2 The Law Offices of Roy E. Hofer | Chicago Intellectual Property Litigator

 

Education

  • J.D., Georgetown University Law Center, 1961.
  • B.S., Chemical Engineering, Purdue University, 1957.

Admissions

  • Supreme Court of the United States
  • Illinois Supreme Court
  • Numerous United States Circuit Courts of Appeal
  • U.S. District Court, Northern District, Illinois, Trial Bar
  • U.S. Patent & Trademark Office

Roy E. Hofer Professional Accomplishments

Honors and Accolades

Best Lawyers in America
  • Litigation -- Intellectual Property Lawyer of the Year, Chicago, 2014
  • Patent Lawyer of the Year, Chicago, 2012.
  • Intellectual Property Lawyer of the Year, Chicago, 2011.
  • Listed annually among Best Lawyers in America since 1991.
Chambers USA: America’s Leading Lawyers for Business
  • Listed annually among Leading Illinois Intellectual Property Lawyers since 2004.
Illinois Super Lawyers
  • Listed annually among top Alternative Dispute Resolution practitioners since 2008.
  • Intellectual Property Litigation, 2005 through 2007.
Additional Accolades
  • Who’s Who in America, 1994 to Present.
  • Who’s Who in American Law, 1986 to Present.
  • Center for Public Resources’ Intellectual Property Panel of Distinguished Neutrals, 1988 to 1996.
  • Father Lucey Award (first in graduating class), Georgetown University.
  • Board of Editors, Law Journal Georgetown University.
  • Tau Beta Pi, Purdue University.
  • Phi Eta Signma, Purdue University.
  • Omega Chi Epsilon, Purdue University.
  • Gimlet Club, Purdue University.

Civic and Community Leadership

Union League Club of Chicago
  • Member since 1966.
  • Board of Directors, 1982 to 1986.
  • Athletic Department Committee Chairman, 1979 to 1981, and 1982 to 1984.
    House Committee Chairman, 1984 to 1986.
Chicago Lung Association
  • Board of Directors, 1982 to 1983.
Center for Conflict Resolution
  • Board of Directors, 1983 to 1988, 1990 to 1991, and 1997 to 1999.
  • President, 1991 to 1997.
Union League Boys and Girls Clubs
  • Board of Trustees, 1984 to 1994.
Beta Phi Foundation (Pi Kappa Alpha Fraternity at Purdue University)
  • Board of Directors, 2001 to 2011.
Burr Ridge Club Trust (Homeowners of Burr Ridge Club, Burr Ridge, Ill.)
  • Board of Trustees, 2002 to 2008.
Crohn’s & Colitis Foundation of America, Illinois Carol Fisher Chapter
  • Board of Trustees, 2003 to 2007.
Illinois Attorney Registration and Disciplinary Commission
  • Oversight Committee, 2009 to Present.
  • Client Protection Review Panel, 2009 to Present; Chairman, 2013 to Present.
Judicial Performance Commission of Cook County
  • Commission Member, 2010.
Additional Appointments and Service
  • Member by appointment of the Chief Judge of the Northern District, Advisory Group of the Civil Justice Reform Act of 1990 for the Northern District of Illinois, 1991 to 1994.
  • Independent Committee to Inquire into the Practices, Processes and Proceedings in the Juvenile Court as they Relate to the Joseph Wallace Cases: This three-person Committee was appointed by Harry G. Comerford, Chief Judge of the Circuit Court of Cook County, on April 26, 1993, and submitted its report to the Chief Judge on October 1, 1993.
  • Citizens Committee on The Juvenile Court of Cook County (appointed by Chief Judge of the Circuit Court of Cook County), Chairman, 1994 to 1995.
  • Member by appointment of the Chief Judge of the Northern District, Merit Selection Panel for magistrate judges for the Northern District of Illinois, 1996 to 1998.

