Practice Groups

MOVING FORWARD
WITH TECHNOLOGY

Appellate

Our Experience

Brinks Gilson & Lione has a proven record of successes in appellate matters involving patents, trademarks, copyrights, trade secrets, and other related issues, such as antitrust claims. We litigate intellectual property appeals stemming from a wide array of district court and agency determinations, including:

  • Final decisions of the U.S. District Courts;
  • Exclusion orders issued by the U.S. International Trade Commission;
  • Post-grant Patent Office proceedings under the America Invents Act of 2012;
  • Orders on motions for preliminary injunctions; and
  • Ex parte Patent Office proceedings. 

Our practice includes a strong specialty before the U.S. Court of Appeals for the Federal Circuit, which holds exclusive jurisdiction over appeals arising under the Patent Act and appeals from the U.S. Patent and Trademark Office. Our attorneys are not only known for their outstanding appellate advocacy, but also for the firm’s long and continuing tradition of leadership in the Federal Circuit Bar Association and Federal Circuit Historical Society.

The late Robert L. Harmon, a Brinks shareholder until his retirement from the practice of law, literally “wrote the book” on the Federal Circuit’s patent decisions with his treatise Patents and the Federal Circuit.  Bob passed on the care of his beloved treatise to Brinks, where it is maintained currently by shareholders Cynthia Homan and Laura Lydigsen, with the assistance of several Brinks associates.  Brinks attorneys update the treatise annually to reflect all new Federal Circuit and Supreme Court patent decisions. 

Brinks attorneys also appear regularly before the regional circuit courts of appeals, in trademark, copyright, and other non-patent, intellectual property cases. 

Brinks attorneys are not strangers at the Supreme Court of the United States either.  We are well-versed in Supreme Court practice, including proceedings related to Calls for the Views of the Solicitor General (“CVSG”), merits briefs, petitions for writs of certiorari, oppositions to petitions, and amicus briefs.  

Our Strategy and Successes

Our appellate strategy draws on both our appellate specialists and our deep bench of attorneys having the scientific, engineering, and technical expertise our clients’ cases demand.  The results show.  Some of our attorneys’ representative successes include:

  • SoftView LLC v. Kyocera Corp., 2015 WL 509660 (Fed. Cir. 2015).  The Federal Circuit issued a per curiam affirmance in an early appeal from the Patent Trial and Appeal Board, which held all challenged claims of a patent directed to a zoomable web browser for smartphones unpatentable.
  • Robert Bosch, LLC v. Snap-on Inc. et al., 769 F.3d 1094 (Fed. Cir. 2014).  The Federal Circuit ruled in favor of Brinks’s client that the asserted claims of a patent for an automotive diagnostic tester should be interpreted as means-plus-function claims and were invalid as indefinite for lack of structure in the specification.
  • Georgia-Pacific Consumer Products LP v. Kimberly-Clark Corp., 647 F.3d 723 (7th Cir. 2011).  The Seventh Circuit affirmed a summary judgment ruling in favor of Brinks’s client that the asserted trade dress was functional and not entitled to trademark protection.
  • Abbott Laboratories v. Sandoz Inc., 566 F.3d 1282 (Fed. Cir. 2009) (en banc in part).  Brinks successfully defended the denial of a preliminary injunction relating to a pharmaceutical product.  The Federal Circuit ruled en banc that process limitations in product-by-process claims are limiting for purposes of assessing infringement.  

Our appellate specialists also recognize that sometimes the greatest success is one achieved outside the courtroom with minimal expense to the client.  We often assist clients in achieving favorable settlement outcomes during the appellate process. 

Forward Thinking
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On March 22, 2017, the Supreme Court of the United States issued a 6-2 ruling in Star Athletica, L.L.C. v. Varsity Brands, Inc., et al., holding the decorative elements on Varsity Brands’ cheerleading uniforms were conceptually separable two-dimensional graphic works, and therefore eligible for copyright protection...

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On March 21, 2017, the Supreme Court of the United States held in SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC that laches cannot be used as a defense against damages for patent infringement where the infringement occurred within the six year period prescribed by 35 U.S.C. § 286...

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On February 22, 2017, the Supreme Court issued its decision in Life Technologies Corp. v. Promega Corp. to address whether the act of supplying from the United States a single commodity component of a multicomponent invention for combination abroad constitutes patent infringement under 35 U.S.C. § 271(f)(1)...

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Earlier this month, the Supreme Court of the United States heard oral arguments in Lee v. Tam to examine the constitutionality ...

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The maker of “My Other Bag” tote bags received its hoped-for holiday gift in late December ...

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As part of its annual “Special 301” identification and review of countries that deny adequate and...

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On December 1, 2016, the U.S. Copyright Office launched its new electronic registration system ...

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On December 6, 2016, the Supreme Court in Samsung Electronics Co. v. Apple Inc. upset the framework for determining damages for infringement of a design patent in the context of a multicomponent product.  Under § 289 of the Patent Act, the infringer of a design patent is liable for all of its profit from the manufacture or sale of the infringing “article of manufacture.” 

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The Supreme Court recently granted a petition for writ of certiorari to review the Federal Circuit’s en banc ...

