Represented Neapco Drivelines and Neapco Holdings against American Axle in a Federal Circuit appeal defending a win on summary judgment of patent invalidity. The case was closely followed by the bar association and media, and Law360 deemed it to be one of the “Biggest Patent Rulings of 2019.” Our team led the briefing and argued the case, securing affirmance of key aspects of the lower court’s judgment. Honigman continued to defend the judgment in opposing a petition for certiorari to the Supreme Court of the United States, which was denied in favor of Honigman’s client.
Represented KUB Technologies, Inc. in an ITC investigation against an overseas cabinet x-ray maker that was infringing our client’s patent. The client is a leading manufacturer of x-ray and optical camera technology for use in hospitals and for treatment of cancer. We obtained a consent order and total victory for our client.
Represented Breeze Smoke, maker of disposable vapes, and won an important preliminary injunction victory in the U.S. District Court for the Western District of Michigan, which held that the “unlawful use” doctrine does not prevent Breeze Smoke from enjoining the distributor and vape shop defendants from selling vape products that infringe Breeze Smoke’s well-known BREEZE marks. Successfully settled the matter for our client.
Representing General Motors and Tesla in patent infringement lawsuits by Neo Wireless regarding LTE-related technology. The cases were consolidated in an MDL in the Eastern District of Michigan.
bkrueger@honigman.com
Team—Relationship Contacts
Krueger
Group Co-Leader
Contact, Relationship Billing Partner
bkrueger@honigman.com
616.649.1970
National Reach
Sarah Waidelich
Secondary Contact Primary Supervising Partner swaidelich@honigman.com T 734.418.4242
Attorney Biographies
Partner
312.701.9348
dabdelnour@honigman.com
Areas of focus
Intellectual Property Litigation
Intellectual Property
Dennis is a lead trial lawyer specializing in patent and other intellectual property disputes. He has litigated in patent-heavy forums across the country, including in the District of Delaware, the Eastern and Western Districts of Texas, the International Trade Commission, the Northern District of Illinois, the Eastern District of Michigan, the Middle District of Florida and the Central District of California, among others. He has defended and challenged patents as lead counsel in IPR litigation proceedings before the Patent Trial and Appeal Board at the U.S. Patent & Trademark Office.
Dennis appears frequently in appeals at the Court of Appeals for the Federal Circuit. He argued and won a patent appeal at the Federal Circuit that was deemed “one of the “Biggest Patent Rulings of 2019” and one of “5 Patent Cases To Watch In The Second Half of 2021” by Law360
Dennis maintains an active pro bono docket. He recently argued a pro bono appeal before the Seventh Circuit Court of Appeals. He also obtained a favorable settlement for a pro bono client in a prisoner litigation, which he led as part of his Trial Bar responsibilities in the Northern District of Illinois. In that case, Dennis first-chaired a preliminary injunction hearing, winning his client a rare mandatory injunction for badly-needed medical care.
In addition to, and as part of his litigation work, Dennis also counsels clients on all aspects of intellectual property protection, enforcement, and defense.
Before Honigman, Dennis was a litigator at Kirkland & Ellis, and before that clerked for the Honorable Timothy B. Dyk at the Federal Circuit. Dennis is a former patent examiner at the USPTO.
Representative Matters
Patent Litigation (District Court)
Route Guidance Systems v. OnStar, LLC, No. 1-20-cv-00222 (D. Del.)
American Axle & Manufacturing, Inc. v. Neapco Holdings, LLC, No. 1-15-cv-01168 (D. Del.)
Enco Systems, Inc. v. DaVincia, LLC, No. 1-19-cv-00039 (E.D. Missouri)
Janssen Biotech, Inc. v. Celltrion Healthcare Co., Nos. 1-15-cv-10698MLW, 17-cv-11008-MLW (D. Mass.)
Modine Manufacturing Co. v. BorgWarner, Inc., No. 1-17-cv-00467 (D. Del.)
Dyson Inc. v. SharkNinja, No. 1:14-cv-00779 (N.D. Ill.)
AAMP of Florida, Inc. v. Automotive Data Solutions, Inc., No.8:13CV-2019-T-35TGW (M.D. Fla.)
W.L. Gore v. C.R. Bard, No. 11-515-LPS-CJB (D. Del.)
General Mills Marketing, Inc. v. Fritsch GmbH, No.11-CV02099-PJS-JJG (D. Minn.)
Audionics Sys. Inc. v. AAMP of Florida, Inc., No.2:12-CV-10763-MMM-JEM (C.D. Cal.); AAMP of Florida, Inc. v. Audionics Sys. Inc., No. 8:12-CV02922-VMC-TGW (M.D. Fla.)
AAMP of Florida, Inc. v. Metra Elec. Corp., No.8:11-CV-2439T-23-TGW (M.D. Fla.)
Infineon Tech. AG v. Atmel Corp., No. 11-307-RGA (D. Del.)
Marlowe Patent Holdings LLC v. Dice Electronics LLC et al., No.2:10CV-01199-PGS-ES (D.N.J.)
Braun Melsungen AG v. Terumo Medical Corp., No.1:09-CV00347-JJF-LPS (D. Del.)
Glaxo Group Ltd. v. Teva Pharms. USA, Inc., No. 07-CV-713 (D. Del.)
Patent Office IPRs
American Axle & Manufacturing, Inc., v. Neapco Drivelines LLC, IPR-201801761 (representing Patent Owner).
Curt Manufacturing, LLC v. Horizon Global Americas Inc., IPR-201900625 (representing Petitioner).
Patent Litigation (ITC)
Certain Protective Cases For Electronic Devices and Components Thereof, ITC Inv. No. 337-TA-955.
Represented Complainant Otter Products LLC in action involving smartphone protective case technology.
Certain Automated Library Devices, ITC Inv. No. 337-TA-746. Represented Respondent IBM in action involving data storage systems.
Certain Portable Data and Mobile Communications Devices and Related Software, ITC Inv. No. 337TA-710 (Enforcement Proceeding).
Represented Complainant, a leading computer, mobile device and media player company, in ITC enforcement proceeding involving smartphones.
Certain Flash Memory Chips and Products Containing The Same, ITC Inv. No. 337-TA-664. Represented Respondent Samsung and its downstream customers in action involving semiconductor technology.
Intellectual Property Appeals
Horizon Global Americas Inc. v. Curt Manufacturing, LLC, No. 20-2203 (Fed. Cir.)
American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, No. 18-1763 (Fed. Cir.)
NuVasive, Inc. v. Medtronic Inc , Nos. 2015-1838, -1839, -1840,-1841, -1842, -1843 (Fed. Cir. 2016). Related patent appeals from PTAB involving methods and instruments for performing spinal surgery.
Hemopet v. Hill’s Pet Nutrition, Inc., No. 2015-1218 (Fed. Cir. 2015). Appeal of summary judgment finding of invalidity due to unpatentable subject matter (nutrigenomic pet food).
Modine Manufacturing Co. v. BorgWarner, Inc., No. 2014-1059 (Fed. Cir. 2014). Patent appeal involving heat exchangers used in large diesel engines.
Thomson Licensing SAS v. International Trade Commission, No. 2012-1536 (Fed. Cir. 2013). Patent appeal involving liquid crystal display technology.
Dennis Abdelnour
Robert Bosch LLC v. Pylon Mfg. Corp., Nos. 2011-1363, -1364, 719F.3d 1305 (Fed. Cir. 2013). En banc hearing to resolve question of appellate jurisdiction.
Michael Jaffe v. Samsung Electronics Co., No. 12-1802, 737 F.3d14 (4th Cir. 2013). Bankruptcy appeal involving the applicability of a patent licensee’s 365(n) right to elect to retain rights under a patent license.
A leading computer, mobile device and media player company v. International Trade Commission, No. 2012-1125 (Fed. Cir. 2012); HTC Corp. v. International Trade Commission, No. 2012-1126 (Fed.Cir. 2012) (dismissed prior to oral argument). Related patent appeals involving smartphone technology.
Northpoint Tech., Ltd. v. DIRECTV, Inc., No. 2011-1524 (Fed. Cir.2012) (affirmed without opinion). Patent appeal involving signal-processing technology.
Braun Melsungen AG v. Terumo Medical Corp., Nos. 2011-1400,-1428 (Fed. Cir. 2011) (dismissed prior to oral argument). Patent appeal involving medical safety IV catheter device.
False Advertising Litigation
Sethavanish v. ZonePerfect Nutrition Co., No. 3:12-CV-02907-SC(N.D. Cal.)
National Advertising Division (NAD) and National Advertising Review Board (NARB)
Successfully represented Verizon in various advertising disputes relating to its FiOS advanced fiberoptic network and related Internet, television and phone services.
United States Patent & Trademark Office, Patent Examiner, 2001-2003
Clerkships
Honorable Timothy B. Dyk, Court of Appeals for the Federal Circuit, 2007-2008
Education
Northwestern Pritzker School of Law, J.D. magna cum laude, Order of the Coif
Northwestern Journal of Technology & Intellectual Property, Articles Editor
University of Notre Dame, B.S. Mechanical Engineering, cum laude
Admissions
U.S. Patent and Trademark Office (USPTO) Illinois
District of Columbia Court Admissions
U.S. Supreme Court
U.S. Court of Appeals for the Federal Circuit
U.S. Court of Appeals for the Fourth Circuit
U.S. Court of Appeals for the Sixth Circuit
U.S. Court of Appeals for the Seventh Circuit
U.S. District Court for the Northern District of Illinois
U.S. District Court for the Northern District of Illinois (Trial Bar)
U.S. District Court for the Eastern District of Michigan
U.S. District Court for the Northern District of Ohio Awards
Managing Intellectual Property IP STARS, Rising Star, 2023-2024
Illinois Super Lawyers, Recognized as a Rising Star, 2014-2015, 2017-2019
Scott Barnett
Partner
248.566.8416 | 312.429.6014
sbarnett@honigman.com
Areas of focus
Intellectual Property Litigation
Intellectual Property
Scott Barnett is a partner and intellectual property attorney who focuses his practice on strategic counseling and guidance regarding intellectual property matters. Scott has extensive experience litigating complex intellectual property cases before Federal Courts, the Patent and Trademark Office and the International Trade Commission. In addition to his litigation practice, Scott counsels clients on domestic and international patent procurement strategies, and prosecutes patents in the software, electrical, and mechanical arts.
— Represents Petitioners and Patent Owners in post-grant review proceedings before the U.S. Patent and Trademark Office, including extensive experience in Inter Partes Review proceedings.
— Possesses significant appellate experience, particularly in the U.S. Court of Appeals for the Federal Circuit.
— Thought-leader in the emerging field of digital therapeutics, driving IP strategy for world’s leading prescription digital therapeutic (PDT) provider.
— Procures trademark registrations, litigates trademark disputes and assists clients with marketing and branding strategies.
— Conducts IP due diligence as part of corporate transactions.
— Prepares and prosecutes patent applications across a wide span of technologies including software, automotive, life sciences and mechanical.
Representative Matters
Federal Court Proceedings
Liberty Peak Ventures LLC v. Regions Financial Corporation (E.D. Tex. 2021). Represented Defendant Regions in connection with patent infringement suit involving EMV smartcard technology.
Auth Token LLC v. Regions Bank (W.D. Tex. 2021). Represented Defendant Regions in connection with patent infringement lawsuit regarding EMV smartcard technology.
Communication Interface Technologies, LLC. v. Regions Financial Corporation (E.D. Tex. 2021). Represented Defendant Regions in connection with patent infringement suit involving clientserver communication protocols.
Gerrity v. McLaren Health Care Corporation (E.D. Mi. 2021). Represented Defendant McLaren in connection with copyright infringement suit related to medical illustrations.
Estech Systems, Inc. v. Regions Financial Corporation (W.D. Tex. 2020). Represented Defendant Regions in connection with patent infringement suit involving Voice over Internet Protocol (VoIP) technology.
Milestone IP LLC v. Regions Bank (W.D. Tex. 2020). Represented Defendant Regions in connection with patent infringement suit involving database management and analysis technology.
Route Guidance Systems LLC v. OnStar LLC (D. Del. 2020). Represented Defendant OnStar in connection with patent infringement suit involving route calculation and guidance technology.
FenF, LLC v. Groupon, Inc. (E.D. Mi. 2019). Represented Defendant Groupon in trademark and copyright suit related to toe stretcher products.
Arthrodesis Technology LLC v. Vilex in Tennessee, Inc. (E.D. Tenn. 2019) Represented Defendant Vilex in patent infringement suit involving arthrodesis compression nail technology.
Cellspin Soft, Inc. v. Under Armour, Inc. (N.D. Cal. 2017). Successfully defended Under Armour in patent infringement suit involving wearable technology. The district court found the asserted patent to be invalid as directed to a patent-ineligible abstract idea.
Stern v. Globus Medical, Inc., 1-16cv-00091 (D. Del. 2016). Successfully represented defendant Globus Medical in a patent infringement suit involving spinal implant technology. Court disposed of Plaintiff’s primary theory of infringement on a motion for summary judgment.
Reckitt Benckiser Pharms., Inc. v. Watson Labs. (D. Del. 2016). Secured favorable bench trial ruling against generic manufacturers in ANDA litigations relating to Indivior’s leading opioid dependence treatment product, Suboxone® Film.
