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Marc V. Richards

Practice Summary

Mr. Richards has extensive experience handling both U.S. patents and International patents in software, business methods, pharmaceuticals, and chemical processes.  In particular, he has prepared and obtained patents in diverse technologies such as virtual reality, financial services, insurance processing, user interfaces, e-commerce, consulting services, anti-cancer therapeutics, pharmaceutical compounds, combinatorial chemistry, polymers, films, contact lenses, medical devices, industrial coatings, thermoplastic moldings, industrial cryogenics, automotive components and toys.   He also has handled reexamination and interference proceedings for software patents and chemical process patents.

Mr. Richards has drafted license agreements, prepared joint research and development agreements, prepared non-infringement and invalidity studies for a variety of subject matter in pharmaceutical, chemical, food processing and automobile industries, conducted due diligence review of target company patent portfolios, prepared confidential disclosure and employee non-competition agreements, and advised clients in other Intellectual Property related issues such as trademark and copyright law.

Mr. Richards has prepared appellate briefs before Federal Circuit.  He has handled discovery, pre-trial and trial procedural and substantive matters in patent litigation: prepared motions, briefs, discovery requests, and expert reports; taken and defended depositions; and inspected industrial processes accused of infringing activity.  He has also investigated trade secret and employee termination disputes and obtained favorable resolution of legal disputes for clients.

Honors/Distinctions
  • Leading Intellectual Property Lawyer, Leading Lawyers Network, Law Bulletin Publishing Company, 2006, 2007, 2009-2012
  • Illinois Super Lawyers, 2013 
  • American Jurisprudence Award, Loyola University Chicago School of Law, Antitrust, Property, Civil Procedure
  • Editor, Loyola University Chicago Law Journal, Loyola University Chicago School of Law
  • Contributing Editor, Loyola University Chicago Consumer Reporter, Loyola University Chicago
Representative Matters
Patents
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  • US 7,126,558 Industrial Augmented Reality
  • US 7,020,621 Method for Determining Total Cost of Ownership
  • US 7,013,284 Component Based Interface to Handle Tasks During Claim Processing
  • US 6,895,383 Overall Risk in a System
  • US 6,869,686 Irradiated Biaxially-Oriented Film
  • US 6,738,736 Method and Estimator for Providing Capacity Modelling and Planning
  • US 6,740,409 Polymer Films
  • US 6,270,555 Process for Treating Precious Metal Ores
  • US 6,244,707 UV Blocking Lenses and Materials Containing Benzotriazoles and Benzophenones
  • US 6,121,321 Substituted Methoxy Benzylidene Indenyl Acetic and Propionic Acids for Treatment of Patients With Precancerous Lesions
  • US 5,858,694 Method for Identifying Compounds for Inhibition of Cancerous Lesions
  • US 5,834,002 Chewing Gum Containing Colloidal Bismuth Subcitrate
  • US 5,618,504 Method For Recovery of Alkali Values from Trona Using Sequential Crystallization
  • WO 01/05578 Thermoformable Ophthalmic Lenses
  • WO 00/59365 Biomedical Devices with Polyimide Coating
  • WO 99/31506 Parallel Solution Phase Synthesis of Lactams
Litigation
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  • Hossack v. Roundhill, Patent Interference 105,877 JC (Patent Board of Appeals & Interferences). Subject: Interference proceeding involving U.S. Patent No. 5,928,151 directed to ultrasound medical diagnostics technology. Resolution: Case settled.
  • Elazar v. Petrushin, Patent Interference 105,737 JL (Patent Board of Appeals & Interferences). Subject: Interference proceeding involving U.S. Patent No. 6,542,602 directed to vocal emotion recognition technology. Resolution: Case settled.
  • Maziuk v. Ritzenthaler,  Patent Interference 105,693 McK (Patent Board of Appeals & Interferences).  Subject:  Interference proceeding involving U.S. Patent No. 7,481,987 directed to flue gas desulfurization technology.  Resolution:  Case settled.
  • First Health Group v. Allcare Health Mgmt System Inc., Case No. IL N-1:01cv1790 (Northern District of Illinois).  Subject:  Declaratory judgment action filed by medical insurance provider against patentee seeking declaration of patent invalidity, non-infringement, and unenforceability.  Resolution:  Case settled before trial.
  • Allcare Health Mgmt System, Inc. v. Advance Paradigm, Inc., et al., Case No. 400-CV-1683-E (Northern District of Texas-Fort Worth Division).  Subject:  Patent infringement action asserted against defendants' pharmaceutical benefit computer systems. Resolution:  Case settled before trial.
  • S.C. Johnson Commercial Markets, Inc. v. The B.F. Goodrich Company, Case No.98 C 0052 S (Western District of Wisconsin).  Subject:  Infringement and validity of three patents relating to bulk polymerization process for making acrylic copolymers.  Resolution:  Two patent counts withdrawn before trial.  The remaining count was settled at beginning of trial.
Publications
Presentations
Memberships & Affiliations
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  • Association Internationale pour la Protection de la Propriété Intellectuelle
    2010: US Group Chair of Q213
    2011: Int’l Chair of Q217 Working Committee – Hyderabad ExCo
  • American Bar Association
    YLD-IP Subcommittee, Board Member, 1994-1995
  • Chicago Bar Association
  • American Intellectual Property Law Association
  • Intellectual Property Law Association of Chicago
    Treasurer, 2011-2013
    Board of Managers, 2002-2004
  • Intellectual Property Owners Association
  • International Association for the Protection of Intellectual Property
  • Licensed Professional Engineer, Illinois, 1989
  • Richard Linn American Inn of Court 
Legal Experience

Brinks Hofer Gilson & Lione, Chicago, Illinois
Shareholder, 2000-Present
Associate, 1993-1999
Law Clerk, 1992-1993

Loyola University Chicago
Consumer Legal Clerk, 1992
 

Non-Legal Experience

UOP, Des Plaines, Illinois
Senior Instrument Engineer, 1988-1990
Field Technical Service Engineer, 1982-1988