| Practice Description: |
Jim Sobieraj is a licensed patent attorney with over
20 years of experience in the procurement, licensing and enforcement
of intellectual property rights. He has been lead counsel in cases
involving patent infringement, ownership of patent rights, license
disputes, misappropriation of trade secrets, trade dress infringement,
unfair competition, false advertising, defamation, fraud, RICO and
antitrust. His litigation experience includes bench and jury trials,
temporary restraining orders, preliminary injunctions, Markman hearings,
appeals and various forms of alternate dispute resolution.
Sobieraj has represented companies in a variety of technologies including
analog and digital electronics, microprocessors, electrical and
optical connectors, avionics, robotics, software, e-commerce, electromechanical
transducers and control circuits, medical devices, pharmaceuticals,
infant formula, microporous filter membranes, food sterilization, hydraulics,
automotive components, carbon block filters, chemical compositions,
packaging material and various consumer goods.
Notable Cases and Results:
Brunswick Bowling and Billiards Corp. v. VIA Bowling
Products, et al.
, (N.D. Ind. 2004-present). Mr. Sobieraj is lead counsel for Brunswick,
which is suing for infringement of a patent related to bowling lanes.
The case is pending.
Maui Jim, Inc. v. Serengeti Eyewear et al., (C.D. Ill. 2004)
. Mr. Sobieraj is lead counsel for Maui Jim, which sued Serengeti
for infringing a design patent and moved for a preliminary injunction.
The case settled.
Tenneco Automotive Inc. v. Visteon Corp., (D. Del. 2003- present)
. Mr. Sobieraj is lead counsel for Visteon, which has been accused
of infringing two patents relating to catalytic converters. The
case is pending.
Nitro Distributing et al. v. Alticor Inc., et al. (W.D. Mich.
. Mr. Sobieraj is lead counsel for the defendants in an antritrust
case. A motion to compel arbitration is pending.
Oxford Gene Technology Limited v. Motorola, Inc., (N.D. Ill.
. Mr. Sobieraj was lead counsel for Motorola, which was accused
of infringing a patent directed to DNA arrays. The case settled.
Alticor Inc. v. Ultra-Sun Technologies, Inc. (W.D. Mich. 2002-present)
. Mr. Sobieraj is lead counsel for Alticor in an action based on
claims of false advertising under federal and state law, and infringement
of two patents relating to water treatment systems. The false advertising
claims were settled before trial. The Federal Circuit ruled in Alticor"s
favor on the patent claims, and remanded for further proceedings.
Charles E. Hill & Associates, Inc. v. Amazon.com, Inc.,
et al (E.D. Tex. 2002-present)
. Mr. Sobieraj is lead counsel for Quixtar, Inc., one of several
defendants accused of infringing three patents directed to electronic
commerce. The case is pending.
Nartron Corp. v. Amway Corp. (Mich. St. Ct. 1991-present)
. Mr. Sobieraj has been lead counsel for Amway in a lawsuit involving
claims of ownership of patent rights, breach of contract and trade
secret misappropriation relating to end-of-life indicators for water
filters. Following bench trials on liability and damages, the trial
court awarded Amway all of the patent rights and damages for Nartron"s
breach of contract and trade secret misappropriation. The Court
of Appeals affirmed the award of patent rights, affirmed Nartron's
liability for several hundred thousand dollars of damages and interest
and remanded for further proceedings on Amway's claim for additional
damages. The case is pending.
Procter & Gamble v. Randy Haugen and Amway Corporation
(D. Ut. 1995-2003)
. Mr. Sobieraj was lead counsel for Amway to defend P & G's
claims based on the Lanham Act, defamation per se, tortious interference
with business relations and vicarious liability. All of P & G's
claims were dismissed at the pleading stage or by summary judgment.
The 10th Circuit affirmed.
Lindab AB v. Eastern Sheet Metal, Inc., (S.D. Ohio 2001-2004)
. Mr. Sobieraj was lead counsel for Lindab, a large Swedish manufacturer
of ventilation pipe, in a patent infringement action. The case was
resolved after a Markman hearing.
American Axle & Mfg., Inc. v. Visteon Corp., (E.D. Mich.
. Mr. Sobieraj was lead counsel for Visteon, which was accused
of infringing a patent directed to universal joints. The plaintiff
quickly dismissed all claims, after Visteon disclosed its prior
Tyco Electronics Corp. v. Hon Hai Precision Industry Co. Ltd,
(C.D. Calif. 2001-2002)
. Mr. Sobieraj was lead counsel for 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 on mutually
acceptable terms, which are confidential.
Preputnick et al. v. Provencher et al. (U.S.P.T.O. Board of Patent
Appeals and Interferences, 2001-2002)
. Mr. Sobieraj represented Tyco Electronics in an interference
provoked by Teradyne, Inc. The patents relate to high density/high
speed electrical connectors. The interference was resolved in Tyco's
favor when Teradyne's patents were held invalid.
