicago. Practice Areas: Intellectual Property; Patent Prosecution; Intellectual Property Litigation; Intellectual Property Portfolio Management; Computers and Software; Medical Technology; Business Method Patents.Email: Randall G. Rueth
Donald W. Rupert (Partner) admitted to bar, 1976, Texas; 1978, Illinois; 1979, U.S. District Court, Northern District of Illinois including Trial Bar; 1981, U.S. Court of Appeals, Seventh Circuit; 1982, U.S. Court of Appeals, Federal Circuit; 1992, U.S. Supreme Court; 2000, U.S. District Court, Central District of Illinois; registered to practice before U.S. Patent and Trademark Office and the Canadian Patent Office. Education: Miami University (B.S., Chemistry, 1968); Washburn University of Topeka School of Law (J.D., cum laude, 1976). Donald W. Rupert provides intellectual property counseling and litigation with an emphasis on complex technology matters, including all phases of intellectual property litigation, and the negotiation and preparation of technology transfer agreements. Mr. Rupert has handled nearly 100 intellectual property lawsuits in his career and has been lead counsel in jury and bench trials involving patent, copyright, trademark and related matters in federal and state courts throughout the country and overseas and has argued cases before the U.S. Courts of Appeals for the Federal Circuit and the Seventh Circuit.
His practice also includes negotiating domestic and international licensing and litigation settlements and corporate due diligence reviews and transactions in the intellectual property area. Mr. Rupert has been the lead intellectual property attorney in licensing and corporate transactions having a cumulative value of more than $15 billion. His experiences also include patent prosecution in the mechanical, electrical, computer, chemical, and pharmaceutical industries. He is a member of the American Arbitration Association Commercial Panel of Arbitrators, arbitrating intellectual property disputes.
An Alumni Fellow of Washburn University, he is an advisor for the Trial Advocacy Center, Washburn University School of Law and a member of the board of advisors for DePaul University School of Law, Center for Intellectual Property. Mr. Rupert is also a deposition instructor for the National Institute for Trial Advocacy and was a member of the committee that prepared patent jury instructions to be used in the federal district courts of the Seventh Circuit.
Prior to entering law school, Mr. Rupert was a research scientist for the U.S. Air Force. He received his J.D., cum laude, from Washburn University School of Law (1976), where he served on the board of editors for the Washburn Law Journal. Mr. Rupert earned his B.S. in Chemistry from Miami University (1968). He is registered to practice before the U.S. Patent and Trademark Office.
Mr. Rupert has been named as one of the Best Lawyers in America, and as a Leading Lawyer in the U.S. He is also listed in Who's Who in American Law, Who's Who in American Business, Who's Who in America, Who's Who in the World, and The Legal 500.
A frequent speaker on intellectual property, professional ethics, and trial techniques, Mr. Rupert has also published numerous articles concerning intellectual property and other topics.
Some recent articles include:
Select Publications
"Claim Construction in the Federal Circuit, 2009 Edition," Contributing Author, Thomson West, 2009.
"Trolling for Dollars: A New Threat to Patent Owners," Intellectual Property & Technology Law Journal, Vol. 21, No. 3, March 2009.
"Intellectual Property Litigation Strategies," chapter in Inside the Minds: Commercial Litigation Strategies, Aspatore Books, 2008.
"Arbitration Clauses in Patent Disputes," IP Law 360, 2007.
"Storm Over the Blackberry - The Boundaries of Liability," Co-author, Patent World, Issue 171, April 2005.
"Vitiating the Doctrine of Equivalents: A New Patent Law Doctrine," The Federal Circuit Bar Journal, Vol. 12, No. 3, 457, 2003.
"Patent Indemnification Under the UCC," International Legal Strategy, Vol. X-12, Japan, 2001.
"Patenting Computer Software and Methods of Doing Business: The United States vs. The World," Co-author, International Trade and Business Law Annual, Vol. V, April 2000.
"E-commerce and the Internet: Personal Jurisdiction in the U.S., Managing Intellectual Property Trademark Yearbook, 1999.
"The Discoverability of Documents Prepared for Alternative Dispute Resolution Proceedings," Alternative Dispute Resolution Report, Vol. 3, No. 21, Bureau of National Affairs, Inc., 1989.
"Hybrid License Agreements in the Circuit Courts of Appeals: The Demise of Contract Principles," Selected Legal Papers, Vol. V, No. 2, American Intellectual Property Law Association, 1987.
"An Introduction to United States Antitrust Law," 83 The Law Society Gazette 112, 1986.
"The Relationship of Patent Law to Antitrust Law," 49 Antitrust Law Journal 755, 1981.
Speaking Engagements
"IP Risk Management: Professional Responsibility, Conflicts, and Malpractice," Chicago Bar Association, February 2009.
"Using ADR to Resolve IP and Licensing Disputes," 2008 Licensing Executives Society Annual International Conference, Chicago, Illinois, May 2008.
"Jury (De)Selection in Federal Courts," Litigation Skills II, Law Bulletin Seminars, Chicago, Illinois, May 2008.
"Intellectual Property Arbitration, Demystifying the Process: What You Should Know," Broadcast Webinar, December 2007.
"The Federal Circuit Court's Recent Decision: In re Seagate Technology," Law Seminars International, August 2007.
"Developing an Integrated Intellectual Property Strategy," speech presented to the Richard T. Farmer School of Business Administration, Miami University, Oxford, Ohio, February 2007.
"Ethical Issues In the Practice of Law," speech presented to the Washburn University School of Law, October 2006.
"Intellectual Property Issues in the Business Environment," speech presented to the Richard T. Farmer School of Business Administration, Miami University, Oxford, Ohio, February 2004.
"Expert Witnesses in the Courtroom," speech presented to the Washburn University School of Law, October 2003.
"Overview of Intellectual Property," speech presented to the Richard T. Farmer School of Business Administration, Miami University, Oxford, Ohio, February 2003.
"New Developments in Copyright Law," speech presented to the DePaul University School of Law, Chicago, Illinois, November 2002.
"Intellectual Property Issues in Distance Learning Settings," speech presented to the North Suburban Higher Education Consortium, Chicago, Illinois, February 2001.
"Intellectual Property Issues in International Trade," speech presented to the Industrial Club of Mexico, Mexico City, June 1999.
"Intellectual Property Issues in the E-commerce Environment," E-commerce Seminar, sponsored by Mayer, Brown & Platt, New York City, New York, January 1999.
"Intellectual Property in the International Marketplace," Pressure Sensitive Tape Council, Chicago, May 1996.
"Introduction to the Effective Use of Statistical Analyses in Intellectual Property Litigation," Intellectual Property Litigation Update, sponsored by Coopers & Lybrand L.L.P., Chicago, March 1996.
"Patent Damages Should the Georgia Pacific Approach be Scrapped?" Licensing Executives Society, Waikoloa, Hawaii, October 1994.
"Ethical Considerations in the Practice of Intellectual Property Law," Iowa Intellectual Property Law Association, Dubuque, Iowa, October 1992.
"The Use of Expert Witnesses in Complex Technology Litigation," Iowa Intellectual Property Law Association, Dubuque, Iowa, October 1992.
"Complex Technology Related Litigation," Kansas Bar Association Continuing Legal Education Seminar, Topeka, Kansas, March 1991.
"Effects of United States Antitrust Law on Patent Law," Japanese Intellectual Property Owners Association, Tokyo and Osaka, May 1991.