Memberships and Affiliations

Chicago Bar Association
  • Member since 1961.
  • President, 1988 to 1989.
  • First Vice President, 1987 to 1988.
  • Second Vice President, 1986 to 1987.
  • Board of Managers, 1989 to 1990.
  • Chicago Bar Foundation Life Fellow.
  • Circuit Court Liaison Committee, 1993 to 1994.
  • CBA Record Board of Editors, 1986 to 1988.
  • Judicial Appointive System Drafting Committee Chairman, 1986.
  • Nominating Committee, 1982; Chairman, 1991.
  • Long Range Planning Committee, 1982 to 1984; Vice Chairman, 1982 to 1983.
  • Committee on Committees, 1981 to 1986.
  • Membership Committee, 1983 to 1986.
  • Association Meetings Committee, 1978, 1981 to 1986; Vice Chairman, 1984 to 1985; Chairman, 1985 to 1986.
  • Federal Civil Procedure Committee, 1977 to 1978.
  • Environmental Law Committee, 1971 to 1978; Chairman, 1975 to 1976.
  • Science, Technology and the Law Committee, 1968 to 1971.
  • Patents, Trademarks & Copyrights Committee, 1966 to 1968.
  • Defense of Prisoners Committee, 1961 to 1966 (handled 20 to 30 felony cases, including capital cases, at the trial level and several appeals).
Illinois Institute for Continuing Legal Education
  • Board of Directors, 1986 to 1988.
American Bar Association
  • Member since 1962.
  • Litigation Section Member since 1974; Division Director, 1982 to 1987; Task Force on Judicial Delay in Decision-Making in Civil Cases in the Federal Courts, Chairman, 1981 to 1984; Intellectual Properties Litigation Committee, Chairman, 1979 to 1982.
  • Patent, Trademark & Copyright Section Member since 1964; Special Committee on Publications, Projects, Chairman, 1979 to 1982; Small Business Committee, Chairman, 1978 to 1979; Membership Committee, Chairman, 1977 to 1978.
Intellectual Property Law Association of Chicago
  • Member since 1961.
  • Board of Managers, 1974 to 1976.
American Intellectual Property Law Association (AIPLA)
  • Member since 1970.
  • Alternative Dispute Resolution Committee, Chairman, 1990 to 1993.
Illinois State Bar Association
  • Member, 1961 to 1992, 2012 to Present.
Federal Circuit Bar Association
  • Member since 1983.
  • President, 1993 to 1994.
  • President-Elect, 1992 to 1993.
  • Board of Governors, 1989 to 1992, and 1994 to 1995.
Academy of Court-Appointed Masters
  • Member, 2013 to Present.
National Futures Association
  • Arbitrator, 2011 to Present.
Additional Memberships
  • Bar Association for the Seventh Judicial Circuit.
  • Chicago American Inn of Court, 1996 to Present.
  • Richard Linn American Inn of Court, 2007 to Present.
  • Lawyers Club of Chicago, 1976 to Present.