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In its recent In re: Nuvasive, Inc. decision, the Federal Circuit on November 9, 2016 ...

in the media
In the November 2016 issue of Emerging Lawyers magazine, Laura Lydigsen, was profiled as one of the top lawyers in Illinois under the age of 40 or who have practiced for 10 or fewer years. Please click here to read the article.
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In Medtronic, Inc. v. Robert Bosch Healthcare Systems, Inc., the Federal Circuit discussed the non-appealable...

 

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On October 7, 2016, the en banc Federal Circuit reversed a panel decision issued earlier this year and reinstated...

book

The Twelfth Edition of Patents and the Federal Circuit with 2016 Supplement is now available. ...

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Earlier this month, the Federal Circuit held a software-based patent to be eligible under 35 U.S.C. § 101 in...

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In recent months, the Ninth Circuit and Fourth Circuit have issued important rulings about how the Lanham Act, ...

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On August 30, 2016, the Federal Circuit issued a decision in Veritas Technologies LLC v. Veeam Software Corp...

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For nearly a century, U.S. federal courts have struggled with the “metaphysical quandary” involved in determining ...

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On July 25, 2016, the Federal Circuit, in In re Magnum Oil Tools Int’l, reversed the final decision of an inter partes ...

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On June 23, the United Kingdom (UK) voted to exit the European Union (EU) – a decisive move whimsically known ...

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The U.S. Court of Appeals for the Federal Circuit recently ruled in Amgen Inc. v. Apotex Inc. that a biosimilar-product ...

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The Federal Circuit, in an en banc decision, held that to be “on sale” under pre-AIA § 102(b), a product must be the ...

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In vacating a District Court grant of summary judgment that a patent directed to a cryopreservation process was ...

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On June 21, 2016, the Federal Circuit, in Immersion Corp. v. HTC Corp., held that a patent application filed as a continuation of an earlier application on the issue date of the earlier application has been “filed before the patenting” of the earlier application, and therefore is entitled to the earlier application’s filing date under 35 U.S.C. § 120...

in the media
On June 17, 2016, IP Frontline published an article entitled, “Never Late is Better: PTAB Denies Petitioners Motion in IPR After Missing Filing Deadline By Minutes” written by Oluwafemi Masha, Kent E. Genin and Jennifer Fox.  Please ...
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On May 23, 2016, the Patent Trial and Appeal Board (PTAB) issued a decision denying motions...

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On May 13, 2016, the Federal Circuit, in Merck & Cie v. Watson Labs., Inc., held that an offer for sale that qualifies as a commercial offer under the law governing contracts...

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The Supreme Court recently granted a petition for writ of certiorari to review the Federal Circuit’s en banc decision in SCA Hygiene Prods. Aktiebolag v. First Quality Baby Prods., LLC.

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President Obama signed into law yesterday the Defend Trade Secrets Act, establishing for the first time an ostensibly uniform national trade secret protection standard...
 

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On April 25, 2016, the Supreme Court heard oral arguments in a case, Cuozzo Speed Technologies, LLC v. Lee, No. 15-446, that seeks to determine whether the Patent Trial and Appeal Board...

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Suggestions to amend or abolish 35 U.S.C. § 101 of the Patent Act are increasing in light of the number of software and biological patents...

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On April 4, 2016 the United States Senate unanimously passed the Defend Trade Secrets Act (S. 1890). 

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On Friday March 18, the Federal Circuit issued an opinion in a pair of appeals involving the contours of personal jurisdiction in Hatch-Waxman litigation—Acorda Therapeutics Inc. v. Mylan Pharmaceuticals Inc., No. 15-1456, and AstraZeneca AB v. Mylan Pharmaceuticals Inc., No. 15-1460.

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On December 17, 2015, an Eastern District of Texas Court ordered patent owner eDekka to pay ...

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On Friday, January 15, the U.S. Supreme Court granted certiorari in In re Cuozzo Speed ...

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On Monday January 4, the Federal Circuit heard oral arguments in a pair of appeals—Acorda ...

publication

On December 11, 2015 Bill Carroll and Heidi Dare's article "A Closer Look At Ariosa After Fed. Circ. ...

in the media

On September 3, 2015 Brinks was mentioned in the Law360 article, 'Brinks Gilson Adds Womble Carlyle ...

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On August 7, 2015, an Eleventh Circuit panel in Duty Free Americas, Inc. v. The Estee Lauder...

in the media

On August 28, 2015 Brinks Gilson & Lione was mentioned in IPPro. The article notes the addition of ...

publication

On August 12, 2015 Lyle Vander Schaaf and Shen Wang’s article, “Fed. Circ. Breaks Impasse On ITC Authority In ...

