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Thomas J. Wimbiscus
Shareholder

 

Thomas J. Wimbiscus, a shareholder with McAndrews, Held & Malloy, has more than thirty years of experience and practices in all areas of intellectual property litigation, as well as the acquisition and management of patent, trademark, copyright, and trade secret protection. He has appeared in over 90 litigations and as lead counsel in over 60 IPR's.

Thomas was designated a fellow of the Litigation Counsel of America (LCA). The LCA is a trial lawyer honorary society composed of less than one-half of one percent of American attorneys – based on effectiveness and accomplishments, in both litigation and trial work. Thomas was named as “recommended” intellectual property (patent) counsel by an independent, global survey conducted by Practical Law Company (PLC Global Counsel 3000, Choose Your Counsel Wisely (7th – 20th eds.) (now called PLC Which Lawyer? Yearbook)) for the years 2002 – 2015. Thomas was also named as a prominent practitioner by the Practical Law Company in PLC’s Cross-Border IP in Business Transactions Handbook for 2008-2015. Thomas was also named as a “Leading Lawyer” (2004 - 2015, awarded to fewer than five percent of licensed Illinois lawyers) by independent survey.

His litigation successes include numerous multi-million dollar awards and settlements, as well as patent infringement victories before the U.S. International Trade Commission. His experience also encompasses the acquisition and maintenance of patents, trademarks, and copyrights.

Thomas has served as co-trial counsel in a four-week jury trial resulting in a patent infringement award of over $80 million with a finding of willful infringement (reversed in part and remanded).  He has worked in such diverse technologies as prodrug and other pharmaceutical technologies; semiconductors for cellular telephones, Wi-Fi and GPS technologies; oil refining; polyurethane, surfactant, and other technologies in the chemical arts; alternative fuels (including biodiesel); biotechnologies; and medical devices including implantable cardiac defibrillators, pacemakers, and balloon angioplasty catheters.

Representative Matters

  • Co-trial counsel at four week jury trial resulting in a patent infringement award of over $80 million with a finding of willful infringement (reversed in part and remanded).
  • Lead trial counsel in Shire LLC, Shire Pharmaceuticals, Inc. and Shire USA, Inc. v. KemPharm, Inc., et al, patent ownership/antitrust, case settled on confidential terms.
  • Co-lead trial counsel in multiple patent litigations (involving eight patents) on behalf of Broadcom in Broadcom Corp. v. Qualcomm, Inc., relating to semiconductors for cellular telephones.  (Multi-suit campagin settled for $891 million).
  • Lead counsel in numerous IPR victories.
  • Lead counsel in Lanham Act trial on behalf of Ashley Furniture, Industries against Laura Ashley, Inc. and Laura Ashley Holdings, plc.  (Confidential Arbitration Award).
  • Lead counsel in successful appeal to the U.S. Court of Appeals for the Federal Circuit, In re Stepan Co., No. 2010-1261 (Oct. 2011).
  • Lead trial counsel in two sequential trial victories, In re Certain Processes for the Manufacture of R-134a (otherwise known as 1,1,1,2-tetrafluoroethane), Int’l Trade Comm’n Inv. No. 337-TA-623; patent infringement; representing Chinese and domestic respondents.
  • Lead trial counsel in Ashley Furniture Industries Inc v. LG Interiors LLC et al, patent and copyright infringement lawsuit filed in the Central District of California. Defendants agreed to cease sales of the products at issue (August 2014).
  • Lead trial counsel responsible for patent infringement victory involving payments of $9 million plus future royalties, Intercat, Inc. v. W.R. Grace & Co., et al. Defendant Nol-tec Systems stipulated to validity and infringement and is enjoined from further infringement with respect to the subject technology.
  • Lead trial counsel in a Lanham Act victory involving claims of trade dress infringement and passing off, affirmed by the U.S. Court of Appeals for the 7th Circuit.  Thomas was retained as new lead counsel after the district court had already found liability and awarded treble damages against the client, defendant.  After first persuading the district court to rescind its prior award of treble damages (and deny a request for punitive damages), Wimbiscus, along with partner Alex Menchaca, successfully persuaded the district court to reverse its prior award of liability - and later award attorney's fees to their client defendant.
  • Co-counsel in patent infringement action filed on behalf of Weyerhaeuser Company relating to superabsorbent technology.
  • Defense of damages claim on behalf of a major medical device manufacturer in eight-week jury trial.  Thomas was the lawyer primarily responsible for the damages issues in this case.  (The plaintiff reduced its (four patent) multi-hundred million dollar claim by 50% before trial; the surviving claim was later drastically reduced by jury award.)
  • Supporting counsel in trials resulting in jury verdicts of $14.6 million, $17.2 million, and $7.9 million for patent infringement relating to papermaking machinery.
  • Supporting counsel in procuring injunction on behalf of patent holder relating to wireless printing technology.
  • Supporting counsel in defense of preliminary injunction proceeding brought by major sporting goods manufacturer for claim of misappropriation of trade secrets.
  • Supporting counsel in defense of preliminary injunction proceeding and appeal proceeding involving patents for plastic packaging materials.
  • Summary judgment of noninfringement and successful appeal on patent relating to commercial gaming technology.
  • Supporting trial counsel securing jury verdict of $2.8 million, including four-week trial, and appeal, for breach of fiduciary duty, believed to represent the then highest such verdict in the State of Illinois.
  • Lead counsel in over sixty inter partes review proceedings.

His experience also encompasses the acquisition and maintenance of patents, trademarks, and copyrights.

Publications

  • Inter Partes Review, Developments and Procedures, Today's General Counsel, Vol. 12, No. 1, February, 2015
  • U.S. Patent Reform Bill Passes, Representing New Costs and Opportunities, The Rose Sheet, pgs. 10-12, September 26, 2011
  • Royalty Analysis:  Litigation v. Real Life, The Patent Lawyer Magazine, Vol. 3, No. 1, Spring 2006
  • The Right To Copy – and Use – Unprotected Product Designs Is Alive And Well, Law Journal Newsletters, December 2005

Presentations

  • Speaker, McAndrews IP Symposium, Strategic Consideration for Inter Partes Review, Chicago, 2015
  • Speaker, Inter Partes Review Procedures, ZSP IP Symposium, Munich, Germany 2015
  • Speaker, MIP Global IP Innovation Summit, Shanghai, China 2014
  • Speaker, McAndrews IP Symposium, Best Practices for Inter Partes Review Proceedings, 2014
  • Speaker, 57th Annual Intellectual Property Law Conference, John Marshall Law School - February 22, 2013
  • Lecturer, Licensing Executive Society (LES), Chicago
  • U.S. Patent Law for European Patent Practitioners, U.S. and EPO Patent Law Update Symposium, Munich, Germany – 2006, 2007, 2008, 2009, 2010 and 2011
  • U.S. Patent Law Reform Update, Linus Pauling Biotech / Pharma Symposium – May 1, 2010
  • Global Portfolio Management & Cost Saving Strategies, Intellectual Property Law Association of Chicago (IPLAC) – January 13, 2010

Areas of Practice

Industries

Bar Admissions / Registrations

  • Various U.S. District Courts
  • Various Appellate Courts
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. Supreme Court
  • U.S. Patent and Trademark Office

Education

  • University of Illinois, J.D., magna cum laude
  • University of Illinois, B.S. Chemistry, with honors