Representative Litigation Matters

Exemplary Trials
  • Viskase Corporation v. American National Can Company, 888 F. Supp. 899 (N.D. Ill. 1995); 947 F.Supp. 1200 (N.D. Ill. 1996); 979 F.Supp. 697, 45 U.S.P.Q. 2d 1675 (N.D. Ill. 1997); 18 F. Supp. 2d 873 (N.D. Ill. 1998).
  • Richardson-Vicks, Inc. v. The Upjohn Company, et al., No. 93-556-SLR (D. Del. 1996 U.S. Dist. Lexis 702).
  • W.R. Grace v. Viskase Corporation, 21 U.S.P.Q. 2d 1114, 1121 (N.D. Ill. 1991) and Viskase Corporation v. W.R. Grace, No. 90 C 7515 (N.D. Ill. 1992 U.S. Dist. Lexis 619).
  • Aluminum Company of America v. Reynolds Metals Company, 14 U.S.P.Q. 2d 1170 (N.D. Ill. 1989)
  • Lear Siegler, Inc. v. Sealy Mattress Co., et al., (84 CV 5319DT) (E.D. Mich.).
  • Shiley, Inc. v. Bentley Laboratories, Inc., 227 U.S.P.Q. 253 (C.D. Ca. 1985); 115 F.R.D. 169, 2 U.S.P.Q. 2d 1230 (C.D. Cal. 1987).
  • Medtronic, Inc. v. Intermedics, Inc., G-80-295, (S.D. Texas).
  • Novo Industri A/S v. Travenol Laboratories Inc., 211 U.S.P.Q. 371, 378, 379 (N.D. Ill. 1981).
  • Goldberg v. Medtronic, Inc., 209 U.S.P.Q. 259 (N.D. Ill. 1980) and 212 U.S.P.Q. 439 (N.D. Ill. 1981). [Defendant's motion for summary judgment denied, 203 U.S.P.Q. 233 (N.D. Ill. 1978)].
  • Ecodyne Corp. v. Levendusky, C-3843-71 (Super. Ct., Chancery Div., Union County, New Jersey)
  • From 1962-1966, in the Circuit Court of Cook County, Illinois, handled about 20-30 felony criminal cases for indigent prisoners by court appointment. Approximately five of these cases were tried to juries (one not guilty). Subjects: Capital murder, rape, robbery, burglary and sale and possession of narcotics.
Exemplary Appellate Arguments
  • Viskase Corporation v. American National Can Company (ANC), 261 F.3d 1316 (Fed. Cir. 2001).
  • Richardson-Vicks, Inc. v. The Upjohn Company, et al., 122 F. 3d 1476, 44 U.S.P.Q.2d 1181 (Fed. Cir. 1997).
  • Haworth, Inc. v. Steelcase, Inc., 19 F.3d 39 (Fed. Cir. 1994).
  • Jodee Plastics, Inc. d/b/a Patrician Products v. Tri-Seal International, Inc., 19 F. 3d 40 (Fed. Cir. 1994).
  • Haworth, Inc. v. Steelcase Inc. v. Herman Miller, Inc., 12 F. 3d 1090, 29 U.S.P.Q. 2d 1368 (Fed. Cir. 1993).
  • Haworth, Inc. v. Herman Miller, Inc. v. Allsteel, Inc.,998 F. 2d 975, 27 U.S.P.Q. 2d 1469 (Fed. Cir. 1993).
  • Lear Siegler, Inc. v. Sealy Mattress Co., et al., 873 F. 2d 1422, 10 U.S.P.Q. 2d 1767 (Fed. Cir. 1989).
  • Lear Siegler, Inc. v. Sealy Mattress Co., et al., 846 F. 2d 78 (Fed. Cir. 1988).
  • Medtronic, Inc. v. Intermedics Inc., 799 F. 2d 734, 230 U.S.P.Q. 641 (Fed. Cir. 1986), cert. denied, 107 Ct. 882 (1987).
  • Shiley, Inc. v. Bentley Laboratories, Inc., 782 F. 2d 992, 228 U.S.P.Q. 543 (Fed. Cir. 1986); 794 F. 2d 1561, 230 U.S.P.Q. 112 (Fed. Cir. 1986), cert. denied, 107 S. Ct. 1291 (1987).
  • Goldberg v. Medtronic, Inc., 686 F. 2d 1219, 216 U.S.P.Q. 89 (7th Cir. 1982), affirming 209 U.S.P.Q. 259 (N.D. Ill. 1980) and 212 U.S.P.Q. 439 (N.D. Ill. 1981).
  • Novo Industri A/S v. Travenol Laboratories, Inc., 677 F. 2d 1202, 215 U.S.P.Q. 412 (7th Cir. 1982), affirming 211 U.S.P.Q. 371, 378, 379 (N.D. Ill. 1981).
  • Goldberg v. Medtronic, Inc., 654 F. 2d 727 (7th Cir. 1981).
  • Novo Terapeutisk Laboratorium A/S v. Baxter Travenol Laboratories Inc., 607 F. 2d 186, 201 U.S.P.Q. 642, 206 U.S.P.Q. 769, (7th Cir. 1979), affirming en banc 200 U.S.P.Q. 495 (N.D. Ill. 1977).
  • Goldberg v. Cordis Corp., 567 F. 2d 392 (7th Cir. 1977).
  • Environmental Protection Agency. v Illinois Pollution Control Board, 69 Ill. 2d 394, 372 N.E.2d 50 (S. Ct. 1977).
  • Caterpillar Tractor Co. v. Illinois Pollution Control Board, 48 Ill.App. 3d 655, 363 N.E. 2d 419 (1977).
  • People v. Wade, 62 Ill.App. 2d 481 (1965).
  • People v. Ervine, 64 Ill.App. 2d 82 (1965).
  • McCartney v. United States, 311 F. 2d 475 (7th Cir. 1963).
Experience as ADR Facilitator and Hearing Officer
  • 2014: Mediator in Hemopet v. Hills Pet Nutrition (Case No. Sacv12-1908) in Central District of California, a patent infringement dispute involving four patents relating to systems and methods for using genomic data to determine the effects of nutrition on the genes and physiology of dogs and cats and formulating a diet for them by analyzing the effects.
