Robert S. Mallin
Shareholder
Overview

“Practical and cost-effective litigation is really my goal – focusing right in on the issues and doing the things that are smart, rather than doing the things that are formulaic.”

Patent litigator Robert Mallin uses his experience as litigation strategist and first-chair trial attorney to maximize his clients’ returns in patent and trademark disputes. Having significant exposure to both traditional patent litigation in federal courts and in post-grant Inter Partes Review (IPR) proceedings at the United States Patent and Trademark Office, Robert counsels clients on where and how to most effectively litigate patent invalidity claims. Where appropriate, Robert has successfully used the IPR process to invalidate patents asserted against his clients or to stay ongoing litigation, avoiding lengthier and more costly court proceedings.

Chair of the Brinks Trade Secret Group, Robert has vast experience in all phases of litigation—from preliminary injunctions to Markman hearings to jury trials—as well as in proceedings before the International Trade Commission, in IPR proceedings, and in other post-grant review proceedings before the Patent Trial and Appeal Board. Over his career, he has appeared in more than 75 cases in more than 20 different courts and other forums, including the ITC and PTAB. Alongside his successful litigation practice, Robert advises clients on licensing, patentability, and validity issues, as well as patent prosecution. Robert also has experience as a process engineer for a food manufacturing company where he worked with equipment used in a manufacturing environment for processing, packaging, quality control, and material handling and transportation. Throughout all of his work, he places an emphasis on anticipating issues and helping clients to think forward for long-term strength and effectiveness.

Robert has represented major clients in the bakery product manufacturing, automotive, telecommunications, and trading platform software products areas.  He has counseled clients in a variety of other technical areas including electromechanical inventions, mechanical inventions, chemical processing, medical devices, computer chips, metallurgical processing and biotechnology.

