Name: Michael O. Warnecke
Item: Michael O. Warnecke
Author: mwarnecke

Bio

Michael O. Warnecke

Education

Juris Doctor, George Washington University, 1967

Bachelor of Science, Mechanical Engineering, Purdue University, 1963

Employment

Perkins Coie LLP, Chicago, Illinois

Senior Counsel, January 2017 – present

Partner, February 2007 – January 2017

Former Co-Chair, Patent Litigation Group 2009-2014

Mayer, Brown, Rowe & Maw LLP, Chicago, Illinois

Partner, April 1996 to February 2007

Chair, Intellectual Property Group, 1996 – February 2007

Keck, Mahin & Cate, Chicago, Illinois

Member of Management Committee, 1993 to April 1996

Chairman, Compensation Committee, 1994 to April 1996

Co-Chair, Intellectual Property & Technology Group, 1991 – 1993

Partner, 1991 to April 1996

Neuman, Williams, Anderson & Olson, Chicago, Illinois

Member of Management Committee, 1982 – 1991

Partner, 1967 - 1991

United States Patent and Trademark Office, Washington, D.C.

U.S. Patent Examiner, Group 350, 1963 – 1967

Major Professional Achievements

Fellow, American College of Trial Lawyers

Listed in Chambers as a Leading IP Lawyer

Listed among the top ten Illinois 2008 Super Lawyers as published by Law & Politics

First chair in numerous major patent litigation cases, particularly well versed and experienced in international patent, technology licensing and other intellectual property matters. Selected by the People’s Republic of China trade delegation led by Vice Premier Li Lanqing to host a two-day seminar for American automotive and after-market companies, as well as the Chinese delegation on the legal aspects of doing business in China.

At the request of the Chinese government, in 1990 provided advice on the redrafting of the 1984 Patent Act. At the request of the Chinese government, in 1993 provided advice on the Unfair Competition Act, which was adopted in 1994.

Obtained successful damages and injunctive relief for Rockwell International on a significant trade secret matter, affirmed on appeal and publicized in media nationwide for the innovative use of computer graphics to present evidence.

Obtained the largest jury verdict for a patent case in Wisconsin Riddell v. Schutt involving concussion reduction technology for football helmets.

Selected as a mediator in several patent infringement cases.

Other Professional Achievements

Frequent lecturer, speaker and author, nationally and internationally, on intellectual property law. These include:

US and China Intellectual Property Dialogue, Gao Lulin Foundation, Santa Clara, CA, 2014, Latest Developments of Intellectual Property Law and Enforcement – Recommendations Regarding NPEs

Managing IP Magazine, UK, 2013 How to Keep Your Trade Secrets Secret

China International IP Forum, Beijing, China, 2013, Trade Secrets: An Important Part of Intellectual Property

Toronto Intellectual Property Group, Toronto, Canada, 2013, The United States International Trade Commission (ITC): A Viable Alternative To U.S. District Court Litigation?

Perkins Coie, LLP, 2012 Asia Open House, Shanghai, China, Patent Litigation in District Court: Discovery and Cooperation between Trial Counsel and the Client

FICPI 12th Open Forum, Munich 2010, Is There A Better Way To Resolve A Patent Dispute Than In A Court?

IP Roundtable, Navigant Consulting, Inc., Chicago 2009, The KSR Standard for Obviousness: A Pendulum Shift to 20/20 Hindsight?

IP Business Congress, Annual Event for Global IP Leaders, Chicago 2009, The U.S. Patent Environment

Licensing Executives Society (USA & Canada), Inc., 2008 Annual Meeting – Orlando, Florida, Experts On Experts: Effective Selection, Preparation, and Use of Expert Witnesses in High Technology Patent Litigation

FICPI 11th Open Forum – Florence, Italy 2008, The KSR Standard For Obviousness: A Pendulum Shift to 20/20 Hindsight?

IP Business Congress, Annual Event for Global IP Leaders – Amsterdam 2008, Implications of Headline Cases in the Patent World and Is Patent Reform Dead?