"The Discoverability of Documents Prepared for Alternative Dispute Resolution Proceedings," American Bar Association Annual Meeting, Section of Patent, Trademark, and Copyright Law, Honolulu, August 1989.
"Hybrid License Agreements in the Circuit Courts of Appeal: The Demise of Contract Principles," American Intellectual Property Law Association, Pittsburgh, Pennsylvania, May 1987. Member: State Bar of Texas; American Bar Association (Member: Antitrust Section; Patent, Trademark and Copyright Section; Litigation Section); American Intellectual Property Law Association. [Capt., USAF, 1968-1974]. Practice Areas: Intellectual Property; Intellectual Property Litigation; Computers and Software; Chemistry.
Gregory E. Stanton (Partner) admitted to bar, 1999, California; 2004, Illinois; U.S. District Court, Northern District of California; registered to practice before U.S. Patent and Trademark Office. Education: University of Illinois, Urbana-Champaign (B.S., Electrical Engineering, with highest honors, 1990; M.S., Electrical Engineering, 1992); Northwestern University (J.D., 1999). Gregory E. Stanton is involved in preparing and prosecuting patent applications in the electrical and mechanical industries, litigation, patent validity and infringement analyses, and counseling clients on various intellectual property matters. His technical background is in electronics and software, with an emphasis in: signal and image processing systems; communication and networking systems; analog and digital circuits; and medical systems and devices. Prior to attending law school, Mr. Stanton worked as an engineer designing analog and digital circuits, as well as software, for communications systems and devices, televisions, and speaker phones. Additionally, his engineering graduate work focused on signal processing, image processing and communications. Before joining Marshall, Gerstein & Borun, Mr. Stanton was an associate with Townsend and Townsend and Crew LLP in the Bay Area. Practice Areas: Intellectual Property; Intellectual Property Litigation; Patent Interference Practice; Patent Prosecution; Trade Secrets; Computers and Software; Internet Law; E-Commerce; Medical Technology; Business Method Patents.Email: Gregory E. Stanton
Paul B. Stephens (Partner) admitted to bar, 1998, Illinois; U.S. Court of Appeals, Federal Circuit and U.S. District Court, Northern District of Illinois; registered to practice before U.S. Patent and Trademark Office. Education: University of Michigan (B.S., Electrical Engineering, magna cum laude, 1993; M.S., Electrical Engineering, 1995; J.D., 1998). Paul B. Stephens' practice involves all aspects of patent law relating to the electrical and mechanical arts, including prosecution, counseling, opinions and litigation. His experience covers a wide array of technologies, including: computer hardware and software; wireless and wired communications (devices, backbone infrastructures, ASICS, and signal processing); photonics and laser systems; imaging systems; semiconductor devices and fabrication techniques; display technology; medical devices, sensors, and imaging equipment; and various mechanical devices, including pumping systems, actuators and material handling and dock-related products. While broad in scope, Mr. Stephens' prosecution practice has particular focus in the optical, laser and photonic arts, where he has represented clients in technologies including optical flip-chip devices, holographic and adaptive optics, spectroscopy, imaging, optical switches, optoelectronic sensors, thin films, and short-pulse laser systems. Within his litigation practice, Mr. Stephens has represented clients in patent, trademark and trade dress litigation. Mr. Stephens has managed the technical aspects of the liability phases of numerous litigation matters. Mr. Stephens has served as second chair in a patent infringement jury trial, and has extensive experience in depositions, motion practice, and expert witness preparation. Mr. Stephens manages the firm's pro bono committee and is a longstanding member of the firm's recruiting committee. Mr. Stephens received his J.D. from the University of Michigan Law School in 1998. Mr. Stephens received his M.S.E. in Electrical Engineering and his B.S.E. in Electrical Engineering, magna cum laude, both from the University of Michigan College of Engineering. Mr. Stephens' graduate research was performed at the National Science Foundation Center for Ultrafast Optical Science in Ann Arbor, Michigan. Member: Chicago and American Bar Associations. Practice Areas: Intellectual Property; Intellectual Property Litigation; Patent Prosecution; Aerospace Technology; Medical Technology; Nanotechnology; Computers and Software.Email: Paul B. Stephens
Thomas K. Stine (Partner) admitted to bar, 1984, Illinois and U.S. District Court, Northern District of Illinois, including Trial Bar; U.S. Court of Appeals, Seventh and Federal Circuits; registered to practice before U.S. Patent and Trademark Office. Education: Purdue University (B.S., Electrical Engineering, 1978); DePaul University (J.D., 1984). Thomas K. Stine has substantial experience in all aspects of Intellectual Property Law, with a primary practice emphasis on foreign and domestic patent prosecution of the electronic and electro-mechanical arts and patent litigation. Prior to the practice of law, Mr. Stine worked as a sales engineer within the control systems industry. In addition, he worked as a senior production engineer and as a facilities engineer in the construction, implementation, and startup of printing press lines within the newspaper industry. He was recommended by his peers as a Leading Lawyer in Illinois. Previously an adjunct professor of law at DePaul University College of Law in Chicago, Mr. Stine is also a member of DePaul's Intellectual Property Advisory Board, The Center for Intellectual Property Law and Information Technology. He is a frequent speaker on intellectual property law topics, and most recently presented a talk on the Doctrine of Equivalents at a Continuing Legal Education Seminar sponsored by the State Bar of Nevada Intellectual Property Section. Member: Chicago Bar Association (Chairman, Intellectual Property Law Committee, Young Lawyers Section, 1987-1989); American Bar Association; Intellectual Property Law Association of Chicago; Licensing Executives Society; American Intellectual Property Law Association. Practice Areas: Intellectual Property; Electronics; Computer Software Law; Litigation; Patent Prosecution; Intellectual Property Portfolio Management; Intellectual Property Litigation; Patent Interference Practice; Nanotechnology; Business Method Patents.Email: Thomas K. Stine
Michael R. Weiner (Partner) admitted to bar, 1993, Illinois; U.S. Court of Appeals, Federal Circuit; registered to practice before U.S. Patent and Trademark Office. Education: University of Illinois, Urbana-Champaign (B.S., Chemistry, 1984; J.D., summa cum laude, 1993). Michael R. Weiner is experienced in patent litigation, patent interferences, chemical patent prosecution, and client counseling. Mr. Weiner has represented clients in patent infringement matters before district courts, and in interference proceedings before the U.S. Patent and Trademark Office, involving technologies such as endoscopic surgical instruments, injectable pharmaceutical compositions, DNA sequencing methods, chemotherapy agents, and mechanical devices such as mining equipment. Mr. Weiner is a former law clerk to the Hon. S. Jay Plager at the U.S. Court of Appeals for the Federal Circuit in Washington, D.C. Mr. Weiner is experienced in practicing before the Federal Circuit, including oral argument before the Court. Representative cases include Gillespie v. Dywidag Systems International, USA (ruling in favor of MGB client DSI, reversing district court judgment of infringement), and Canady v. ERBE Elektromedizin (upholding summary judgment in favor of MGB client ERBE). Mr. Weiner is admitted to the Illinois and Federal Circuit bars, and is registered to practice before the U.S. Patent and Trademark Office. Mr. Weiner received a B.S. in Chemistry in 1984 from the University of Illinois, and received his J.D. in 1993, summa cum laude, from the University of Illinois College of Law, where he served as an Articles Editor for the Law Review. Practice Areas: Intellectual Property; Patent Litigation; Patent Interference Practice; Patent Prosecution; Chemical Patents.Email: Michael R. Weiner
