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B.S., Electrical Engineering, University of Illinois, 1972
J.D., Chicago-Kent College of Law, Illinois Institute of Technology, 1978
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Experience
- Patent, trademark and copyright prosecution
- Opinions on patent infringement, validity and enforceability
- Patent, trademark, copyright and trade secret litigation in the State and Federal Courts, and in the International Trade Commission
- Expert Witness in Federal Court Litigation
Professional Activities
- Member of the Advisory Board of BNA's Patent, Trademark & Copyright Journal
- President of the Intellectual Property Law Association of Chicago, 2009
- Board of Managers of the Intellectual Property Law Association of Chicago, 1997
- Past Chairman of the Patent, Trademark and Copyright Committee of the Chicago Bar Association
Awards
- 2009 Distinguished Alumni Award, Chicago-Kent IP Law Society
- Named to Leading Lawyer's Network by Chicago Law Bulletin
- Named an Illinois Super Lawyer by Law & Politics Magazine
Major Publications
- Contributing author of 'Designing Around' Valid U.S. Patents, published by the Patent Resources Group
- Contributing author of Electronics & Computer Patent & Copyright Practice, published by the Patent Resources Group
Additional Publications and Speeches
- A Simpler Approach to Claim Construction
BNA’s Patent, Trademark & Copyright Journal, 77 PTCJ 717 (April 2009)
- In The Wake: The PTO Guidelines On KSR
Landslide Vol. 1, No. 3; Publication of the ABA Section of Intellectual Property Law (January/February 2009)
- Effective Patent Prosecution Techniques: Drafting and Amending Patent Claims In Preparation for Litigation
1st Annual Intellectual Property Institute, IICLE, Chicago, Illinois (2008) DOWNLOAD .PDF
- In Re: Bilski
Chicago-Kent College of Law, Chicago, Illinois (September 2008)
DOWNLOAD .PDF
- Changes For The Patent Prosecutor: The Guidelines On KSR And Recent Trends In The Written Description And Enablement Requirements
52nd Annual Intellectual Property Law Conference, The John Marshall Law School, Chicago, Illinois (2008)
- Drafting Instructions For U.S. Counsel
Chicago, Illinois (2007) DOWNLOAD .PDF
- Understanding Patent Infringement Opinions And The Scope Of Patent Protection
IP Seminar of Tai E International Patent & Law Office, Taiwan (November 2006)
DOWNLOAD .PDF
- Examination Guidelines for Determining Obviousness under
35 U.S.C. Section 103 in view of the Supreme Court decision in KSR International Co. v. Teleflex Inc.
Amicus Curiae, No. 04-1350 (Supreme Court of the United States) (October 2006)
DOWNLOAD .PDF
- Willfulness in Patent Litigation
Intellectual Property Law Association of Chicago – The John Marshall Law School (April 2007)
- The Pros And Cons Of Using Means Plus Function Language In U.S. Patent Claims
(January 2006) DOWNLOAD .PDF
- Claim Construction After Phillips
(January 2006) DOWNLOAD .PDF
- Recent Developments In U.S. And Japan Patent Law
Japan (March 2005) DOWNLOAD .PDF
- What Controls Claim Interpretation, the Dictionary or the Specification?
Japan (November 2003)
- Advising Clients on Designing Around in Today’s Ever-Changing World
40th Annual Program on Intellectual Property Law, The Center for American and International Law, Dallas, TX (November 2002)
- Applying Prosecution History Estoppel after the Supreme Court’s Decision in Festo
Chicago Bar Association, (June 2002)
- Non-Infringement And Invalidity Opinions
Greer, Burns & Crain in-house Seminar (February 2002) DOWNLOAD .PDF
- Simplifying / Clarifying The Equivalents Analysis Through Legislation
Colorado Bar Association (2000) DOWNLOAD .PDF
- The Scope of Protection for Software
Japan (November/December 1999)
- Drafting Better Specifications and Claims in Light of Recent Federal Circuit Decisions
Japan (November 1999)
- Preparing U.S. Software Patent Applications for Later Filing in Foreign Countries, Intellectual Property Law Association of Chicago – The John Marshall Law School (May 1999)
- When Can No Reasonable Jury Find Patent Infringement Under The Doctrine Of Equivalents?
AIPPI (Japan 1999) DOWNLOAD .PDF
- Translating and Understanding Patentability Opinions
LES Annual Meeting, Miami, Florida (1998) DOWNLOAD .PDF
- The Importance of Defining the Inventive Concept in U.S. Patent Claims
Japan (October 1997)
- How to Obtain Broad Patent Protection in View of Most Recent CAFC Decisions
41st Annual Conference on Developments in Intellectual Property Law – The John Marshall Law School (February 1997)
- Patent Infringement and Patent Prosecution in the U.S.
AIPPI, Japan (February 1996)
- Broader Protection For Process Patent Owners Can Create Problems For The Unwary
Welsh & Katz, Chicago, Illinois, Newsletter Vol. 5, No. 1 (1988-89)
Bar Memberships
- U.S. Patent and Trademark Office
- Supreme Court of the State of Illinois
- U.S. District Court for the Northern District of Illinois
- U.S. Federal Circuit Court of Appeals
- U.S. Seventh Circuit Court of Appeals
- U.S. Fourth Circuit Court of Appeals
- U.S. Supreme Court
Technical Fields
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- Animal Feeding Systems
- Computer Systems and Circuits
- Construction Tools
- Electric Hair Trimmers and Attachments
- Home Appliances
- Liquid Crystal Displays
- Luggage
- Magnetic and Optical Disk Drives
- Machine Tools
- Nuclear Waste Disposal Systems
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- Photographic Equipment
- Piezoelectric Devices
- Plasma Display Devices
- Polymer Activation Systems for Waste Water Treatment
- Semiconductor Devices
- Solar Energy Systems
- Telecommunication Systems
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