  • 2014: Mediatior in Everlight Electronics Co, Ltd., et al. v. Nichia Corporation, et al. (Case No. 4:12-cy-11758) in Eastern District of Michigan, a patent infringement dispute involving patents relating to light emitting diodes made from semiconductor chips and phosphors.
  • 2013: Mediator in Creative Integrated Systems, Inc. v. Nintendo of America, Nintendo Co., Ltd., and Macronix International Co., Ltd. (Case No. 2:10-CV-2735) in the Central District of California, a patent infringement dispute involving a read only memory (ROM) chip for game systems.
  • 2012: Member of three-arbitrator AAA panel in Jeremy Clark v. Dr. Raymond F. Schinazi, Gilead Sciences, Inc., et al. (Case No. 30 160 141 12) in Atlanta, Georgia relating to the ownership of certain IP rights in compositions and methods for treating hepatitis C and various employee/employer issues.
  • 2011: Mediator in Aerielle Technologies, Inc. v. Belkin International, Inc., Best Buy Co., Inc., Bestbuy.com, LLC, Best Buy Stores, L.P. and RadioShack Corp. (Case No. C10-01301) in the Northern District of California, a patent infringement dispute involving two patents relating to FM transmitters.
  • 2011: Mediator in Move, Inc., et al. v. National Ass'n of Realtors, National Ass'n of Home Builders, and Real Estate Alliance Ltd. (Case No. 07-02185) in the Central District of California, a patent infringement dispute involving two patents relating to methods of locating real estate properties for sale, lease, or rental.
  • 2011: Court-appointed Special Master in Bergstrom, Inc. v. Glacier Bay, Inc. (Case Nos. 08 C 50078, 09 C 50191) in the Northern District of Illinois, to prepare a report and recommendation about the claim construction of the twenty-nine disputed claim terms in the four patents-in-suit, which relate to heating, ventilation and air conditioning systems for long-haul trucks or tractor-trailers.
  • 2010: Mediator in Bayer CropScience LP v. Tessenderlo Kerley, Inc. and Phoenix Environmental Care, LLC (Case No. 1:09-CV-833) in the Middle District of North Carolina, a patent/trademark/copyright infringement dispute involving fungicidal products. During a 13-hour mediation session, a series of proposals and counterproposals were exchanged, a process that continued on a daily basis thereafter until the case was settled about ten days later.
  • 2010: Mediator in Tekelec v. Performance Technologies, Inc. (Case No. 5:09-CV-00531-BO) in the Eastern District of North Carolina, a patent infringement dispute involving five patents relating to certain aspects of telecommunication networks.
  • 2008: Mediator in Diomed, Inc. v. Total Vein Solutions, LLC, David S. Centanni and Tyrell L. Schiek (Case No. 04-CV-10686), in the District of Massachusetts, a patent infringement dispute involving a method for treating varicose veins. During the mediation, the parties and Mr. Hofer concluded that a non-attending third-party was needed to settle the dispute.
  • 2008: Mediator in Board of Regents of the University of Nebraska and Monsanto Company v. BASF Corp. and Syngenta Crop Protection, Inc. (Case No. 4:04-CV-03356), in the District of Nebraska, an ownership/license dispute over patent rights involving dicambra tolerant crops. The case was not settled during the first mediation because Monsanto and BASF had other matters in dispute not involved in this litigation that they wanted to resolve for a global settlement. In due course those matters were settled and after a second mediation the entire case was settled.
  • 2007: Special Discovery Master in Akamai Technologies, Inc. and Massachusetts Institute of Technology v. Limelight Networks, Inc. (Case No. 06-CV-11109 RWZ), in the District of Massachusetts, a patent infringement dispute involving content delivery networks for internet distribution of video, music, games and downloads.
