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   3James R. SobierajChicago(312) 321-4226jsobieraj@brinksgilson.comjsobieraj@brinksgilson.comBrinks Gilson & Lionewww.brinksgilson.comwww.brinksgilson.comsobierajjames.jpg Intellectual Property LawPatent LawTrade Secrets/Unfair Competition LawIP Litigation
James R.
Brinks Gilson & Lione
455 N Cityfront Plaza Dr Ste 3600
Chicago IL 60611-5500
Ph.(312) 321-4226 Fx.(312) 321-4299Leading Lawyers Magazine story about this lawyer
Recommended by peers in:    Extensive Experience in:
Intellectual Property Law    IP Litigation
Patent Law
Trade Secrets/Unfair Competition Law
Advisory Board Member
County:  Cook
Litigator:  Yes

Practice Description:  
Jim Sobieraj is a licensed patent attorney with over 20 years of experience in the procurement, licensing and enforcement of intellectual property rights. He has been lead counsel in cases involving patent infringement, ownership of patent rights, license disputes, misappropriation of trade secrets, trade dress infringement, unfair competition, false advertising, defamation, fraud, RICO and antitrust. His litigation experience includes bench and jury trials, temporary restraining orders, preliminary injunctions, Markman hearings, appeals and various forms of alternate dispute resolution.

Mr. Sobieraj has represented companies in a variety of technologies including analog and digital electronics, microprocessors, electrical and optical connectors, avionics, robotics, software, e-commerce, electromechanical transducers and control circuits, medical devices, pharmaceuticals, infant formula, microporous filter membranes, food sterilization, hydraulics, automotive components, carbon block filters, chemical compositions, packaging material and various consumer goods.

Notable Cases and Results:  
Brunswick Bowling and Billiards Corp. v. VIA Bowling Products, et al. , (N.D. Ind. 2004-present). Mr. Sobieraj is lead counsel for Brunswick, which is suing for infringement of a patent related to bowling lanes. The case is pending.

Maui Jim, Inc. v. Serengeti Eyewear et al., (C.D. Ill. 2004) . Mr. Sobieraj is lead counsel for Maui Jim, which sued Serengeti for infringing a design patent and moved for a preliminary injunction. The case settled.

Tenneco Automotive Inc. v. Visteon Corp., (D. Del. 2003- present) . Mr. Sobieraj is lead counsel for Visteon, which has been accused of infringing two patents relating to catalytic converters. The case is pending.

Nitro Distributing et al. v. Alticor Inc., et al. (W.D. Mich. 2003-present) . Mr. Sobieraj is lead counsel for the defendants in an antritrust case. A motion to compel arbitration is pending.

Oxford Gene Technology Limited v. Motorola, Inc., (N.D. Ill. 2002-2004) . Mr. Sobieraj was lead counsel for Motorola, which was accused of infringing a patent directed to DNA arrays. The case settled.

Alticor Inc. v. Ultra-Sun Technologies, Inc. (W.D. Mich. 2002-present) . Mr. Sobieraj is lead counsel for Alticor in an action based on claims of false advertising under federal and state law, and infringement of two patents relating to water treatment systems. The false advertising claims were settled before trial. The Federal Circuit ruled in Alticor"s favor on the patent claims, and remanded for further proceedings.

Charles E. Hill & Associates, Inc. v., Inc., et al (E.D. Tex. 2002-present) . Mr. Sobieraj is lead counsel for Quixtar, Inc., one of several defendants accused of infringing three patents directed to electronic commerce. The case is pending.

Nartron Corp. v. Amway Corp. (Mich. St. Ct. 1991-present) . Mr. Sobieraj has been lead counsel for Amway in a lawsuit involving claims of ownership of patent rights, breach of contract and trade secret misappropriation relating to end-of-life indicators for water filters. Following bench trials on liability and damages, the trial court awarded Amway all of the patent rights and damages for Nartron"s breach of contract and trade secret misappropriation. The Court of Appeals affirmed the award of patent rights, affirmed Nartron's liability for several hundred thousand dollars of damages and interest and remanded for further proceedings on Amway's claim for additional damages. The case is pending.