Wundaformer, LLC v. Flex Studios, Inc. (Fed. Cir. 2016). Argued patent appeal at the Federal Circuit on claim construction issue.
Innovative Automation LLC v. Baker & Taylor, LLC (E.D. Tex. 2015). Represented defendant Baker & Taylor in a patent infringement suit involving e-reader technology.
Media Rights Techs., Inc. v. Capital One Financial Corporation (Fed. Cir. 2015). Represented defendant Capital One in successful appeal before Federal Circuit in a patent infringement suit involving digital rights management technology.
Wundaformer, LLC v. Flex Studios, Inc. (S.D.N.Y. 2015). Represented Defendant in patent infringement suit involving Pilates exercise equipment. Plaintiff stipulated to non-infringement following claim construction ruling in client’s favor.
Kingspan Insulated Panels, Inc. v. Centria, Inc. (W.D. Mich. 2015). Successfully represented declaratory judgment plaintiff / accused infringer in patent infringement suit involving insulated wall panel systems.
LA-CO Indus., Inc. v. Techniweld USA, LLC (N.D. Ill. 2014). Represented Defendant in trade dress infringement suit involving design for handheld temperature indicator crayons.
VideoShare LLC v Viddler Inc. (D. Del. 2013). Represented Defendant in patent infringement suit involving streaming video.
Scott Barnett
Addiction and Detoxification Institute, LLC v. Coleman Institute LLC (N.D. Ill. 2013). Represented defendant opioid detoxification clinics in patent infringement suit involving Ultra-Rapid Opioid Detoxification (UROD) method.
Media Rights Techs., Inc. v. Capital One Financial Corporation (E.D. VA 2013). Represented Defendant in patent infringement suit involving digital rights management technology. Case was dismissed via motion for judgment on the pleadings based on the Court’s finding that all asserted claims were invalid as indefinite.
AIA Eng’g Ltd. v. Magotteaux Int’l S/A (Fed. Cir. 2011). Represented declaratory judgment defendant Magotteaux in successful appeal involving ceramic wear components used for grinding, crushing and conveying abrasive materials. Obtained a decision reversing the district court’s summary judgment of invalidity of Magotteaux’s reissue patent based on recapture.
Meyer Intellectual Props. Ltd. v. Bodum, Inc. (Fed. Cir. 2012). Represented Defendant in successful appeal before U.S. Court of Appeals for the Federal Circuit involving manual milk frothers. Obtained favorable decision reversing or vacating each of the seven issues on appeal, including summary judgments of infringement, a finding of willful infringement and an award of attorney fees.
AIA Eng’g Ltd. v. Magotteaux Int’l S/A (M.D. Tenn. 2012). Represented patentee Magotteaux in jury trial involving ceramic wear component
technology. Jury upheld validity of the patent, found that patent was willfully infringed and awarded client enhanced damages, attorneys’ fees and costs.
AIA Eng’g Ltd. v. Magotteaux Int’l S/A (Fed. Cir. 2013). Successfully represented appellee Magotteaux in appeal contesting trial court’s determinations that (i) asserted patent was willfully infringed warranting enhanced damages, (ii) asserted patent was not invalid based upon alleged prior public use and (iii) asserted patent was not invalid as obvious. Trial court’s verdict was armed in its entirety.
Patent and Trademark Office Proceedings
Lead counsel for Petitioner in IPR No. 21-01411 challenging patent directed to underbed mount for fifth-wheel and gooseneck style hitches. Trial instituted on all grounds presented in Petition; Final Written Decision found all challenged claims unpatentable on obviousness grounds.
Lead counsel for Petitioner in IPR No. 19-00625 challenging patent directed to electronic brake controller for controlling brakes of towed vehicle. Trial instituted on all grounds presented in Petition; Final Written Decision found all challenged claims unpatentable on obviousness grounds; Final Written Decision affirmed in its entirety on appeal, Horizon Global v. Curt Manufacturing, No. 20-2203 (Fed. Cir.).
Successfully represented trademark applicant in appeal before the Trademark Trial and Appeal Board overturning Examiner’s descriptiveness
refusal with regard to trademark application serial no. 85552395 for the mark LASGANA CUPCAKE.
Principal drafter of Petitions in IPR Nos. 16-1615, 16-1616, 16-1617, and 16-1783 involving artificial Christmas tree technology. Vast majority of challenged claims held unpatentable.
Principal drafter of Petition for Covered Business Method Review in CBM No. 16-14 involving digital exit-intent technology (case settled on favorable terms for our client after filing the Petition for CBM).
Successfully represented patent owner in Ex Parte Reexam No. 90/012,717 involving ceramic wear component technology (validity of all challenged claims upheld).
International Trade Commission (ITC) Proceedings
Lead Counsel for patent owner / complainant KUB Technologies, Inc. in ITC Investigation No. 337-TA-1348, In the Matter of Certain Cabinet X-Ray and Optical Camera Systems and Components Thereof, alleging patent infringement based on unauthorized importation for sale of optical-camera enabled intraoperative x-ray cabinet units (investigation instituted and pending).
Successfully represented patent owner / complainant in ITC investigation No. 337-TA-644, In the Matter of Certain Composite Wear Components and Products Containing Same, resulting in the issuance of an exclusion order, cease and desist order, and attorneys’ fees.
Prior Experience
Harness, Dickey & Pierce
Troutman Sanders
Vedder Price
Education
The John Marshall Law School, J.D. Certificate in Intellectual Property Law
The John Marshall Review of Intellectual Property Law, Articles Editor
U.S. District Court for the Eastern District of Michigan
U.S. District Court for the Northern District of Illinois
U.S. District Court for the Western District of Texas
U.S. District Court for the Northern District of Ohio
U.S. District Court for the Western District of Michigan
Awards
Michigan Super Lawyers, Rising Star, 2019-2022
Illinois Super Lawyers, Rising Star, 2015-2017
Leading Lawyers “Emerging Lawyer,” 2015-2017
The Best Lawyers in America, 2023-2025 Recognized in practice areas of Litigation — Intellectual Property and Patent Law.
Professional & Community Involvement
Easterseals of Michigan, Board of Directors
The Children’s Research Fund, Junior Board Member
1871 - Chicago’s Entrepreneurial Hub for Digital Startups, Legal Mentor
Brian Brookey
Partner
202.521.0556
bbrookey@honigman.com
Areas of focus
Intellectual Property
Intellectual Property Litigation
Brian Brookey focuses his practice on intellectual property (IP) litigation. He regularly represents clients in patent, trademark, copyright, and trade secret matters. He is also a skilled mediator in IP disputes.
Over his career, Brian has handled such cases in nearly two dozen states, in U.S. Courts of Appeals across the country, before the International Trade Commission, the Trademark Trial and Appeal Board, and the Patent Trial and Appeal Board of the U.S. Patent and Trademark Office.
Brian’s client roster spans a wide range of industries nationally and globally, including apparel, architectural designs, automotive, computer software, construction, consumer products, electronics, lasers and lighting, medical devices, musical devices, nutritional supplements, photography, telecommunications, transportation services, and more.
Representative Matters
Represents client in patent license dispute involving infection control technology used in health care settings*
Represented client in declaratory judgment action that led to a “trademark bully” dropping its claims after unsuccessfully seeking to dismiss or transfer action*
Represented plaintiff as lead counsel in a trade secret misappropriation case that resulted in a multimillion-dollar verdict after a five-day jury trial*
Defeated motion for preliminary injunction filed by a major audio equipment manufacturer, ultimately leading to a stipulated dismissal of the entire action*
Obtained summary judgment of noninfringement and a subsequent award of attorneys’ fees against plaintiff and its attorneys in action alleging infringement of several patents relating to the manufacture of blankets*
Successfully represented manufacturer of premium denim apparel in International Trade Commission investigation alleging infringement of six patents covering laser technology*
Secured injunctive relief against a company threatening to violate confidentiality and exclusivity agreements with respect to a new consumer product and negotiated a favorable settlement after multiple mediation sessions*
As first-chair trial lawyer, prevailed in a multi-day arbitration seeking hundreds of millions of dollars in damages for alleged legal malpractice and breach of fiduciary duty*
In an action alleging infringement of purported trade dress in an ultraviolet lamp, obtained summary judgment by establishing lack of trade dress protection*
Defended major telecommunications company in patent infringement actions brought by patent holding company after prevailing on numerous jurisdictional challenges, motions to dismiss, and motions to compel*
Obtained summary judgment of noninfringement in a longstanding patent infringement action against a major cosmetics company*
Successfully represented recreational vehicle furniture manufacturer in patent infringement action against major RV manufacturers; secured favorable Markman ruling that led to beneficial settlement for client*
Obtained summary judgment on behalf of custom wheel manufacturer sued for patent, trademark, and trade dress infringement*
Successfully represented manufacturer of famous hot sauce in trademark infringement and breach of contract action*
In a patent dispute, obtained dismissal of action seeking declaratory judgment of non-infringement on the grounds that the lawsuit was anticipatory and filed in the wrong forum*
Secured favorable resolution for manufacturer of infection prevention product in action for breach of agreement resolving previous trademark infringement action*
During trial in the Eastern District of Texas, negotiated a highly favorable settlement for a client sued for patent infringement in two separate actions by the same non-practicing entity*
Defend numerous retailers, designers, and manufacturers in fabric copyright infringement actions*
After defeating motion for summary judgment of infringement in a patent infringement action involving induction lighting technology, secured judgment that the asserted patent was invalid*
Within the course of four months, obtained temporary restraining orders in three different cases involving allegations of trade secret theft by former employees and contractors*
Prior Experience
Tucker Ellis, Partner
Christie, Parker & Hale, Partner
Preston, Gates & Ellis, Attorney
Education
University of California, Los Angeles, J.D., Moot Court Honors Program, Co-President
Pepperdine University, B.A., magna cum laude
Admissions
California
District of Columbia
Court Admissions
U.S. Court of Appeals for the Federal Circuit
U.S. Court of Appeals for the Ninth Circuit
U.S. District Court for the Central District of California
U.S. District Court for the District of Colorado
U.S. District Court for the District of Columbia
U.S. District Court for the Eastern District of California
U.S. District Court for the Eastern District of Michigan
U.S. District Court for the Northern District of California
U.S. District Court for the Southern District of California
U.S. Supreme Court Awards
Albert H. Parnell Outstanding Program Chair Award, Defense Research Institute (DRI)
LGBTQ Pride Month Honoree, Los Angeles County Bar Association
David De Bruin
Of Counsel
312.701.9328
ddebruin@honigman.com
Areas of focus Litigation Intellectual Property Litigation
David De Bruin is a seasoned first-chair trial and appellate attorney. He concentrates his practice on patent litigation and related proceedings before the United States Patent and Trademark Office and also litigates patent malpractice matters. David successfully argues legal issues, as well as explains complex technology to judges and juries.
— Tries patent cases in a variety of venues before judges and juries and has successfully argued numerous patent cases before the Federal Circuit Court of Appeals.
— Represents clients in a wide array of technology ranging from mechanical and electrical devices to biological and chemical patents.
— Serves as an arbitrator deciding securities claims and IP insurance coverage issues.
— Provides testimony as a Markman expert.
— Authors patent opinions and provides IP counseling.
Representative Matters
Prepared an amicus brief whose arguments were noted in a recent en banc ruling.
Obtained a liability jury verdict in the Central District of California on a patent covering 3D computer modeling that lead to a recovery publicly valued in excess of $90 million.
First-chaired jury trials in the rocket docket of the Western District of Wisconsin and, in a last minute substitution of lead trial counsel, obtained a willful infringement finding against Walmart in the District of Colorado.
First-chaired a five-week long accountant liability trial that remains a leading accountant liability and attorney misconduct case in Wisconsin.
Experienced in non-patent business litigation, including securities fraud, RICO, and telecommunications fraud.
Representative Cases
Gemtron Corp. v. St. Gobain Corp. 572 F.3d 1371 (Fed. Cir. 2009); counsel for patentee plaintiff-appellee. Judgment for plaintiff affirmed.
Ormco Corp. v. Align Technologies, Inc. Case No. SACV 03-16 CAS (C.D. Ca. 2009), remanded from 498 F.3d 1307 (Fed. Cir. 2007), cert. denied 128 S.Ct. 2430 (2008); counsel for plaintiff- appellant Ormco on patents regarding computerized design and manufacturing of custom orthodontic appliances. Initial dismissal reversed in part on claim construction and affirmed as to cross-appeal. Upon remand, jury verdict for plaintiff. Settled thereafter for cash and stock valued at $90 million plus additional consideration.
Ormco Corp. v. Align Technologies, Inc. 463 F.3d 1299 (Fed. Cir. 2006); counsel for counterdefendantappellant on patent claims. Summary judgment for counterplaintiff-appellee reversed and claims held obvious.
Golight Inc. v. Wal-Mart Stores, Inc. 355 F.3d 1327 (Fed. Cir. 2004), aff’g 216 F. Supp. 2d 1775 (D. Colo. 2002); appeal and trial counsel for plaintiffappellee patent owner. Judgment of willful infringement affirmed.
