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James R. Sobieraj

Practice Summary

Jim Sobieraj is President of Brinks Hofer Gilson & Lione and a licensed patent attorney with 30 years of experience in the enforcement, licensing and procurement of intellectual property rights. He has been lead counsel in many lawsuits involving patent infringement, ownership of patent rights, license disputes, misappropriation of trade secrets, trade dress infringement, unfair competition, false advertising, fraud, antitrust, breach of contract and other commercial litigation. His litigation experience includes bench and jury trials, temporary restraining orders, preliminary injunctions, Markman hearings, appeals, arbitrations and mediations.

Mr. Sobieraj has represented companies in a variety of technologies including analog and digital electronics, telecommunications, microprocessors, software, internet web sites, electromechanical transducers and control circuits, medical devices, hydraulics, automotive components, and various consumer goods.

Honors/Distinctions
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  • Leading Patent Litigator, Intellectual Asset Management magazine's "IAM Patent Litigation 250 - The World’s Leading Patent Litigators," 2011
  • The Best Lawyers in America (Intellectual Property Law), 2007- 2012
  • Illinois Super Lawyers, Intellectual Property Litigation, 2005-2012; Top 100 Lawyers in Illinois, 2010
  • Euromoney Guide to the World's Leading Patent Law Experts, 2005, 2009
  • Leading Intellectual Property Strategist Intellectual Asset Management magazine’s “IAM 250 - A Guide to the World’s Leading IP Strategists,” 2009-2011
  • Leading Intellectual Property Lawyer, Leading Lawyers Network, Law Bulletin Publishing Company, 2003-2011 
  • Guide to the World's Leading Patent Law Practitioners, published by Managing Intellectual Property, 2007, 2010
  • Legal Media Group's Guide to the World's Leading Patent Law Experts, 2005
  • BTI Client Service All-Star Team for Law Firms, 2004
  • Euromoney Guide to the World’s Leading Technology, Media and Telecommunications Lawyers, 2003
  • Euromoney Guide to the World’s Leading Information Technology Advisors, 1999
Representative Matters
Representative Litigations
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  • Parallel Networks LLC v. AEO Inc. (E.D. Texas): Mr. Sobieraj represented Amway against a patent infringement claim based on Amway’s website. The lawsuit settled.
  • Soverain Software LLC v. J.C. Penney et al (E.D. Texas): Mr. Sobieraj represented Amway against a claim of multiple patents relating to the use of “shopping carts” on a commercial website. The lawsuit settled.
  • Quixtar Inc. v. Woodward, et al. (Arbitration, Michigan, 2007-Present). Mr. Sobieraj represents Quixtar in an action relating to misappropriation of trade secrets, breach of contract and tortious interference. After a 16-day trial, the arbitration awarded Quixtar over $25 million.
  • Quixtar Inc. v. Woodward et al (Arbitration): Mr. Sobieraj represented Quixtar in an action relating to misappropriation of trade secrets, breach of contract and tortious interference. After a 16-day trial, the arbitration awarded Quixtar over $25 million.
  • Tenneco Automotive Inc. v. Visteon Corp., (D. Del.): Mr. Sobieraj represented Visteon, which was accused of infringing two patents on catalytic converters. One patent was dismissed prior to trial. Following a six-day jury trial on the second patent, the case settled before the jury delivered a verdict.
  • NCR Corp. v. Alticor Inc. (N.D. Illinois): Mr. Sobieraj represented the defendants in an action alleging infringement of seven NCR patents relating to e-commerce. The claims against two defendants were dismissed for lack of personal jurisdiction. The claims against a third defendant were transferred to the W.D. Michigan, and then settled.
  • Delta T Corporation v. Sun-North et al. (E.D. Kentucky. and American Arbitration Association): Mr. Sobieraj defended several Canadian corporations in an action alleging patent infringement, extortion and breach of contract. The case settled.
