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Robert S. Mallin

Practice Summary

Robert Mallin began his legal career at Brinks Hofer in 1990. He has extensive litigation experience in a variety of patent and trademark cases, including first chair jury trial matters, arbitration proceedings and ITC proceedings. He has prepared for and participated in preliminary injunction proceedings and Markman hearings. His litigation experience also includes taking and defending expert and fact depositions, preparing and arguing case-dispositive motions and conducting all discovery matters. He has successfully used the reexamination process in the PTO to invalidate patents and avoid costly litigation for his clients. He has represented and counseled clients in matters involving non-practicing entities.

Mr. Mallin also counsels clients on licensing, patentability, freedom to operate and validity matters. He also has significant patent prosecution experience including experience in interference proceedings. He has counseled clients in a variety of technical areas including metallurgical processing, electromechanical inventions, mechanical inventions, chemical processing, optical fiber connectors and thermoplastic adhesives, the automotive industry, biotechnology, and software.

Representative Matters
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  • Kelsey-Hayes Company v. Motor Wheel Corporation (W.D. Mich.). Case settled.
  • 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.
  • Weiss v. Ruud Lighting (N.D. Ill.). Case settled.
  • Amway Corporation v. Nartron Corporation (W.D. Mich.). Patent held invalid on summary judgment.
  • Nartron Corporation v. Amway Corporation (Michigan Circuit Court). Judgment in favor of client after bench trial.
  • Minnesota Manufacturing & Mining v. M/A-COM Inc. (W.D. Tx.). Case settled.
  • Illinois Tool Works v. Eagle Industries (American Arbitration Association). Case settled after arbitration proceeding commenced.
  • Illinois Tool Works v. Fori Automation (E.D. Mich.). Case settled.
  • United Technologies v. Borg-Warner Inc. (E.D. Mich.). Case settled.
  • Ruud Lighting v. Security Lighting Systems, Inc. (E.D. Wisc.). Case settled.
  • Ryobi Outdoor Products v. American Honda Motor Company Inc., et al (D. Az). Case settled.
  • Ameritech Corporation v. Quaterra Communications Corporation (E.D. Wisc.). Obtained default judgment.
  • 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.
  • BorgWarner Inc. and BorgWarner TorqTransfer Systems, Inc. v. New Venture Gear, Inc. (N.D. Ill.). Case settled.
  • New Venture Gear, Inc. v. BorgWarner Inc. and BorgWarner TorqTransfer Systems, Inc. (E.D. Mich.). Case settled.
  • In the matter of Certain Home Vacuum Packaging Machines (United States International Trade Commission). Case settled after ITC denied request for a temporary exclusion order in favor of client.
  • Tilia Int’l v. The Rival Co. (N. D. Cal.). Case settled concurrently with In re Home Vacuum Packaging Machines.
  • Bracey v. Brushtech (N. D. Ill.). Case dismissed after discovery of invalidating prior art reference.
  • Black & Decker v. Ryobi Technologies and TechTronics Industries (D. Del.). Case settled.
  • One World Technologies, Inc. and Ryobi Technologies, Inc. v. Rexon Industries Corp., Ltd; and Power Tool Specialists, Inc. (N.D. Ill.). Case settled.
  • 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.
  • 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.
  • 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.
  • Arimathea LLC v. Wm. Wrigley Jr. Company et al. (N.D. Ill.). Case resolved during settlement conference with Magistrate Judge.
  • Energizer Holdings, Inc. and Eveready Battery Company, Inc. v. Spectrum Brands, Inc. (W.D. Wisc.). Case settled after client obtained a preliminary injunction.
  • Yakima Products, Inc. v. Saris Cycling Group, Inc. (D. Or.). Case settled.
  • Kannar v. Alticor Inc.; Amway Corp.; and Access Business Group LLC (C.D. Cal.). Case settled.
  • Unomedical A/S v. Smiths Medical MD, Inc. (N.D. Ill.). Case settled.
  • Encore Rail Systems, Inc. v. The Willamette Valley Company (N.D. Ill.). Case settled.
  • Hollister Incorporated v. ConvaTec Inc. (N.D. Ill.). Hollister patent infringement claim dismissed on summary judgment. ConvaTec counterclaims are presently pending.
  • InvestPic LLC v. StatPro Inc. (D. Del.). Case pending.
  • GHJ Holdings, LLC v. ConvaTec Inc. (E.D. Tx). False marking case settled after complaint dismissed for failing to meet the pleading requirements of Fed. R. Civ. P. 9(b).
Non-Legal Experience

Frito-Lay, Beloit, Wisconsin
Project Engineer, 1985-1987