Illinois

The firm recently defended printing supply manufacturer Lexmark in a dispute asserting four patents that cover multifunction printers.

In another matter, the firm was active for Marmon Holdings an a patent infringement dispute adverse to Conex. The case relates to two patents covering press fitting technology.

The firm was recently active for longstanding client Cook Medical in patent prosecution and litigation, including a series of PTAB proceedings against Boston Scientific.

The firm was recently active for Horizon in a matter against Teva-Actavis, resulting in a Federal Circuit win that affirmed a district court finding that the client’s patent was nonobvious. The opponent is now enjoined from marketing a version of Horizon’s Pennsaid product until 2027.

In another matter, the firm represented Clarus in a pending Federal Circuit appeal of a PTAB interference decision. The dispute involves a patent covering an oral testosterone product.

Peer Feedback

Robert Green:

“Seasoned litigator.”

Caryn Borg-Breen:

“Technically sound” in IP matters.

Former patent litigation group co-chair Bradford Lyerla and IP partner Steven Trybus recently left Jenner & Block to join competing firms.

A team from the firm recently obtained a $125 million verdict in favor of clients EagleView Technologies and Pictometry International following a 12-day jury trial in the District of New Jersey. The matter involved five asserted patents.

In another matter, the firm acted for Abbott in a Federal Circuit appeal that resulted in a sealed opinion affirming a lower court ruling that invalidated the opponent’s asserted patents.

For the firm’s notable activity in patent appeals and trials, Kirkland & Ellis was awarded Midwest Patent Contentious Firm of the Year in 2020 by Managing IP.

Experienced litigator Kenneth Adamo recently left the firm to start his own practice.

Peer Feedback

“Consistently strong” and “formidable firm.”

The firm was recently active for medical device company Zimmer in a patent dispute that resulted in an attorney’s fees award for the client.

Peer Feedback

“Highly successful and formidable.”

In 2020, the firm was shortlisted by Managing IP for the Midwest Patent Prosecution Firm of the Year award.

One of the firm’s senior patent practitioners Bruce Gagala recently entered an of counsel role.

The firm recently represented Parson Xtreme Golf in a patent infringement matter against TaylorMade involving the opponent’s golf club products.

In the non-contentious area, the firm is active for Marriott in relation to patent portfolio management and licensing strategy.

The firm continues to be active in the newsworthy CRISPR patent interference on behalf of Dr Emmanuelle Charpentier and CRISPR Therapeutics AG.

The firm also acted for consumer products company PopSockets in an ITC matter that resulted in a general exclusion order for the client. The order will allow imported products that infringe PopSocket’s patents to be seized.

In the Hatch-Waxman area, the firm acted for Onyx Therapeutics at trial against Cipla and other entities in connection with the client’s branded drug Kyprolis. Eight of nine defendants agreed to consent judgements, and the firm continues to represent the client against the final defendant.

In 2020, the firm was awarded Midwest Patent Prosecution Firm of the Year by Managing IP.

Client Feedback

Pamela Cox:

“An excellent, client-focused attorney who gets things done.”

The firm recently won affirmance from the Federal Circuit that upheld a lower court verdict awarding $254 million to client Stryker. The matter is part of a longstanding patent dispute between the client and Zimmer. For her role in the matter, Sharon Hwang was shortlisted by Managing IP for the Outstanding Litigator award in Illinois.

In prosecution, the firm continues to be active for clients in the electronics furniture gaming manufacturing and pharmaceutical sectors.

Newly added to the firm’s list of recognized practitioners is Wilhelm Rao, who specializes in IP litigation, prosecution and strategy.

The team recently secured three PIAB wins for client One World Technologies in connection with an ITC investigation. The invalidation of the patents asserted by Chamberlain Inc will allow the client to continue importing garage door openers.

In another matter, the firm acted for pharmaceutical client Praxair in a successful Federal Circuit appeal of an ANDA litigation. The appellate panel eventual affirmed a district court ruling of invalidity and noninfringement in favor of the clients.