Joseph A. Williams, Jr., Ph.D. (Partner) admitted to bar, 2000, Illinois; U.S. Court of Appeals, Federal Circuit; registered to practice before U.S. Patent and Trademark Office. Education: North Carolina State University (B.S., Chemistry, 1980); University of Tennessee, Knoxville (Ph.D., Biochemistry, 1988); DePaul University (J.D., 1999). Joseph A. Williams, Jr. has significant experience in the field of biotechnology, has worked as a technical specialist and patent agent before becoming an attorney. He works with clients in a wide variety of biotechnology matters involving domestic and foreign patent prosecution, U.S. interference and foreign opposition proceedings, non-infringement/validity opinions and portfolio management. Subject matters of Dr. Williams' patent prosecutions include: Genomics cellular adhesion molecules, phosphodiesterases, protein kinases, protein phosphatases, compartmentalization proteins, growth factors, signal transduction proteins, DNA binding proteins, glycosylation proteins, restriction endonucleases, exonucleases, immunocontraceptive proteins, protein expression systems including expression constructs/vectors, transcriptional promoter sequences and secretory signals, modified fungal cell expression systems, antisense regulation of gene expression, nucleic acid amplification and sequencing methods; Proteomics protein binding assays, automated binding protein identification systems, nanoparticle-based binding protein systems, peptide mimetics, high throughput screening assays; Nanobiotechnology nanoparticle-based diagnostic and therapeutic applications, sequencing by hybridization, gene chip analysis of expression, high throughput screening; Antibody technology antibody production and diagnostic, therapeutic, and prophylactic applications, including single chain, human, humanized, and chimeric antibodies, antibody fusion proteins; Vaccine technology; and Liposome and micelle technologies. Dr. Williams graduated from North Carolina State University in 1980 with a B.S. in Chemistry and the University of Tennessee at Knoxville in 1988 with a Ph.D. in Biochemistry. His graduate research involved study of heterologous regulation of gene expression and isolation of nuclear factors that mediate specific gene expression. Dr. Williams' post-doctoral research at the Louisiana State University in New Orleans focused on cell cycle-dependent regulation of gene expression (1988-1990, Department of Biochemistry and Molecular Biology) and bacterial assays to screen for inhibitors of viral proteases (1990-1992, Department of Microbiology, Immunology and Parasitology). Dr. Williams graduated from the DePaul University College of Law in 1999. Practice Areas: Intellectual Property; Intellectual Property Portfolio Management; Pharmaceutical Intellectual Property; Patent Interference Practice; Patent Protection; Biotechnology; Nanotechnology.Email: Joseph A. Williams, Jr., Ph.D.
James P. Zeller (Partner) admitted to bar, 1976, Illinois; U.S. Supreme Court; U.S. District Court, Northern District of Illinois; U.S. Court of Appeals, Seventh and Federal Circuits; registered to practice before U.S. Patent and Trademark Office. Education: University of Notre Dame (B.S.Ch.E., 1971); Indiana University, Bloomington (M.B.A., Business Economics and Quantitative Business Analysis, 1975); Indiana University School of Law - Bloomington (J.D., 1976). James P. Zeller's legal career began in 1976, and emphasizes the areas of patent application preparation and domestic and foreign patent prosecution, including appeals and inter partes matters, as well as substantial opinion preparation and trademark counseling. His practice encompasses a variety of mechanical, chemical, and biotechnical technologies. He was voted an Illinois "Super Lawyer," and was recommended by his peers as a Leading Lawyer. Mr. Zeller is also a member of the German-American Chamber of Commerce. Member: Chicago and Seventh Circuit Bar Associations; Intellectual Property Law Association of Chicago; American Intellectual Property Law Association; American Chemical Society; American Institute of Chemical Engineers; Legal Club of Chicago; Law Club of Chicago. Practice Areas: Intellectual Property; Biotechnology Patents; Chemical Patents; Mechanical Patents; Patent Prosecution; Trademark Protection; Intellectual Property Portfolio Management; Pharmaceutical Intellectual Property; Medical Technology; Patent Interference Practice.Email: James P. Zeller
OF COUNSEL
Michael F. Borun (Of Counsel) admitted to bar, 1970, Illinois; U.S. Supreme Court; registered to practice before U.S. Patent and Trademark Office. Education: University of Chicago (B.S., Biological Sciences, 1964); Loyola University (J.D., 1970). Mr. Borun is Of Counsel at Marshall, Gerstein & Borun, after having been a partner in the firm for many years. Consistent with the development of experience in chemical, pharmaceutical and biotechnology intellectual property right issues, he has frequently been requested to provide validity and infringement opinions and expert testimony; provide comprehensive state-of-the-art analyses of various life sciences, consult with and advise foreign counsel in foreign patent opposition and litigation proceedings, and consult with business development personnel concerning potential joint ventures and public offerings of stock. Since joining the firm in 1969, Mr. Borun has represented clients in a wide variety of intellectual property matters, principally involving patent prosecution and litigation. He has extensive experience in domestic and foreign patent prosecution in biotechnology and chemical and pharmaceutical technologies, including appeals and interferences. Biotechnology matters which have been the subject of his patent prosecution efforts include: development and use of transgenic animals, gene synthesis; host/vector expression systems; gene therapy; recombinant production of procaryotic and eucaryotic gene products including hematopoietic factors, steroid and protein receptors, DNA binding proteins, neurotrophic factors, colony stimulating factors, cellular adhesion molecules, integrins, phosphodiesterases, bactericidal proteins, immunocontraceptive proteins, protein kinases and phosphatases, chemokines, ion channel proteins, signal transduction proteins, growth factors, and growth hormones; recombinant product fermentation and purification, protein sequencing; nucleic acid amplification methodologies; recombinant and affinity chromatographic production of viral proteins for diagnostic and vaccine uses; hybridoma technology including the production of monoclonal, humanized and anti-idiotype antibodies for diagnostic and therapeutic uses; binding protein, enzyme analog and small molecule screening methodologies; multi-gene pathways for selective microbial degradation of organic chemical substrates; selective microbial synthesis of amino acids; phytoremediation; recombinant HIV, HSV, HBV and other viral protein products and assay systems; genomics; phage display; pluripotent germ cells. Member: Chicago, Illinois State and American Bar Associations; American Intellectual Property Law Association; Intellectual Property Law Association of Chicago; Law Club of Chicago. Practice Areas: International Intellectual Property; Molecular Biology Patents; Patent Interference Practice; Patent Litigation; Biotechnology; Chemistry; Patent Prosecution; Pharmaceutical ; Opinions and Counseling ; Intellectual Property.Email: Michael F. Borun
Carl E. Moore, Jr. (Of Counsel) admitted to bar, 1969, Illinois; U.S. Supreme Court; U.S. Court of Appeals, Sixth, Seventh and Federal Circuits; admitted to practice pro hac vice in various district courts throughout the United States; registered to practice before U.S. Patent and Trademark Office. Education: Loyola University, Chicago (B.S., Chemistry, 1965; J.D., 1969). Carl E. Moore, Jr. became Of Counsel to Marshall, Gerstein & Borun in 2006 after having been a partner of the firm and its predecessor firms since 1975. While a partner of the firm, he served as Chair of the firm's management committee and as the firm's managing partner. He has had extensive experience in patent, trademark, copyright and trade secret litigation as well as experience in inter partes proceedings in the U.S. Patent and Trademark Office, including patent interferences, reexamination proceedings, reissue proceedings and trademark oppositions. Mr. Moore also is experienced in the prosecution of patent and trademark applications including cases involving polymer chemistry, analytical reagents, coatings, pharmaceutical compositions and mechanical and electrical equipment. He has served as a court-appointed arbitrator in the Circuit Court of Cook County. Member: Chicago and Illinois State Bar Associations; American Intellectual Property Law Association; Intellectual Property Law Association of Chicago. Practice Areas: Intellectual Property; Patent Litigation; Patent Prosecution; Copyrights; Trade Secrets; Trademarks; Chemistry; Patent Interference Practice.Email: Carl E. Moore, Jr.
