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James M. Hafertepe
Shareholder

jhafertepe@mcandrews-ip.com
(312) 775-8000
FAX: (312) 775-8000

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Jim Hafertepe practices in all areas of intellectual property law with particular emphasis on intellectual property and technology-related disputes (e.g. litigation and arbitration).  His practice also includes client counseling, licensing, prosecution of patent and trademark applications, and clearance opinions.  

Jim has managed all aspects of complex intellectual property litigation and arbitration.  He has substantial experience with large-scale cases involving large amounts in controversy (i.e., accused sales exceeding $1 billion).  Jim has extensive experience in all aspects of complicated discovery, working with technical experts, writing and arguing case dispositive motions, conducting multi-week trials and arbitrations (including examination of witnesses), conducting patent claim construction hearings, and writing appellate briefs.  In addition to his substantial experience on the technical side of patent cases, Jim has spearheaded the damages portions of at least 7 major patent cases, obtaining substantial awards and settlements for firm clients (e.g., $166 million, $63.75 million).  One of the awards, $166 million, rates among the top patent damages awards of all time.

Jim’s experience encompasses a broad spectrum of technologies such as coronary angioplasty catheters, drug-eluting stents, cardiac defibrillators / pacemakers, biotechnology, bar code printers, semi-conductors for hard disk drives, and internet communication technology.

Jim received a Bachelor of Science degree in Aeronautical and Astronautical Engineering from the University of Illinois, Urbana-Champaign, in 1992, where he graduated with honors.  While at the University of Illinois, Jim spent four semesters as a Co-op engineer at the Thiokol Corporation in Utah, where he worked on the solid rocket propulsion system for NASA's Space Shuttle program.  As a result of this valuable engineering experience, Jim has an understanding as to how things really happen in industry.

After receiving his engineering degree, Jim attended the law school at the University of Chicago, where he graduated with honors in 1995.  While in law school, Jim worked for two years as a student attorney in the Edwin F. Mandel Legal Aid Clinic, providing legal services to those denied access to justice.  Jim also participated in the law school's Street Law program, where he held weekly discussions with inner-city high school students regarding current legal issues.

Representative Matters

Jim has been significantly involved in the following representative cases:

  • Medtronic Vascular, Inc., et al. v. Advanced Cardiovascular Systems, Inc. ("ACS") & Abbott Laboratories, Civil Action No. 06-1066 PJH (N.D. Cal. 2006) (Patent infringement).
  • Paxar Americas, Inc. v. Zebra Technologies Corp. et al., Civil Action No. 03-03-142 (S.D. Ohio 2003-2006) (Patent infringement; favorable settlement of $63.75 million).
  • Medtronic, Inc. v. Guidant, Inc., Civil Action No. 00-1473 (MJD/JGL) (D. Minn. 2000-03) (Patent infringement).
  • SciMed Life Systems, Inc. et al. v. Guidant Corporation, et al., Civil Action No. 04-4962 JNE/JGL (D. Minn. 2004) (Patent infringement).
  • Boston Scientific Corp., et al. v. Guidant Corp., et al., Civil Action No. 02-5969 (N.D. Cal. 2002-2004) (Patent infringement).
  • ACS v. SciMed Life Systems, Inc., Civil Action No. 02-4987 (N.D. Cal. 2002-2004) (Patent infringement).
  • ACS v. Medtronic AVE, Inc., Civil Action No. 99-5393 (N.D. Cal. 1999-2002) (Patent infringement arbitration; ACS awarded $166 million and a permanent injunction).
  • XOMA, Ltd., et al. v. Biosite, Inc., Civil Action No. 01-2580 (N.D. Cal. 2001-2002) (Patent infringement; misappropriation of trade secrets; fraud; unfair competition).
  • ACS v. SciMed Life Systems, Inc., Civil Action No. 96-00946 (N.D. Cal. 1996-2000) (Patent infringement).
  • ACS v. SciMed Life Systems, Inc., Civil Action No. 95-03580 (N.D. Cal. 1995-2000) (Patent infringement).
  • ACS v. Medtronic, Inc., Civil Action No. 95-03577 (N.D. Cal. 1995-1999) (Patent infringement; ACS awarded enhanced damages and a permanent injunction; decision affirmed on appeal).
  • Boston Scientific Corp. v. ACS, et al., Civil Action No. 95-12715 (D. Mass. 1995-1997) (Antitrust).
  • SciMed Life Systems v. ACS (1994-1997) (3 Arbitrations; breach of contract; patent infringement).

Areas of Practice

Industries

Bar Admissions / Registrations

  • Admitted to practice in Illinois.
  • Registered to practice before the U.S. Patent and Trademark Office.
  • Member of the bars of the U.S. District Court for the Northern District of Illinois, and the U.S. Courts of Appeals for the Sixth and Federal Circuits.

Education

  • University of Illinois, B.S.A.A.E., with honors, 1992
  • University of Chicago, J.D., with honors, 1995