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William H. Frankel

Practice Summary

Bill Frankel is a shareholder with Brinks Hofer Gilson & Lione, where he serves as the Chair of the firm's Copyright Group. His practice includes patent, trademark, copyright, trade secrets and unfair competition litigation in jury and non-jury cases; international intellectual property litigation and counseling; and licensing. He has counseled clients in the evaluation, protection, procurement, and transfer of IP rights, including providing legal expertise in worldwide patent protection and the coordination of legal strategies in global IP disputes. Mr. Frankel has represented clients in federal courts, before the United States Patent and Trademark Office, before the International Trade Commission and in alternative dispute resolution forums in connection with injunction, trial, contempt and appellate proceedings. He also has acted as a mediator of intellectual property disputes.

Mr. Frankel has represented companies in a variety of technologies including medical devices, toy products, packaging films and apparatus, hydraulics, kitchen electronics, navigation systems, telecommunication systems, intranet web sites and applications, social media products, software applications, oil and gas drilling technologies, and various consumer goods.

Mr. Frankel has written and spoken on general IP issues, patent and copyright litigation, copyright fair use issues, cyberspace topics, ethics in IP practice, and IP corporate compliance programs and audits. He has taught patent law as an Adjunct Professor at DePaul University. He is a co-author of Designing an Effective Intellectual Property Compliance Program (West Group – updated annually); Copyright Permissions (published in 1996 and in 2005 by the Copyright Committee of the Intellectual Property Law Association of Chicago); and the Intellectual Property Law Handbook (Illinois Institute of Continuing Legal Education – published in 2005 and updated in 2008). He was named in Euromoney Publication's PLC Guide to the World's Leading Experts in Trademark Law in 2000, and in Euromoney Guide to the World's Leading Patent Law Experts in 2009. He also has been recognized since 2005 as an Illinois Super Lawyer in Intellectual Property Litigation.

Presently, Mr. Frankel has the privilege of serving on the Board, as the immediate past President, of Lawyers for the Creative Arts, an association of lawyers that provides pro bono legal assistance to artists and arts organizations in the Chicago area.