Bemis Mfg. Co. et al. v. Dornoch Med. Sys., Inc. Nos. 00-1585, 01- 1007 (Fed. Cir. 2001); counsel for plaintiffappellant in action involving devices and methods for disposing of medical suction canister waste. Summary judgment for defendant reversed based upon error in claim construction.
Johnson Worldwide Associates v. Zebco, et al. 175 F.3d 985 (Fed. Cir. 1999); plaintiff-appellee’s counsel on patent regarding heading lock for trolling motors. Summary judgment for plaintiff affirmed.
Marquip, Inc. v. Fosber America, Inc. 198 F.3d 1363 (Fed. Cir. 1999), aff’g unpub. dec. and 30 F. Supp. 2d 1142, (W.D. Wis. 1998), upon remand from 155 F.3d 567 (Fed. Cir. 1997); counsel for defendant-appellee in patent infringement action concerning corrugated paperboard machinery. Summary judgment of no infringement affirmed.
3M Company v. Kerr Corporation Case No. 07-C-0087-C (W.D. Wis. 2007); counsel for defendant in action for infringement of patents claiming composites and methods for making the same.
Briggs & Stratton Corp. v. Kohler Co. 408 F. Supp.2d 697 (W.D. Wis. 2006), 405 F. Supp.2d 986 and 398 F. Supp.2d 974 (2005); counsel for plaintiff in action for infringement of patents covering engine balancing system and cylinder head. Defendant enjoined following motions after trial.
Kerr Corporation v. 3M Company et al. Case No. 06-C-0423-C (W.D. Wis. 2006); counsel for plaintiff in action for infringement of patents covering apparatus and method for curing material with LED radiation.
John Mezzalinqua Associates, Inc. d/b/a PPC v. Corning Gilbert, Inc. Case No. 3-CV-0354-S (W.D. Wis. 2003); counsel for plaintiff in patent infringement action involving coaxial cable connectors. Jury verdict for plaintiff.
Zeevi v. Robert Bosch Corp. (N.D. Ill. 2003); counsel for defendant in action for infringement of patents covering vehicle navigation system.
Trombetta LLC v. Dana Corp. (W.D. Wis. 2003); counsel for defendant in action for infringement of patents covering solenoid switches.
The Toro Company et al. v. Scag Power Equipment (D. Neb., 2001); counsel for defendant in patent infringement action involving commercial lawn mowers.
Williams et al v. University of British Columbia et al. No. 00-485-A (E.D. Va. 2000); counsel for plaintiff in action to halt issuance of patent containing confidential technology derived from plaintiff regarding use of liposomes to treat arterial disease.
M&Z Produktions und Handelsgesmbh v. Hotronic International, Ltd. et al. (E.D. Va. 1999); counsel for plaintiff in action for fraudulent theft of patent and trademark rights regarding ski boot warmers and for infringement.
Ness v. Digital Dial Communs., Inc. 222 Wis. 2d 374; 588 N.W. 2d 63 (1999); counsel for plaintiff class. Judgment for plaintiffs affirmed.
Chevron Chemical Co. et al. v. Deloitte & Touche 207 Wis. 2d 43 (1997) upon remand from 176 Wis. 2d 935 (1993), aff’g, 168 Wis. 2d 323 (Ct. App. 1992); counsel for plaintiff in third-party accountant liability action. Judgment for plaintiff affirmed on merits and as sanction.
David De Bruin
Aetna Cas. & Sur. Co. v. Berson, et al. (E.D.N.Y. filed 1995); counsel for Aetna in RICO fraud action, seeking more than $45 million and naming 48 defendants, and in related satellite actions.
McMurray v. Harwood 870 F. Supp. 917 (E.D. Wis. 1994); action for correction of patent inventorship under 35 U.S.C. § 256 involving plastic composite toe-cap patent.
In re Texas International Co. (U.S., Bank, W.D. Okla.); counsel for the Official Committee of Equity Security Holders responsible for investigating securities transactions involving Drexel Burnham Lambert and affiliates. Successful objection to $14 million in Drexel claims.
State of West Virginia ex rel. Insurance Commissioner as Receiver of Quality Insurance Co. v. Abdallah (D.W.Va.); Commissioner’s Counsel in RICO fraud action against former officers and directors.
Education
University of Michigan Law School, J.D. University of Michigan, M.P.P Massachusetts Institute of Technology, B.S., Physics
Admissions
Illinois Wisconsin
U.S. Patent and Trademark Office (USPTO)
Court Admissions
U.S. Supreme Court
U.S. Court of Appeals for the Seventh Circuit
U.S. Court of Appeals for the Federal Circuit
U.S. District Court for the Northern District of Illinois (Trial Bar)
U.S. District Court for the Central District of Illinois
U.S. District Court for the District of Colorado
U.S. District Court for the Eastern District of Wisconsin
U.S. District Court for the Western District of Wisconsin
Awards
The Best Lawyers in America, 20122025. Recognized in practice areas of:
Litigation - Intellectual Property
Litigation - Patent Patent Law
Illinois Super Lawyers, 2013-2021
Law Bulletin Media
Leading Lawyers, Intellectual Property Law , 2017, 2022-2024
Leading Lawyers, Patent Law, 2017, 2022-2024
Listed in Chambers USA: America’s Leading Lawyers for Business, 2006-2013
Recognized as one of America’s leading lawyers in the Litigation field in Illinois and Wisconsin; Chambers USA states:
2012 – “Clients praise David De Bruin for being ‘very clear in his explanations in litigation and procedure.’ He acts on behalf of clients in patent litigation at trial and appellate level.”
2010 – “Another impressive litigator at the firm is David De Bruin… He is noted for his ‘superb analytical mind and ability to think his way around any issue.’”
The Chicago Tribune and The Wall Street Journal, Named one of Chicago’s Top Rated Lawyers, 2012
Wisconsin Super Lawyers, 2005, 2008, and 2010-2012
International Association for the Protection of Intellectual Property
Bar Association of the Seventh Federal Circuit
Wisconsin Intellectual Property Law Association
Board of Directors, Former Member
Richard Linn American Inn of Court
Wisconsin Consumer Anti-Fraud Fund, Milwaukee Foundation
Advisory Board
Legal Aid of Milwaukee, Inc.
Board of Directors, Former Member
The Executives’ Club of Chicago
Milwaukee Youth Symphony Orchestra, Inc.
Board of Directors, Former Member
Milwaukee Public Schools
Board of Directors, Former Member
Public Policy Forum
Education Committee, Former Member
MIT Club of Wisconsin
Board of Directors, Former Vice President
MIT Education Council
Former Member
Hunger Task Force of Milwaukee, Inc.
Executive Committee
Harold Fox, Ph.D.
Partner
Office Managing Partner
Washington, DC
202.844.3390
hfox@honigman.com
Areas of focus
Intellectual Property Litigation
Intellectual Property
Harold Fox offers clients tactical intellectual property counsel and strategic patent advice. In addition to his successful patent prosecution practice, Harold advises clients on critical aspects of patent portfolio development. More specifically, he provides strategies to manage post-grant proceedings, applies creative approaches to product life-cycle management, and develops insightful patent enforcement tactics. Harold also offers patent validity and infringement opinions, conducts intellectual property diligence investigations, handles trademark and domain name issues, and evaluates intellectual property issues arising from government contracts. He advises clients in all areas of chemistry, biotechnology, pharmaceuticals, biologics, nanotechnology, physics, chemical engineering, mechanical engineering, medical devices, business methods and materials science. As a significant portion of his practice, Harold has represented emerging and established companies, academic institutions, as well as domestic and international corporations in post grant proceedings at the U.S. Patent and Trademark Office, in Section 337 investigations at the U.S. International Trade Commission and in appeals at the U.S. Court of Appeals for the Federal Circuit. Chambers USA has declared Harold a leading DC patent prosecutor, noting his “command of matters involving a truly impressive range of technical and scientific disciplines, from biotechnology through nanotechnology to materials science.” According to lAM Patent 1000 client commentary, Harold is “strategically smart, responsive, and always on top of things to the very end.”
Representative Matters
Developed and implemented patent portfolio protection strategy for key pharmaceutical product patent assets involved in over a dozen competitor and Hatch-Waxman patent litigation matters, including successfully defending multiple Inter Partes Review (IPR) validity challenges and reexaminations at the U.S. Patent and Trademark Office, upholding validity of all patent claims through appeals.
Created trade secret protection policies for multi-national and multi-party joint venture projects for a Korea-based chemical company working with emerging U.S. companies.
Conducted intellectual property due diligence and created patent portfolio development strategies for a pharmaceutical and biotechnology corporation leveraging U.S. and China market opportunities. Projects also included settling disputes regarding theft of trade secrets and patent assets by a vendor.
Structured and implemented intellectual property strategy for start-up pharmaceutical company from its inception, including patent litigation avoidance strategies for a 505(b)(2) product and building a patent estate with more than three dozen patents eligible for Orange Book listing.
Designed and implemented innovation capture program for a rapidly growing renewable energy company, resulting annual application filing rate of over 50 applications per year while maintaining a technology development strategy that mitigated potential patent litigation issues. Projects included IP positioning of the company for its IPO.
Defended highly licensed academic patent portfolio from Inter Partes Review (IPR) challenges, resulting in key claims being found not unpatentable.
Education
Boston University, J.D.
Massachusetts Institute of Technology, Ph.D., Chemistry
Massachusetts Institute of Technology, S.B., Chemistry
Admissions
District of Columbia
Maryland
New York
U.S. Patent and Trademark Office (USPTO)
Court Admissions
U.S. Court of Appeals for the Federal Circuit
Awards
Managing Intellectual Property IP STARS
Recognized as a Patent Star, 2022-2024
IAM Patent 1000, Prosecution: DC Metro Area (2013-2020, 2022-2024)
World Intellectual Property Review Leader (2016-2023)
LMG Life Sciences
Named Patent Strategy Attorney of the Year – DC Metro (2024)
Shortlisted nominee for Patent Strategy Attorney of the Year – DC Metro (2022-2023)
Recognized for Patent Prosecution, Patent Strategy & Management (2022)
Chambers USA, Intellectual Property: Patent Prosecution, District of Columbia (2013-2016)
Legal 500 US, Intellectual Property: Patent Litigation, Full Coverage (2016-2017)
IAM Patent 1000, Post-Grant Procedures: National (2015-2016)
IP Law & Business, Named one of the top 50 under 45 (2008)
Michael Huget
Partner
Chair, Litigation Department
734.418.4254
mhuget@honigman.com
Areas of focus
Media and Entertainment Litigation
Michael Huget is a talented and accomplished trial lawyer who advocates on behalf of clients in some of their most complicated and high-stakes matters. Known for his strategic thinking and skills inside and outside the courtroom, he has tried more than 25 cases as lead or co-lead counsel. These have included multiple jury trials that each lasted a month or longer.
Michael’s practice focuses on several areas including intellectual property litigation, class action defense, entertainment- and media-related claims, and First Amendment claims. He has represented clients in IP rights disputes for a large variety of products ranging from universal garage door openers to neural probes for deep brain stimulation. He has helped companies maintain market dominance by protecting their patent portfolios, including some valued at up to $1 billion in annual revenue.
Michael is sought out by clients for his reputation as a “highly respected IP litigator” (Chambers USA). He is known for his tact and dexterity in handling particularly sensitive cases, including politically charged matters and cases closely followed by the media and public. Most recently, he represented the University of Michigan Mott Children’s Hospital in a highly publicized end-of-life controversy.
Michael has won notable victories for a wide range of clients, including automotive OEMs and suppliers, media and entertainment companies and research universities. Select representative clients include General Motors, Little Caesars Enterprises, Olympia Entertainment, Neogen, Viacom, Neapco and the University of Michigan.
In addition to his client work, Michael is chair of Honigman’s Litigation Department.
Experience
Michael litigates cases in jurisdictions across the U.S., having represented clients in federal courts in 17 different states (California, Connecticut, Delaware, Florida, Illinois, Massachusetts, Michigan, Minnesota, New Jersey, New York, North Carolina, Ohio, South Carolina, Tennessee, Texas, Utah, and Virginia).
Based in Michigan, Michael has appeared as counsel in over 300 cases in the U.S. District Court for the Eastern District of Michigan, the majority of those matters as lead counsel. He often represents clients in emergency matters, such as preliminary injunction motions and seizures of infringing goods.
Representative Matters
IP Litigation
Daneshvar v. Kipke and Neuronexus Technologies, Inc. At the Federal Circuit, represented the Defendants in appellate proceedings stemming from a dispute with a former doctoral candidate at the University of Michigan who claimed to be the sole inventor of a medical device used to facilitate deep-brain stimulation. Claims also included fraud, breach of fiduciary duty, and unjust enrichment. Summary judgment ruling made in favor of defendants was affirmed on appeal.
Defense of Detroit Bold Coffee Trademark Challenge Defended Detroit Bold Coffee Co., a prominent regional coffee business, against trademark infringement claims brought by Detroit Coffee Co., an LLC established in Michigan with a New York City address that did not appear to sell coffee products in Michigan. Ultimately secured a favorable summary judgment.