  • 2007: Mediator in Ford Motor Company v. AMP Research (Case No. 2:06-cv-13316), in the Eastern District of Michigan, and a related case, SA CV06-993 DOC (MLGX) in Central District of California, a patent infringement dispute involving bed extenders for pickup trucks. During the mediation, the parties and Mr. Hofer concluded that a non-attending third-party was needed to settle the dispute.
  • 2006: Mediator in Precor Inc. v. Fitness Quest, Inc. (Case No. C05-0993L), a patent infringement case in the Western District of Washington involving a stationary, elliptical exercise device. During the mediation, the parties and Mr. Hofer concluded that a non-attending third-party was needed to settle the dispute.
  • 2006: Mediator in Molon Motor and Coil Corp. v. Merkle-Korff Industries, Inc. (Case No. 04 C 5134), a patent infringement case in the Northern District of Illinois involving a motor for an in-door ice machine in a refrigerator. The case was settled during the mediation.
  • 2006: Sole arbitrator in a patent infringement dispute involving a hand tool.
  • 2005-2006: Chair of three-arbitrator panel in a dispute conducted under CPR rules between two Fortune 100 companies involving a patent license about DSL technology.
  • 2004: Mediator in three cases between Fresnel Technologies, Inc. and Rokonet Electronics, Ltd. (and its U.S. subsidiary): Two patent infringement cases involving lens for motion detectors for security systems, one pending in the Federal Circuit and the other pending in the Northern District of Texas; and an unfair competition case pending in the Eastern District of New York. These cases were settled during the mediation.
  • 2004-07: Chair of three-arbitrator panel in pending patent infringement/license dispute conducted under the auspices of AAA involving software to manage and monitor a computer network system.
  • 2003: On-going neutral evaluator of defendant's new pharmaceutical products for infringement of patents in plaintiffs' portfolio before market release (this procedure created as part of the parties' settlement of patent litigation).
  • 2002: Mediator in Chou v. University of Chicago (Case No. 99 C 4495), a patent infringement case in the Northern District of Illinois. The case was settled during the mediation.
  • 2002: Early neutral evaluator on certain aspects of a patent infringement case between Fortune 50 and Fortune 500 companies involving medical devices.
  • 2001: Early neutral evaluator and settlement mediator in A.W. Chesterton Co. v. Durametallic Corp. (Case No. 95-11565), a patent infringement case in the District of Massachusetts.
  • 2001: Early neutral evaluator and settlement mediator in H.P. Intellectual Corp. v. Toastmaster, Inc. (Case No. 3:00 CV 70 (RNC), a patent infringement case in the U.S. District Court in Connecticut. One defendant settled during the mediation.
  • 2001: Mediator in Amsted Industries, Inc. v. ABC-NACO Inc. (Case No. 00 C 7119), a patent infringement case in the U.S. District Court in Chicago, Illinois.
  • 2001: Sole arbitrator in binding arbitration of an inventorship dispute involving a Fortune 50 company.
  • 2000: Judge's "expert assistant" for claim interpretation issues and summary judgment motions in HK Systems, Inc. v. Mannesmann Dematic Rapistan Corp. (Case No. 96-C-381), a patent infringement case in the U.S. District Court in Milwaukee, Wisconsin.
  • 1997-1998: Early neutral evaluator and settlement mediator in Gas Sweetener Associates, Inc. v. Connolly-GPM Inc. (Case No. 96 C 7018), a patent infringement case in the U.S. District Court in Chicago, Illinois. The mediation lead to a subsequent settlement.
  • 1994-1996: Settlement mediator and special master for discovery disputes in Cistron Corp. v. Immunex Corp., a trade secret/patent case in the U.S. District Court in Seattle, Washington.
  • 1993: Sole arbitrator in binding baseball-type arbitration over damages for patent infringement.
  • 1991: Sole arbitrator in binding arbitration on the infringement issue in patent infringement dispute between two Fortune 500 companies.
  • 1970's: Served as the hearing officer in at least three cases pending before the Illinois Pollution Control Board.