Honors/Distinctions
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  • The International Who’s Who of Patent Lawyers, 2010, 2011 
  • Illinois Super Lawyer, Intellectual Property Litigation, 2005-2012
  • Leading Intellectual Property Lawyer, Leading Lawyers Network, Law Bulletin Publishing Company, 2004-2011
  • Leading Lawyer, Trade Secrets/Unfair Competition Law, 2009
  • "AV" Peer-Review Rated, highest ranking for Ethical Standards and Legal Ability, Martindale-Hubbell, since 1984
  • Named, Euromoney Guide to the World's Leading Patent Law Practitioners, 2010
  • Named, Euromoney Guide to the World's Leading Patent Law Experts, 2009
  • Named, Euromoney Guide to the World's Leading Trademark Law Experts, 2000
  • Qualified Lanham Act Neutral in Voluntary Mediation Program, N.D. Ill.
Representative Matters
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  • Trudell Medical International v. PARI Respiratory Equipment, et al., Civil Action No. 1:10-CV-00955, USDC, Eastern District of Virginia, Alexandria (2010-2011). Represented Trudell in a patent infringement action relating to a nebulizer. This case was filed in a “rocket docket,” and was quickly and successfully resolved.
  • Arimathea LLC v. Wm. Wrigley Jr. Company et al., Civil Action No. 08cv3796, N. D. IL, Eastern Div. (2008). Represented Wm. Wrigley Jr. Company in a patent infringement action relating to a hinged lid container. The case settled successfully.
  • Centre National de Recherche Scientifique and Commissariat A L'Energie Atomique, Civil Action No. C 08-1217 PJH, N.D. Cal., San Jose Division (2008). Represented French governmental research agencies in action for declaration of inventorship and patent ownership concerning patents relating to magnetic memory devices. The case settled successfully for the firm's clients.
  • Transocean Offshore Drilling, Inc. v. Maersk Contractors USA, Inc., Civil Action No. 4:07-CV-02392, S.D. Texas, Houston (2007-present). Representing Maersk Drilling in a patent infringement action relating to an apparatus for multi-activity offshore drilling.
  • Western Pennsylvania Conservancy v. Thomas A. Heinz, N.D. Ill., Eastern Div. (2005-2006). Represented Western Pennsylvania Conservancy and owner of Frank Lloyd Wright's famous Fallingwater® in copyright infringement action. The case settled successfully.
  • TNI Packaging, Inc. v. Perdue Farms Inc., N.D. Ill., Eastern Div. (2005-2006). Represented Perdue Farms in a patent infringement action relating to a method for identifying the cooking process applied to fowl. The case settled successfully.
  • Pro Tech Monitoring, Inc. v. Elmo-Tech Ltd. and ADT Security Systems, Inc., M.D. Fla., Tampa Division (2004-2007). Represented Elmo-Tech in a patent infringement case involving electronic monitoring of offenders. Pro Tech's complaint was voluntarily dismissed.
  • Freni Brembo, S.p.A. and Brembo North America, Inc. v. Alcon Components, Ltd., et al., N.D. Ill., Eastern Div. (2004-2005). Represented Freni Brembo and Brembo North America in a patent infringement case relating to consumer automobile and Formula 1/NASCAR disk brake systems. The case settled successfully.
  • Overture Services, Inc. v. Google Inc., N.D. Calif., San Francisco Div. (2002-2004). Represented Overture Services, Inc. in a patent infringement action relating to on-line paid search services. The case settled successfully.
  • Vicky Howard v. Revere Mills, Inc., and Walgreen Co., N.D. Kansas (2003-2004). Represented Revere Mills in copyright infringement lawsuit. The case settled.
  • BI Incorporated v. Elmo-Tech, Ltd. and SecurityLink, Inc., U.S.D.C. Colo. (2001-2002) Represented Elmo-Tech and SecurityLink in a patent infringement action relating to electronic monitoring of offenders. The case settled successfully.
  • Blount, Inc. and Hamby v. CSI, W.D. N.C., Charlotte Div. (2000-2002). Represented Blount in a patent infringement case relating to tree delimbers. The case settled successfully.
  • Multi-Tech v. VocalTec et al., D. Minn. (2000-2001). Represented Multi-Tech in patent infringement lawsuit involving VoiP technologies. The case settled.
  • ibid., Inc. v. Tomatsu Yagi Design, N.D. Calif., San Francisco Div. (2000-2001). Represented ibid in a copyright infringement action involving misappropriation of stock photographs. The case settled successfully.
  • Varis v. Scitex Digital Printing, Inc. and Scitex Corporation Ltd., S.D. Ohio, Western Div. at Dayton (1999-2001). Represented Scitex in a patent infringement case relating to printing variable data with a page description language. The case settled successfully.
  • Energy Absorption, Inc. v. Traffix, C.D. Calif., Southern Div. (1999-2000). Represented Energy Absorption in a case involving theft of trade secrets and patent infringement relating to highway safety barriers. The case settled successfully.
  • Arista Records, Inc., et al. v. Amway Corporation, et al., M.D. Fla. (1996-1997). Represented Amway Corporation in a copyright infringement case involving sound recordings. The case settled.
  • The Rival Company v. Sunbeam Corporation et al., W.D. Missouri (1995-1999). Represented The Rival Company through appeal in a patent infringement case relating to food steamers.
  • Personal Awareness Systems, Inc. v. Financial Training Resources, Inc., N.D. Ill. (1995-1996). Represented Personal Awareness Systems in a copyright infringement case relating to performance testing materials. The case settled successfully.
  • Re-Source America, Inc. v. Republic Packaging Corp. (1994). Represented Republic Packaging in a patent infringement case relating to recyclable packaging. The case was settled on appeal to the Federal Circuit.
  • Viskase Corp. v. W.R. Grace & Co.-Conn, N.D. Ill. (1993-1992). Represented Viskase in a patent infringement case relating to heat-shrinkable plastic films. The case settled successfully.
  • Roadmaster Corp. v. NordicTrack, Inc., N.D. Ill. (1993-1994). Represented Roadmaster in a patent and trade dress infringement case relating to an exercise apparatus. The case settled successfully.
