Practice Groups

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Appellate

Our Experience

Brinks Gilson & Lione has a proven record of successes in appellate matters involving patents, trademarks, copyrights, trade secrets, and other related issues, such as antitrust claims. We litigate intellectual property appeals stemming from a wide array of district court and agency determinations, including:

  • Final decisions of the U.S. District Courts;
  • Exclusion orders issued by the U.S. International Trade Commission;
  • Post-grant Patent Office proceedings under the America Invents Act of 2012;
  • Orders on motions for preliminary injunctions; and
  • Ex parte Patent Office proceedings. 

Our practice includes a strong specialty before the U.S. Court of Appeals for the Federal Circuit, which holds exclusive jurisdiction over appeals arising under the Patent Act and appeals from the U.S. Patent and Trademark Office. Our attorneys are not only known for their outstanding appellate advocacy, but also for the firm’s long and continuing tradition of leadership in the Federal Circuit Bar Association and Federal Circuit Historical Society.

The late Robert L. Harmon, a Brinks shareholder until his retirement from the practice of law, literally “wrote the book” on the Federal Circuit’s patent decisions with his treatise Patents and the Federal Circuit.  Bob passed on the care of his beloved treatise to Brinks, where it is maintained currently by shareholders Cynthia Homan and Laura Lydigsen, with the assistance of several Brinks associates.  Brinks attorneys update the treatise annually to reflect all new Federal Circuit and Supreme Court patent decisions. 

Brinks attorneys also appear regularly before the regional circuit courts of appeals, in trademark, copyright, and other non-patent, intellectual property cases. 

Brinks attorneys are not strangers at the Supreme Court of the United States either.  We are well-versed in Supreme Court practice, including proceedings related to Calls for the Views of the Solicitor General (“CVSG”), merits briefs, petitions for writs of certiorari, oppositions to petitions, and amicus briefs.  

Our Strategy and Successes

Our appellate strategy draws on both our appellate specialists and our deep bench of attorneys having the scientific, engineering, and technical acumen our clients’ cases demand.  The results show.  Some of our attorneys’ representative successes include:

  • SoftView LLC v. Kyocera Corp., 2015 WL 509660 (Fed. Cir. 2015).  The Federal Circuit issued a per curiam affirmance in an early appeal from the Patent Trial and Appeal Board, which held all challenged claims of a patent directed to a zoomable web browser for smartphones unpatentable.
  • Robert Bosch, LLC v. Snap-on Inc. et al., 769 F.3d 1094 (Fed. Cir. 2014).  The Federal Circuit ruled in favor of Brinks’ client that the asserted claims of a patent for an automotive diagnostic tester should be interpreted as means-plus-function claims and were invalid as indefinite for lack of structure in the specification.
  • Georgia-Pacific Consumer Products LP v. Kimberly-Clark Corp., 647 F.3d 723 (7th Cir. 2011).  The Seventh Circuit affirmed a summary judgment ruling in favor of Brinks’ client that the asserted trade dress was functional and not entitled to trademark protection.
  • Abbott Laboratories v. Sandoz Inc., 566 F.3d 1282 (Fed. Cir. 2009) (en banc in part).  Brinks successfully defended the denial of a preliminary injunction relating to a pharmaceutical product.  The Federal Circuit ruled en banc that process limitations in product-by-process claims are limiting for purposes of assessing infringement.  

Our appellate specialists also recognize that sometimes the greatest success is one achieved outside the courtroom with minimal expense to the client.  We often assist clients in achieving favorable settlement outcomes during the appellate process. 

Forward Thinking
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Under 35 U.S.C. § 315(e), a final written decision in an inter partes review (“IPR”) by the Patent Trial and Appeal Board (“PTAB”) results in estoppel of certain actions by the petitioner...

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In Ultratec, the Federal Circuit cited several problems with the Board’s permissive rules of trial proceedings and held the Board abused its discretion in its consideration of supplementary evidence...

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On appeal of the district court’s dismissal of Visual Memory, LLC’s patent infringement complaint against NVIDIA Corporation, the Federal Circuit concluded...