Alvin D. Shulman (Of Counsel) admitted to bar, 1958, Illinois; registered to practice before U.S. Patent and Trademark Office. Education: University of Illinois (B.S., Metallurgical Engineering, 1952); Northwestern University School of Law (J.D., 1958). Al Shulman joined the firm in 1961 when it was located in the Inland Steel Building. He retired as a partner in 1998, and continues to practice patent law as Of Counsel in matters relating to metallurgical technology. Mr. Shulman received his J.D. from Northwestern University School of Law in 1958. He served in the U.S. Army from 1952 to 1954. He received a B.S. in Metallurgical Engineering from the University of Illinois in 1952. [With U.S. Army, 1952-1954]. Practice Areas: Metallurgical Patents; Intellectual Property.Email: Alvin D. Shulman
SPECIAL COUNSEL
Jill Anderfuren (Special Counsel) admitted to bar, 1990, Illinois and California; U.S. District Court, Northern District of Illinois; U.S. Court of Appeals, Federal Circuit. Education: Northwestern University (B.S., General Education, 1985); Chicago-Kent College of Law, Illinois Institute of Technology (J.D., 1990). Jill Anderfuren specializes in the areas of trademarks, copyrights, and unfair competition, including opinion work, prosecution and litigation. Having over twenty years of experience developing effective trademarks and maintenance strategies for a wide range of clients including insurance, medical, and consumer product companies. Ms. Anderfuren's diverse technical specialties include: U.S. and International Trademark Prosecution, Trademark Search and Clearance, Interparties proceedings before the TTAB, and Development of international trademark protection strategies. Before joining the firm, Ms. Anderfuren was an associate at Tilton, Fallon, Lungmus & Chestnut. Prior to obtaining her J.D. degree, Ms. Anderfuren worked as a legal assistant, working with foreign agents in trademark clearance and patent and trademark prosecution. Ms. Anderfuren served as a member of INTA's Trademark Office Relations & Benchmarking Subcommittee. Member: State Bar of California. Practice Areas: Intellectual Property; Copyrights; Trademarks.
Jeffrey H. Canfield (Special Counsel) admitted to bar, 1993, Illinois; registered to practice before U.S. Patent and Trademark Office. Education: Michigan Technological University (B.S., Electrical Engineering, 1986); John Marshall Law School (J.D., 1993). Mr. Canfield is a patent attorney with experience in patent preparation and prosecution, with an emphasis on electronics, electrical devices and computer software applications. He has provided counsel in non-infringement and invalidity matters and issued freedom to operate opinions related to technologies such as: semiconductor devices, electronic circuits, wireless communications systems, optoelectronic devices and fiber optic communications systems, audio and video processing, information systems and business processes, medical devices and treatment techniques, and network video games and virtual reality systems. Mr. Canfield represents companies with their intellectual property asset management including competitive patent portfolio review and analysis, strategic planning, standards review and licensing issues. Prior to his law firm experience, Mr. Canfield was patent counsel to Methode Electronics. He also served as a senior project engineer for Littell International. Member: Intellectual Property Law Association of Chicago. Practice Areas: Intellectual Property; Patent Prosecution; Computers and Software; Intellectual Property Transactions ; Opinions and Counseling ; Electrical Prosecution and Counseling ; Internet and E-Commerce.Email: Jeffrey H. Canfield
Meggan F. Duffy (Director of Professional Development) admitted to bar, 1998, Illinois; U.S. District Court, Northern District of Illinois; registered to practice before U.S. Patent and Trademark Office. Education: University of Illinois, Urbana-Champaign (B.S., General Engineering, 1995); Loyola University (J.D., 1998). Meggan F. Duffy was first associated with Marshall, Gerstein & Borun in 1998, focusing on patent prosecution, litigation, and opinions and counseling primarily in the mechanical and electromechanical areas. Ms. Duffy also serves as the firm's Director of Professional Development. In 2000, Ms. Duffy began teaching at DePaul University College of Law as a full-time Instructor of Law. During her five years in this role, she taught first-year Legal Analysis, Research & Communication, Intellectual Property Legal Analysis, Research & Communication, and Patent Law, and was actively involved in the law school's Center for Intellectual Property Law and Information Technology (CIPLIT). She also continued to practice with Marshall, Gerstein & Borun on a project basis. Today, Ms. Duffy's practice comprises patent prosecution and opinions and counseling in the mechanical, consumer products, and medical devises and technology areas. In addition, Ms. Duffy continues to teach Patent Law at DePaul University College of Law and is Co-Director of its LL.M. Program in Intellectual Property Law. Ms. Duffy is an active member of the Intellectual Property Law Association of Chicago, recently serving on both the Women in IP and Inventor of the Year Committees. She is also Co-Chair of the Externs/Interns Committee of the Chicago Intellectual Property Alliance. Member: Chicago Bar Association; American Bar Association; Chicago Intellectual Property Alliance; Intellectual Property Law Association of Chicago. Practice Areas: Intellectual Property; Patent Prosecution; Computers and Software; Medical Technology; Litigation; Mechanical Prosecution and Counseling .Email: Meggan F. Duffy
Scott M. Gettleson (Special Counsel) admitted to bar, 1992, Illinois; U.S. Court of Appeals, Federal Circuit; U.S. District Court, Northern District of Illinois, Eastern District of Wisconsin and Western and Eastern Districts of Michigan; registered to practice before U.S. Patent and Trademark Office. Education: University of Michigan (B.S.E., Computer Engineering, magna cum laude, 1989); University of Illinois (J.D., 1992). Scott M. Gettleson has a full-service patent practice with extensive experience preparing and prosecuting U.S. and foreign patent applications involving a broad range of computer, electrical, and mechanical technologies and e-commerce and business-method innovations. He also has extensive experience handling patent litigation, as well as litigating trademark, copyright, and trade secret disputes. In addition, Mr. Gettleson handles licensing matters, performs due-diligence for transactions involving intellectual property assets, and prepares opinions on patent infringement and validity issues. He has successfully represented clients before the U.S. Court of Appeals for the Federal Circuit and the Board of Patent Appeals and Interferences in the U.S. Patent and Trademark Office, and litigated utility and design patent cases in U.S. District Courts throughout the country. He also counsels clients on intellectual property procurement and enforcement strategies and a host of other intellectual property issues. Some products and technologies for which he has secured patent rights for clients include: computer systems, hardware, and software; satellite television and communication systems; text and graphics processing systems; position tracking systems; audio mixing equipment; motor control systems; industrial process control systems; mechanical, electromechanical, and medical devices; electronic circuitry; liquid-crystal displays; valves and fuel injectors; thermoplastic extrusion equipment; home appliances and garden tools; and business methods. Mr. Gettleson received his B.S. E. in Computer Engineering, magna cum laude, from the University of Michigan in 1989 and his J.D. from the University of Illinois College of Law in 1992. While at the University of Michigan, he was a member of the Tau Beta Pi engineering honor society and the Eta Kappa Nu electrical and computer engineering honor society. Mr. Gettleson later completed an intensive certificate program in Microsoft Windows Software Development at the Institute for Professional Development of the DePaul University School of Computer Science in 2000. He also has served as an instructor in patent claim drafting for a nationally recognized review course for the patent bar examination. Member: Chicago Bar Association; Illinois State Bar Association; Intellectual Property Law Association of Chicago. Languages: Spanish. Practice Areas: Intellectual Property Litigation; E-Commerce; Business Method Patents; Copyrights; Patent Prosecution; Patent Interference Practice; Trade Secrets; Computers and Software; Electrical Patent Prosecution; Mechanical Patent Prosecution.Email: Scott M. Gettleson
