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   43Jeffrey J. CatalanoChicago(312) 360-6832jcatalano@freeborn.comjcatalano@freeborn.comFreeborn & Peters LLPwww.freeborn.comwww.freeborn.comcatalanojeffrey.jpgCopyright & Trademark LawIntellectual Property LawTrademarks & Unfair CompetitionLitigationInternational Trade Commission (ITC)Copyright
Jeffrey J. Catalanojcatalano@freeborn.com
Freeborn & Peters LLPhttp://www.freeborn.com
311 S Wacker Dr Ste 3000
Chicago IL 60606
Ph.(312) 360-6832 
Recommended by peers in:    Extensive Experience in:
Copyright & Trademark Law    Trademarks & Unfair Competition
Intellectual Property Law    Litigation
    International Trade Commission (ITC)
    Copyright
County:  Cook
Practice Description:  
Mr. Catalano focuses his practice on intellectual property litigation, including trademark, copyright, trade secret, unfair competition and patent litigation. He has represented clients before federal courts, arbitrators, the United States Patent and Trademark Office's Trademark Trial and Appeal Board and the International Trade Commission. His practice also includes patent licensing, domestic and international trademark prosecution, enforcement and client counseling.


Notable Cases and Results:  
  • In the Matter of Certain Wireless Consumer Electronic Devices with 3G and 4G Capabilities including Components Thereof (International Trade Commission Inv. No. 337-TA-868) (2012-present). Represents Respondents ZTE Corporation and ZTE (USA). Complainant InterDigital, Inc. in matter asserting patent infringement. Affirmative defenses include FRAND licensing defense. In the Matter of Certain Electronic Devices with 3G Capabilities and Certain Products Containing Same (International Trade Commission, Inv. No. 337-TA-800) (2011-present). Represents Respondents ZTE Corporation and ZTE (USA) Inc. in action asserting patent infringement. Affirmative defenses include FRAND licensing defense.
  • In the Matter of Certain Electronic Devices with 3G Capabilities and Certain Products Containing Same (International Trade Commission, Inv. No. 337-TA-800) (2011-present). Represents Respondents ZTE Corporation and ZTE (USA) Inc. in action asserting patent infringement. Affirmative defenses include FRAND licensing defense.

  • Flowers Bakeries Brands, LLC v. Earthgrains Baking Copies, Inc. (M.D. Ga. 2013-present). Represents Defendants Earthgrains and Bimbo Bakeries in action alleging trademark infringement in connection with the sale of bread products.

  • CVG-SAB, LLC v. Facebook Inc. (E.D. Mich. 2013-2014). Represented Plaintiff CVG-SAB, LLC in action alleging trademark infringement in connection with electronic commerce services. The case settled on favorable terms.

  • Daniels v. Spencer Gifts, et. al. (N.D. Ill. 2010-2012). Represented Defendant Spencer Gifts in action alleging copyright and trademark infringement in the sale of apparel. The case settled on favorable terms.

  • Amway Corp. v. MonaVie, Inc., et al. (D. Utah 2008-2010). Represented Plaintiff Amway in action alleging trade secret misappropriation, tortious interference with contract and false advertising under the Lanham Act in connection with the sale of juice products through a multi-level marketing distribution network. The case settled on favorable terms.

  • Nitro Distributing, Inc. v. Alticor Corp., Represented Alticor in antitrust case alleging violations of 1 and 2 of the Sherman. All claims were dismissed on summary judgment, and the dismissal was affirmed by the Eighth Circuit.


Bar Admissions:  
Illinois
U.S. District Court
  Northern District of Illinois
  Eastern District of Michigan
  Western District of Michigan


Year of Birth:  1979

Additional languages spoken:  Italian

Law School:  Georgetown University Law Center, J.D., 2006

Undergraduate School:  Miami University, B.A., 2000

Employment History:  

Bar/Professional Association Involvement:  
International Trademark Association
American Bar Association
Licensing Executives Society International
International Trade Commission Trial Lawyers Association


Published Legal Writing:  Co-author, "US District Court Sets RAND Rate For Portfolio Of Standard Essential Patents," The Licensing Journal, Nov. 2013

Legal Lectures:  "What is the Future of RAND/FRAND Licensing" - Moderator, ABA Annual Intellectual Property Law Conference, Arlington, VA, April 3, 2013

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