Jeffrey J. Catalano
Shareholder
Overview

“I invest fully in my client relationships. I take a step back to understand their businesses, their products or services, their profits and where they come from, and their processes and culture, so as to engage with them truly as a partner, instead of merely as their outside lawyer.”

Jeff Catalano focuses his practice on intellectual property litigation, including trademark, copyright, trade secret, unfair competition, and patent disputes. He has represented clients before federal courts, arbitrators, the United States Patent and Trademark Office’s Trademark Trial and Appeal Board, and the International Trade Commission.

Jeff is particularly well known for his in-depth experience related to fair, reasonable and non-discriminatory (FRAND) licensing of standards-essential patents, specifically in the telecommunications and networking sectors. His substantial FRAND-related experience includes patent valuation, assessments of licensing terms for individual patents as well as patent portfolios, and litigation and alternative dispute resolution, including FRAND-related affirmative defenses and rate setting proceedings.

Clients trust Jeff with high-stakes, contentious litigation matters that often have tens, if not hundreds of millions of dollars on the line. He has both the trial experience and the negotiation skills demanded by these cases. Jeff is adept at seeing the bigger picture beyond an individual dispute, and recommending the optimal course of action that will best serve his client’s business. By using this innovative approach, Jeff engages with his clients as a true partner, making their goals and concerns his own, fighting to achieve the optimal results.

Jeff is always thinking forward, taking pride in understanding his clients’ business needs while working to mitigate the business disruption and risks they face, all while helping maximize the value of his clients’ intellectual property.

Education
  • J.D.,
    Georgetown University Law Center, 2006
  • B.A.,
    Miami University, 2000
Bar Admissions
  • Illinois
  • U.S. Dist. Court, E.D. Michigan
  • U.S. Dist. Court, N.D. Illinois
  • U.S. Dist. Court, N.D. Illinois, Trial Bar
  • U.S. Dist. Court, W.D. Michigan
Languages
  • Italian
Experience | Overview
  • Jeff successfully defended smartphone manufacturer ZTE in a series of ITC investigations related to alleged infringement of standards essential patents (“SEPs”) by 3G and LTE-complaint phones and tablets.
  • Fighting abusive practices of SEP holders, Jeff currently represents ZTE in a breach of contract action against NPE Vringo, Inc., which includes, among other things, a claim for a judicial determination of a FRAND rate for a SEP portfolio.
  • He is currently defending Amway against copyright infringement claims in connection with videos posted to Websites such as Youtube and Vimeo, focusing on unique issues related to licensing value of sound recordings used in user-generated videos.
  • Jeff helped Amway curb competing direct seller MonaVie Inc's false advertising, unfair competition and trade secret misappropriation in district court action, resulting in favorable settlement.
  • Jeff currently defends Earthgrains Baking Company in a trademark infringement case related to a national launch of a product line, including issues of fair use and geographic rights.
  • Jeff assisted Twin-Star, Inc. obtain a consent judgment at the ITC, excluding importation of electric fireplaces that infringe its copyrights.
Experience | Legal

Brinks Gilson & Lione, Chicago, Illinois
Shareholder, 2016-Present
Associate, September 2006-2015
Summer Associate, 2005

Studio Ubertazzi, Milan, Italy
Summer Intern, 2004

Presentations
  • "Demystifying the Recent Decisions and Appeals at the ITC," Brinks Sponsoring CenterForce IP Enforcement Summit, Chicago, IL, April 12, 2016 
  • "The Shifting Economics of Patent Litigation," ABA Annual Meeting, Chicago, IL, July 31, 2015
  • “Utilizing the ITC in Your Enforcement Strategy,” IP Strategy Summit Conference, Chicago, IL, May 12, 2015
  • "Protecting Trade Secrets and Defending Against Allegations of Corporate Theft,” Association of Corporate Counsel, Mountain West Chapter, Winter Retreat, Panelist, March 19, 2015
  • “What is the Future of RAND/FRAND Licensing?” Moderator, ABA Annual Intellectual Property Law Conference, Arlington, VA, April 3, 2013
Representative Matters
  • ZTE Corporation v. Vringo, Inc. (S.D.N.Y. 2015-present).  Represents Plaintiff ZTE in Corporation asserting patentee’s breach of contract through failure to license on FRAND terms.  Case includes request for judicial determination of FRAND rate for portfolio of declared SEPs.

