Lewis Brisbois Bisgaard & Smith LLP
I am is a registered patent attorney and electrical engineer who has represented preeminent technology companies in complex, high-stakes intellectual property litigation and United States and foreign patent and trademark prosecution matters for over 30 years. I am admitted in many federal district courts throughout the country, the U.S. International Trade Commission, the U.S. Court of Appeals for the Federal Circuit, and the United States Patent and Trademark Office.
My experience encompasses a wide variety of technologies, including computer hardware and software; database systems; telecommunications; lighting and LED technologies; computer networks and systems; electronic commerce methods and systems; auction technologies; world wide web systems and protocols; electronic discharge machining (EDM) technologies; computer numeric control systems; semiconductor circuitry and devices, fabrication, and packaging; digital image processing; pharmaceutical handling, counting and dispensing systems; digital cameras; audio-video systems, aviation devices, de-icing systems; refrigeration systems; fastener manufacturing technologies; medical devices; heart mapping systems; diagnostic equipment; automotive control systems and components; machining and packaging systems and a variety of electrical and mechanical art classes.
I have successfully represented clients in complex business litigation concentrating on patent infringement and defending infringement claims, trademark and Lanham Act claims, copyright claims, unfair competition claims, false advertising claims, trade secret claims, and related antitrust and business causes. I have served as counsel in a number of jury and bench trials and has extensive experience in all aspects of Federal Court litigation including preliminary injunctions, summary judgments and appeals.
I counsel clients in transactions involving IP rights worldwide, including providing infringement, validity and freedom-to-practice opinions and managing IP licensing programs in the U.S. and overseas. I regularly represents clients in appeals, inter partes review and other post-grant proceedings before the United States Patent and Trademark Office.
Selected Intellectual Property Matters:
• Successfully navigated settlement and dismissal of all claims in a family of patent infringement suits involving system, method and device patents covering electronic discharge machining technologies leading to a substantial sale of the prolific inventors technology and a desired monetization and exit strategy for the client.
• Intellectual property counsel for Fortune 100 publicly traded, computer, software and systems retailer and solutions provider with locations worldwide.
• Lead plaintiff’s counsel in a patent infringement lawsuit related to cutting-edge lighting devices and methods of use specified and purchased by the world's most secure facilities.
• Counsel to well-known Chinese hardware manufacturing company for patent, trademark, copyright and licensing matters.
• Provided aggressive defense to iconic American guitar manufacture on claims for misappropriation of trademarks, copyrights and confidential information.
• Obtained an exclusion order in a complicated International Trade Commission action involving highly sought after exercise equipment manufacturers.
• Served as lead counsel to national web content publisher and service provider in various trademark and copyright infringement matters including unfair competition claims.
• Prevailed as lead plaintiff’s counsel in multiple patent and trademark infringement disputes in federal district courts throughout the United States relating to fastener manufacturing technologies.
• Obtained favorable settlement in a complicated International Trade Commission action seeking exclusion of the infringing imaging devices for well-known imaging client.
• Obtained and enforced UK manufacturer’s trademarks and copyrights in various federal district courts throughout the United States against infringers selling popular and highly desirable consumer goods.
Areas of Law and Practice
|Areas of Law||Areas of Practice|
|Antitrust and Trade Regulation||Antiboycott Compliance, Antitrust, Antitrust Class Actions, Business Combinations, Competition, Deceptive Trade Practices, International Antitrust, Price-Fixing, Trade Regulation, Unfair Trade|
|Intellectual Property||Artistic Property, Brand Management, Chemical Intellectual Property, Electrical Intellectual Property, Electronic Intellectual Property, Industrial Models and Designs, Industrial Property, Industrial Property Rights, Intellectual Property Arbitration, Intellectual Property Enforcement, Intellectual Property Infringement, Intellectual Property Licensing, Intellectual Property Litigation, Intellectual Property Portfolio Management, Intellectual Property Procurement, Intellectual Property Prosecution, Intellectual Property Rights, International Intellectual Property, International Licensing, Internet Intellectual Property, Literary Property, Mechanical Intellectual Property, Medical Intellectual Property, Merchandising, New Media Law, Pharmaceutical Intellectual Property, Piracy, Proprietary Rights, Protection of Personality|
|Internet Law||Content Licensing, Cybersquatting, Digital Signatures, Domain Name Infringement, Domain Names, E-Commerce, E-Commerce Taxation, Electronic Security, Internet Crimes, Internet Insurance, Internet Liability, Internet Licensing, Internet Litigation, Web Site Development|
|Litigation||Civil Litigation, Complex Litigation, E-Discovery, Federal Civil Litigation, Federal Litigation|
|Patents||Biochemical Patents, Biotechnology Patent Prosecution, Biotechnology Patents, Business Method Patents, Chemical Patent Prosecution, Chemical Patents, Computer and Software Patents, Computer Architecture Patents, Design Patents, Electrical Patent Prosecution, Electrical Patents, Electro-Mechanical Patents, Electronic Patents, International Patent Prosecution, International Patents, Internet Patents, Mechanical Patent Prosecution, Mechanical Patents, Medical Patents, Metallurgical Patents, Molecular Biology Patents, Patent Applications, Patent Infringement, Patent Interference Practice, Patent Licensing, Patent Litigation, Patent Portfolio Management, Patent Prosecution, Patent Protection, Pharmaceutical Patent Prosecution, Pharmaceutical Patents|
|Trademarks||Counterfeiting, International Trademarks, Internet Trademarks, Lanham Act, Service Marks, Trade Dress, Trade Names, Trademark Arbitration, Trademark Infringement, Trademark Licensing, Trademark Litigation, Trademark Prosecution, Trademark Protection, Trademark Registration|
- Illinois, Wisconsin
Vice President and Shareholder | Jansson Munger McKinley & Shape Ltd.
2008 - 2015
All aspects of intellectual property law including patens, trademarks, copyrights, trade secrets, antitrust. My practice includes litigation matters, prosecution matters, opinions and related licensing and agreement matters.
Managing Partner, President | Steven M. Shape & Associates
1994 - 2008
Vice President and Shareholder | Niro Scavone Haller & Niro Ltd.
1984 - 1994
Juris Doctorate | Depaul University - College of Law
1979 - 1982
Certificate of Study - Law | Cambridge University - Cambridge, England
1981 - 1982
B.S. Electrical Engineering | University of Illinois - Champaign - Urbana, IL
1975 - 1979
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Chicago, Illinois, Cook County
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