Jeffrey W. Salmon (Special Counsel) admitted to bar, 1993, Illinois; 1994, Indiana; registered to practice before U.S. Patent and Trademark Office. Education: Northwestern University (B.S., Electrical Engineering, 1989); Indiana University School of Law - Indianapolis (J.D., 1992). Jeffrey W. Salmon has more than sixteen years of experience in patent law, handling patent prosecution, strategic counseling, transactional matters, licensing and litigation. He has particular experience in licensing and litigation of self-prosecuted patents. Mr. Salmon has been involved in numerous complex patent prosecution matters, including the preparation and prosecution of reissue and continuation patent applications regarding various subject matters, including: brushless DC motors, electro-mechanical aspects of hard disk drives and other storage devices, pharmaceuticals, plastic treatment methods, flashlights, acoustic micro-imaging devices and methods, and analog data generating and processing devices and antennas. Subject mater of other self-drafted patent applications include: medical devices, software, call centers, plastic automobile components, and electrical and electro-mechanical aspects of microphones. Mr. Salmon has served as counsel to a licensing company in the coordination and utilization of feedback from licensing and litigation programs into worldwide patent prosecution endeavors to optimize and monetize the company's patent portfolio. He has drafted numerous patent license and assignment agreements and non-disclosure agreements. Mr. Salmon also conducted intellectual property due diligence regarding the acquisition of patents by the licensing company, counseling and participation in negotiations, and agreement drafting related thereto. Additional strategic counseling has involved the preparation of numerous opinions of counsel on validity and infringement issues regarding various subject matters such as plastic treatment methods, automobile components, software systems and playground equipment. Mr. Salmon's litigation experience has involved technical issues in a multi-district proceeding concerning several patent infringement lawsuits where more than 50 patents were at issue. He also has had extensive involvement in mediations related to complex patent litigation matters. Mr. Salmon is a claim drafting instructor for PRG Patent Bar Review courses. He also participates in training programs for attorneys on patent prosecution topics such as claim drafting and prosecuting patents from a litigation perspective. Prior to joining Marshall, Gerstein & Borun, Mr. Salmon was a Principal with Welsh & Katz, Ltd. in Chicago. He also served as patent counsel in Indiana before relocating to Chicago. Member: Chicago Bar Association; Indiana State Bar Association; Intellectual Property Law Association of Chicago. Practice Areas: Intellectual Property; Intellectual Property Portfolio Management; Intellectual Property Litigation; Pharmaceutical Intellectual Property; Patent Interference Practice; Patent Prosecution; Trade Secrets; Trademarks; Computers and Software; Internet Law; E-Commerce; Medical Technology.Email: Jeffrey W. Salmon
ASSOCIATES
Gina M. Bicknell (Associate) admitted to bar, 2008, Illinois; registered to practice before U.S. Patent and Trademark Office. Education: University of Chicago (B.A., English Language and Literature, with honors); Birkbeck College, University of London (B.Sc., Biological Sciences, with honors); Chicago-Kent College of Law, Illinois Institute of Technology (J.D.). Gina M. Bicknell is an associate with Marshall, Gerstein & Borun where she concentrates on intellectual property transactions for universities, small start-ups, and large corporations. Ms. Bicknell has more than a decade of intellectual property transactional experience which she leverages to help clients maximize the potential of their intellectual property assets. Most recently, Ms. Bicknell was a Patent Agent with Baxter Healthcare Corporation. While at Baxter, Ms. Bicknell managed a large patent portfolio and drafted and negotiated numerous intellectual property-based agreements including licenses, sponsored research and development, laboratory services, feasibility, material transfer, consulting, and clinical study agreements. In addition to her in-house corporate experience, Ms. Bicknell has international university technology transfer experience which allows her to negotiate agreements with a unique understanding of international transaction issues. Ms. Bicknell was a Licensing Coordinator at UCTech, the technology transfer office for the University of Chicago, and a Technology Transfer Executive at University College London Ventures in the United Kingdom, where she helped commercialize biotech inventions through marketing and licensing initiatives. Ms. Bicknell received her J.D., with honors, from Chicago-Kent College of Law in 2008, where she was a Notes and Comments Editor of the Chicago-Kent Law Review and a Teaching Assistant for Legal Research and Writing. Ms. Bicknell was also a finalist in the Charles Evans Hughes Moot Court competition and was invited to join the Chicago-Kent Moot Court Honor Society; she received CALI awards for Legal Research and Writing II; Criminal Procedure: Investigative Process; and IP and Antitrust (seminar). Ms. Bicknell received her B.Sc. in Biological Sciences, with honors, from Birkbeck College, University of London in 2001 and her B.A. in English Language and Literature, with honors, from the University of Chicago in 1997. She is a Certified Licensing ProfessionalTM (CLP)*, a credential issued by the Licensing Executives Society (LES) (USA and Canada), Inc. to recognize licensing professionals who are committed to professional development and the attainment of the skills and knowledge necessary to perform at the highest level of quality. Ms. Bicknell is a member of the Technology and Education Committee for the Chicago IP Alliance (CIPA), and is also a member of the Licensing Executives Society (LES), the Association of University Technology Managers (AUTM), the American Intellectual Property Law Association (AIPLA), the American Bar Association (ABA), the Illinois State Bar Association (ISBA), and the Chicago Bar Association (CBA). *The Supreme Court of Illinois does not recognize certifications of specialties in the practice of law and the CLP certification is not a requirement to practice law in Illinois. Publications Gina M. Bicknell, To Disclose or Not to Disclose: Duty of Candor Obligations of the United States and Foreign Patent Offices, 83 Chi.- Kent L. Rev. 425 (2008). Contributed to: 32 The Encyclopedia of Forms and Precedents: Research and Development (The Rt. Hon. Lord Millett, P.C. ed., 5th ed. 2001). Member: Chicago Intellectual Property Alliance (Co-Chair, Science Fair Committee); Licensing Executives Society; Association of University Technology Managers; Illinois Spinal Cord Injury Association (Committee Member). Practice Areas: Intellectual Property; Intellectual Property Portfolio Management; Intellectual Property Licensing; Patent Prosecution; Biotechnology.Email: Gina M. Bicknell
Jon-Thomas (J.T.) Bloch (Associate) admitted to bar, 2004, Illinois; U.S. District Court, Northern District of Illinois. Education: University of Virginia (B.S., Computer Science, 1998); University of Chicago (J.D., 2004). J.T. Bloch focuses his practice on patent litigation in the United States District Courts. Before attending law school, Mr. Bloch worked as a software developer specializing in software security and cryptographic applications. Prior to joining Marshall, Gerstein & Borun, Mr. Bloch was associated with Jones Day. Practice Areas: Patent Litigation; Computers and Software; Consumer Products; Electrical Prosecution and Counseling.Email: Jon-Thomas (J.T.) Bloch