  • Rockwell Graphic Systems, Inc. v. DEV Industries, Inc., et al., N.D. Ill. (1990-1991). Represented Rockwell Graphic Systems on appeal in a trade secret misappropriation case relating to the theft of manufacturing drawings for printing press components.
Trials
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  • Transocean Offshore Drilling, Inc. v. Maersk Contractors USA, Inc., Civil Action No. 4:07-CV-02392, S.D. Texas, Houston (2007-2011). Represented Maersk Drilling in a patent infringement action relating to an apparatus for multi-activity offshore drilling. After a seven-day jury trial, and despite a jury verdict in favor of Transocean, the court rejected the jury’s factual findings as based on insufficient evidence, and ruled in Maersk’s favor on all issues as a matter of law. Transocean’s patents were held invalid and not infringed.
  • Aero Products International, Inc. and Robert Chaffee v. Intex Recreation Corp. et al., N.D. Ill. (2002-2004). Represented Aero Products International and Robert Chaffee in a patent and trademark case relating to inflatable beds. After a seven-day jury trial, the jury awarded Aero $13 million for willful patent and trademark infringement, including interest and fees. Intex was subsequently found to be in contempt of the court's injunction, and the patent award was affirmed on appeal.
  • Viskase Corp. v. American National Can Co., N.D. Ill. (1993-1996). Represented Viskase Corp. in a patent infringement case relating to heat-shrinkable plastic films. The case settled on appeal after a 12-day jury trial and an award to Viskase of $102 million.
  • Peabody Myers v. Vac-Con, D. Fla. (1987-1990). Represented Peabody Myers in a patent infringement action relating to sewer cleaning equipment. The case settled on appeal after a 10-day bench trial.
  • Those Characters from Cleveland v. J.J. Gams, Inc., et al., S.D. N.Y. (1986-1992). Represented J.J. Gams, Inc., et al. in a contract, trade dress, unfair competition and copyright infringement case relating to toy products. Successfully obtained reversal of TRO and won the IP side of the case after a five-day bench trial.
  • American Photo-Graphics v. Ronald D. Edhlund, Chicago, American Arbitration Association (1985-1986). Represented Ronald D. Edhlund in employment agreement dispute. Won case after six-day arbitration.
  • Oshkosh Truck v. Lockheed, N.D.Calif. (1985-1987). Represented Oshkosh Truck in a DJ action involving patent infringement, validity and license issues relating to an articulated vehicle. Won case after a four-week jury trial.
  • Moore v. Stewart, D. Arkansas (1982-1983). Represented Moore in design patent infringement, copyright infringement and unfair competition case relating to toy train whistles. Won case after four-day bench trial.
TROs and Preliminary Injunctions
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  • World Kitchen (GHC), LLC v. Zyliss Haushaltwaren, AG and Zyliss USA Corporation, N.D. Ill. (2005-2006). Represented Zyliss Haushaltwaren and Zyliss USA in patent infringement action relating to salad spinner with a brake. Successfully defeated plaintiff's request for a preliminary injunction. Affirmed on appeal.
  • Tilia International, Inc. v. The Rival Company, In the Matter of Certain Home Vacuum Packaging Machines, U.S. International Trade Commission (2003-2004). Represented The Rival Company in a patent infringement action relating to vacuum packaging machines and bags used therewith. The case settled after Tilia's Motion for a Temporary Exclusion Order was successfully defeated.
  • The Rival Company v. TPI Corporation, N.D. Georgia (1996-1997). Represented The Rival Company in a copyright infringement, trade secrets, patent infringement case relating to an industrial fan company's unauthorized use of Rival's business materials and information. Filed TRO and the case settled after consent order obtained against defendant.
  • Keystone Camera Products Corporation v. Ansco Photo-Optical Products Corporation v. W. Haking Enterprises Limited, N.D. Ill. (1987-1988). Represented Keystone Camera Products in trade dress infringement case relating to colored cameras. The case settled after denial of preliminary injunction.
  • Those Characters from Cleveland v. J.J. Gams, Inc., et al., S.D. N.Y. (1986-1992). Represented J.J. Gams, Inc., et al. in a contract, trade dress, unfair competition and copyright infringement case relating to toy products. Successfully obtained reversal of TRO and won the IP side of the case after a five-day bench trial.
  • Pizazz v. Perfect Pearl, N.D. Ill. (1984). Represented Pizazz in a copyright infringement case relating to costume jewelry. Successfully obtained a TRO and case settled shortly thereafter.
Publications
Published Articles
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  • “Designing an Effective Intellectual Property Compliance Program,” co-author, West Group, 1993-Present (updated annually)
  • “2008 Intellectual Property Handbook,” co-author, Illinois Institute of Continuing Legal Education, updated from 2005
  • “Copyright Law and the New Library of Alexandria,” co-author, IP Law 360, March 30, 2006
  • “Copyright Permissions,” co-author, Copyright Committee of the Intellectual Property Law Association of Chicago, 1996, 2005
  • “Strategic Intellectual Property Compliance Programs: The Role Of The CFO,” Chief Legal Officer, Vol. 1, No. 3, Summer 2002
  • “Strategic IP Asset Management,” Electronic News Online, May 3, 1999
Feature Profiles
  • SkyRadio, contributing speaker on copyright law topics, heard on United, Delta and American Airlines, July-August 2006
  • “The Invisible Hand – Intellectual Property Branding Provides a Competitive Advantage,” Monitor, April 2006, Vol. 33, No. 4
  • "Managing the IP 'Wine Cellar,'" Corporate Legal Times, November 2005
  • "Pumping Up the Patents," interview with Mr. Frankel about the successful trial of Aero Products International v. Intex Recreation Corp. case, IP Law & Business, October 2004
Presentations
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Worldwide presentations, as a speaker and guest lecturer, on intellectual property issues to clients, associations, groups and students.