American Axle & Manufacturing, Inc. v. Neapco Holdings LLC Successfully defended Neapco Holdings LLC and Neapco Drivelines LLC in Delaware District Court in a significant case involving patent infringement allegations brought by a competitor relating to technology used to dampen vibrations in automotive drive shafts. Secured a notable victory when AAM’s patent claims were invalidated based on patent ineligibility. The case garnered press coverage, as previous decisions had only applied Section 101 of the Patent Act to software and biotechnology patents.
Viacom “Bubble Guppies” Trademark Dispute Successfully defended Viacom in a trademark dispute with a children’s clothing company who alleged that Nickelodeon cartoon’s merchandise infringed upon its trademarks. Summary judgment ruling was made in favor of Viacom and affirmed upon appeal in the Sixth Circuit.
Class Action Defense
Defense of Little Caesar’s in highly publicized lawsuits Secured dismissal of lawsuit against Little Caesar’s Enterprises Inc. involving allegations by customers claiming that the chain had offered a “halal pepperoni” topping but instead served them pork pepperoni. In excess of $100 million in damages had been sought by the plaintiffs, who were seeking class-action status, for the alleged harm caused.
Lin v. Crain Communications
Defending Crain Communications in the Eastern District of Michigan against a class action complaint alleging violations of the Michigan’s Personal Preservation of Privacy Act.
Sullivan v. Wenner Media LLC
Represented Wenner Media, the publisher of Rolling Stone, in its defense against a putative class action involving allegations that the company unlawfully sold its readers’ data in violation of the Michigan Video Rental Privacy Act.
Kokozski v. Playboy Enterprises, Inc. In the Eastern District of Michigan, defending Playboy Enterprises against a proposed class action lawsuit begun by a Michigan man seeking to represent thousands of
subscribers in the state who allege the magazine violated privacy laws by selling their personal information in violation of Michigan’s Video Rental Privacy Act.
Other Notable Litigation Matters
Intervarsity v. Wayne State University
Defended WSU against a student group’s claims that the university had violated the First Amendment rights of a student organization by refusing to recognize the student group on the basis that its charter violated Wayne State’s nondiscrimination policy.
Defense of University of Michigan in end-of-life determination lawsuit
Represented the University of Michigan’s Mott’s Children’s Hospital in a dispute with the family of a minor patient who had been declared brain dead. Plaintiffs sought to block official determination of death, under the Uniform Determination of Death Act, that would have resulted in the discontinuation of mechanical means of support.Defended highly licensed academic patent portfolio from Inter Partes Review (IPR) challenges, resulting in key claims being found not unpatentable.
Michael Huget
Prior Experience
Butzel Long, Vice President and Shareholder, 1984-2010
Education
Michigan State University College of Law, J.D., cum laude
Detroit College of Law Review, Editor-in-Chief
University of Michigan, B.A. Admissions
Michigan Court Admissions
U.S. Supreme Court
U.S. Court of Appeals for the Federal Circuit
U.S. Court of Appeals for the Sixth Circuit
U.S. District Court for the Eastern District of Michigan
U.S. District Court for the Western District of Michigan
U.S. District Court for the District of Massachusetts
U.S. District Court for the District of Minnesota
U.S. District Court for the Southern District of New York
U.S. District Court for the Eastern District of Tennessee
U.S. District Court for the Eastern District of Texas
U.S. District Court for the Southern District of Texas
U.S. District Court for the Western District of Texas
U.S. District Court for the District of Utah
Awards
Listed in Chambers USA: America’s Leading Lawyers for Business, 2017-2024
Recognized as a Band 1 lawyer for Intellectual Property in Michigan; Chambers USA adds:
“ Michael Huget is widely recognized as a leading IP attorney in Michigan and has represented an array of clients from the automotive and pharmaceutical sectors. He also assists clients in infringement claims. Clients praise his ‘very thorough and painstaking’ work on their behalf.”
“Michael Huget is chair of the firm’s litigation department and has considerable experience in assisting clients with patent litigation. He also regularly represents clients in trademark disputes.”
“Mike Huget holds extensive experience in high-stakes patent and trademark cases throughout the USA. He represents a large variety of clients, from Fortune 100 companies to individual entrepreneurs. Peers describe him as ‘a very strong patent litigator.’”
“Mike Huget is a highly respected IP litigator with a great deal of experience representing clients at both trial and appellate level ... Clients describe him as ‘a brilliant strategist with as much command of the psychology of the opponent as he has of the legal issues.’”
The Best Lawyers in America, 2003-2025
Recognized in practice areas of:
Commercial Litigation
Copyright Law
Litigation - Intellectual Property
Media Law
Patent Law
Trademark Law
Ann Arbor Trademark “Lawyer of the Year,” 2014, 2020, 2023
Ann Arbor Copyright “Lawyer of the Year,” 2015, 2021
Ann Arbor Patent Law “Lawyer of the Year,” 2019
Ann Arbor Litigation - Intellectual Property “Lawyer of the Year,” 2012, 2016, and 2018
Managing Intellectual Property IP STARS, 2013-2022
Named Litigation Practitioner of the Year for Michigan, 2014, 2021
Recognized as a Copyright, Patent, and Trademark Star, 2021, 2022, 2024
IAM Patent 1000: The World’s Leading Patent Professionals, Recognized as one of the World’s Leading Patent Practitioners, 2016, 2019-2024
Michigan Super Lawyers, 2006-2024
DBusiness, Top Lawyers, 2011, 2013-2017, and 2023-2024
Law Bulletin Media
Leading Lawyers, Intellectual Property Law, 2017, 2023-2024
Leading Lawyers, Copyright & Trademark Law, 2017, 2023-2024
Leading Lawyers, Patent Law, 2017, 2023-2024
Professional & Community Involvement
American Bar Association
State Bar of Michigan
Michigan Intellectual Property
American Inn of Court
International Trademark Association
Mary Alexander Hyde
Partner
312.701.9360
mhyde@honigman.com
Areas of focus
Intellectual Property
Intellectual Property Litigation
Mary Hyde is an intellectual property attorney with over fifteen years of experience litigating and advising clients on all types of trademark, marketing and advertising, and copyright matters. She has litigated actions for trademark infringement and dilution, trade dress infringement, false advertising, misappropriation of trade secrets, copyright infringement, and breach of contract in federal courts across the country at both the trial and appellate levels, and in administrative tribunals such as the Trademark Trial and Appeal Board and the International Trade Commission. In addition to litigation, Mary regularly:
— Develops and implements both small- and large-scale brand protection strategies on behalf of clients
— Represents clients in cease and desist efforts
— Represents clients in internet enforcement proceedings
— Advises clients on all types of marketing and advertising issues, including on social media and the web
— Counsels clients on global and domestic brand development and protection through trademark clearance, prosecution and management
Representative Matters
Obtained multiple preliminary injunctions on behalf of a consumer goods company in numerous federal trademark infringement cases against competitors.
Won likelihood of confusion claim in challenging opposition proceeding involving emerging trademark issues on behalf of multinational coffee company.
Won cancellation proceeding on behalf of an automotive company against a semiconductor maker in case involving driver assistance technology, and successfully defended appeal of that decision at the Federal Circuit Court of Appeals.
Won opposition proceeding on behalf of a motor vehicle manufacturer against a
transportation services provider following merits briefing and oral argument.
Won complete summary judgment on all claims on behalf of a consumer packaged goods company in federal trademark litigation against a competitor.
Obtained dismissal on behalf of defendant client in trademark litigation
Obtained three permanent injunctions in a series of litigations on behalf of owner of a well-known retail brand
Obtained favorable settlements on behalf of a food industry client for false advertising and violation of consumer protection laws
Assisted with management and development of worldwide trademark portfolio on behalf of a top global retailer
Prior Experience
Jones Day, Chicago, IL and Cleveland, OH, Associate, 2012-2018
Law Clerk to the Hon. Kenneth S. McHargh, U.S. District Court for the Northern District of Ohio, 2008-2010
Education
Case Western Reserve University School of Law, J.D., Order of the Coif, Distinguished Student Note Award
University of Virginia, B.A., English, Art Distinguished Majors Program
Admissions
Illinois
Ohio
Michigan
Court Admissions
U.S. Court of Appeals for the Sixth Circuit
U.S. District Court for the Eastern District of Michigan
U.S. District Court for the Northern District of Illinois
U.S. District Court for the Northern District of Ohio
U.S. District Court for the Southern District of Ohio
Awards
The Best Lawyers in America, 2023-2024
Recognized in the areas of Litigation - Intellectual Property and Trademark Law
World Trademark Review 1000 –the World’s Leading Trademark Professionals, 2023-2024
Jeffrey Lamb
Partner
Leader, Business Litigation
Practice Group
Vice Chair, Litigation Department
313.465.7404
jlamb@honigman.com
Areas of focus
Business Litigation
Jeff Lamb is a partner in the Litigation department who focuses on representing automotive manufacturers and private equity firms in commercial disputes. He has served as trial counsel in bench and jury trials and arbitral proceedings that have gone to verdict and has won multimillion-dollar judgments and achieved favorable settlements at all stages of litigation.
Jeff leads Honigman’s Business Litigation Practice Group and is a key member of the automotive and manufacturing and private equity litigation groups. Prior to joining Honigman, Jeff worked at a prominent national law firm where he represented global chemical and energy companies in litigation stemming from refinery fires and well failures, as well as commercial disputes arising from joint ventures and mergers gone awry. He is a former Marine Corps officer.
Jeff represents automotive manufacturing firms in commercial disputes with their suppliers, distributors, customers and competitors. He also represents private equity firms and their portfolio companies in litigation typically involving allegations of fraud, breach of fiduciary duty, and breach of contract. In addition, he defends companies in multiple industries in product warranty and privacybased class action litigation. Jeff also represents closely held corporations in shareholder disputes and actions involving corporate officer misconduct.
Representative Matters
Automotive Industry Litigation
Lead counsel for plaintiff Tier 2 supplier in action for breach of component supply agreement and wrongful termination of supply relationship.
Lead counsel for OEM in nationwide product warranty class action litigation alleging defective steering components.
Lead counsel for Tier 1 supplier in M&A earnout dispute with software company founders.
Lead counsel for OEM in multisite dealer termination litigation.
Counsel for OEM in fraud and unfair competition litigation against competitor stemming from multiyear union bribery scheme.
Lead counsel for plaintiff OEM in $75 million product warranty dispute with its primary battery manufacturer for the North American market: secured favorable settlement for OEM.
Counsel for OEM in trade secret and breach of contract litigation with former supplier related to prototype vehicle: secured favorable settlement at mediation.
Lead counsel for Tier 1 supplier in litigation with metal stamper stemming from demands for price increases and contract termination: secured recovery of critical tooling, achieved favorable settlement below estimated litigation expenses and enabled client to efficiently resource business.
Lead counsel for Tier 1 supplier in M&A earnout dispute with former owners of acquired competitor: achieved settlement for less than defense costs.
Lead litigation counsel for OEM in bankruptcy litigation in D. Mass. against former supplier: hotly contested adversary proceeding involved cross claims of fraud and breach of contract and settled favorably following successful depositions of supplier’s financial consultants.
Won $5.8 million judgment, plus attorney’s fees, in E.D. Va. as lead counsel for plaintiff diesel engine manufacturer in breach of contract with its customer.
Served as lead counsel for diesel engine manufacturer in a breach of contract dispute with its former fastener supplier and resolved claims at mediation for far less than projected defense costs.
Represented Tier 1 automotive supplier in post-bankruptcy dispute in E.D. Mich. regarding pension benefits. Won motion to transfer dispute to bankruptcy court which led to favorable settlement.
Led all e-discovery efforts in an enterprise valuation dispute arising out of the bankruptcy of a Tier 1 automotive supplier; supervised 50 attorneys during a three-month document collection and review effort regarding complex financial and production planning issues.
Private Equity Litigation
Lead counsel for company founders in fraud and breach of contract action brought by strategic buyer in New York state court: won motion to dismiss fraud claims; currently on appeal.
Served as lead counsel for private equity portfolio company in $15 million indemnification action related to settlement of nationwide class action alleging statutory violations: won motion to dismiss third party complaint in C.D. Cal. and then successfully resolved claims.
Obtained dismissal of breach of fiduciary duty, gross negligence and federal securities fraud claims via successive dispositive motions while representing defendant private equity firm and its principals in a $10 million lawsuit in S.D. Tex.
Served as lead counsel for private equity portfolio company in unfair competition litigation with competitor: took over defense from another firm and then won modification of preliminary injunction and achieved favorable settlement via aggressive prosecution of affirmative defenses and counterclaim.
Conducted internal investigation for private equity firm following the discovery of a multi-year accounting fraud by its portfolio company’s CFO; negotiated settlement with national accounting firm on related accounting malpractice and gross negligence claims.
Jeffrey Lamb
Class Action Litigation
Lead counsel for OEM in nationwide product warranty class action litigation alleging defective steering components.
Represented leading international publisher in statutory privacy class action: achieved favorable settlement at mediation prior to class certification.
Led successful defense of nationwide restaurant chain in class action litigation alleging false advertising and negligence: won dismissal of all claims via successive motions to dismiss.