Publications and News

Published Articles
  • “Supreme Court Reversal Rates for Federal Circuit Cases,” Landslide, March/April 2014.
  • “Lawyer Advertising–Bates Revisited,” Experience (ABA Senior Lawyers Division), Volume 20, Number 1, 2010.
  • "Supreme Court Reversal Rates: Evaluating the Federal Courts of Appeals," Landslide, January/February 2010.
  • “Another Sordid Congressional Story,” Experience (ABA Senior Lawyers Division), Volume 19, Number 2, 2009.
  • “The Real Problem: Partisan Judicial Elections,” Chicago Daily Law Bulletin, September 4, 2009.
  • "Lawmakers Can Do a Better Job,” Chicago Tribune Commentary, June 25, 2009.
  • “Reflections on the Legal Profession,” Experience (ABA Senior Lawyers Division), Volume 18, Number 2, 2008.
  • “A Judge-To-Be ‘Beat Our Flawed Selection System,” Chicago Tribune Perspective, October 5, 2008.
  • “Free Speech Trumps Judicial Independence,” Chicago Daily Law Bulletin, October 31, 2007.
  • "Should You Patent Your Idea?" Legal Aspects of Medical Practice, April 1980.
  • "Experts in Patent Cases," Litigation (Journal of Section of Litigation ABA), Winter 1982.
  • "Business Warfare Over Trade Secrets," Litigation, Summer 1983.
  • "The CAFC and Fact/Law Questions in Patent Cases: The Jury's Role Burgeons!" AIPLA Quarterly Journal, Vol. 12, No. 4, 1984.
  • "Anatomy of a Misappropriation: Edward M. Goldberg, M.D. v. Medtronic, Inc.," IDEA, Vol. 26, No. 3, 1985.
  • "Trade Secrets: Protection and Remedies," The Bureau of National Affairs, Washington, D.C., 1985, 1987, a monograph in the Corporate Practice Series.
  • "The Real World of Juries, Damages and Injunctions in Patent Cases," Albany Law Review, Vol. 50, No. 3, Spring 1986.
  • "Our Patent System: Catalyst for Technology," CBA Record, February 1987.
  • "Creating a Better Mouse: Is it a Trap?" CBA Record, January 1989.
  • "Use of Patent Experts in Patent Cases," AIPLA Twelfth Annual Institute, The Art of Litigation Advocacy, 1989.
  • "The Obviousness Issue: The Jury Takes Over!" Journal of The Patent and Trademark Office Society, Vol. 71, No. 2, February 1989.
  • The chapter "Experts in Patent Cases," Expert Witnesses, American Bar Association, Chicago, IL, 1991.
  • "Covenants Not to License: Patent Misuse and Antitrust Considerations," The Journal of Proprietary Rights, Vol. 8, No. 10, October 1996.
  • "Covenants Not to License: Patent Misuse and Antitrust Considerations," The Antitrust Counselor, Issue No. 23, November 1996.
  • The chapter "Patent Defenses," Patent Litigation Strategies Handbook, American Bar Association, Chicago, IL, 2000.
Presentations
  • “Alternative Dispute Resolution," Practicing Law Institute, Patent Litigation, Chicago, 2014.
  • “Reflections on The Legal Profession," The Chicago Bar Association 50 Year Member Luncheon, October 3, 2012.
  • "Intellectual Property," Practising Law Institute "Legal Problems of Marketing and Distribution," Chicago and Los Angeles, 1973.
  • "The Use of an Expert At Trial-A Demonstration," ABA Annual Meeting, Chicago, 1977.
  • "Observations on Trying Patent, Trade Secret and Trademark Cases-Bench and Jury Trials," ABA Annual Meeting, New York, 1978.
  • "Sorting Out the Ownership Rights in Intellectual Property: A Guide to Practical Counseling and Legal Representation," ABA Annual Meeting, Honolulu, 1980.
  • "Jury Selection-Who Will Not Sit in the Jury Box," AIPLA Institute on Patent Jury Litigation, Miami 1981; PLI "Patent Litigation," New York, 1983.
  • "Use of Experts in Patent Infringement Cases," ABA Annual Meeting, San Francisco, 1982.
  • "Use of Expert Witnesses in Patent Litigation–Demonstrations," ABA Section of Litigation Fall Annual Meeting, Chicago, 1982.