The firm recently acted for Akorn and its subsidiary Hi-Tech Pharmacal in a Hatch-Waxman suit seeking to clear the clients’ effort to market a generic version of Allergan’s Latisse drug. The matter recently resolved between parties.

In another matter, the group is representing Fresenius Kabi in a pharmaceutical dispute involving Hospira’s Precedex product. The team was successful in invalidating two of the patents covering the product, and the case is now on appeal.

The firm recently took part in one of the earliest biosimilar disputes on behalf of Amgen. Following a two-week trial in the District of New Jersey, the asserted Amgen patent was upheld and three Sandoz subsidiaries were prevented from marketing their own biosimilar version of the drug Enbrel. The matter was recognized as one of Managing IP’s Impact Cases of the Year.

The group was also active for tech client CalAmp in a jury trial that resulted in a verdict of no willful infringement on all patents at suit. A previous award of $20 million that included attorneys’ fees and treble damages was then reduced to $4.6 million.

David Pritikin, one of the firm’s leading first-chair trial lawyers and a recognized IP Star, recently retired. This year he was awarded Outstanding Litigator in Illinois for his involvement in the high-profile biosimilar matter for Amgen.

In 2019, the firm was active in the closely watched precedential case Helsinn v Teva, which earned a Milestone Case of the Year award by Managing IP.

George Lombardi was shortlisted for the Outstanding Litigator Award in Illinois for activity in patent litigation.

The litigation team took part in a noteworthy Federal Circuit appeal for Converse, which vacated the ITC’s finding that the client’s trade dress was invalid. The matter garnered significant news and awards attention.

In prosecution and counseling, the firm advises various companies on the trademark portfolios, including Marmon Holding, Nokia and Toshiba.

The firm continues to engage with various companies for trademark prosecution and enforcement. The group is active in the education, fashion, financial services, pharmaceutical and retail sectors.

In 2020 the firm was shortlisted for the Midwest Trademark Prosecution Firm of the Year award by Managing IP.

A new addition to the firm’s list of recognized practitioners is trademark group chair Howard Michael.

The firm recently acted for PepsiCo in a noteworthy trademark infringement suit related to a tagline for the company’s Gatorade product. The matter resulted in a Seventh Circuit victory for the client, and was closely watched for its implications of fair use defense.

In another matter, the firm defended retailer Forever 21 from a suit brought by Adidas alleging the client infringed its trade dress rights related to the three-stripe mark. The matter is currently pending.

For its work in the area, the firm was shortlisted for the Midwest Trademark Contentious Firm of the Year in 2020 by Managing IP.

Client Feedback

“The team understands our needs from a legal and business perspective. [Katten Muchin Rosenman] has the expertise and is extremely responsive.”

Client Feedback

“Reputable, specialized firm with a worldwide network of agents and local counsel.”

Claudia Stangle is recognized as one of the Top 250 Women in IP.

The firm continues to represent the National Collegiate Athletic Association, a longstanding client, in contentious matters related to the use of its “March Madness” marks. One matter includes an Eastern District of Kentucky suit brought against mobile marketing company Xooker after the client objected to the entity’s attempt to register “Basketball Madness.”

In the trademark area, the firm was recently active for Duracell and Emerson Electric.

The firm is currently active in trademark prosecution and enforcement for companies in various industries. Clients are in the consumer goods, furniture and nutrition areas, among others.

The firm continues to counsel Pernod Ricard brands in relation to trademark protection, also collaborating with the firm’s regulatory practice to provide advice on advertising and labeling issues.

For pharmaceutical client Amgen the firm handles trademark, copyright, Internet, domain name, advertising and trade dress matters. Notable marks the firm has provided counsel for include Enbrel, Neulasta and Repatha.

In 2020, the firm was shortlisted by Managing IP for the Midwest Trademark Prosecution Firm of the Year award.

Jennifer Mikulina was added this year to the firm’s list of IP Stars.

In trademark prosecution, the firm was recently active for US Foods, assisting the client with applications, registration, oppositions and cancellations.