China Chongqing Hi-Tech Fair – Chongqing 2008, The DVD Standard Story – A High Stakes Bet – Infringer Beware

IP Roundtable, IP Litigation Committee of the ABA's Litigation Section, 2008, Moderator, TTAB Updates: Getting On Board With The Board's New Rule Changes

Shanghai Intellectual Property Group and Bio Medical Industry, Perkins Coie, LLP,
2007, Business Method Patents

China Investor Forum – Calculation of Patent Damages Shanghai IP Association, 2007

The Life Sciences Industry Association – Beijing 2007, U.S. Patent Reform Bill and Business Method Patents

Korea Electronics Association & Korea Semiconductor Industry Association, Seoul, 2006, Strategies In United States Patent Infringement Litigation

Strafford Publications, Inc., 2006, Protection Of IP Rights In China, Parts 1 and 2

Strafford Legal Teleconferences, 2006, Defending Against The Patent Troll Threat

WORLD FINANCE IN U.K. 2005 – Business Method Patents: What They Mean For Your Business

United States, 2005 – Key issues in trade secret protection – Building and Enforcing Intellectual Property Value

The Business Of Intellectual Property And Technology Law In A Full-Service Law Firm, Toronto, Canada, 2005, Symposium Panelist, Market Trends - IP/IT Opportunities For Full Service Firms

Law Seminars International, Mining Patent Portfolios Workshop, Chicago, Illinois 2004, The Willful Infringement Sword – Has It Been Dulled Or Sharpened By The Knorr-Bremse En Banc Decision?

American College of Trial Lawyers, Phoenix, AZ, 2004, Panelist, Lights, Camera, Action – Technology In The Courtroom

13th Commonwealth Law Conference 2003, Melbourne, Australia, Protecting Intellectual Property Rights Across International Borders – Tractors, Drugs & Wine

Law Seminars International, Calculating & Proving Patent Damages, Chicago, Illinois, 2003

American College Of Trial Lawyers, 2003, Panelist, Courtroom Technology: Suggested Guidelines.

2002 IPLAC 13th Annual Trade Secrets Seminar, Chicago, Illinois, How To Litigate

A Trade Secrets Case - Tips and Strategies For Plaintiffs and Defendants:

If You Don’t Use A Trade Secret, You Can’t Lose A Trade Secret Case

Federal Court of Australia, IP Colloquium II, Melbourne, Australia, 2001,

Presentation to Federal Bench on United States litigation, namely, how to determine issues to litigate and the conducting of Markman hearings on claim construction.

Sister Cities’ Chicago-China Business to Business Exchange, Shanghai, China 2000, Moderator, Panel Discussion, Enforcement of Intellectual Property Rights in China

University of California at Los Angeles Law School, 1999, Intellectual Property Trials and the Use of Technology

Law Journal Seminars-Press, Corporate Securities Series, Securities Practice and Electronic Technology, author, Protection of Intellectual Property section, 1998

(updated 2001)

ANADE Annual Meeting, Oaxaca, Mexico, 1997, Presentation Intellectual Property Aspects of Joint Ventures

Tanabe Seiyaku Company, Osaka, Japan, 1996, Conducted Seminar On Protection Of Trade Secrets

Marmon College, New Product Development Seminar, 1996, Legal Considerations Of Product Development

Illinois Legal Times, Roundtable Participant, Chicago, Illinois, 1995, Current Matters In Intellectual Property Litigation

American Bar Association, General Practice Section Meeting, Chicago, Illinois, 1995, Seeing Is Believing: Animation On Trial

American Legal Seminars, Inc. and The Business Torts Reporter, Chicago, Illinois, 1995, Using Technology In A Business Torts Trial

Seminar, Seoul, Korea, 1995, Some Critical Aspects Of The Litigation Of Patents In The United States and How To Cope With Them.

People’s Republic of China Seminar, Chicago, Illinois, 1994, China: The New Driving Force In Asia - Overview of Doing Business And Protecting Technology in China

Licensing Executives Society Annual Meeting, Waikoloa, Hawaii, 1994,

Intellectual Property Damages Part 1: Evolving Theories, Strategies And Outcomes

Coopers & Lybrand, Chicago, Illinois, 1994, Use Of Computer Graphics At Trial

Chicago-Kent College of Law, Illinois Institute of Technology, Chicago, Illinois, 1994, Use Of Computer Animation At Trial

American Bar Association, Chicago, Illinois, 1993, Winning Through Technology: Tomorrow’s Tools Today

AIPPI - Tokyo, Japan, 1993, Conducted seminar on U.S. trade secret law and presentation of paper Anatomy of a Trade Secret Lawsuit: A Discussion of Rockwell Graphics, Inc. v. DEV Industries, Inc.