  • “The Use of Social Media Sites At Home and In The Workplace”, Speaker, American Airlines Legal Department Meeting, Dallas, Texas, August 2010
  • Presentation on Effective U.S. IP Litigation Strategies to the Shunde Industrial Design Society, Shunde, China, June 2010
  • Participated in International Mock Copyright Trial, with SIPO and the Copyright Center of China, Beijing University, China, June 2010
  • "Enforcing Copyrights," speaker, PLI's Understanding Copyright Law 2009, Chicago, Illinois, June 2009
  • Chicago Bar Association's YLS Intellectual Property Law Committee Meeting, Presenter, Chicago, Illinois, March 3, 2010
  • "Recent Developments in Copyright Law," speaker, The John Marshall Law School 53rd Annual Intellectual Property Law Conference, Chicago, Illinois, February 2009
  • Participated in International Mock Patent Trial, International Intellectual Property Law Symposium, Oxford University, England, June 2007
  • "Copyright Licensing," speaker, IICLE Licensing Agreements 2007, Chicago, Illinois, June 2007
  • "Copyright Ethics," speaker, Copyright 2007, Practising Law Institute, Chicago, Illinois, June 2007
  • "Shelter From The Internet Copyright Storm – The Safe Harbor of the Digital Millennium Copyright Act," speaker, Kimberly-Clark 2007 General Counsel Conference, Neenah, Wisconsin, May 2007
  • "Recent Developments in Copyright Law," speaker, The John Marshall Law School 51st Annual Intellectual Property Law Conference, Chicago, Illinois, February 2007
  • "Google's Grand Plan – Is It Grand Infringement?," speaker, Intellectual Property in Global Mainstream Practice, University of British Columbia, Vancouver, British Columbia, Canada, July 2006
  • "Copyright Law and Technological Activism," speaker, Update on Intellectual Property Law and the Internet, Brinks Hofer Gilson & Lione Seminar, Chicago, Illinois, April 18, 2006
  • "Jury Trials: Strategies for Success," speaker, Managing the Risks of IP Litigation, Brinks Hofer Gilson & Lione Litigation Seminar, Chicago, Illinois, October 25, 2005
  • "Strategic IP Asset Management & The IP Audit," speaker, Intellectual Asset Management Update: Translating Intellectual Property and Business Strategies into Bottom Line Value, Brinks Hofer Gilson & Lione Seminar, Menlo Park, California, September 7, 2005
  • "Willful Infringement and Claim Construction: The Federal Circuit Attempts to Fix U.S. Patent Law in 2004," presenter, Perspectives on U.S. IP Law and Practices in 2004, Ottawa, Ontario, Canada, December 22, 2004
  • "Legal Strategies: Key Elements in Defending Patent Lawsuits," Mining Patent Portfolios Conference, Law Seminars International, Chicago, Illinois, October 29, 2004
Memberships & Affiliations
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  • American Bar Association
    Litigation Section
    Patent, Trademark & Copyright Section
  • American Intellectual Property Law Association
  • Chicago Bar Association
  • Federal Circuit Bar Association
  • Seventh Circuit Bar Association
  • Intellectual Property Law Association of Chicago
    Secretary, 2001-2003
    Board of Managers, 1999-2001
    Copyright Committee
  • Intellectual Property Owners Association
  • International Association for the Protection of Intellectual Property
  • International Patent and Trademark Association
  • International Trade Commission Trial Lawyers Association
  • Master, Richard Linn American Inn of Court
Civic Activities
  • Lawyers for the Creative Arts
    President, 2004-2008
    Immediate Past President, 2008-Present
    Volunteer Lawyer, 1982-Present
  • National Eagle Scouts Association
Legal Experience
  • Brinks Hofer Gilson & Lione, Chicago, Illinois
    Shareholder, May 1991-Present
  • Neuman, Williams, Anderson & Olson, Chicago, Illinois
    Partner, June 1980-April 1991
Teaching Experience
  • DePaul University College of Law, Chicago, Illinois
    Adjunct Professor, Patent Law, 1993-1995
Press Releases