Lead counsel for CRM provider in $15 million indemnification action related to settlement of nationwide class action alleging statutory privacy claims: won motion to dismiss third party complaint in C.D. Cal. and then successfully resolved claims.
Other Significant Commercial Litigation
Led successful defense of a national distributor in a $15 million trademark infringement action in E.D. Mich. via aggressive prosecution of affirmative defenses: defeated plaintiffs’ motion for a preliminary injunction twice; won discovery sanctions, and then secured release of all claims on extremely favorable terms.
Lead counsel for defendant closely held corporations in shareholder action and wrongful termination dispute: achieved favorable arbitral judgment regarding enterprise valuation and subsequent redemption of interests and dismissal of tort claims.
Lead counsel for defendant closely held corporation in shareholder action: won motion to dismiss breach of fiduciary duty claims and successfully negotiated redemption of plaintiff shareholders’ interests on favorable terms.
Won summary judgment in Illinois state court on breach of fiduciary duty claims asserted by client plaintiff marketing firm against its former president for illicit competition.
Secured early and cost-effective resolution of claims for defendant software developer in a $5 million breach of contract and breach of warranty dispute.
Won motion to strike opposing expert and obtained total defense verdict following arbitral hearing while serving as trial counsel for online travel agency defendant in $10 million breach of contract dispute.
Obtained favorable settlement following bench trial in Illinois state court while representing nonprofit hospital in a breach of contract action against a former consultant.
Represented German furniture manufacturer in a $10 million breach of contract dispute against its U.S. distributor; filed successful declaratory judgment action in S.D.N.Y. and won dismissal of ICC arbitration following victory on opponent’s interlocutory appeal to Second Circuit.
Served as counsel for a chemical manufacturer in a breach of contract and tort action in Louisiana state court arising out of the failure of natural gas storage caverns; developed fact and expert case regarding welding, metallurgy, and welllogging issues; client achieved a highly favorable settlement on its counterclaims following summary judgment.
Prior Experience
Kirkland & Ellis LLP, Associate, 2006-2012
United States Marine Corps, Captain, 1997-2002
Education
University of Michigan Law School, J.D., cum laude; Order of the Coif Michigan Law Review, Associate Editor
Boston University, M.S., Business Administration
United States Naval Academy, B.S.History, with honors and merit
Admissions
Illinois Michigan Court Admissions
U.S. Court of Appeals for the Second Circuit
U.S. District Court for the Eastern District of Michigan
U.S. District Court for the Western District of Michigan
U.S. District Court for the Northern District of Illinois
Awards
The Best Lawyers in America, 2024-2025
Recognized in the area of Commercial Litigation
Michigan Super Lawyers, 2017-2021
Recognized as a Rising Star, 2014-2016
Michigan Lawyers Weekly, “2023 Go-To Lawyer for Business Litigation”
Professional & Community Involvement
State Bar of Michigan
Partner
312.701.9313
vmathrani@honigman.com
Areas of focus Litigation Intellectual Property Litigation
Vikram Mathrani is a highly experienced intellectual property attorney with extensive litigation and counseling capabilities. Vikram is well-versed in many technologies, including biotechnology, pharmaceuticals, medical devices, electronics, consumer products, software, industrial products and data privacy.
Vikram litigates biotechnology and Hatch-Waxman patent cases through all stages of the litigation process, including pre-suit investigation through trial to appeal. He also represents clients in proceedings before the USPTO’s Patent Trial and Appeal Board. Vikram also enforces and defends clients’ trademark and trade secret rights.
Vikram is highly experienced in licensing matters and regularly performs due diligence in conjunction with corporate transactions.
Before Honigman, Vikram was an IP attorney at Ropes & Gray, and before that he was an engineer at the U.S. Food and Drug Administration.
Tries patent cases in a variety of venues before judges and juries and has successfully argued numerous patent cases before the Federal Circuit Court of Appeals.
— Represents clients in a wide array of technology ranging from mechanical and electrical devices to biological and chemical patents.
— Serves as an arbitrator deciding securities claims and IP insurance coverage issues.
— Provides testimony as a Markman expert.
— Authors patent opinions and provides IP counseling.
Representative Matters
Represented Ironwood Pharmaceuticals in Hatch-Waxman patent infringement litigation to protect clients’ prescription digestive drug, Linzess®. Obtained consent judgments with injunctions against all defendants. (D. Del.) (Jan. 2020).
Represented Ironwood Pharmaceuticals in IPR proceeding where Synergy Pharmaceuticals challenged client’s patent related to peptide therapeutics for the treatment of gastrointestinal disorders, obtaining an order terminating the proceedings. (PTAB) (Nov. 2018).
Represents Hot Dog on a Stick in a trademark infringement and breach of contract action. Obtained preliminary injunction preventing unauthorized use of clients’ trademarks. (S.D. Cal.) (June 2021).
Defended client in a data privacy class action litigation. Obtained full dismissal of all claims. (N.D. Ill.) (May 2019).
Represented pro bono client in section 1983 action. Obtained favorable settlement. (N.D. Ill.) (Nov. 2021).
Represented client in patent litigation concerning genetically modified mice.*
Represented client against multiple defendants in patent infringement actions involving controlled release oxycodone hydrochloride formulations.*
Represented client in a patent infringement action involving topical gel for the treatment of atopic dermatitis.*
Prior Experience
Ropes & Gray LLP, Associate, 2008-2016
U.S. Food and Drug Administration, Medical Device Fellowship Program, Engineer, 2004-2005
Education
Northwestern Pritzker School of Law, J.D., cum laude
Journal of International Human Rights,
Technology and Publication Editor
Cornell University, B.S.
Chemical Engineering
Admissions
U.S. Patent and Trademark Office (USPTO)
Illinois
New York
Court Admissions
U.S. District Court for the Eastern District of New York
U.S. District Court for the Northern District of Illinois
U.S. District Court for the Southern District of New York
*Matter handled prior to joining Honigman.
Joseph A. Mahoney, Pharm.D.
Partner
312.429.6064
jmahoney@honigman.com
Areas of focus
Intellectual Property
Intellectual Property Litigation
Combining more than thirty years of patent law experience with formal scientific training in pharmacy, Joe Mahoney brings unique perspective and knowledge to his practice, which focuses on complex patent matters.
He has acted as lead counsel in more than 30 patent and Hatch-Waxman cases before the U.S. Federal District Courts and the Patent Trial and Appeal Board (PTAB). Joe also regularly advises clients on Orange Book listings, the interface of patents with FDA approval, and the importance of coordinating patent and regulatory strategies.
Joe represents clients across a variety of industries including biotechnology, chemicals, medical devices, and pharmaceuticals, providing counsel on patent portfolio development and managing future litigation strategies to obtain patents that withstand the rigors of litigation challenges. He is also a skilled transactions counselor, helping clients navigate due diligence assessments for acquisitions and licenses involving complex IP portfolios and pending litigation.
Representative Matters
DSM IP Assets, B.V. et al v. Honeywell International, Inc. (D.Del. 2023). Representing DSM in patent litigation involving medical sutures.*
Medytox, Inc. v. Galderma S.A., 71 4th 990 (Fed. Cir. 2023) (precedential). Successfully challenged on behalf of Galderma a patent covering an animal-proteinfree botulinum toxin composition. (PGR2019-00062). Based on the strength of the evidence presented in the petition, the patent owner conceded invalidity upon institution, requested cancellation of the granted claims, and focused its efforts on a motion to amend. During the proceeding, we convinced the PTAB to reverse course on its initial construction of a key claim term. This ultimately led to denial of the patent owner’s motion to amend based on written description and enablement problems. Medytox appealed and the Federal Circuit affirmed the PTAB’s Final Written Decision.*
Galderma Labs v. Medinter US LLC et al. (D. Del.). Successfully represented Galderma in patent litigation involving dermal filler compositions and methods resulting in a ruling of infringement and damages.*
DSM IP Assets & DSM Bio-Based Products v. Lallemand Specialties, Inc. & Mascoma LLC (W.D. Wis.). Won a $14.5 million patent verdict on behalf of a DSM Bio-Based Products & Services in a seven-day jury trial involving genetically engineered yeast used for industrial-scale production of ethanol from corn stock.*
*matter
Corning Incorporated v. DSM IP Assets B.V. Won a majority of IPRs on behalf of patent owner DSM involving patents covering glass optical fiber coatings, with more than 70% of the 225 challenged claims across 10 IPRs were upheld as valid. (See, e.g., IPR2013-00043, -00044, -00045, -00047, -00048, -00049, -00052, -00053). At the final oral hearing, the Board was expanded to five judges instead of the customary three for a full day of oral argument on the 10 IPRs.*
Corning Incorporated v. DSM Desotech, Inc. (D. Del.) and DSM Desotech, Inc. v. Corning Incorporated (ND. IL). Represented DSM in this patent and breach of contract litigation related to the above IPRs involving nine patents relating to coatings for optical fibers. Confidential settlement prior to trial.*
Amneal Pharmaceuticals v. Endo Pharmaceuticals. Represented Endo in two inter partes reviews at the PTAB, decisions affirmed by the Federal Circuit in favor of Endo.*
Led patent due diligence on behalf of Nestlé Health Science in a large licensing and collaboration transactions with Seres Therapeutics.*
Santarus Inc. and the University of Missouri v. Par Pharmaceuticals (D. Del.; Fed. Cir.). Designed and prosecuted the global patent strategy for the University to protect its inventions relating to Zegerid® and led the legal team responsible for licensing such rights to Santarus, Inc., which resulted in substantial royalties flowing to the University. The patents were unsuccessfully challenged by Par Pharmaceutical in Hatch-Waxman patent infringement action leading to a $100 million settlement payment by Par to the University and Santarus. Joe represented the University throughout the 12+years at the USPTO and as co-counsel with Santarus’ lawyers in the district court litigations.*
Egalet Ltd. v. Apotex, Corp. (D. NJ).
Successfully represented Egalet in this Hatch-Waxman patent litigation relating to intranasal ketorolac.*
Galderma SA v. Allergan, Inc.
Successfully represented Galderma in an inter partes review of an Allergan patent relating to botulinum toxin.*
Led patent due diligence on behalf of Mallinckrodt Pharmaceuticals in its acquisition of Cadence Pharmaceuticals and the product OFIRMEV®.*
Galderma Labs and Dow Pharmaceutical Sciences v. Tolmar, Inc. (N.D. TX). Represented Galderma in a Hatch-Waxman patent case relating to MetroGel®.*
Represented Solvay Pharmaceuticals in several Hatch-Waxman patent litigations, transactions and patent portfolio management relating to AndroGel®, TriCor® and Aceon®.*
Pro bono representations of individuals seeking asylum before the U.S. Immigration Court and participant in the Pro Se Settlement Assistance Program of the U.S. District Court for the Western District of North Carolina.*
Prior Experience
Mayer Brown, Partner
Dentons, Partner
Stinson Mag & Fizzell, Associate
Watson, Ess, Marshall & Engas, Associate
Education
Saint Louis University School of Law, J.D. Cum laude, Saint Louis University Law Journal, Editor-in-Chief
University of Nebraska Medical Center, Pharm. D.
Admissions
Illinois
Missouri
North Carolina
Court Admissions
U.S. District Court for the Northern District of Illinois (Trial Bar)
U.S. Court of Appeals for the Federal Circuit
U.S. District Court for the Eastern District of Missouri
U.S. District Court for the Eastern District of North Carolina
U.S. District Court for the Middle District of North Carolina
U.S. District Court for the Western District of North Carolina
U.S. Patent and Trademark Office
Professional & Community Involvement
American Intellectual Property Law Association (AIPLA), Member
Carolina Patent, Trademark, Copyright Law Association, Member
Kara Farnandez Stoll American Inn of Court, Member
NC Bar Association, Intellectual Property law section, Member
Gretchen P. Miller
Senior Attorney
202.844.3372
gmiller@honigman.com
Areas of focus
Intellectual Property Litigation
Patent
Gretchen Miller is a registered patent attorney with 15 years’ experience in patent prosecution and litigation. She has helped clients to obtain patent rights worldwide, advised clients regarding patent procurement, and worked with experts to formulate strategies for trial. She has represented clients from various technology areas in federal court and the U.S. Patent and Trademark Office, the U.S. International Trade Commission, and the Court of Appeals for the Federal Circuit. Gretchen’s in-depth knowledge of complex technology enables her to leverage sophisticated strategies and creative approaches to meet her clients’ needs.
Patent Prosecution: prosecuted and obtained patents for various technologies including two approved drugs
FTO/Opinion Work: performed due diligence for an IPO; performed freedom-to-operate studies and opinion work for clients for technologies including engineered cell therapy, solar cells, and medical devices
Patent Litigation: conducted direct and cross-examinations in federal court; taken and defended depositions of fact and expert witnesses; drafted claim construction, trial and appellate briefs; argued claim terms in Markman hearing; prepared infringement and invalidity contentions; worked with jury consultant to craft trial strategies
{ Participated in multiple Hatch-Waxman/ANDA litigations and trials. These pharmaceutical products included prostaglandins, corticosteroids, vitamin D analogs, and pain medication
{ Worked with experts to form litigation strategies; designed studies to support our technical and legal positions
Pro Bono: represented the Children’s Law Center in a trial involving a contested adoption; prosecuted and obtained a patent for a social entrepreneur through the Lex Mundi Pro Bono Foundation
Prior Experience
Steptoe & Johnson LLP, 2004-2020
Education
American University Washington College of Law, J.D.