Eric M. Brusca (Associate) admitted to bar, 2007, Illinois; registered to practice before U.S. Patent and Trademark Office. Education: University of Illinois, Urbana-Champaign (B.S., Microbiology, 1996; M.S., Microbiology, 1998); Loyola University (Ph.D., Chemistry, 2001); John Marshall Law School (J.D.). Eric M. Brusca is involved in patent prosecution, with special focus on biotechnology-related issues. Dr. Brusca has worked with clients in a wide variety of biotechnology matters including domestic and foreign patent prosecution, U.S. interference and foreign opposition proceedings, and non-infringement/validity opinions. The technical focus of many of Dr. Brusca's patent prosecution has included: recombinant DNA, protein and antibody technology, gene therapy, growth factors, sequence analysis, and vaccine development technology. Prior to joining the firm, Dr. Brusca researched RNA-protein interactions and catalytic RNA molecules in the Department of Chemistry at Loyola University Chicago. Practice Areas: Intellectual Property; Patent Interference Practice; Patent Prosecution; Biotechnology; Nanotechnology; Pharmaceutical .Email: Eric M. Brusca
Jennifer Burnette (Associate) admitted to bar, 2007, Illinois; U.S. District Court, Northern District of Illinois. Education: Northwestern University (B.S., Engineering Sciences and Applied Mathematics and Material Science and Engineering, 2004); University of Minnesota Law School (J.D., magna cum laude, 2007). Jennifer Burnette is an Associate with Marshall, Gerstein & Borun. Her practice focuses on patent prosecution with an emphasis on material sciences. She received Bachelor of Science degrees in Engineering Science & Applied Mathematics and Material Science & Engineering in 2004 from Northwestern University. While at Northwestern University, Ms. Burnette was involved in the research and development of a method for biosynthesis of molecular building blocks for nano-scale patterning and self-assembly. She also participated in an internship program involving the development of a novel liposome drug delivery system with applications as chemotherapy drug delivery units. Additional research involved the synthesis of iron oxide magnetic particles for use with drug delivery systems. Practice Areas: Patent Prosecution; Intellectual Property.Email: Jennifer Burnette
Michael A. Chinlund (Associate) admitted to bar, registered to practice before the U.S. Patent and Trademark Office. (Admission pending). Education: Air Force Safety School; U.S. Air Force Academy (B.S., Aeronautical Engineering, 1991); Northern Illinois University College of Law (J.D., cum laude, 2009). Mr. Chinlund focuses his practice on patent prosecution with an emphasis in aerospace/defense. His technical experience includes: Aircraft systems & controls Avionics and Navigation Systems Turbojet and Turboprop engines Electronic Countermeasure Systems FAR Part 121 Operations Command and Control Systems Fluid control valves Prior to joining Marshall, Gerstein & Borun, Mr. Chinlund spent 13 years as a pilot for both American Airlines and the U.S. Air Force. He has logged over 5000 flight hours and holds type ratings in the B-737, MD-80, and L-382 aircraft. Mr. Chinlund is currently qualified in the B-737. He has also flown the B-727, Fk-100, T-38, T-37, and numerous general aviation aircraft. While in the U.S. Air Force, he was both instructor pilot and chief pilot in the Air Force Special Operations Command. He piloted the MC-130H throughout North and South America, Europe, Africa and Asia, specializing in insertion and recovery of special operations forces, and also in search and rescue operations. Mr. Chinlund worked in the Air Force flight dynamics laboratory at Wright Patterson Air Force Base, Ohio, modeling airflow in the post stall region for the F-16 VISTA program. He held a Top Secret Security Clearance while in the Air Force. Mr. Chinlund received his J.D. from Northern Illinois University, cum laude, in 2009. Mr. Chinlund received his B.S. in Aeronautical Engineering, from the United States Air Force Academy, where he was named to the Dean's list. [Prior to joining Marshall, Gerstein & Borun, Mr. Chinlund spent 13 years as a pilot for both American Airlines and the U.S. Air Force. He has logged over 4000 flight hours. While in the U.S. Air Force, he was both instructor pilot and chief pilot in Special Operations Command. He piloted the MC-130H throughout North and South America, Europe, Africa and Asia, specializing in insertion and recovery of special operations forces and also in search and rescue operations. Mr. Chinlund worked in the Air Force flight dynamics laboratory at Wright Patterson Air Force Base, OH; modeling airflow in the post stall region for the F-16 VISTA program. He held a Top Secret Security Clearance while in the Air Force]. Practice Areas: Intellectual Property; Patent Prosecution; Aerospace Law; OSHA; Mechanical Prosecution and Counseling .Email: Michael A. Chinlund
Michael E. Coyne (Associate) admitted to bar, 2008, Illinois; registered to practice before U.S. Patent and Trademark Office. Education: University of Illinois at Chicago (B.S., Mechanical Engineering, 1998); Loyola University Chicago School of Law (J.D., 2008). Michael E. Coyne is an associate with Marshall, Gerstein & Borun. His practice focuses on patent prosecution related to the mechanical engineering industry. Mr. Coyne received his J.D. from the Loyola University Chicago School of Law in 2008, where he was an Associate Editor of the Loyola University Chicago International Law Review. While a law student, Mr. Coyne served as a judicial extern to the Honorable Michael T. Mason, U.S. Magistrate Judge for the Northern District of Illinois. He also participated in the Santa Clara University School of Law's Japanese intellectual property law summer program in Tokyo, Japan. While attending law school, Mr. Coyne worked as a patent examiner responsible for preparing International Search Reports and Written Opinions in response to PCT applications submitted to the U.S. Patent and Trademark Office. He also worked as a summer associate at a Chicago general practice firm, where he prepared patent applications and supported the litigation practice. Additionally, Mr. Coyne served as a foreign legal intern at the Tokyo law firm TMI Associates, where he assisted with the prosecution of U.S. and PCT patent applications. Prior to attending law school, Mr. Coyne worked as a project engineer at Kolcraft Enterprises and Fellowes, Inc. As a project engineer, he gained extensive experience in all aspects of new product development in the consumer products industry, with an emphasis on the design of injection molded plastic parts and assemblies. Mr. Coyne also worked as a design engineer at Grayhill, Inc., where he developed and modified circuit board-mounted electrical components and related testing and production equipment. He also has experience in the design of tooling, electro-mechanical systems, and automated packaging equipment. Mr. Coyne received his B.S. in Mechanical Engineering from the University of Illinois at Chicago in 1998 and is admitted to practice before the U.S. Patent and Trademark Office. Languages: Japanese. Practice Areas: Intellectual Property; Mechanical Patent Prosecution; Patent Prosecution.Email: Michael E. Coyne
Shelley C. Danek, Ph.D. (Patent Agent) (Admission pending). Education: American University, Washington, DC (B.S., Chemistry; B.A., International Relations); University of North Carolina at Chapel Hill (Ph.D., Chemistry, 2003). Shelley Danek, Ph.D., is involved in patent prosecution, concentrating in chemical and biochemical as well as nanotechnology applications. Dr. Danek also is involved in preparing opinions and in counseling clients in intellectual property portfolio management and strategy. The technical focus of the representative applications that she has worked on includes lithography, polymers, materials, semi-conductors, pharmaceutical formulations, cosmetic formulations, biological molecular detection and analysis, and synthesis of organic molecules and inorganic complexes.