  • "Litigation & Trade Secret Theft as Elements of Business Warfare," PLI "Trade Secrets," New York, 1983.
  • "The Selection And Empanelling of The Jury," PLI Patent Litigation, New York, 1983.
  • "Jury Trials and the CAFC: Some Critical Insights into Special Problems in Patent Jury Cases and Their Appellate Future," 100 F.R.D. 653 (Judicial Conference of U.S. Court of Appeals For The Federal Circuit, Washington, D.C., 1983.
  • "Damages in Patent Infringement Cases," ABA Annual Meeting, Chicago, 1984.
  • Faculty member, ABA Patent Trial Advocacy Institute, Washington, D.C., 1984.
  • "Presenting the Trade Secret Owner's Case," Praticising Law Institute, Trade Secrets, New York, 1985.
  • "Some Significant Changes in the U.S. Patent Laws Made by the New Court of Appeals for the Federal Circuit," Society of Danish Industrial Property Executives, Copenhagen, Denmark, 1985.
  • "Use of Jury Trials, Damages and Injunctive Relief," Information, Engineering, Science and the Law of Intellectual Property, Albany, New York, 1986.
  • "A Trial Demonstration: The Patent Owner's Damages Case," ABA Annual Meeting, New York, 1986.
  • "Jury Selection in a Patent Case: Who Will Sit in the Jury Box," ABA Annual Meeting, San Francisco, 1987.
  • "Preparing for Trade Secret Litigation," ABA Annual Meeting, San Francisco, 1987.
  • "New Trends in the Patent, Trademark and Trade Secret Areas," 26th Annual Corporate Counsel Institute, Northwestern School of Law, Chicago, 1987.
  • "The Obviousness Issue: The Jury Takes Over," John Marshall Law School Center of Intellectual Property Law Annual Symposium, Chicago, 1988.
  • Accused Infringer's Counsel, Mock Patent Jury Trial, AIPLA Mid-Winter Meeting, Marco Island, Florida, 1989.
  • Impact of the Federal Circuit, "The Patent System," (moderator, panel discussion), Federal Circuit Bar Association, Chicago, 1990.
  • Appellant's Counsel, Mock Oral Argument Before Panel of Federal Circuit Judges, AIPLA 1990 Annual Meeting, Washington, D.C., 1990.
  • "The Art of Taking and Defending Depositions," National Council of Intellectual Property Law Associations, Akron, Ohio, 1991.
  • "Jury Trials and Mock Jury Trials," Practising Law Institute, Patent Litigation, Chicago, 1991, 1992, 1993, 1994, 1995.
  • "Preliminary Injunctions in Patent Infringement Cases," John Marshall Law School Center of Intellectual Property Law, Chicago, 1992.
  • Appellant's Counsel, Mock Oral Argument Before Panel of Federal Circuit Judges, Federal Circuit Bar Association Annual Meeting, Washington, D.C., 1992.
  • "Have the Objectives for Creating the Court of Appeals for the Federal Circuit been Accomplished Insofar as Patent Law is Concerned?" (moderator, panel discussion), Judicial Conference of Court of Appeals for the Federal Circuit, Washington, D.C., 1992.
  • "The Best Mode Defense After the Federal Circuit's First Decade," ALI/ABA Course on Patent Law and Litigation, Washington, D.C., 1992.
  • "Alternative Dispute Resolution Gets an Impetus from the Federal Government and the Federal Courts," AIPLA Mid-Winter Meeting, Marco Island, Florida, 1993.
  • "Recent Developments in Patent Law," ABA IP Section Summer Conference, Colorado Springs, Colorado, 1995.
  • "Patent Misuse," Practising Law Institute, Intellectual Property Antitrust, Chicago, 1995, 1996.
  • "Best Mode," National Council of Intellectual Property Law Associations, Akron, Ohio, 1995.
  • "Tactical and Practical Considerations for Jury Instructions in a Patent Case," American Conference Institute, Chicago, 1996.