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The Federal Circuit recently issued a decision that could be very helpful to trademark applicants. On July 20, 2015, the Federal Circuit vacated and remanded the Trademark Trial and Appeal Board’s (“TTAB”) holding that Juice ...
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On June 16, 2015 the Federal Circuit decided en banc to overturn a panel decision of the Federal Circuit that held the term “module” in the context of a computer software patent did not invoke means-plus-function claiming under 35 U.S.C. ...
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On June 22, 2015, the Supreme Court in Kimble v. Marvel Enterprises, Inc. No. 13-720, applied stare decisis to uphold its 1964 decision in Brulotte v. Thys Co., 379 U.S. 29 (1964), where the Court previously held that a patent holder cannot charge ...
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Today, in Commil USA, LLC v. Cisco Systems, Inc., the Supreme Court overruled the Court of Appeals for the Federal Circuit (CAFC) and held that a defendant’s belief regarding patent validity is not a defense to an induced infringement ...
in the media
On March 23, 2015 Brinks was mentioned in the Law360 article, 'Law360 Reveals Largest IP Boutiques.' Click here to read more.
in the media
Shareholder Danielle Anne Phillip was recently featured in Leading Lawyers Magazine—Women's Edition for 2015 in the article 'Danielle Anne Phillip: Bringing the Rigor of a Scientist to the World of Intellectual Property,' which ...
book

The Twelfth Edition of Patents and the Federal Circuit is now available. ...

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In Teva Pharm. USA, Inc. v. Sandoz, Inc., 574 U.S. __, No. 13-854 (2015), the Supreme Court overturned the Federal Circuit’s long-standing precedent that claim construction is subject to strict de novo review. In a 7-2 decision authored by ...
in the media
Jeffry M. Nichols is quoted in the Law360 article “High Court Claim Construction Ruling Set To Spur New Fights,” on January 20, 2015.  Read the article here.
in the media
Brinks' attorneys, Gary M. Ropski, Kori Anne Bagrowski, James G. DeRouin, James K. Cleland, Jon H. Beaupre and John A. Lingl were mentioned in the Law360 article 'Fed. Circ. Affirms Bosch Car Tester Patent As Invalid,' as counsel for ...
publication
William Carroll and Jeffry Nichols wrote the article, 'Fed. Circ. And USPTO Diverge On Lead Compound Analysis,' for Law360 on July 30, 2014. Click here to read more.
in the media
Brinks was mentioned in the Law360 article, '12 Firms Are The Full IP Package, In-House Counsel Say,' on July 6, 2014. Twelve firms were chosen based on corporate counsel surveyed in the new Intellectual Property Outlook report ...
Press Releases
CHICAGO -- Brinks Gilson & Lione, one of the nation’s largest intellectual property law firms, has announced the 2014 chairpersons of its legal and industry practice groups and geographic task forces. The firm added a new practice group ...
Press Releases
CHICAGO – Brinks Gilson & Lione has added four new attorneys as chairs of its firm-wide practice groups and formed two new task forces to focus on intellectual property legal services to clients in Germany and Brazil. Appointees include ...
Press Releases
CHICAGO – Thirty-eight attorneys from Brinks Gilson & Lione have been named in the 2013 Super Lawyers Illinois Edition, in the categories of Intellectual Property, Intellectual Property Litigation, and Alternate Dispute Resolution ...
Press Releases
CHICAGO – The 2012 Super Lawyers Business Edition has named 24 attorneys from Brinks Gilson & Lione in the categories of Intellectual Property and Intellectual Property – Litigation respectively. The following Brinks attorneys are ...
Press Releases
CHICAGO – Leading Lawyers Network has named 54 attorneys from Brinks Gilson & Lione, one of the largest intellectual property law firms in the United States, as 2012 Leading Lawyers in intellectual property in Illinois for 2012. The roster ...
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On August 31, 2012, the Federal Circuit issued its highly anticipated en banc decision regarding Akamai Technologies, Inc. v. Limelight Networks, Inc., No. 2009-1372, -1380, -1416, -1417 and McKesson Technologies, Inc. v. Epic Systems Inc., No. ...
publication
At the beginning of 2012, Brinks Gilson & Lione welcomed James R. Sobieraj as the firm's new president. Please click here for a personal message from Jim, as well as details on the growth of the firm.
book
Steven L. Oberholtzer penned The Basic Principles of Intellectual Property Law, a primer published by Brinks Gilson & Lione in 2006. Copies available upon request by clicking here.
publication
On June 13, 2005, the United States Supreme Court expanded the safe harbor provision of 35 U.S.C. §271(e)(1) to the “use of patented compounds in preclinical studies … as long as there is a reasonable basis for believing that the ...
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On July 12, the U.S. Court of Appeals for the Federal Circuit issued its much anticipated en banc decision on patent claim construction, Phillips v. AWH Corp., No. 03-1269. The court properly overruled the dictionary-centric approach suggested by ...
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Copyright © 2004 the International Trademark Association and reprinted with permission from The Trademark Reporter®, 94 TMR 1360 (November-December 2004).
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Only federal courts may decide patent cases, but state courts may decide patent issues. Either court system will apply its own or the other’s law or a combination, depending on several factors. Because the correct answer can be unexpected, ...
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OVERVIEW The first federal act specifically relating to the theft of trade secrets was enacted into law on October 10, 1996. The Economic Espionage Act is a combination of two proposed bills. One bill, S 1557, was introduced in Congress to cover ...
Group Chairs
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Chicago, IL
Group Chairs