Integrated Paving Concepts, Inc. v. Nicon Enterprises (C.D. Calif.
. Mr. Sobieraj was counsel for the plaintiff in a patent, copyright
and trademark infringement lawsuit. The patent claims were decided
on summary judgment. A jury awarded damages on the copyright and
trademark infringement claims.
AMP Incorporated v. Teradyne, Inc. (M.D. Penn. 1998-1999)
. Mr. Sobieraj was lead counsel for 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 on confidential
Wolverine World Wide Inc. v. Nike Inc., (Fed. Cir. Ct. 1994)
. Mr. Sobieraj defended Nike against a claim that one of its popular
shoe lines infringed a patent owned by Wolverine. The Federal Circuit
affirmed the lower court's grant of summary judgment of non-infringement.
AMP Incorporated v. AT&T Corporation. (M.D. Penn. 1990-1991)
. Mr. Sobieraj was counsel for 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.
Cuno, Inc. v. Pall Corporation (E.D. N.Y. 1988-1990)
. Mr. Sobieraj was counsel for the plaintiff during an extensive
jury trial involving claims of patent infringement asserted by both
parties. After several weeks of trial, the case settled when the defendant
agreed to pay the plaintiff $12,000,000 and to provide additional
consideration. The relevant technology was nylon microporous membranes.
Standard Oil v. Showa Entetsu (E.D. Mich. 1987)
. Mr. Sobieraj was counsel for Standard Oil against a defendant
charged with breach of an exclusive trade secret license for an
electroplating process. Mr. Sobieraj was successful in obtaining
a temporary restraining order shortly after the lawsuit was filed,
and in obtaining a preliminary injunction after an extensive evidentiary
State of Illinois
U.S. Claims Court
of Appeals, 6th Circuit
U.S. Court of Appeals, 10th Circuit
Court of Appeals, Fed. Circuit
U.S. Dist. Court, C.D. Illinois
Court, Dist. of Colorado
U.S. Dist. Court, E.D. Michigan
Dist. Court, S.D. Indiana
U.S. Dist. Court, W.D. Michigan
Dist. Court, W.D. Texas
U.S. Dist. Court, N.D. Illinois
Member, Trial Bar
Date of Birth: 1957
Law School: University of Michigan Law School,J.D., 1982
Undergraduate School: University of Michigan, B.S., Engineering, 1979
Undergraduate School Honors/Involvement:
magna cum laude
Brinks, Gilson & Lione, Chicago,
Bar/Professional Association Involvement:
National Inventors Hall of Fame Foundation
of Directors, 2004-Present
Intellectual Property Law Association
Judges Dinner Chair, 2004
Committee Vice Chair, 2003
Licensing Executives Society
International Delegate, 1997-Present
Board of Trustees, 1996-Present
Annual Mtg. 1999; Winter Mtg. 1995
Workshop Program Chairman,
Annual Mtg., 1996; Western Mtg. 1992
Annual Mtg., 1995; Winter Mtg. 1994
Chicago Chapter Chairman,
Committee Meetings Chairman, Annual Meeting, 1993
Electronics Committee Chairman, 1992-1994
Property Law Association
Chairman, Contracting for ADR Committee,
(Judge, Giles S. Rich Moot Court Competition)
The Lawyers Club of Chicago
Federal Circuit Bar Association
Federal Bar Association
Chicago Volunteer Legal Services
Park Tower Condominium Association
Board of Directors, 1987-1991
Union League Club of Chicago
Published Legal Writing:
"Current Issues and Future Trends for Large Corporate
, Volume XXXVIV, No. 2, June 2004
"Protecting your IP in
joint R&D projects,"
Managing Intellectual Property
, Issue 131, July/August 2003
"IP Bankruptcy: A Dastardly Deed," Meeting of the Licensing
Executives Society International, Paris, France, March 31, 2004
Method Patents: Introduction and Strategies," Chicago Bar Association
Corporate Law Department Committee, June 5, 2003
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,
"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
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
Alliances in the Electronics Industry," Licensing Executives Society,
USA & Canada, Annual Meeting, 1994
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
"Reasonable Royalties -- What Does Reasonable
Mean?" Licensing Executives Society, USA & Canada, Annual
"Building a Damages Claim," Licensing Executives
Society, USA & Canada, Annual Meeting, 1990
Founded in 1917, Brinks Gilson & Lione
provides intellectual property legal services worldwide. The firm
is one of the largest intellectual property law firms in the country,
with approximately 150 attorneys who specialize in IP litigation
and all aspects of patent, trademark, copyright, trade secret, Internet,
unfair competition and related licensing matters.
Additional Office Locations: Ann Arbor, Michigan; Indianapolis, Indiana; Arlington,
Virginia: Salt Lake City, Utah