  • "Ethical Considerations in the Examination of a Witness," Advanced Intellectual Property Litigation Techniques, ABA Section of IP Law, Washington, D.C., 1996.
  • "When Should Your Client Seriously Consider Mediation and/or Binding Arbitration or a Mini-Trial to Settle Intellectual Property and Other Complex Disputes?" Alternative Dispute Resolution and Patent, Copyright and Trademark Committees of the Chicago Bar Association and the John Marshall Law School, Chicago, 1996.
  • "Patent Misuse and Antitrust Defenses, Dead or Alive? What Does it Take to be Successful Under Walker Process and Handgards?" National Council of Intellectual Property Law Associations, Akron, Ohio, 1996.
  • Plaintiff's Counsel, Mock Opening Statement in Patent Infringement Case, Practising Law Institute, Patent Litigation, Chicago, 1996.
  • 41st Annual Conference on Developments in Intellectual Property Law (moderator), The John Marshall Law School, February 1997.
  • "The Practical Effects of Markman v. Westview Instruments, Inc. on Discovery, Trial, and Appeal in Patent Cases" (moderator, panel discussion), Chicago Regional Conference of The Federal Circuit Bar Association & The Intellectual Property Law Association of Chicago, Chicago, 1997.
  • "Federal Circuits Standard of Review" (moderator, panel discussion) Chicago Regional Conference of The Federal Circuit Bar Association & The Intellectual Property Law Association of Chicago, Chicago, 1997.
  • "A New Day for Patent Cases: The Impact of Markman and Potential Impact of Hilton-Davis," Panelist, Chicago Chapter of The Federal Bar Association, Chicago, 1997.
  • "Patent Infringement and Jury Trial Issues in the Wake of Warner-Jenkinson and Markman Decisions," Panelist, Intellectual Property Owners Annual Meeting, Washington, D.C., 1997.
  • "Maximizing Patent Infringement Damages," "New Developments in Patent Law," Chicago Bar Association/Intellectual Property Law Association of Chicago, Chicago, 1997.
  • "How to Conduct Markman Hearings," Moderator, Panel Discussion, "New Developments in Patent Law," Chicago Bar Association/Intellectual Property Law Association of Chicago, Chicago, 1997.
  • Plaintiff's Counsel, Mock Opening Statement in Patent Infringement Case, Practising Law Institute, Patent Litigation, Atlanta, 1997.
  • "Intellectual Property Litigation Perspectives and Expectations: Does Trying an IP Case Have to be so Trying?" Panelist, 42nd Annual Conference on Developments in Intellectual Property Law, The John Marshall Law School, Chicago, 1998.
  • "Patent Misuse," Practising Law Institute, Patent Litigation, Atlanta, 1998.
  • "Pfaff v. Wells Electronics, Inc.: Reduction to Practice as a Prerequisite to the On-Sale Bar," Intellectual Property Law Practice Legal Conference, Akron, Ohio, 1998.
  • "The Willfulness Issue, Including Bifurcation Motion Practice," Practising Law Institute, Patent Litigation, Atlanta, 1999.
  • "Markman Hearings: Substantive and Procedural Treatment by the U.S. District Courts, Panelist, DePaul Law School, Chicago, 2001.
Book Reviews
  • "How Courts Govern America," by Richard Neely, Litigation, Spring 1984.
  • "Civil Rights: Rhetoric or Reality?" by Thomas Sowell, University of Detroit Law Review, Vol. 62, No. 1, Fall 1984.
  • "Judgment in Berlin," by Herbert J. Stern, Litigation, Spring 1985.
  • "Why Courts Don't Work," by Richard Neely, Litigation, Spring 1986.
  • "The Federal Courts," by Richard A. Posner, CBA Record, February 1987.
  • "Defendant: A Psychiatrist on Trial for Medical Malpractice," by Sara C. Charles and Eugene Kennedy, CBA Record, June 1987.
  • "Storm Center-The Supreme Court in American Politics," by David M. O'Brien, Howard Law Journal, Vol. 32, No. 1, 1989.