Procter & Gamble v. Randy Haugen and Amway Corporation (D. Ut. 1995-2003) . Mr. Sobieraj was lead counsel for Amway to defend P & G's claims based on the Lanham Act, defamation per se, tortious interference with business relations and vicarious liability. All of P & G's claims were dismissed at the pleading stage or by summary judgment. The 10th Circuit affirmed.

Lindab AB v. Eastern Sheet Metal, Inc., (S.D. Ohio 2001-2004) . Mr. Sobieraj was lead counsel for Lindab, a large Swedish manufacturer of ventilation pipe, in a patent infringement action. The case was resolved after a Markman hearing.

American Axle & Mfg., Inc. v. Visteon Corp., (E.D. Mich. 2002-2003) . Mr. Sobieraj was lead counsel for Visteon, which was accused of infringing a patent directed to universal joints. The plaintiff quickly dismissed all claims, after Visteon disclosed its prior art defenses.

Tyco Electronics Corp. v. Hon Hai Precision Industry Co. Ltd, (C.D. Calif. 2001-2002) . Mr. Sobieraj was lead counsel for Tyco in a declaratory judgment action filed against four Hon Hai patents on PGA and BGA connectors that are used with microprocessors. The case settled on mutually acceptable terms, which are confidential.

Preputnick et al. v. Provencher et al. (U.S.P.T.O. Board of Patent Appeals and Interferences, 2001-2002) . Mr. Sobieraj represented Tyco Electronics in an interference provoked by Teradyne, Inc. The patents relate to high density/high speed electrical connectors. The interference was resolved in Tyco's favor when Teradyne's patents were held invalid.

Integrated Paving Concepts, Inc. v. Nicon Enterprises (C.D. Calif. 1999-2002) . Mr. Sobieraj was counsel for the plaintiff in a patent, copyright and trademark infringement lawsuit. The patent claims were decided on summary judgment. A jury awarded damages on the copyright and trademark infringement claims. AMP Incorporated v. Teradyne, Inc. (M.D. Penn. 1998-1999) . Mr. Sobieraj was lead counsel for AMP, which sued Teradyne for infringing two AMP patents and for misappropriating trade secrets related to high density/high speed electrical connectors. The case involved a two-day Markman hearing. The case settled on confidential terms.

Wolverine World Wide Inc. v. Nike Inc., (Fed. Cir. Ct. 1994) . Mr. Sobieraj defended Nike against a claim that one of its popular shoe lines infringed a patent owned by Wolverine. The Federal Circuit affirmed the lower court's grant of summary judgment of non-infringement.

AMP Incorporated v. AT&T Corporation. (M.D. Penn. 1990-1991) . Mr. Sobieraj was counsel for AMP in a patent infringement suit against AT&T. After a summary jury trial, the case settled, with AT&T paying AMP $9,000,000, plus additional consideration.

Cuno, Inc. v. Pall Corporation (E.D. N.Y. 1988-1990) . Mr. Sobieraj was counsel for the plaintiff during an extensive jury trial involving claims of patent infringement asserted by both parties. After several weeks of trial, the case settled when the defendant agreed to pay the plaintiff $12,000,000 and to provide additional consideration. The relevant technology was nylon microporous membranes.

Standard Oil v. Showa Entetsu (E.D. Mich. 1987) . Mr. Sobieraj was counsel for Standard Oil against a defendant charged with breach of an exclusive trade secret license for an electroplating process. Mr. Sobieraj was successful in obtaining a temporary restraining order shortly after the lawsuit was filed, and in obtaining a preliminary injunction after an extensive evidentiary hearing.

