GBC News

GBC colleagues recently visited Asia.  In Korea, GBC attorney Joe Kim gave a lecture to engineers entitled “Introduction to U.S. Patent Law,” and Soyoung Lee spoke about the duty of disclosure.  In Japan, attorney Patrick Burns spoke to a telecommunications group about “Drafting Valid Claims to Fully Cover Standards.”

GBC attorneys Patrick Burns and Amy Ziegler, adjunct professors at IIT Chicago-Kent College of Law, taught a course entitled “IP Strategies”.  The course simulates a law firm environment, and gives students practical experience applying their legal and personal skills to simulated situations.

GBC attorneys attended the 134th Annual INTA Meeting, taking place May 5–9 in Washington, D.C.  The INTA Annual Meeting is the premiere meeting of the international trademark community, with more than 9,000 professionals from all over the world taking advantage of educational programs, committee meetings, exhibits, social events and networking opportunities. Attorneys attending included Lawrence Crain, Paul Juettner, Tom Fitzsimons, Amy Ziegler, Laura Wanek, Chris Hermanson, Tanja Proehl and Justin Gaudio. 

Greer, Burns & Crain LTD, representing Deckers Outdoor Corporation, recently obtained judgments by a federal court in Illinois against a combined 3,007 Chinese based websites selling counterfeit UGG® products.  The court entered a permanent injunction against the defendants and awarded Deckers $686 million dollars in damages.  In addition, the judgment restrained funds in hundreds of financial accounts linked to the websites.  These funds were also awarded to Deckers.  Prior to the default judgment, the Court entered a temporary restraining order in each case giving control of the domains to Deckers.  Each domain was then redirected to a website putting consumers on notice that the domain was previously used for counterfeit sales. 

These lawsuits are part of a proactive effort by Deckers and GBC to thwart online UGG® counterfeiting, particularly against rogue Chinese based websites.  Since 2011 GBC has filed six lawsuits against websites selling counterfeit UGG products resulting in the transfer of over 6,000 domains and the freezing of substantial funds in linked financial accounts.  In addition to lawsuits, GBC on behalf of Deckers aggressively sends take down letters to website servers hosting counterfeit sites, has links to sites removed from search engines, and shuts down payment processing services.  In the past year enforcement action was taken against over 23,000 sites and 19,000 links were removed from search engines.

The cases are 11-cv-7970 and 12-cv-377 in the Northern District of Illinois.

James K. Folker and Patrick G. Burns spoke at a luncheon conference attended by in-house counsel from several medical device companies in the San Francisco Bay Area.  Mr. Folker spoke about his personal experience with patent prosecution on Track I of the Prioritized Examination Program and other ways to expedite patent prosecution.  His presentation was entitled “Controlling the Prosecution of Your Patent Application”.  The presentation also included a demonstration showing how remarks and arguments in amendments should be used to control prosecution.  Mr. Burns spoke about the pros and cons of using functional language in patent claims. 

John Pionke of Greer Burns & Crain participated as a judge at the International Law School Mediation Competition held in Chicago on March 23-24, 2012.  The competition tests the skills of students both as mediators and advocates, and is a valuable learning experience.  This year’s competition attracted teams from India, Germany, Canada, Scotland, England, Ireland, and across the United States.  

Greer Burns and Crain partners Amy Ziegler, Paul Juettner, Larry Crain and Patrick Burns served as judges for the Midwest Regional Oral Arguments of the Saul Lefkowitz National Trademark Moot Court Competition, held in Chicago on February 11, 2012.  Tanja Proehl and Danielle Beach, two attorneys with the firm, served as volunteer bailiffs, making GBC’s participation one of the highest in the Midwest Regional Competition.

The Saul Lefkowitz Moot Court Competition introduces law students to important issues arising in U.S. trademark and unfair competition law.  Students develop their brief writing and oral advocacy skills in a mock courtroom experience.  Approximately 60 teams of students from U.S. accredited law schools participate in the competition each year.  Two winning teams from each of the Regional Competitions in Atlanta, Chicago, New York and San Francisco advance to the National Finals in Washington, D.C.  The Competition is an annual event sponsored by the International Trademark Association and the Intellectual Property Law Association of Chicago in the Midwest Region.  

Greer Burns & Crain is pleased to announce that three of its attorneys have been listed among Illinois Super Lawyers and Rising Stars for 2012:

• Patrick G. Burns, Illinois Super Lawyers, Intellectual Property
• Laura R. Wanek, Illinois Rising Stars, Intellectual Property
• Amy C. Ziegler, Illinois Rising Stars, Intellectual Property

No more than five percent of the lawyers in the state are named to Super Lawyers, and no more than 2.5 percent are named to Rising Stars.  Selecting the attorneys involves a rigorous, multi-stage process including peer nominations, peer evaluations and third party research.  Each Super Lawyers candidate is evaluated on 12 indicators of peer recognition and professional achievement.  The selection process for Rising Stars mirrors the Super Lawyers selection process except that: 1) to be eligible for inclusion in Rising Stars, a candidate must be either 40 years old or younger or in practice for ten years or less; and 2) Candidates for Rising Stars do not go through peer evaluation.  Selections for both lists are made on a state-by-state basis annually.  

On May 13, 2011, the Washington State Superior Court entered final judgment for equitable claims in favor of GBC client Homax Products, Inc. This equitable judgment followed a favorable February, 2011 jury verdict obtained by GBC lawyer Steve Fallon for GBC client Homax Products, Inc., in the matter of Northwest Product Design Group, LLC, et al v. Homax Products et al. The plaintiffs had alleged trade secret theft, breach of contract and related claims, and had sought over $1M in damages. No liability was found and no damages were awarded.

In September, 2011, GBC was pleased to welcome Tom Hill to its family. Tom has had a long and diverse career, and looks forward to applying his extensive knowledge to assist GBC clients. Tom has been a well known intellectual property attorney in Chicago for decades in private practice, in-house for Zenith, and at Lawrence Livermore Laboratory in California. Tom began his career as an engineer with the Computer Sciences Corporation and Naval Air Systems Command in Washington, D.C.

On August 16, 2011, GBC lawyer Steve Fallon was pleased to have a consent judgment and permanent injunction entered for GBC client Petersen Industries, Inc.. for its U.S. Patent No. 7,353,652. The injunction was awarded by the United States District Court for the Southern District of Mississippi as part of a negotiated settlement in the matter of Petersen Industries, Inc. v. Hol-Mac Corporation, Case No.: 4:10CV152-CWR-LRA.