Education
  • J.D.,
    Loyola University Chicago School of Law, 1990
  • B.S., Chemical Engineering
    University of Illinois, 1985
Bar Admissions
  • Illinois Supreme Court
  • U.S. Court of Appeals, Fed. Cir.
  • U.S. Dist. Court, E.D. Wisconsin
  • U.S. Dist. Court, N.D. Illinois, Trial Bar
  • U.S. Dist. Court, W.D. Michigan
  • U.S. Dist. Court, W.D. Texas
  • U.S. Patent & Trademark Office
Technical Background
  • Biopharma
Experience | Overview
  • Represents and Kia Motors and 11 Kia dealerships throughout the US in multi-forum dispute based on sales of vehicles with keyless ignition. Under Robert’s guidance, cases brought in 10 different district courts were consolidated and dismissed pending IPR proceedings relating to patent invalidity and bankruptcy proceedings relating to patent ownership
  • Represents Hyundai in case involving alleged patent infringement based on sales of Hyundai vehicles with keyless ignition. As in the Kia case, the district court action was dismissed pending IPR and bankruptcy proceedings
  • Represents Interactive Data Corporation in an ongoing infringement action in federal district court involving a patent related to the processing of financial data
  • Involved in patent litigation concerning equipment and processing methods for manufacturing corn-based crunchy snacks and included study of baking equipment and related processing
  • Involved in trademark litigation concerning covered packaging and product configuration
  • Handled opinions and counseling for food manufacturer
Experience | Non-Legal
Frito-Lay, Beloit, Wisconsin
Project Engineer, 1985-1987
Presentations
  • "PTAB and the District Courts," Managing Intellectual Property's US Patent Forum, Palo Alto, CA, March 15, 2016
Representative Matters
District Court Litigation
  • Kia Motors America, Inc. and Kia Motors Corporation v. Peter F. Wingard (N.D. Ill.). Case dismissed pending IPR and bankruptcy proceeding relating to patent ownership.  Kia seeks a declaratory judgment of noninfringement of patent asserted against Kia vehicles. (2014-2015).
  • Peter F. Wingard and Netlatch LLC v. Hyundai Motor America and Orr Hyundai of Texarkana (E.D. Tx.).  Case dismissed pending IPR and bankruptcy proceeding relating to patent ownership.  Plaintiff alleged infringement based on sales of Hyundai vehicles having keyless ignition. (2014-2015).
  • Peter F. Wingard v. Various Kia Dealerships Throughout the U.S. (10 different district courts). Cases dismissed pending IPR and bankruptcy proceeding relating to patent ownership.  Plaintiff alleged infringement against 11 different Kia dealerships in ten different district courts (E.D. Tx., S.D. Tx., N.D. Tx., N.D. Ill., C.D. Cal., W.D. Wisc., D. Del., M.D. Fla. D. N.J., and E.D. Va.) based on sales of Kia vehicles having keyless ignition. (2014-2015).
  • Quest Licensing Corp. v. Interactive Data Corporation (D. Del.). Pending. Plaintiff alleges infringement relating to technology for providing information to mobile telecommunications users. (2014 to present).
  • Patriot Scientific Corporation, Phoenix Digital Solution LLC, Technology Property Limited LLC v. ZTE Corporation and ZTE (USA) Inc. (N. D. Cal).  Pending.  Representing defendants against claims of alleged infringement of three patents related to microprocessor technology.  (2012 to present)
  • Grupo Bimbo v. Snak King (C.D. Cal.). Case Settled.   Asserted trademark and patent rights relating to rolled tortillas. (2013-2015). 
  • Ronald D. Russo v. Wilson-Cook Medical, Inc. (M. D. Fla.)  Case settled.  Represented defendant/counter-plaintiff in alleged breach of contract action.  (2013-2014).
  • Draeger Medical Systems, Inc. v. Atom Medical International, Inc. et. al. (M.D. Fla.). Case Settled. Technology related to infant incubators and warmers. (2013-2014).
  • Markets-Alert Pty, Ltd. v. eSignal.com et al. (D. Del.). Case dismissed after patent determined to be invalid in related CBMR.
  • Twin Star International, Inc. et al v. Whalen Furniture Manufacturing Inc. (S.D. Cal.).  Case settled.
  • InvestPic LLC v. StatPro Inc. (D. Del.). Case dismissed in client’s favor before discovery. Technology related to trading software. (2011-2012).
  • GHJ Holdings, LLC v. Plasticade Products Corp. (E.D. Tx.). NPE false marking case dismissed after new marking statute under AIA announced and implemented. (2010-2011).
  • GHJ Holdings, LLC v. ConvaTec Inc. (E.D. Tx.). NPE false marking case settled after complaint dismissed for failing to meet the pleading requirements of Fed. R. Civ. P. 9(b). (2010-2011).
  • Hollister Incorporated v. ConvaTec Inc. (N.D. Ill.). Hollister patent infringement claim dismissed on summary judgment. ConvaTec’s counterclaims for false marking and false advertising were settled. Technology related to bowel management medical device for critical care patients, and the claims and advertising regarding those devices. (2010-2013).
  • Encore Rail Systems, Inc. v. The Willamette Valley Company (N.D. Ill.). Case settled during discovery. Technology related to chemistry involved with new railroad spike repair material to prevent railroad misalignment and derailing. (2010-2011).
  • Unomedical A/S v. Smiths Medical MD, Inc. (N.D. Ill.). Case settled after original opposing counsel withdrew while motion to disqualify for client conflict was pending. Technology related to a disposable needle for use with insulin infusion pumps. (2009-2011).
  • Kannar v. Alticor Inc.; Amway Corp.; and Access Business Group LLC (C.D. Cal.). Case settled during expert discovery. Technology related to chemistry involved with nutraceutical garlic tablet formulation and processing. (2008-2010).
  • Yakima Products, Inc. v. Saris Cycling Group, Inc. (D. Or.). Case settled. Technology related to multiple patents for various bicycle rack designs. (2008-2009).
  • Star Scientific, Inc. v. R.J. Reynolds Tobacco Company (D. Md.). Obtained a jury verdict of noninfringement after a 5-week trial. Noninfringement verdict was affirmed on appeal.   Technology related to alleged method for lowering the nitrosamine level in tobacco. (2008-2011).
  • Energizer Holdings, Inc. and Eveready Battery Company, Inc. v. Spectrum Brands, Inc. (W.D. Wisc.). Case settled after client obtained a preliminary injunction. Technology related to lithium batteries. (2008-2009).
  • Arimathea LLC v. Wm. Wrigley Jr. Company et al. (N.D. Ill.). Case resolved during settlement conference with Magistrate Judge. Technology related to design for tin containers. (2008-2009).
  • Techtronic Industries Co., Ltd and Richard Pando v. Chervon Holdings Ltd; Nanjing Chervon Industrial Co. Ltd; Chervon Ltd; Chervon North America, Ind. (N.D. Ill.). Case settled after clients obtained a preliminary injunction. Technology related to wall-mounted laser level. (2006-2007).
  • One World Technologies, Inc. and Ryobi Technologies, Inc. v. Robert Bosch Tool Companies; Rexon Industrial Corp., Ltd.; and Power Tool Specialists, Inc. (N.D. Ill.). Case settled. Technology related to ergonomic design for miter saws. (2006-2007).
  • One World Technologies, Inc. and Ryobi Technologies, Inc. v. Rexon Industries Corp., Ltd; and Power Tool Specialists, Inc. (N.D. Ill.). Case settled. Technology related to use of laser technology in conjunction with miter saws. (2006-2007).
  • Jacobs Chuck Manufacturing Company; Power Tool Holders, Inc.; and Establissments Amyot, S.A. v. Shandong Weida Machinery Co. Ltd.; One World Technologies, Inc.; and Techtronic Industries Co., Ltd. (E.D. Tx.). Case settled. Technology related to chuck design for drills. (2005-2006).
  • Black & Decker v. Ryobi Technologies and TechTronics Industries (D. Del.). Case settled. Technology involved multiple patents involving both electrical and mechanical aspects of several different power tools. (2005-2006).
  • Tilia Int’l v. The Rival Co. (N.D. Cal.). Case settled concurrently with In re Home Vacuum Packaging Machines. Technology related to vacuum packaging machines such as Foodsaver and Seal-a-Meal vacuum packaging machines. (2003-2004).
  • New Venture Gear, Inc. v. BorgWarner Inc. and BorgWarner TorqTransfer Systems, Inc. (E.D. Mich.). Case settled. Technology related to four wheel drive technology used in transfer cases supplied to automotive industry. (2001-2002).
  • BorgWarner Inc. and BorgWarner TorqTransfer Systems, Inc. v. New Venture Gear, Inc. (N.D. Ill.). Case settled. Technology related to four wheel drive technology used in transfer cases supplied to automotive industry. (2000-2002).
  • Integrated Paving Concepts, Inc. v. Nicon Enterprises and Sadi Sepassi (C.D. Cal.). Obtained jury verdict of trademark and copyright infringement, and an award of damages. Subject matter related to unauthorized trademark and copyright use on internet. (1999-2001).
  • Ameritech Corporation v. Quaterra Communications Corporation (E.D. Wisc.). Obtained default judgment. Subject matter related to Ameritech trademark rights. (1998).
  • Ryobi Outdoor Products v. American Honda Motor Company Inc., et al (D. Az.). Case settled. Technology related to four cycle engine technology. (1998-2000).
  • Ruud Lighting v. Security Lighting Systems, Inc. (E.D. Wisc.). Case settled. Technology related to light reflector patent. (1998-1999).
  • Bracey v. Brushtech (N.D. Ill.). Case dismissed after discovery of invalidating prior art reference. Technology related to brush design. (1998).
  • United Technologies v. Borg-Warner Inc. (E.D. Mich.). Case settled. Technology related to gear motor used in automotive industry. (1997-1999).
  • Illinois Tool Works v. Fori Automation (E.D. Mich.). Case settled. Technology involved vision equipment for wheel and tire mounting equipment used by the automotive industry. (1997).
  • Minnesota Manufacturing & Mining v. M/A-COM Inc. (W.D. Tx.). Case settled. Technology related to thermoplastic for electrical connectors. (1996-1997).
  • Amway Corporation v. Nartron Corporation (W.D. Mich.). Patent held invalid on summary judgment. Technology related to water treatment technology. (1993-1996).
  • Weiss v. Ruud Lighting (N.D. Ill.). Case settled. Technology related to unique lighting fixture. (1991-1992).
  • Inland Steel Company v. LTV Steel Company and USX Corporation (N.D. Ill.). The asserted patents were invalidated during reexamination after a jury trial on infringement only. Technology related to prevention of internal oxidation during processing of cold rolled lamination steel. (1991-1993).
  • Kelsey-Hayes Company v. Motor Wheel Corporation (W.D. Mich.). Case settled. Technology related to full face wheel technology utilized by the automotive industry. (1991-1992).