International Law Review, Articles Editor
American Jurist, Design Editor
Georgetown University, M.S.
Biochemistry & Molecular Biology with specialization in Biotechnolog
Johns Hopkins University
B.A. Biology and English
Admissions
District of Columbia
Florida
Maryland
New York
U.S. Patent and Trademark Office (USPTO)
Court Admissions
U.S. Court of Appeals for the Federal Circuit
U.S. District Court for the District of Colorado
U.S. District Court for the District of Columbia
U.S. District Court for the District of Maryland
U.S. District Court for the Eastern District of Texas
U.S. District Court for the Middle District of Florida
Jonathan O’Brien, Ph.D.
Partner
Vice-Chair, Board of Directors
Chair, Intellectual Property Department
Member, Executive Committee
269.337.7704
jobrien@honigman.com
Areas of focus
Intellectual Property Patent
Dr. Jonathan O’Brien has more than 20 years of experience assisting domestic and multinational companies on global IP portfolio procurement and enforcement strategies. He offers a pragmatic business perspective and has successfully assisted clients with leveraging their IP portfolios by identifying improvements and solutions to minimize risks and maximize strengths while aligning the IP strategy with his clients’ business objectives. His representative clients include companies in a variety of industries, including life sciences (pharmaceutical, biotechnology, nutraceutical, and medical devices), consumer goods, food, telecommunication, industrial chemicals and materials.
Dr. O’Brien has written and prosecuted several hundred patents throughout the world. He has experience rendering legal opinions on patent validity and noninfringement, as well as helping to coordinate global opposition, reexamination, nullity and infringement proceedings. Dr. O’Brien also has extensive experience with IP due diligence as part of mergers and acquisitions, public and private offerings, and collaborations. He has experience drafting and negotiating a variety of agreements, including patent licenses, co-development and commercialization, material transfer, clinical trial, cooperative research and development agreements (CRADA) amongst others.
Dr. O’Brien has a particularly strong acumen in the life science industry and has worked on number of FDA-approved drugs, including Celebrex®, Bextra®, Zyvox®, Incivek®, Kalydeco®, Orkambi®, Pimodivir®, Fampyra®, Ampyra®, Velcade®, Ninlaro®, Adcetris®, Linzess®, Cabometyx®, Cometriq®, Cotellic®, Alunbrig®, Exkivity®, and Camzyos® amongst others. He is currently assisting his clients with the development of nearly a dozen late stage pharmaceutical and biotechnology clinical candidates as potential therapies among a broad range of therapeutic areas, including oncology, cardiology, gastrointestinal and infectious diseases.
Representative Matters
Drafted and prosecuted patents in a variety of technical areas such as pharmaceutical, inorganic, and polymer chemistries; biotechnology; material science; physics; nanotechnology; and mechanical engineering.
Represented a multinational pharmaceutical company in developing a global patent strategy for a Phase III drug candidate, which involved obtaining patent issuances on the drug substance and implementing a life-cycle management plan.
Assisted a multinational pharmaceutical company and its European counsel in defending the company’s European patent during opposition proceedings.
Drafted and negotiated a variety of agreements, including patent license, co-development and commercialization, material transfer, and nondisclosure agreements, as well as clinical trial agreements, including CRADAs.
Conducted intellectual property due diligence for venture fund clients regarding potential investments, large pharmaceutical and biotechnology corporations regarding potential asset purchases and mergers, and startup companies regarding potential licensing of technologies owned by universities or third parties.
Fish & Richardson, P.C., Technology Specialist, 1997-2001
Academic Appointments
Massachusetts Institute of Technology, Department of Chemistry
T.A. Training Workshop, Assistant, Spring 1993-1996
Principles of Quantum Mechanics (5.61), Recitation Instructor, Fall 1994
Thermodynamics and Kinetics (5.70), Recitation Instructor, Spring 1992
Principles of General Chemistry (5.11), Recitation Instructor and Head Teaching Assistant, Fall 1991
Education
Massachusetts Institute of Technology Ph.D., Chemistry
Michigan State University College of Law, J.D., magna cum laude
Hope College, B.S., Chemistry, cum laude
Admissions
Michigan
U.S. Patent and Trademark Office (USPTO)
Court Admissions
U.S. Court of Appeals for the Federal Circuit Awards
Listed in Chambers USA: America’s Leading Lawyers for Business, 20172024. Recognized as a leading business lawyer in the Intellectual Property field in Michigan; Chambers USA states:
“He is a tremendous communicator.”
“He is commercially savvy and gives practical, realistic counsel.”
“He is an excellent IP lawyer who has a vast, deep knowledge and his advice and services are great.”
“Jonathan provides a very strong level of service and sophistication on matters relating to strategies for developing patent portfolios.”
“Jonathan O’Brien is a respected attorney in the Michigan IP market. He is held in high regard for his expertise in patents and is well versed in pharmaceutical matters.” One client adds “He’s a great attorney with impressive knowledge on the industry.”
“Jonathan O’Brien is noted for his extensive background in chemistry matters, with clients noting him as “very thorough and knowledgeable about chemical patent law.” Sources add: “He has a depth of intellectual knowledge around chemistry and brings a very practical eye to it.”
Jonathan O’Brien, Ph.D.
“Jonathan O’Brien is the chair of the firm’s intellectual property department. He regularly advises clients on patent and trademark procurement, enforcement matters and post-grant proceedings. An impressed client praised ‘his patent prosecution capabilities’ before going on to applaud his ‘ability to grasp our company’s business needs and provide legal advice tailored to our particular needs.’”
“Jonathan O’Brien chairs the practice and focuses on IP issues concerning M&A, as well as portfolio management and strategy. ‘He is excellent and very business-savvy,’ says a client.”
“In addition to his legal qualifications, O’Brien also has a PhD in chemistry, and clients are particularly impressed by his specialized, sector-specific knowledge, noting that he is ‘a highquality thinker’ who is also ‘easy to work with.’ Clients also state: ‘He is particularly knowledgeable about international matters.’”
The Best Lawyers in America, 2012-2025
Recognized in practice areas of:
Patent Law
Biotechnology and Life Sciences Practice
Michigan Super Lawyers, 2015-2020
Recognized as a Rising Star, 2011 and 2013-2014
LMG Life Sciences
Named Patent Strategy Attorney of the Year – Midwest (2023-2024)
Shortlisted nominee for Patent Strategy Attorney of the Year – Midwest (2022)
Recognized for Patent Prosecution, Patent Strategy & Management (2017-2022)
IAM Patent 1000: The World’s Leading Patent Professionals, Recognized as one of the World’s Leading Patent Practitioners, 2014-2016, 2019-2024
Managing Intellectual Property
IP STARS, Recognized as a Patent Star, 2013-2022, 2024
Law Bulletin Media
Leading Lawyers, Intellectual Property Law, 2017, 2021, 2023-2024
Leading Lawyers, Patent Law, 2017, 2021, 2023-2024
Michigan Lawyers Weekly, Recognized as a Leader in the Law, 2014
Business Review USA, Recognized as a Business Leader Under 40, 2007
Professional & Community Involvement
State Bar of Michigan
American Bar Association
Biotechnology Industry Organization
MICHBIO
American Intellectual Property Law Association
Stuart Area Restoration
Association, Chairman
Recipient Special Appreciation Award, 2008
3rd Coast Metro Trek, Planning Committee
Erick J. Palmer, Ph.D.
Partner
312.429.6065
epalmer@honigman.com
Areas of focus
Intellectual Property
Intellectual Property Litigation
Erick Palmer is a trial lawyer who focuses his practice on patent disputes in federal courts and before the Patent Trial and Appeal Board (PTAB). Erick has counseled and advocated for clients on issues involving patent and trade secret disputes, as well as a range of intellectual property considerations related to asset purchases, licensing, joint ventures, and collaboration agreements. He represents clients across industries, including pharmaceuticals, biotechnology, chemicals, food sciences, nutraceuticals, and medical diagnostics and devices. Erick has successfully defended patents on behalf of patent owners in more than twenty inter partes reviews (IPRs) that have gone to Final Written Decision.
As a Ph.D. chemist, Erick brings a unique skillset and knowledge to his practice. His experience teaching general chemistry to non-science majors translates seamlessly to the courtroom, where he excels at presenting clear, accessible arguments to juries. At the same time, his background as a chemist enables him to engage with the technical rigor expected by PTAB judges, particularly in the highly scrutinized environment of America Invents Act (AIA) proceedings.
Representative Matters
DSM Biomedical v. Honeywell, 2024. Successfully defeated petition for inter partes review of patent covering pigmented ultra-high molecular weight polyethylene yarn used to make medical-grade sutures and anchors used in orthopedic and cardiac surgeries.*
DSM Nutritional Products v. Mara Renewables, 2023. Successfully defeated three inter partes review petitions on behalf of Patent Owner. After submitting preliminary responses in all three proceedings, the PTAB agreed that, based on the merits, the patent challenger had not shown a reasonable likelihood that it would succeed on demonstrating unpatentability.*
Galderma v. Medinter. D. Delaware, 2020. Successfully asserted patent covering SCULPTRA® aesthetic product against competitor resulting in favorable judgment.*
DSM v. Lallemand, W.D. Wisconsin, 2018. Won a $14.5 million verdict on behalf of DSM Bio-Based Products & Services in a jury trial involving patented yeast used for industrial-scale production of ethanol from corn stock.*
Led the IP due diligence on behalf of a private investment group in a multi-million-dollar deal involving the acquisition of over 8,000 U.S. and international patents and patent applications. (2017).*
*matter handled prior to joining Honigman LLP
Varian Medical Systems v. William Beaumont Hospital & Elekta, 2017. Won thirteen IPRs—seven as patent owner and six as petitioner—on behalf of Elekta. These involved patents covering cone-beam computed tomography technology used in association with medical linear accelerators for radiation therapy.*
Amneal Pharms. v. Endo Pharms., 2015. Won three IPRs on behalf of Endo Pharmaceuticals involving patents covering its Opana® ER product. One IPR was dismissed at the institution phase because it was untimely. The other two IPRs went to Final Written Decision, with the PTAB agreeing that the generic challenger had failed to show that the claimed pharmaceutical dissolution rates were disclosed in or suggested by the prior art, a holding that was summarily affirmed on appeal.*
Corning v. DSM, 2014. Won a series of IPRs on behalf of patent owner DSM involving patents covering glass optical fiber coating technology, with more than 70% of the 225 challenged patent claims being upheld. These IPRs were some of the first in which the PTAB granted a patent owner’s motion for additional discovery.*
Won a Federal Circuit appeal in which the district court’s dismissal of a patent infringement suit with prejudice was affirmed. Agreeing that the accused products were essentially the same as products that had been finally determined to be non-infringing in a previous case, the appellate court found that the present infringement case was barred under the Supreme Court’s century-old decision in Kessler v. Eldred. Brain Life v. Elekta, 746 F.3d 1045. (Fed. Cir. 2014).*
Medical Instruments Development v. Cook Medical, E.D. New York, 2013. Won dismissal for an international medical device company accused of infringing six patents covering ERCP catheters. The plaintiff dismissed its complaint with prejudice prior to summary judgment.*
Valeant v. Watson, M.D. Florida, 2011. Won a Hatch-Waxman case on behalf of Valeant for its Aplenzin® antidepressant. After stipulating to infringement, the
district court found that the patent was not invalid, which was affirmed on appeal.*
Prestige Pet Prods. v. Pingyang
Huaxing Leather & Plastic Co., E.D. Michigan, 2011. Won an early motion to dismiss a claim of patent infringement and a claim for provisional rights damages on behalf of a global pet food manufacturer of dog chews.*
Won a case in which the PTAB upheld the patent as nonobvious based on “very strong” evidence of secondary considerations.*
Represented:
Sleep-Disordered Breathing Treatment Systems and Components Thereof, ITC, 2014. A foreign medical device manufacturer of CPAP breathing apparatuses in patent litigation before the ITC. Following a bench trial and Commission review, the Commission found that the primary patent was invalid in view of the prior art.*
Brandeis Univ. v. Nestle & Keebler, N.D. Illinois, 2013. Cookie and cookie dough manufacturers accused of infringing a patent covering certain fat compositions that reduce cholesterolemia. After succeeding in claim construction and excluding most of the opposing expert’s opinion on damages, the parties favorably settled.*
Other engagements include:
Led the development of the expert witness strategy during discovery and then, at the express charge of the client, executed that strategy at trial through direct examination of expert/cross-examination of opposing expert. The result was a victory on both infringement and validity.*
Galderma v. Tolmar, N.D. Texas, 2011. Successfully defeated an early summary judgment motion brought by a generic manufacturer in a Hatch-Waxman case involving Galderma’s MetroGel®. The parties favorably settled thereafter.*
Prior Experience
Mayer Brown, Partner
Education
University of Kentucky, B.A. summa cum laude
Capital University Law School, J.D. Summa cum laude
Capital University Law Review, Editor
The Ohio State University, Ph.D. Chemistry
Admissions
Illinois
Court Admissions
U.S. Supreme Court
U.S. Court of Appeals for the Federal Circuit
U.S. District Court for the Northern District of Illinois
U.S. Patent and Trademark Office
Professional & Community Involvement
American Intellectual Property Law Association, Member
Federal Circuit Bar Association, Member
Partner
312.701.9308
rsklar@honigman.com
Areas of focus Litigation Intellectual Property Litigation
Ron Sklar is an intellectual property attorney focusing his practice on patent litigation. He handles patent matters through various stages of the litigation process, including claim construction, fact and expert discovery, summary judgment, and trial in federal district courts and the U.S. International Trade Commission (ITC).