Press Releases

CHICAGO—Danielle Anne Phillip, Allyn B. Elliott, and Peter Lee, attorneys in the post-grant patent practice group at intellectual property law firm Brinks Gilson & Lione, will present the webinar “Keeping Up With the PTAB: How to Win When the Rules Seem to Change” at noon CDT on July 26, 2017...

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On June 23, 2017, the Federal Circuit held that a party appealing a decision from the Patent Trial and Appeal Board (“PTAB”)...

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The June 15 decision by the Federal Circuit, EmeraChem Holdings, LLC v. Volkswagen Group of Am., Inc., highlights the power of a procedural challenge to a final written decision by the PTAB...

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This past Monday, June 19, the Supreme Court unanimously ruled that Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a), is unconstitutional under the First Amendment.  Matal v. Tam, No. 15-1293, 582 U.S. ___ (2017).  Section 2(a), often referred to as the “disparagement clause”...

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On June 5, 2017, the Federal Circuit arrived at two different conclusions concerning whether a case is exceptional under 35 U.S.C. § 285, reversing the district court in both cases...

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On May 30, 2017, the United States Supreme Court issued a decision in Impression Products, Inc. v. Lexmark International, Inc. (Case No. 15-1189), limiting the use of patent rights to enforce post-sale restrictions on goods sold by the patent owner or the patent owner’s licensee...

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On May 16, 2017, the Ninth Circuit affirmed the district court’s finding that the GOOGLE trademark had not become generic, providing guidance on preventing genericide.  Elliott et al. v. Google, Inc., No. 15‑cv-15809, 2017 US App. LEXIS 8583 (9th Cir. May 16, 2017)...

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On May 22, 2017, the Supreme Court of the United States issued a decision in TC Heartland LLC v. Kraft Foods Group Brands LLC (Case No. 16-341) altering the landscape of venue for patent infringement litigation...

Press Releases

Ann Arbor, MI - James Cleland, a shareholder in the Ann Arbor office of Brinks Gilson & Lione, one of the largest intellectual property law firms in the U.S., said the U.S. Supreme Court’s decision on May 22, 2017 in TC Heartland LLC v. Kraft Foods Group Brands LLC, alters the landscape of venue for patent infringement litigation and, in Michigan, will have a positive impact on key industries such as automotive...

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In Helsinn Healthcare S.A., v. Teva Pharm. USA, Inc., the Federal Circuit recently held that, despite changes to the statutory language of § 102 under the Leahy-Smith America Invents Act (“AIA”), the Court’s pre-AIA interpretation of the on-sale bar remains the same with respect to public sales...

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On December 17, 2015, an Eastern District of Texas Court ordered patent owner eDekka to pay ...

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On Friday, January 15, the U.S. Supreme Court granted certiorari in In re Cuozzo Speed ...

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On Monday January 4, the Federal Circuit heard oral arguments in a pair of appeals—Acorda ...

publication

On December 11, 2015 Bill Carroll and Heidi Dare's article "A Closer Look At Ariosa After Fed. Circ. ...

in the media

On September 3, 2015 Brinks was mentioned in the Law360 article, 'Brinks Gilson Adds Womble Carlyle ...

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On August 7, 2015, an Eleventh Circuit panel in Duty Free Americas, Inc. v. The Estee Lauder...

publication

On August 12, 2015 Lyle Vander Schaaf and Shen Wang’s article, “Fed. Circ. Breaks Impasse On ITC Authority In ...