Dr. Danek received her J.D. in 2009 from Chicago-Kent College of Law. Prior to joining the firm, Dr. Danek was a postdoctoral scholar at Stanford University, researching structural analogs of RNA bases for use in RNA interference applications. She received her Ph.D. in Chemistry from the University of North Carolina at Chapel Hill in 2003. Her doctoral research included pursuing the total synthesis of natural products and evaluating new assay techniques for identification of novel catalysts using combinatorial chemistry. Dr. Danek also holds a B.S. in Chemistry and a B.A. in International Relations, both from American University in Washington, D.C. Practice Areas: Intellectual Property; Patent Prosecution; Nanotechnology; Biotechnology; Chemistry; Opinions and Counseling ; Pharmaceutical .Email: Shelley C. Danek, Ph.D.
Laurence (Larry) B. Dietrick (Associate) (Admission pending). Education: University of Illinois, Urbana-Champaign (B.S., Electrical Engineering, with high honors, 2006); University of Illinois College of Law (J.D., summa cum laude, 2009). Laurence ("Larry") B. Dietrick is an associate with Marshall, Gerstein & Borun. His practice focuses on patent prosecution in the electrical engineering field. His technical experience and background includes an emphasis in: Radio frequency communication circuits and systems Digital signal processing Graphics processing technology Electric motor drives Business methods. During his final undergraduate year, Mr. Dietrick participated in a semester-long senior design team project involving the design and construction of a radio frequency signal jammer for a remote-controlled car. He assisted in the design of oscillator and active buffer circuits for the jammer, and the project won the Best Engineered Award that semester. Prior to joining the firm, Mr. Dietrick split summer clerkships between Vedder Price P.C. and Sonnenschein Nath & Rosenthal LLP, where he prepared patent applications, responded to office actions, and supported the litigation practices. While completing his undergrad, he was an Engineering Intern at Motorola, Inc., working with systems engineering in radio communications. Mr. Dietrick received his J.D., summa cum laude, from the University of Illinois College of Law in 2009, where he was an Associate Editor of the Illinois Law Review. During his third year of law school, he participated in the Patent Pilot Program, where he drafted a patent application for student inventors who participated in a University innovation competition. Mr. Dietrick also received several CALI Excellence for the Future Awards, including one such award for his work in the second-year Patent Prosecution course. During his first year of law school, Mr. Dietrick was recognized with the Neal, Gerber & Eisenberg LLP Best Advocate Award for outstanding performance in written and oral advocacy, and the Sonnenschein Nath & Rosenthal LLP Award for Excellence in Legal Writing. He was also a Lamet Scholarship recipient and was recognized as a Harno Scholar. During the fall 2008 semester, Mr. Dietrick participated in the law school's exchange program with Katholieke Universiteit Leuven in Leuven, Belgium, where he studied international and European taxation and trade law. Mr. Dietrick received his B.S. in Electrical Engineering, with high honors, from the University of Illinois at Urbana-Champaign in 2006, where he received the Bronze Tablet designation, a designation reserved for the top three percent of the University's graduating class. He was also a member of several honor societies including Eta Kappa Nu, Tau Beta Pi, Golden Key, and Alpha Lambda Delta. Practice Areas: Intellectual Property Prosecution; Electrical Patent Prosecution.Email: Laurence (Larry) B. Dietrick
Joshua B. Elkins (Associate) (Admission pending). Education: University of Illinois, Urbana-Champaign (B.S., Mechanical Engineering, 1995); The University of Chicago Law School (J.D., 2009). Joshua B. Elkins is an associate with Marshall, Gerstein & Borun. His practice focuses on patent prosecution in the Mechanical Engineering field. Mr. Elkins received his J.D. from the University of Chicago Law School in 2009. As a law student, Mr. Elkins was a Public Service Legal Intern for the City of Chicago Corporation Counsel Office. Prior to law school, Mr. Elkins was a Submarine Warfare Officer in the United States Navy for eleven years, specializing in operations and engineering aboard two U.S. Navy submarines. He was certified by the Department of Energy and the Department of the Navy as a Naval Nuclear Propulsion Engineer Officer. He also worked at the U.S. Embassy in Baghdad, Iraq, specializing in the fiscal administration of infrastructure reconstruction programs. Mr. Elkins received his B.S. in mechanical engineering from the University of Illinois at Urbana in 1995. [Submarine Warfare Officer, United States Navy]. Practice Areas: Intellectual Property Prosecution; Mechanical Patent Prosecution.Email: Joshua B. Elkins
Alexander Fishkin (Associate) admitted to bar, 2008, Illinois. Education: University of Illinois, Urbana-Champaign (B.S., Electrical Engineering, 1999); Stanford University (M.A., Slavic Languages and Literatures, 2004; M.S., Electrical Engineering, 2004); Northwestern University Kellogg Graduate School of Management (M.B.A., 2008); Northwestern University School of Law (J.D., 2008). Alex Fishkin is an associate at Marshall Gerstein & Borun. Throughout his career, Mr. Fishkin has advised dozens of Fortune 100 companies, small businesses, non-profit organizations, and entrepreneurs on technology and intellectual property matters. Mr. Fishkin is a 2008 graduate of the Northwestern University School of Law and Kellogg Graduate School of Business, where he received a JD-MBA with a focus on the law and business of technological innovation and intellectual property. At Northwestern, he worked with the Technology Transfer Program, helping the university to commercialize its research in sciences and engineering. He was also president of the Small Business Opportunity Center, a nonprofit organization providing affordable legal services to entrepreneurs and nonprofit organizations in the Chicago area, and served on the editorial board of the Kellogg Insight business journal. Prior to law/business school, Mr. Fishkin worked as a Technology Specialist at Fish & Richardson, where he helped large high-tech companies, small businesses and individual inventors to protect their intellectual property. Before entering the intellectual property field, he held various engineering positions at a number of companies, including Teradyne, Motorola, Pittway Corporation (now Honeywell International), and Pepsi Americas. Mr. Fishkin received a B.S. in Electrical Engineering from the University of Illinois at Urbana-Champaign in 1999, and a M.S. in Electrical Engineering and a M.A. in Slavic Languages and Literatures from Stanford University in 2004. Mr. Fishkin is fluent in Russian and French and proficient in Spanish. Languages: Russian, French and Spanish. Practice Areas: Intellectual Property; Patent Protection; Computers and Software; E-Commerce; Electrical Intellectual Property.Email: Alexander Fishkin
Jennifer J.E. Flory (Associate) admitted to bar, 2005, Illinois; U.S. District Court, Northern District of Illinois; registered to practise before U.S. Patent and Trademark Office. Education: Saint Mary's College, Notre Dame (B.S., Chemistry, 1996); Rush-Presbyterian-St. Luke's Medical Center, Rush Medical College (Ph.D., Biochemistry, 2003); Loyola University, Chicago (J.D., 2005). Jennifer Jeanne Embry Flory focuses her practice on patent prosecution, with particular emphasis in the fields of biotechnology and pharmaceuticals. Dr. Flory received her J.D. from Loyola University Chicago School of Law in 2005, where she was on the Dean's list. While attending law school, she authored two publications in the Journal of Arthritis & Rheumatism based on her graduate work and was the recipient of the Barbara P. & Edward M. O'Toole scholarship. Dr. Flory is registered to practice before the U.S. Patent and Trademark Office. Prior to law school, Dr. Flory received her Ph.D. in Biochemistry from Rush-Presbyterian-St. Luke's Medical Center, Rush Medical College in 2003. Her graduate research in the field of osteoarthritis and articular cartilage focused on the degradation of hyaluronan and the hyaluronan-binding region of aggrecan, an articular cartilage extracellular matrix proteoglycan. Dr. Flory's co-internalization studies involved transfecting bovine articular chondrocytes and COS-7 cells with various isoforms of the CD44 aggrecan receptor gene and characterizing hyaluronan and aggrecan (ITEGE epitope) internalization. For her work, she received the Sigma Xi Scientific Research Society Award for Outstanding Student Research in 2002. Dr. Flory received her B.S. in Chemistry with a minor in Mathematics from Saint Mary's College, Notre Dame in 1996. While at Saint Mary's, she focused on inorganic chemistry and co-authored a publication based on her research with metalloborane carbonyl clusters in the Journal of Inorganic Chemistry. During this time, she was also an intern in the metallurgical laboratory at I/ N Kote, a sheet steel processing mill. Practice Areas: Intellectual Property; Intellectual Property Litigation; Biotechnology; Patent Prosecution; Chemistry.Email: Jennifer J.E. Flory