Represents clients in cases involving medical devices, semiconductors, computer software, hardware, telecommunications, cell phone technology and search engine technology.
Representative Matters
Represented a football helmet manufacturer in the Northern District of Illinois in defense of a patent infringement lawsuit and in two related petitions for inter partes review before the Patent Trial and Appeal Board; cases settled prior to trial.
Defended a leading navigation mapping and device company in two patent cases in the Eastern District of Texas and the Northern District of Illinois involving in-car navigation systems, location-based technologies, traffic detection and analysis systems, and computer software; cases settled prior to trial.
Defended a consumer products retailer in the Central District of California in defense of a copyright infringement lawsuit; case settled prior to trial.
Represented a leading cell phone designer and manufacturer against two competitors before the ITC on technology issues, including user interface and decoding of video and audio; ITC judge found competitors infringed two patents.
Secured a complete defense judgment in a multi-patent inventorship suit on behalf of a medical devices manufacturer against two prominent orthopedic surgeons who claimed that they should be named as inventors on three patents.
Represented management solutions corporation in the District of Minnesota on technology issues, including business-to-consumer channel management solutions; case settled prior to trial.
Defended semiconductor manufacturer in the District of Oregon on technology issues, including semiconductor production equipment; case settled prior to trial.
Prior Experience
Kirkland & Ellis LLP, Associate, 2010-2016
Legal Assistance Foundation of Metropolitan Chicago, PILI Fellow, 2010
Florida Marlins, Front Office Member, 2003-2006
Education
Northwestern Pritzker School of Law, J.D. cum laude
Northwestern Journal of Technology and Intellectual Property, Articles Editor
University of Michigan, B.S.E. Industrial Engineering
Admissions
Illinois
Bea Swedlow
Partner
312.701.9308
rsklar@honigman.com
Areas of focus
Litigation
Intellectual Property Litigation
With wide-ranging litigation experience, Bea Swedlow has a particularly strong focus on litigating patent, trademark, trade dress, trade secret, copyright, and false advertising matters. She represents major clients from such industries as software, pharmaceutical, manufacturing, higher education, consumer goods, retail, and internet/ social media. She appears before federal courts nationwide, and administrative bodies. Across her litigation practice, Bea assists clients in developing strategic plans for enforcing and protecting their brand and supporting their innovation, as well as engaging in anti-counterfeiting/anti-piracy litigation. Bea also advises right holders in a broad range of industry sectors, including fashion, consumer products, food and beverage, and retail on strategies to strengthen IP protection and enforcement, assisting owners of iconic brands with their patent, trademark, and copyright needs.
As part of her litigation experience, Bea served as Special Assistant District Attorney, Norfolk County (District Court Criminal Session).
Representative Matters
Obtained summary judgment in patent infringement case for a major automotive supplier.
Defended website owner involving alleged improper use of trademarks.
Represented surviving members of a music group relating to copyright and trademark use.
Defended retailer in a trademark infringement action relating to domain name use.
Served as counsel for an automotive inspection company relating to copyright rights in software.
Obtained favorable outcome for a pharmaceutical company in a false advertising case.
Successfully defended major film/television studio in copyright infringement lawsuit.
Obtained dismissal of copyright lawsuit for music publisher.
Defended news outlets in defamation and trademark litigation filed by subjects of investigative journalism reporting.
Prior Experience
Butzel Long, Shareholder, 2004-2010
Foley Hoag LLP, Associate, 1999-2004
Norfolk County District Attorney’s Office, Special Prosecutor, 2004
Education
Northeastern University School of Law, J.D.
Bryn Mawr College, M.L.S.P./M.S.S.
Graduate School of Social Work and Social Research
Bryn Mawr College, A.B.
Admissions
Massachusetts Michigan Court Admissions
U.S. Court of Appeals for the Federal Circuit
U.S. Court of Appeals for the Sixth Circuit
U.S. District Court for the District of Massachusetts
U.S. District Court for the Eastern District of Michigan
U.S. District Court for the Western District of Michigan
Recognition
Lawdragon, The Inaugural Lawdragon 500 Leading Global IP Lawyers, 2025
Managing Intellectual Property IP STARS, Recognized as a Copyright, Patent, and Trademark Star, 2024
World Trademark Review 1000 –the World’s Leading Trademark Professionals, 2023-25
World Trademark Review 1000 states:
2024 - “[Deborah (Bea) Swedlow] whose expertise in competition and non-competition cases puts her in good stead to advise companies on their trademark enforcement. Earning her patrons’ trust through strategic management, Swedlow handles the internationally renowned trademarks for food manufacturer Kellogg Company.”
2023 - [Deborah (Bea) Swedlow] makes her debut in the rankings... she strategises cleverly behind the scenes and presents well. She handles US and global trademark litigation and enforcement for the Kellogg Company, which also instructs the firm on portfolio management.”
Michigan Lawyers Weekly, “2022 Go-To Lawyer for IP”
The Best Lawyers in America, 2012-2025
Recognized in the area of Litigation - Intellectual Property
Ann Arbor Litigation - Intellectual Property “Lawyer of the Year,” 2023, 2025
Michigan Super Lawyers, 2013-2024
Crain’s Detroit Business “2019 Notable Women in the Law”
DBusiness, Top Lawyers, 2013-2017
Law Bulletin Media
Leading Lawyers, Copyright & Trademark Law, 2017, 2021, 2023-2024
Leading Lawyers, Intellectual Property Law, 2017, 2021, 2023-2024
Leading Lawyers, Patent Law, 2017, 2021, 2023-2024
Professional & Community Involvement
American Arbitration Association
Chartered Institute of Arbitrators, Fellow
American Intellectual Property Law Association
Board of Directors
Women in IP Committee, Former Chair
Professional Programs
Copyright Committee
Patent Litigation
Nominations Committee 2017
Media Law Resource Center (MLRC)
Internet Committee
American Bar Association
State Bar of Michigan
Women Lawyers Association of Michigan
Washtenaw County Bar Association
Massachusetts Bar Association
Boston Bar Association
Bryn Mawr College
Presidential Advisory Committee, 2015-2018
Committee on Leadership Development 2020 - 2023
Alumnae Association Executive Board (AAEB), Vice President, 2024-present
Leigh Taggart
Partner
Co-Leader, Intellectual Property Litigation Practice Group
Leigh Taggart is a partner and an intellectual property litigation attorney with almost 30 years of experience. He litigates patent, trademark, copyright, antitrust and trade secret matters throughout the U.S. in federal trial and appellate courts and before the International Trade Commission. He also has extensive experience in international intellectual property and contract cases.
Leigh “is terrific in all respects – witness preparation, brief writing, cross-examinations etc; you can be confident he is the best-prepared person in the courtroom.” (World Trademark Review 1000)
In addition to his client work, Leigh is the co-leader of the firm’s growing Intellectual Property Litigation Practice Group.
Representative Matters
Advised C-level executives on mixed business and legal issues, often involving $25 to $250 million in risk exposure or revenue potential.
Tried patent, trademark, trade dress and copyright cases in U.S. District Courts and the International Trade Commission.
Resolved intellectual property and commercial disputes ranging from $5 million to several hundred million dollars in controversy.
Worked in varied technologies including, automotive, cataract surgical instruments, intraocular lenses, spinal fixation devices, jet engines, executive business jet aircraft components, pharmaceuticals, nanotechnology, wireless networks, heavy-duty diesel engines.
Ran five patent countersuit after previous counsel lost $240 million judgment, settling all claims for $110 million plus substantial cross-licensing gains.
Resolved $1 billion dollar patent claim without litigation using private dispute resolution process established between parties.
Argued a trademark case involving millions of dollars in alleged damages before the United States Sixth Circuit Court of Appeals, winning remand for trial.
Argued a case presenting a patent law issue of first impression before the United States Federal Circuit Court of Appeals.
Served as General Counsel and Secretary for Rexair, LLC, manufacturer of Rainbow® Cleaning Systems:
Contracted with independent distributors in over 60 countries and enforced valuable trademark rights licensed in distribution agreements.
Negotiated solution to complicated dispute with European customer/ distributor, resolving protracted litigation in the U.S. and the United Kingdom, while retaining customer/ distributor on favorable terms.
Litigated and supervised trademark, unfair competition and distributor disputes in Australia, Belgium, Bulgaria, France, Germany, Italy, Lebanon, Mexico, Portugal, Turkey, United Kingdom and the U.S.
Traveled and worked extensively throughout European and Asian markets to solve mixed business and legal issues.
Conducted and supervised various internal investigations and compliance audits.
Prior Experience
Rader, Fishman & Grauer, PLLC, Bloomfield Hills, MI, Partner, 2005-2013
Rexair LLC, Troy, MI, General Counsel and Secretary, 1998-2004; Assistant Counsel, 1995-1998
Cornell Law School, Federal Litigation Seminar, Guest Lecturer, March 1998
Education
Cornell University Law School, J.D. with honors; American Jurisprudence Awards in Trial Advocacy and Legal Ethics
Haverford College, B.A., Philosophy
Admissions
Michigan
New York Awards
World Trademark Review 1000 –the World’s Leading Trademark Professionals, 2021 - 2025 World Trademark Review 1000 states:
2024 - “Sporting a wealth of experience is IP and business litigator [Leigh Taggart], who represents highprofile names, including automotive manufacturers Mahindra & Mahindra Ltd in an ongoing dispute of alleged trade dress and trademark infringement.
2023 - “[Taggart] skillfully navigates complex cases, completes his work
with the highest level of integrity and demonstrates an exceptional mastery of his craft. He presents novel and persuasive arguments.”
2022 - “[Taggart] is terrific in all respects – witness preparation, brief writing, cross-examinations etc; you can be confident he is the best-prepared person in the courtroom. He seeks guidance from others at Honigman as appropriate and succinctly summarises advice to support his clients’ decision making.”
2021 - “[Leigh Taggart is] a polished advocate who has proven his mettle in a wide array of IP disputes, not just those centered on trademarks. He is currently handling significant litigation on behalf of Mahindra & Mahindra against Fiat Chrysler involving the assertion of registered trademarks and unregistered trade dress with ITC and Eastern District of Michigan components, providing that while Honigman may be best known for its prosecution and associated work, it is more than capable of taking on the weightiest cases.”
IAM Patent 1000: The World’s Leading Patent Professionals, Recognized as one of the World’s Leading Patent Practitioners, 2022-2024
The Best Lawyers in America, 2017-2025
Recognized in practice areas of:
Litigation - Intellectual Property, 2017-2025
Patent Law, 2018-2025
Troy Litigation – Intellectual Property Lawyer of the Year 2017-2024
DBusiness, Top Lawyers, 2014, 2016, 2018, 2021
Managing Intellectual Property IP STARS, 2014-2024
Recognized as a Patent Star and Trademark Star
Michigan Super Lawyers, 2006 Law Bulletin Media
Leading Lawyers, Copyright & Trademark Law, 2023-2024
Leading Lawyers, Intellectual Property Law, 2023-2024
Leading Lawyers, Patent Law, 2023-2024
Professional & Community Involvement
State Bar of Michigan
New York State Bar Association
American Intellectual Property Lawyers Association (AIPLA)
Michigan Intellectual Property Lawyers Association (MIPLA)
Federal Circuit Bar Association
Michigan Intellectual Property American Inn of Court, Master Member
Michigan State Bar Foundation, Patron Fellow
Federal Bar Association, Eastern District of Michigan
Lawyer’s Council and Government Relations Committee, 1997-2004
Clinton River Watershed Council
Volunteer of the Year Award, 2001
David Thomas
Partner
248.566.8642
dthomas@honigman.com
Areas of focus
Intellectual Property
Intellectual Property Litigation
David Thomas is an intellectual property attorney who focuses his practice on strategic counseling and guidance regarding intellectual property matters. David has litigated in patent-heavy forums across the country, including in the District of Delaware, the Eastern and Western Districts of Texas, the International Trade Commission, the Northern District of Illinois and the Eastern District of Michigan, among others. He has defended and challenged patents in IPR proceedings before the Patent Trial and Appeal Board at the U.S. Patent & Trademark Office. In addition to his litigation practice, David counsels clients on domestic and international patent procurement strategies, and prosecutes patents in the software, electrical and mechanical arts.
Representative Matters
Patent Office IPRs
Counsel for Petitioner in IPR No. 2021-01411 challenging patent directed to underbed mount for fifth-wheel and gooseneck style hitches. Trial instituted on all grounds presented in Petition; Final Written Decision found all challenged claims unpatentable on obviousness grounds.