Institute of Intellectual Property in Japan, Seminar on Patent Litigation in the United

States, Tokyo and Osaka, Japan, 1990, Some Critical Aspects Of The Litigation Of Patents In The United States And How To Cope With Them

Third Annual Intellectual & Industrial Property Society Conference, Melbourne, Australia, 1989, Has The United States Court Of Appeals For The Federal Circuit Had A Positive Effect On The United States Patent System? You’re Damn Right!

Kessler Marketing Institute, Newport Beach, Rhode Island, 1983,

Fiberoptics And The Patent And Antitrust Problems Associated Therewith.

American Arbitration Association on Patent Arbitration, Chicago, Illinois, 1983

Patent Resources Group, Inc., New York; Miami; Los Angeles, 1982,

Selected Aspects Of Drafting Patent & Know-How License Agreements

Illinois Institute For Continuing Legal Education, Loyola University, Chicago, 1980,

Review Of Recent Supreme Court Patent Decisions, Including Patentability of Life

Forms In Chakrabarty And The Limitation On Patent Misuse In Dawson Chemical Co. v. Rohm & Haas.

Expert Witness Testimony

Retained as an expert witness in many litigation matters, including the following:

Enprotech v. Autotech

Recora v. Faier

Aureo Rivera Davilla & Aureo E. Rivera v. Asset Construction

Aureo Rivera Davilla and Aureo E. Rivera v. Chapman

Gillette v. Butler

C&F Packing v. IBP

Concept Design v. Duplitronics

Ciena v. Corvis

FireGear v. Morning Pride

Margaritis v. Hercules Painting Company

Schreiber Foods, Inc. v. Beatrice Cheese Inc. and NATEC

Illinois National Insurance Co. v. Marchon

Schreiber Foods, Inc. v. Beatrice Cheese Inc. and Kustner Industries

KCJ Corporation v. Kinetic Concepts, Inc. and KCI Therapeutic Services, Inc.

Medtronic, Inc. v. Advanced Cardiovascular Systems, Inc. and Guidant Corp.

Particle Measuring Systems, Inc. v. Rion Co., Ltd., et al.

VDO North America, L.L.C. v. TI Group Automotive Systems (North America), Inc.

eSpeed, Inc., et al. v. The Chicago Mercantile Exchange, et al.

NTP, Inc. v. Research In Motion, Ltd.

1995 Syndicate Members of Industrial Risk Insurers v. Interface, Inc., et al.

Optivus Technology, Inc. et al. v. ION Beam Applications

Price, Heneveld, Cooper, Dewitt & Litton, v. Annuity Investors Life Ins. Co.

M. D. Connell and Hi-Tech Bed Systems Corp. v. KLN Steel Products Co., Ltd., et al.

Square D Company, et al. v. EI Electronics, Inc., et al.

Default Proof Credit Card Systems, Inc., et al. v. Raymond P. Niro, et al.

Owens-Illinois, Inc. v. BTR plc

DIRECTV, Inc. v. Gemstar-TV Guide Interactive, Inc.

Juniper Networks, Inc. v. Peter M. Shipley and Enhanced Security Research, LLC

Eugene M. Cummings, P.C. and Joseph M. Vanek v. Nissim Corp. and Max Abecassis

Meriturn Partners, LLC, et al. v. Banner & Witcoff Ltd. and Joseph Berghammer

Coin Acceptors Inc. v. Haverstock, Garrett & Roberts LLP; Robert Garrett, et al.

Memberships

American Bar Association, Section of Patents, Trademarks & Copyrights

Committees: Arbitration & Other Alternative Procedures

Judiciary

Inequitable Conduct & Antitrust Matters

Chicago Bar Association, Section of Antitrust Law

Committees: International & Foreign Law Committee

Former Chairman of Patent, Trademark and Copyright Committee

American Intellectual Property Law Association

Bar Associations for the Seventh and Federal Circuits

Patent Law Association of Chicago

Committees: Federal Rules & Practice Committee

Trial Skills Subcommittee

International Patent and Trademark Association (AIPPI)

American College of Trial Lawyers

Committee: Complex Litigation Committee

The George Washington University Law School

Member: Intellectual Property Advisory Board

Bar Admissions

State of Illinois, 1967

U.S. District Court for the Northern District of Illinois and the Trial Bar

U.S. Supreme Court

Court of Appeals for the Federal Circuit

Court of Appeals for the 2nd, 5th, 7th and 9th Circuit

Registered Patent Attorney, U.S. Patent and Trademark Office

Michael O. Warnecke

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