  • Nano-Proprietary Inc. v. Till Keesmann (N.D. Illinois): Mr. Sobieraj defended Mr. Keesmann, a German inventor, in an action concerning the termination of an exclusive license agreement for a pioneer patent in the field of carbon nanotubes. The case settled.
  • New Medium Technologies LLC et al v. LG Philips LCD et al. (N.D. Illinois: Mr. Sobieraj represented LG Philips LCD, which had been accused of infringing three patents relating to LCD panels. The case settled.
  • Energy Transportation Group, Inc. v. Sonic Innovations, Inc., et al. (D. Delaware): Mr. Sobieraj represented several defendants who were accused of infringing two patents relating to electronic hearing aids. The case settled.
  • Brunswick Bowling and Billiards Corp. v. Steltronic USA, Inc., (N.D. Illinois): Mr. Sobieraj represented Brunswick, which sued for infringement of a patent related to an electronic bowling scoring system. The case settled.
  • Oxford Gene Technology Limited v. Motorola, Inc. (N.D. Illinois): Mr. Sobieraj represented Motorola, which was accused of infringing a patent directed to an electronics-based DNA detection system. The case settled.
  • Charles E. Hill & Associates, Inc. v. Amazon.com, Inc., et al. (E.D. Texas): Mr. Sobieraj represented one of several defendants accused of infringing three patents directed to electronic commerce. The case settled.
  • Alticor Inc. v. Ultra-Sun Technologies, Inc. (W.D. Michigan): Mr. Sobieraj represented Alticor in an action based on claims of false advertising under federal and state law, and infringement of two patents relating to electronic controls for a water treatment system. The false advertising claims were settled before trial. The Federal Circuit ruled in Alticor’s favor on the patent claims. The case then settled.
  • Tyco Electronics Corp. v. Hon Hai Precision Industry Co. Ltd (C.D. California): Mr. Sobieraj represented 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.
  • AMP Incorporated v. AT&T Corporation. (M.D. Pa.): Mr. Sobieraj represented 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.
  • Amway Corp. v Nartron Corp., (W.D. Michigan): Mr. Sobieraj represented Amway in a declaratory judgment action against a patent relating to electronic end-of-life indicators for water filters. The court held on summary judgment that the patent was invalid.
  • AMP Incorporated v. Teradyne, Inc. (M.D. Pennsylvania): Mr. Sobieraj represented 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 shortly after AMP filed its oppositions to Teradyne’s motions for summary judgment.
  • Cuno, Inc. v. Pall Corporation (E.D.N.Y.): Mr. Sobieraj represented the plaintiff during a 5-week jury trial involving claims of patent infringement asserted by both parties. The patents were directed to nylon microporous membranes. The case settled when the defendant agreed to pay the plaintiff $12,000,000 and to provide additional consideration.
  • Motorola Corporation v. Hitachi Ltd. (W.D. Texas): Mr. Sobieraj represented Hitachi in patent litigation relating to microprocessors. Motorola and Hitachi asserted patents against each other on various aspects of microprocessor technology. The case settled.
  • Ball Corp. v. Weirton Steel and Oxy-Dry Corporation (N.D. Illinois and D. West Virginia): Mr. Sobieraj represented Ball Corporation in a law suit charging the defendants with patent infringement and trade secret misappropriation relating to electrostatic coating technology. The case settled.
  • Standard Oil v. Showa Entetsu (E.D. Mich.): Mr. Sobieraj represented Standard Oil against a defendant was charged with breach of an exclusive trade secret license for an electroplating process. The court entered a temporary restraining order shortly after the lawsuit was filed, and a preliminary injunction after an extensive evidentiary hearing.
  • Lemelson v. United States (U.S. Claims Court): Mr. Sobieraj represented Cincinnati Milacron, a third-party defendant in a patent infringement case involving electronic robotic controls. The case settled.
  • Crane Co. v. The Goodyear Tire & Rubber Co., (N.D. Ohio): Mr. Sobieraj was counsel for the patentee, Crane, in a suit charging Goodyear with infringement of two patents directed to anti-lock braking electronics for commercial aircraft. The Federal Circuit held that the patents were invalid.
     