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The Federal Circuit recently issued a decision that could be very helpful to trademark applicants. On July 20, 2015, the Federal Circuit vacated and remanded the Trademark Trial and Appeal Board’s (“TTAB”) holding that Juice ...
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On June 16, 2015 the Federal Circuit decided en banc to overturn a panel decision of the Federal Circuit that held the term “module” in the context of a computer software patent did not invoke means-plus-function claiming under 35 U.S.C. ...
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On June 22, 2015, the Supreme Court in Kimble v. Marvel Enterprises, Inc. No. 13-720, applied stare decisis to uphold its 1964 decision in Brulotte v. Thys Co., 379 U.S. 29 (1964), where the Court previously held that a patent holder cannot charge ...
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Today, in Commil USA, LLC v. Cisco Systems, Inc., the Supreme Court overruled the Court of Appeals for the Federal Circuit (CAFC) and held that a defendant’s belief regarding patent validity is not a defense to an induced infringement ...
in the media
On March 23, 2015 Brinks was mentioned in the Law360 article, 'Law360 Reveals Largest IP Boutiques.' Click here to read more.
in the media
Shareholder Danielle Anne Phillip was recently featured in Leading Lawyers Magazine—Women's Edition for 2015 in the article 'Danielle Anne Phillip: Bringing the Rigor of a Scientist to the World of Intellectual Property,' which ...
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In Teva Pharm. USA, Inc. v. Sandoz, Inc., 574 U.S. __, No. 13-854 (2015), the Supreme Court overturned the Federal Circuit’s long-standing precedent that claim construction is subject to strict de novo review. In a 7-2 decision authored by ...
in the media
Jeffry M. Nichols is quoted in the Law360 article “High Court Claim Construction Ruling Set To Spur New Fights,” on January 20, 2015.  Read the article here.
in the media
Brinks' attorneys, Gary M. Ropski, Kori Anne Bagrowski, James G. DeRouin, James K. Cleland, Jon H. Beaupre and John A. Lingl were mentioned in the Law360 article 'Fed. Circ. Affirms Bosch Car Tester Patent As Invalid,' as counsel for ...
publication
William Carroll and Jeffry Nichols wrote the article, 'Fed. Circ. And USPTO Diverge On Lead Compound Analysis,' for Law360 on July 30, 2014. Click here to read more.
in the media
Brinks was mentioned in the Law360 article, '12 Firms Are The Full IP Package, In-House Counsel Say,' on July 6, 2014. Twelve firms were chosen based on corporate counsel surveyed in the new Intellectual Property Outlook report ...
Press Releases
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 ...
Press Releases
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 ...
Press Releases
CHICAGO – Thirty-eight attorneys from Brinks Gilson & Lione have been named in the 2013 Super Lawyers Illinois Edition, in the categories of Intellectual Property, Intellectual Property Litigation, and Alternate Dispute Resolution ...
Press Releases
CHICAGO – The 2012 Super Lawyers Business Edition has named 24 attorneys from Brinks Gilson & Lione in the categories of Intellectual Property and Intellectual Property – Litigation respectively. The following Brinks attorneys are ...
Press Releases
CHICAGO – Leading Lawyers Network has named 54 attorneys from Brinks Gilson & Lione, one of the largest intellectual property law firms in the United States, as 2012 Leading Lawyers in intellectual property in Illinois for 2012. The roster ...
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On August 31, 2012, the Federal Circuit issued its highly anticipated en banc decision regarding Akamai Technologies, Inc. v. Limelight Networks, Inc., No. 2009-1372, -1380, -1416, -1417 and McKesson Technologies, Inc. v. Epic Systems Inc., No. ...
publication
At the beginning of 2012, Brinks Gilson & Lione welcomed James R. Sobieraj as the firm's new president. Please click here for a personal message from Jim, as well as details on the growth of the firm.
book
Steven L. Oberholtzer penned The Basic Principles of Intellectual Property Law, a primer published by Brinks Gilson & Lione in 2006. Copies available upon request by clicking here.
publication
On June 13, 2005, the United States Supreme Court expanded the safe harbor provision of 35 U.S.C. §271(e)(1) to the “use of patented compounds in preclinical studies … as long as there is a reasonable basis for believing that the ...
publication
On July 12, the U.S. Court of Appeals for the Federal Circuit issued its much anticipated en banc decision on patent claim construction, Phillips v. AWH Corp., No. 03-1269. The court properly overruled the dictionary-centric approach suggested by ...
publication
Copyright © 2004 the International Trademark Association and reprinted with permission from The Trademark Reporter®, 94 TMR 1360 (November-December 2004).
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Only federal courts may decide patent cases, but state courts may decide patent issues. Either court system will apply its own or the other’s law or a combination, depending on several factors. Because the correct answer can be unexpected, ...
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OVERVIEW The first federal act specifically relating to the theft of trade secrets was enacted into law on October 10, 1996. The Economic Espionage Act is a combination of two proposed bills. One bill, S 1557, was introduced in Congress to cover ...
book

The Twelfth Edition of Patents and the Federal Circuit is now available. ...

Group Chairs
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Chicago, IL
Group Chairs