Counsel for Petitioner in IPR No. 2022-01166 challenging patent directed to thermally insulated windows. Trial instituted on all grounds presented in Petition; successfully achieved settlement in favor of client, terminating the proceeding.
Counsel for Patent Owner in IPR No. 2020-00777 defending patent directed to exterior rearview mirror assembly. Final Written Decision upheld the validity of several key challenged claims.
Principal drafter of Petition in IPR No. 2019-00625 challenging patent directed to electronic brake controller for controlling brakes of towed vehicle. Trial instituted on all grounds presented in Petition; Final Written Decision found all challenged claims unpatentable on obviousness grounds; Final Written Decision affirmed in its entirety on appeal, Horizon Global v. Curt Manufacturing, No. 20-2203 (Fed. Cir.).
International Trade Commission (ITC) Proceedings
Counsel for patent owner / complainant KUB Technologies, Inc. in ITC Investigation No. 337-TA-1348, In the Matter of Certain Cabinet X-Ray and Optical Camera Systems and Components Thereof, alleging patent infringement based on unauthorized importation for sale of optical-camera enabled intraoperative x-ray cabinet units. After institution of investigation, all accused parties filed consent orders agreeing to cease the conduct giving rise to the action, resulting in a Final Determination terminating the proceeding.
Michigan State University, B.S., Mechanical Engineering
Technical University of Denmark Study Abroad Program, Lyngby, Denmark
Admissions
Michigan
U.S. Patent and Trademark Office (USPTO)
Court Admissions
U.S. District Court for the Eastern District of Michigan
Sarah Waidelich
Partner
734.418.4242
swaidelich@honigman.com
Areas of focus
Intellectual Property
Intellectual Property Litigation
Sarah Waidelich is an intellectual property attorney whose practice covers a range of technology, products, and industries, including automotive technology, medical devices, software, electronics, and media. Sarah is dedicated to reaching the best possible business solutions for her clients.
Sarah has experience throughout the entire lifecycle of litigation, from pre-suit analysis and strategy, through discovery and depositions, claim construction, summary judgment, trial, and appeal. She has also worked in aligning litigation strategies between parallel district court litigation and USPTO Patent Trial and Appeal Board proceedings. She has participated in several jury trials in the District of Delaware and has argued in the Northern District of California, the District of Delaware, the District of Connecticut, the Eastern District of Michigan, and the U.S. Court of Appeals for the Federal Circuit.
In addition to her primary practice, Sarah has been involved in numerous child welfare pro bono cases, including successful appeals to the Michigan Court of Appeals and Michigan Supreme Court.
Sarah is very active in Honigman’s recruiting efforts. She currently serves as a Deputy Summer Associate Hiring Partner and previously served as a Lateral Hiring Partner for Honigman’s Intellectual Property Department. She previously served on Honigman’s Attorney Development Committee and has mentored many junior attorneys at the firm.
Sarah serves on the Board of Trustees of Trine University, her alma mater. She also serves on the Board of MothersEsquire, an organization devoted to supporting lawyer-moms in the legal industry.
Representative Matters
Successfully argued and secured summary judgment of patent infringement on behalf of patent owner.
Significant trade dress, design patent, and trademark infringement experience.
Argued both discovery and dispositive motions in federal court in patent and copyright infringement actions.
Argued at claim construction hearing in multi-patent infringement litigation.
Significant deposition experience, including fact and expert witnesses with both technical and damages knowledge.
Daneshvar v. Kipke and NeuroNexus Technologies, Inc : Assisted in defense of patent inventorship claims by plaintiff who claimed to have contributed to defendants’ patents for deep brain stimulation technology (neural probes). Summary judgment for defendants was affirmed on appeal by the United States Court of Appeals for the Federal Circuit.
Served as a judicial intern for Judge Stephen J. Murphy III (U.S. District Court for the Eastern District of Michigan) while in law school.
Prior Experience
Desmarais LLP, Associate, 2013-2015
Education
University of Michigan Law School, J.D., magna cum laude; Order of the Coif
Trine University, B.S., Mechanical Engineering, magna cum laude; Women’s Varsity Basketball Team
Admissions
Michigan
New York
U.S. Patent and Trademark Office (USPTO)
Court Admissions
U.S. Supreme Court
U.S. Court of Appeals for the Federal Circuit
U.S. Court of Appeals for the Sixth Circuit
U.S. District Court for the Eastern District of Michigan
U.S. District Court for the Eastern District of New York
U.S. District Court for the Eastern District of Texas
U.S. District Court for the Northern District of Illinois
U.S. District Court for the Southern District of New York
U.S. District Court for the Western District of Michigan
Professional & Community Involvement
State Bar of Michigan Intellectual Property Law
Michigan Intellectual Property
American Inn of Court
Federal Bar Association, Eastern District of Michigan Chapter
Federal Circuit Bar Association
Additional Team Members
Alexandra Angyalosy
Associate
312.429.6037
aangyalosy@honigman.com
Areas of focus
Intellectual Property
Intellectual Property Litigation
Alexandra Angyalosy is an intellectual property litigation attorney who focuses her practice on a wide range of matters including trademark litigation, patent litigation, copyright protection and litigation. She assists with various stages of litigation, including discovery and depositions, dispositive motion practice and claim construction briefing. Alex’s clients include companies in the mechanical, electrical, software and telecommunications industries.
Experience
Honigman LLP, Technology Specialist and Summer Associate
Prospect Law LLP
Summer Law Clerk
Loyola University Chicago School of Law
Research Assistant to Professor
Education
Loyola University Chicago School of Law, J.D. cum laude, Dean’s List
CALI Award - Evidence
Editor-in-Chief, International Law Review National Moot Court Team
Boston University, B.S. summa cum laude
Admissions
Illinois
Languages
Romanian (fluent)
Latifa Dabaja
Associate
248.566.8327
ldabaja@honigman.com
Areas of focus
Intellectual Property
Intellectual Property Litigation
Latifa Dabaja is an associate in our Intellectual Property Litigation Department. She focuses on a wide range of matters including patent, trademark, copyright and trade dress matters. She has assisted in the litigation of technologies and products in the pharmaceutical, automotive, mechanical, software, and consumer goods industries. Latifa assists with various stages of litigation, including discovery and depositions, dispositive motion practice, and claim construction briefing.
Experience
United States District Court for the Southern District of Ohio, Judicial Intern, Judge James L. Graham, 2019
The Ohio State University Technology Commercialization Office, Legal Intern, 2019
United States District Court for the Southern District of Ohio, Judicial Intern, Judge Michael H. Watson, 2019
Brooks Kushman P.C., Summer Associate, 2018
United States District Court for the Eastern District of Michigan, Judicial Intern, Judge Avern Cohn, 2018
University of Michigan-Dearborn, Laboratory Technician: Lead Co-op, 2013-2016
Education
The Ohio State University Moritz College of Law, J.D.
The Ohio State Technology and Law Journal, Executive Editor
University of Michigan-Dearborn, B.S. Biochemistry
Admissions
Michigan Court Admissions
U.S. District Court for the Eastern District of Michigan
U.S. District Court for the District of Connecticut
Reebehl El-Hage
Associate
734.418.4208
relhage@honigman.com
Areas of focus
Intellectual Property
Intellectual Property Litigation
Reebehl El-Hage is an associate in our Intellectual Property Department. He focuses on a wide range of matters including patent, trademark, copyright, and trade dress matters.
Reebehl further has experience handling pro bono cases in the District of Columbia and devotes significant time to ensuring that underserved individuals have access to legal representation.
Experience
Morrison & Foerster, LLP
Intellectual Property Litigation Associate
Broadspire, Technical Engineer
Education
Emory University School of Law, J.D., cum laude, Intellectual Property Society, Member, Emory Bankruptcy Developments Journal Notes & Comments, Editor
University of Michigan, B.S./B.S. Aerospace Engineering/Political Science
Admissions
District of Columbia
Maryland
Michigan (pending)
Alerts
Mar 27, 2025 USPTO Adopts “Interim Processes” to Address PTAB Workload Concerns
Additional Languages
French (intermediate)
Arabic (intermediate)
Yafeez Fatabhoy
Associate 734.418.4217
yfatabhoy@honigman.com
Areas of focus
Intellectual Property
Intellectual Property Litigation
Yafeez Fatabhoy is an intellectual property litigator focusing his practice on strategic counseling and guidance regarding intellectual property matters, including patent, trademark, copyright, and trade dress matters. His experience serving on numerous trial teams enables him to develop case strategy early-on to better serve his clients.
Yafeez’s practice covers a wide range of industries, including experience in the gaming, retail, automotive, medical device, civil engineering and packaging solutions industries. Yafeez has experience managing discovery, drafting motions, preparing witnesses, taking depositions, assisting in expert discovery, claim construction briefing, and post-trial briefing.
Experience
Dickinson Wright PLLC, Associate Attorney
United States District Court for the Eastern District of Michigan, Judicial Intern to the Hon. Avern Cohn
Education
University of Detroit Mercy School of Law, J.D. summa cum laude, Dean’s List
Detroit Mercy Moot Court Board of Advocates, Executive Board Member and Treasurer
University of Michigan, B.S. Neuroscience
Admissions
Michigan Court Admissions
U.S. Court of Appeals for the Federal Circuit
U.S. District Court for the Eastern District of Michigan
Ashley Hatzenbihler
Associate
312.701.9320
ahatzenbihler@honigman.com
Areas of focus
Intellectual Property
Intellectual Property Litigation
Ashley Hatzenbihler is an intellectual property attorney who focuses her practice on a wide range of matters including trademark prosecution and litigation, patent prosecution and litigation, copyright protection and enforcement and trademark appeals. She assists with various stages of litigation, including discovery and depositions, dispositive motion practice and claim construction briefing. Ashley’s clients include companies in the mechanical, electrical, software and telecommunications industries.
Copyright Committee Vice-Chair Fall 2023 — Present
David Roulo
Associate
312.429.6049
droulo@honigman.com
Areas of focus
Intellectual Property
Intellectual Property Litigation
David Roulo is an associate in our Intellectual Property Department. He focuses on a wide range of matters including patent, trademark, copyright and trade dress matters.
Experience
Goldwater Institute, Law Clerk
Honigman, LLP, Law Clerk
Peck Ritchey, LLC, Law Clerk
Roulo Brothers Racing, Inc., Lead Tire Specialist and Race Strategist
Education
Chicago-Kent College of Law, J.D. magna cum laude, Order of the Coif Cali Award (highest grade): Trademarks and Unfair Competition, Copyright, Advanced Topics in Patent Law, Oral Advocacy for the IP Lawyer
Saul Lefkowitz Trademark Moot Court Team
Chicago-Kent Law Review, Senior Associate
Marquette University, M.S. Mechanical Engineering
Milwaukee School of Engineering, B.S. Mechanical Engineering Neuroscience
Admissions
Illinois
Jenna Saunders
Associate 312.429.6046
jsaunders@honigman.com
Areas of focus
Intellectual Property
Intellectual Property Litigation
Jenna Saunders is a seasoned attorney specializing in intellectual property and commercial litigation, renowned for her strategic counsel and comprehensive expertise. With a background in engineering and extensive experience in both federal courts and administrative tribunals, Jenna brings a unique blend of technical knowledge and legal acumen to her clients’ cases.
Jenna’s practice centers on providing strategic guidance in intellectual property matters, encompassing patent and trademark litigation, inter partes reviews, patent prosecution and transactional advisement. Her litigation experience extends across diverse sectors including pharmaceuticals, medical devices, automotive technology, software, and retail products. In addition to her IP focus, Jenna excels in commercial litigation, adeptly handling cases ranging from breach of contract disputes to unfair competition claims.
Prior to her legal career, Jenna worked as an engineer at a medical device company, where she gained valuable experience in designing medical devices and manufacturing technologies. This hands-on experience gives her a unique perspective when advising clients on intellectual property matters related to technology and innovation.
Throughout her legal career, Jenna has been actively involved in all phases of litigation, from pre-suit investigation and strategy development to trial advocacy and appellate practice. She has participated in two federal jury trials, demonstrating her ability to vigorously advocate for her clients in even the most challenging of circumstances.
Beyond her legal practice, Jenna is deeply committed to pro bono work and community service. She is currently co-chairing the Young Professionals Board for Illinois Legal Aid Online, an organization that expands opportunities for justice to Illinois residents.
Experience
McAndrews, Held & Malloy Ltd., Associate
Faegre Drinker Biddle & Reath LLP, Associate
The Hon. Carol Hooten, Minnesota Court of Appeals, Judicial Extern
The Hon. Patrick J. Schiltz, U.S.D.J., United States District Court, District of Minnesota, Judicial Extern
Boston Scientific, Process Engineer
Education
University of Minnesota Law School, J.D. magna cum laude, Order of the Coif
Minnesota Law Review (Vol. 103 & 104), Note and Comment Editor
University of Minnesota, B.S. Biomedical Engineering, Dean’s List
Admissions
IIllinois
Minnesota
U.S. Patent and Trademark Office (USPTO)
Court Admissions
U.S. District Court for the Eastern District of Michigan
U.S. District Court for the Northern District of Illinois
U.S. District Court for the Western District of Michigans