Representative Published Decisions
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  • Nitro Distrib., Inc. v. Alticor Inc., 565 F.3d 417 (8th Cir. 2009)
  • Nitro Distrib., Inc. v. Alticor Inc., 453 F.3d 995 (8th Cir. 2006)
  • Alticor Inc. v. Ultra-Sun Technologies, Inc., 269 F.Supp. 2d 936 (W.D. Mich. 2003)
  • Procter & Gamble v. Haugen and Amway Corp., 317 F.3d 1121 (10th Cir. 2003)
  • Procter & Gamble v. Haugen and Amway Corp., 222 F. 3d 1262 (10th Cir. 2000)
  • Nike Inc. v. Wolverine World Wide, Inc., 43 F. 3d 644 (Fed. Cir. 1994)
  • Wolverine World Wide Inc. v. Nike Inc., 38 F. 3d 1192 (Fed. Cir. 1994)
  • Amway Corp. v. Nartron Corp., 29 USPQ 2d 1314 (Fed. Cir. 1993)
  • Amway Corp. v. Nartron Corp., 25 USPQ 2d 1944 (W.D. Mich. 1992)
  • Cuno Inc. v. Pall Corp., 729 F. Supp. 234 (E.D. N.Y.1989)
  • Michod v. Walker Magnetics Group Inc., 115 FRD 345 (N.D. Ill. 1987)
  • Dana Corp. v. American Precision Co., 221 USPQ 1098 (N.D. Ill. 1984)
Publications
Feature Profiles
Presentations
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  • “The Devils in the Deals: Sticky transactional issues”, Licensing Executives Society (USA & Canada) 2010 Annual Meeting
  • “Global Leaders of Corporate Licensing”, Moderator of panel discussion”, Licensing Executives Society International Conference, Chicago, Illinois, May 2008
  • Evaluating and Managing the Risks of IP Litigation in the U.S," Freshfields Bruckhaus Deringer and Brinks Hofer Gilson & Lione Litigation Seminar on What Every European Company Should Know About Litigation in the U.S, Munich, Germany, June 21, 2007
  • "Resolving International Licensing Disputes Through Mediation," Licensing Executives Society International Conference, Zurich, Switzerland, June 20, 2007
  • "International Arbitration," Licensing Executives Society (USA & Canada) 2006 Annual Meeting
  • "The Quilt Work of Damages Methodologies in Matter's within the Circuit's Preview," The Federal Circuit Bar Association Bench and Bar Conference, Albuquerque, New Mexico, July 1, 2006
  • "Managing The Risks of IP Litigation," Lorman Seminar, Chicago, Illinois, May 4, 2006
  • "Antitrust Issues in Patent and Technology Licensing," Licensing Executives Society International Conference, Seoul, Korea, April 12, 2006
  • "Dispute Resolution Alternatives in the Pacific Rim," Licensing Executives Society International Conference, Seoul, Korea, April 10, 2006
  • "Assessing and Managing the Risks of IP Litigation," Brinks Hofer Gilson & Lione Litigation Seminar, October 25, 2005
  • "What Business Executives Must Know About IP Litigation," Licensing Executives Society (USA & Canada) 2005 Annual Meeting
  • "Leaders of Licensing Panel Discussion," Licensing Executives Society (USA & Canada) 2005 Annual Meeting
  • "IP Bankruptcy: A Dastardly Deed," Meeting of the Licensing Executives Society International, Paris, France, March 31, 2004
  • "The Doctrine of Equivalents in Europe and the U.S.: A Case Study," Licensing Executives Society International Conference, Oslo, Norway, June 18, 2003
  • "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
Memberships & Affiliations
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  • Licensing Executives Society
    President, 2002-2003
    President-Elect, 2001-2002
    Secretary, 1998-2001
    International Delegate, 1997-2007
    Board of Trustees, 1996-2004
    Meeting Chairman, 1999 Annual Meeting; 1995 Winter Meeting
    Workshop Program Chairman, 1996 Annual Meeting; 1992 Western Meeting
    Arrangements Chairman, 1995 Annual Meeting; 1994 Winter Meeting
    Chicago Chapter Chairman, 1995-1996
    Committee Meetings Chairman, 1993 Annual Meeting
    Electronics Committee Chairman, 1992-1994
  • Licensing Executives Society International
    Treasurer, 2011-present
    Counsel to the Board of Directors, 2008-Present
    Chair, 2008 LES International Conference
    Vice Chair, Dispute Resolution Committee, 2005-2007
    Co-Chair, Meetings Committee, 2004-2005
    Vice Chair, Meetings Committee, 2002-2004
    Vice Chair, European Committee, 2000-2002
  • Intellectual Property Law Association of Chicago
    President, 2007
    President-Elect, 2006
    Vice President, 2005
    Judges Dinner Chair, 2004-2005
    Judicial Appointments Committee Chair, 2009-2011
    Patent Law Symposium Co-Chair, 2007-2011
  • National Inventors Hall of Fame
    Board of Directors, 2004-Present
  • IP Hall of Fame Academy, 2007-Present
  • The Licensing Foundation
    Board of Directors, 2003-2008
  • Certified Licensing Professionals, Inc.
    Board of Governors, 2007-2008
    President, 2008
    Counsel to the Board of Governors, 2008-2010
  • American Intellectual Property Law Association
    Chairman, Contracting for ADR Committee, 1990-1993
    Judge, Giles S. Rich Moot Court Competition
  • Richard Linn American Inn of Court, Founding Member
  • Federal Circuit Bar Association
  • Federal Bar Association
  • The Lawyers Club of Chicago
  • Intellectual Property Owners Association
Civic Activities
  • St. Edward’s Church Parish Council
    President, 2006-present
  • Union League Club of Chicago
  • Chicago Volunteer Legal Services
  • Lincoln Park Tower Condominium Association
    President, 1988-1990
    Board of Directors, 1987-1991
Legal Experience
  • Brinks Hofer Gilson & Lione, Chicago, Illinois
    President, 2012-Present
    President-Elect, 2011
    Member, Board of Directors, 1990, 1994, 1995, 2000, 2001, 2010, 2011
    Shareholder, 1987-Present
    Associate, 1982-1986
    Chair of the Litigation Practice Group, 2002-2007
    Chair of the Strategic Planning Committee, 2008-2009
Non-Legal Experience
  • IBM Corporation, Burlington, Vermont
    Engineering Intern, 1979 and 1980
Press Releases