International Trade Commission Investigations

  • Kia Motors America, Inc. and Kia Motors Corporation v. Peter F. Wingard (N.D. Ill.). Case dismissed pending IPR and bankruptcy proceeding relating to patent ownership.  Kia seeks a declaratory judgment of noninfringement of patent asserted against Kia vehicles. (2014-2015).
  • Peter F. Wingard and Netlatch LLC v. Hyundai Motor America and Orr Hyundai of Texarkana (E.D. Tx.).  Case dismissed pending IPR and bankruptcy proceeding relating to patent ownership.  Plaintiff alleged infringement based on sales of Hyundai vehicles having keyless ignition. (2014-2015).
  • Peter F. Wingard v. Various Kia Dealerships Throughout the U.S. (10 different district courts). Cases dismissed pending IPR and bankruptcy proceeding relating to patent ownership.  Plaintiff alleged infringement against 11 different Kia dealerships in ten different district courts (E.D. Tx., S.D. Tx., N.D. Tx., N.D. Ill., C.D. Cal., W.D. Wisc., D. Del., M.D. Fla. D. N.J., and E.D. Va.) based on sales of Kia vehicles having keyless ignition. (2014-2015).
  • Quest Licensing Corp. v. Interactive Data Corporation (D. Del.). Pending. Plaintiff alleges infringement relating to technology for providing information to mobile telecommunications users. (2014 to present).
  • Patriot Scientific Corporation, Phoenix Digital Solution LLC, Technology Property Limited LLC v. ZTE Corporation and ZTE (USA) Inc. (N. D. Cal).  Pending.  Representing defendants against claims of alleged infringement of three patents related to microprocessor technology.  (2012 to present)
Press Releases & Events
March 15, 2016
On March 15, Robert Mallin and Laura Beth Miller will participate on the panel, "PTAB and the District Courts" at the Managing Intellectual Property's US Patent Forum in Palo Alto, CA. The session will ...
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 ...
January 14, 2014
CHICAGO -- Brinks Gilson & Lione, one of the nation’s largest intellectual property law firms, has announced the 2014 chairpersons of its legal and industry practice groups and geographic task forces. The firm added a new practice group ...
January 15, 2013
CHICAGO – Brinks Gilson & Lione has added four new attorneys as chairs of its firm-wide practice groups and formed two new task forces to focus on intellectual property legal services to clients in Germany and Brazil. Appointees include ...
Honors

Leading Intellectual Property Lawyer, Leading Lawyers Network, Law Bulletin Publishing Company, 2014