Bar Admissions:  
State of Illinois
U.S. Claims Court
U.S. Court of Appeals, 6th Circuit
U.S. Court of Appeals, 10th Circuit
U.S. Court of Appeals, Fed. Circuit
U.S. Dist. Court, C.D. Illinois
U.S. Dist. Court, Dist. of Colorado
U.S. Dist. Court, E.D. Michigan
U.S. Dist. Court, S.D. Indiana
U.S. Dist. Court, W.D. Michigan
U.S. Dist. Court, W.D. Texas
U.S. Dist. Court, N.D. Illinois
Member, Trial Bar

Date of Birth:  1957

Law School:  University of Michigan Law School,J.D., 1982
Undergraduate School:  University of Michigan, B.S., Engineering, 1979
Undergraduate School Honors/Involvement:   magna cum laude

Employment History:  
Brinks, Gilson & Lione, Chicago, Illinois

Bar/Professional Association Involvement:  
National Inventors Hall of Fame Foundation
Board of Directors, 2004-Present

Intellectual Property Law Association of Chicago
Judges Dinner Chair, 2004
Public Relations Committee Vice Chair, 2003

Licensing Executives Society
President, 2002-2003
President-Elect, 2001-2002
Secretary, 1998-2001
International Delegate, 1997-Present
Board of Trustees, 1996-Present
Meeting Chairman, Annual Mtg. 1999; Winter Mtg. 1995
Workshop Program Chairman, Annual Mtg., 1996; Western Mtg. 1992
Arrangements Chairman, Annual Mtg., 1995; Winter Mtg. 1994
Chicago Chapter Chairman, 1995-1996
Committee Meetings Chairman, Annual Meeting, 1993
Electronics Committee Chairman, 1992-1994

American Intellectual Property Law Association
Chairman, Contracting for ADR Committee, 1990-1993
(Judge, Giles S. Rich Moot Court Competition)

The Lawyers Club of Chicago

Federal Circuit Bar Association

Federal Bar Association

Community Involvement:  
Chicago Volunteer Legal Services

Lincoln Park Tower Condominium Association
President, 1988-1990
Board of Directors, 1987-1991

Union League Club of Chicago

Published Legal Writing:  
"Current Issues and Future Trends for Large Corporate Licensing Programs," les Nouvelles , Volume XXXVIV, No. 2, June 2004

"Protecting your IP in joint R&D projects," Managing Intellectual Property , Issue 131, July/August 2003

Legal Lectures:  
"IP Bankruptcy: A Dastardly Deed," Meeting of the Licensing Executives Society International, Paris, France, March 31, 2004

"Business Method Patents: Introduction and Strategies," Chicago Bar Association Corporate Law Department Committee, June 5, 2003

"Protecting Your Turf: Tips and Traps for Ownership of IP Rights," Meeting of the Licensing Executives Society, Silicon Valley Chapter, San Jose, California, March 26, 2003

"Intellectual Property Issues Arising From Joint Development Projects," Joint Meeting of the Licensing Executives Society of Korea and AIPPI, Seoul, Korea, October 7, 2002

"The Role of Intellectual Property in E-commerce and the Internet," Licensing Executives Society, USA & Canada, Annual Meeting, 2001

"Winners and Losers - Finding the Right Intellectual Property and E-Business Strategies," Licensing Executives Society,USA & Canada, Winter Meeting, 2001

"Innovation at the Speed of E-Commerce: Strategic Business and Intellectual Property Perspectives," University of Chicago Graduate School of Business Symposium, Chicago, Illinois, September 7, 2000

"Strategic Alliances in the Electronics Industry," Licensing Executives Society, USA & Canada, Annual Meeting, 1994

"Contracting for Alternative Dispute Resolution: An Application to Intellectual Property," American Intellectual Property Law Association Annual Meeting, 1993

"Structuring the Licensing Agreement," Licensing Executives Society, USA & Canada, Seminars, Chicago, Illinois, 1992 and 1990

"Reasonable Royalties -- What Does Reasonable Mean?" Licensing Executives Society, USA & Canada, Annual Meeting, 1991

"Building a Damages Claim," Licensing Executives Society, USA & Canada, Annual Meeting, 1990

Firm Description:  
Founded in 1917, Brinks Gilson & Lione provides intellectual property legal services worldwide. The firm is one of the largest intellectual property law firms in the country, with approximately 150 attorneys who specialize in IP litigation and all aspects of patent, trademark, copyright, trade secret, Internet, unfair competition and related licensing matters.

Additional Office Locations:  Ann Arbor, Michigan; Indianapolis, Indiana; Arlington, Virginia: Salt Lake City, Utah

Map to Office:   Click here to view map

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