Michael P. Furmanek (Associate) admitted to bar, 2003, Michigan and U.S. District Court, Eastern District of Michigan; 2004, Illinois; U.S. District Court, Northern District of Illinois; registered to practice before U.S. Patent and Trademark Office. Education: University of Michigan (B.S., Mechanical Engineering, 2000); DePaul University (J.D., 2003). Michael P. Furmanek's practice encompasses all aspects of intellectual property with a focus toward preparing and prosecuting patent applications, both domestic and abroad, as well as advising clients on patentability, patent enforcement, and related concerns. Mr. Furmanek was recently elected to serve on the firm's Associates' Committee and is an active member of the firm's Mechanical and CleanTech practice groups. Prior to joining the firm, Mr. Furmanek served as in-house patent counsel for an automotive supplier in Nagoya, Japan, during which he managed the preparation and prosecution of multinational patent applications in a variety of technical fields. Mr. Furmanek received his J.D. from DePaul University College of Law where he became a member of the DePaul Law Review and received the DePaul College of Law Top Scholar Scholarship. Before attending law school, he received his B.S. in mechanical engineering from the University of Michigan. Practice Areas: Opinions and Counseling; Intellectual Property; Patent Prosecution; Electrical Patent Prosecution; Mechanical Patent Prosecution.Email: Michael P. Furmanek
Anthony S. Gabrielson (Associate) admitted to bar, 2001, Minnesota; 2004, Illinois; U.S. Court of Appeals, Seventh Circuit, U.S. District Court, Central, Northern and Southern Districts of Illinois and U.S. District Court, District of Minnesota. Education: University of Iowa (B.A., Philosophy, highest distinction with honors, 1998); Harvard Law School (J.D., 2001). Anthony S. Gabrielson is an associate with Marshall, Gerstein & Borun practicing in patent litigation. He has broad experience in all phases of litigation, and has been involved with patent infringement, intellectual property protection, technology law, breach of trademark license and trademark infringement, copyright, commercial litigation, securities litigation, arbitration, mediation, class action, product liability, mass tort defense and breach of contract matters. Mr. Gabrielson has had extensive involvement in numerous patent infringement matters involving technologies including: Computer software and hardware; E-Commerce and Web interfaces; Information transmission systems and components; Fiber optic video networks; Data communication and security systems; Microprocessors and memory devices; Industrial control systems; Consumer products; Electronic technology; Pharmaceuticals and chemicals; Medical devices; Industrial, mechanical and agricultural equipment and devices. Prior to joining the firm, Mr. Gabrielson was a litigation associate at a national corporate firm. Following law school, he served for two years as a law clerk for the Hon. Ann D. Montgomery of the U.S. District Court, District of Minnesota, where he drafted over 150 judicial orders on a myriad of federal and state law topics for a multitude of disparate civil suits and criminal prosecutions. Mr. Gabrielson also drafted multiple complex claim construction orders for patent infringement litigations. Mr. Gabrielson received his J.D. from Harvard Law School in 2001. While at Harvard, he participated in Harvard Defenders providing student legal representation for indigent clients, was a line editor for the Harvard International Law Journal and served as special events coordinator of the Student Activities Council. Mr. Gabrielson received his B.A., with highest distinction and honors in philosophy, from the University of Iowa in 1998. He also received a certificate in philosophies and ethics of politics, law and economics, and completed the University's Unified Program. Upon graduation, Mr. Gabrielson was presented the Hancher-Finkbine Medallion, the University's highest honor, and earned the Gustav Bergmann Philosophy Prize, awarded annually to the most outstanding senior in the Department of Philosophy. While at Iowa as a Presidential Scholar, Mr. Gabrielson was conferred the Rhodes Dunlap Scholarship by the University's Honors Program, and was instrumental in converting the Pre-Law Society into the Phi Alpha Delta Law Fraternity, serving as President of both organizations for three years. Additionally, Mr. Gabrielson served as President of the Phi Beta Kappa Society, Alpha of Iowa chapter, and was a member of the Mortar Board National College Senior Honor Society, the Omicron Delta Kappa National Leadership Honor Society and the Phi Eta Sigma National Honor Society. Mr. Gabrielson has served as a speaker on multiple intellectual property issues. Mr. Gabrielson is the current Chair of the Amicus Brief Subcommittee of the Litigation Committee of the Intellectual Property Law Association of Chicago (2009-'10). Mr. Gabrielson is the immediate past Chair of the Chicago Bar Association's Intellectual Property Law Committee (2008-'09), and is a member of the American Intellectual Property Bar Association, the American Bar Association and the Illinois State Bar Association. Mr. Gabrielson is a member of The Richard Linn American Inn of Court, Chicago chapter. Mr. Gabrielson enjoys working with Lawyers for the Creative Arts on a pro bono basis, a non-profit organization providing free legal service to all areas of the arts. Additionally, Mr. Gabrielson serves on Marshall, Gerstein & Borun's Professional Development Committee, Recruiting Committee, Litigation Support Subcommittee and Sustainability Task Force. Mr. Gabrielson was selected for inclusion in the Cambridge Who's Who Registry of Executives, Professionals and Entrepreneurs, 2008-2009 edition. Member: Chicago (Vice Chair, Intellectual Property Committee), Illinois State and American Bar Associations; American Intellectual Property Bar Association; Intellectual Property Bar Association of Chicago. Practice Areas: Intellectual Property; Intellectual Property Litigation.Email: Anthony S. Gabrielson
Jonathan T. Goodman, Ph.D. (Associate) admitted to bar, registered to practice before U.S. Patent and Trademark Office. (Admission pending). Education: University of Delaware (B.S., Chemistry, 1994); University of Illinois at Urbana (Ph.D., Chemistry, 1999); Chicago-Kent College of Law (J.D., 2009). Jonathan T. Goodman is an associate with Marshall, Gerstein & Borun working with the chemical / chemical engineering, material science, and nanotechnology practice groups. Dr. Goodman is admitted to practice before the U.S. Patent and Trademark Office. Dr. Goodman received his J.D. from the Chicago-Kent College of Law in 2009, while working as a patent agent with the firm. As a law student, he was the Associate Editor of the Chicago-Kent Journal of Intellectual Property, and a member of the IP Law Society and Corporate Law Society. Prior to joining the firm, Dr. Goodman was a research assistant professor of chemistry at Vanderbilt University where he led research on nanomaterial synthesis, solid-state thermal reactions, and metal-nitride deposition technologies. In addition to research at Vanderbilt, Dr. Goodman taught graduate and undergraduate courses on organic, inorganic, and materials synthesis. For his efforts, he won a student-chosen undergraduate teaching award. Prior to Vanderbilt, Dr. Goodma