  • Flowers Bakeries Brands, LLC v. Earthgrains Baking Copies, Inc. (M.D. Ga. 2013-present).  Represents Defendants Earthgrains and Bimbo Bakeries in action alleging trademark infringement in connection with the sale of bread products.

  • In the Matter of Certain Wireless Consumer Electronic Devices with 3G and 4G Capabilities including Components Thereof (International Trade Commission Inv. No. 337-TA-868) (2012-present).  Represents Respondents ZTE Corporation and ZTE (USA). Complainant InterDigital, Inc. in matter asserting patent infringement. Affirmative defenses include FRAND licensing defense.

  • In the Matter of Certain Electronic Devices with 3G Capabilities and Certain Products Containing Same (International Trade Commission, Inv. No. 337-TA-800) (2011-present). Represents Respondents ZTE Corporation and ZTE (USA) Inc. in action asserting patent infringement. Affirmative defenses include FRAND licensing defense.

  • CVG-SAB, LLC v. Facebook Inc. (E.D. Mich. 2013-2014). Represented Plaintiff CVG-SAB, LLC in action alleging trademark infringement in connection with electronic commerce services. The case settled on favorable terms.

  • In the Matter of Certain Electric Fireplaces (International Trade Commission, No. 337-TA-791/826) (2011-2012).  Represented Complainant Twin-Star International Inc. in case seeking exclusion order prohibiting importation of electric fireplaces that infringe its copyrights or that implicate misappropriated trade secrets.  The case settled on favorable terms.

  • Daniels v. Spencer Gifts, et. al. (N.D. Ill. 2010-2012). Represented Defendant Spencer Gifts in action alleging copyright and trademark infringement in the sale of apparel. The case settled on favorable terms.

  • Amway Corp. v. MonaVie, Inc., et al. (D. Utah 2008-2010). Represented Plaintiff Amway in action alleging trade secret misappropriation, tortious interference with contract and false advertising under the Lanham Act in connection with the sale of juice products through a multi-level marketing distribution network. The case settled on favorable terms.

  • Nitro Distributing, Inc. v. Alticor Corp., Represented Alticor in antitrust case alleging violations of §§ 1 and 2 of the Sherman. All claims were dismissed on summary judgment, and the dismissal was affirmed by the 8th Circuit.

Press Releases & Events
July 11, 2017

Ann Arbor, Mich. - Three attorneys from Brinks Gilson & Lione, one of the largest intellectual property law firms in the U.S., were invited to present at an IP training event...

May 31, 2017

Ann Arbor, Mich. - Brinks Gilson & Lione, one of the largest intellectual property law firms in the U.S., announced that Jon H. Beaupré, a shareholder and litigator in the Ann Arbor office, will join with his Brinks Chicago office colleague, Jeffrey J. Catalano, to participate in the ninth China-US Intellectual Property Comparative Mock Trial at China’s State Intellectual Property Office (SIPO) training center in Beijing on June 15, 2017...

April 12, 2016

Brinks is sponsoring the CenterForce IP Enforcement Summit in Chicago, IL, on Tuesday, April 12th, 2016

January 11, 2016

CHICAGO—Brinks Gilson & Lione, one of the nation’s largest intellectual property law firms, has elected eight attorneys ...

October 23, 2014
CHICAGO—Gary M. Ropski, a shareholder at intellectual property law firm Brinks Gilson & Lione and the firm's past president, has been named the #1 Leading Intellectual Property Lawyer in Illinois by Leading Lawyers, and fifty-nine ...
April 3, 2013
On April 3, Jeffrey J. Catalano will be moderating,  “What is the Future of RAND/FRAND Licensing?” at the ABA Annual Intellectual Property Law Conference in Arlington, VA
Honors
  • Leading Intellectual Property Lawyer, Leading Lawyers Network, Law Bulletin Publishing Company, 2014-15
Affiliations
  • International Trademark Association
  • American Bar Association
  • Federal Circuit Bar Association
  • International Trade Commission Trial Lawyers Association
  • Licensing Executives Society