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Edward A. Mas II

Email. emas@mcandrews-ip.com
Tel. (312) 775-8000

Practice Areas
Trial and Appellate Lawyer for Intellectual Property and Technology-Related Disputes; Intellectual Property/Technology Opinions and Licensing; and Patent and Trademark Procurement.

Northwestern University, B.S.M.E., with distinction, 1987
University of Pennsylvania, J.D., cum laude, Order of the Coif, 1992

Bar Admissions
Admitted to practice in Illinois. Member of the bars of the U.S. District Court for the Northern District of Illinois and U.S. Court of Appeals for the Federal Circuit. Registered to practice before the U.S. Patent and Trademark Office.

Professional Experience
Edward A. Mas II has been described by his clients and peers as a “terrifically savvy litigator” who “routinely secures the best position for his clients.”  As an advocate, he is “experienced, smart, aggressive, and effective.”  Ed’s trial and appellate litigation practice focuses on intellectual property and complex technology-related disputes.  As a registered patent attorney, he regularly counsels clients on issues such as licensing, clearance opinions, patent and trademark prosecution, and portfolio management.  He also represents clients in reexaminations and other post-grant proceedings in the United States Patent and Trademark Office.  

Ed has successfully briefed and argued appeals before the U.S. Court of Appeals for the Federal Circuit, including most recently Wyeth and Cordis Corp. v. Abbott Laboratories, et al., 720 F.3d 1380 (Fed. Cir. June 16, 2013).  In that case the Federal Circuit affirmed a finding of patent invalidity for lack of enablement.  Similarly, in SciMed Life Systems, Inc. v. ACS, a seminal case on specification estoppel law, the Federal Circuit affirmed a finding of non-infringement.  In both matters, sales of the client’s accused products exceeded $1 billion.  

Ed works with clients on a wide range of technologies, with a special emphasis on medical devices and biotechnology.  For example, for the past 20 years he has represented Abbott, a leading global health care company, and its predecessors in many U.S. and related foreign disputes involving angioplasty equipment, such as drug-eluting coronary stent systems.

Another of Ed’s professional highlights includes securing a $166 million dollar victory for Advanced Cardiovascular Systems, Inc., which rates among the top patent damages awards.   Ed’s litigation practice also involves such diverse technologies as antibodies and related expression systems, pharmaceuticals, barcode scanners and printers, bicycle equipment, large industrial equipment, and automotive components.

Representative Matters
  • Wyeth and Cordis Corp. et al. v. Abbott Laboratories et al., Civil Action No. 09-4850 (D. N.J. 2009-2013). (Patent infringement).
  • Cordis Corp. et al. v. Abbott Laboratories et al., Civil Action Nos. 07-2265, 07-2477, 07-2728, and 07-5636 (D. N.J. 2007-2011) (Patent infringement).
  • Cordis Corp. et al. v. Abbott Laboratories et al., Civil Action Nos. 08-0230 and 08-1021 (D. N.J. 2008-2011) (Patent infringement).
  • Medtronic Vascular, Inc., et al. v. 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).
  • Boston Scientific SciMed, Inc., et al. v. Cordis Corporation, et al., Civil Action No. 03-1138-SLR (D. Del. 2004) (Patent infringement).
  • Etymotic Research, Inc. v. Phonak, LLC et al., Civil Action No. 04 C 6517 (N.D. Ill. 2004) (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).
  • SRAM Corp. v. Fox Factory, Inc., d/b/a Fox Racing Shox, Civil Action No. 04-2162 (N.D. Ill. 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).
  • iBex Healthdata Systems, Inc. v. Emergency Medicine Risk Management, Inc., AAA File No. 50 T 133 00238 04 (2004) (Arbitration; breach of contract).
  • Ovion, Inc. v. Conceptus, Inc., Civil Action No. C 02-3884 (N.D. Cal. 2002-2003) (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).
  • Medtronic, Inc. v. Guidant Corporation and Cardiothoracic Systems, Inc., Civil Action No. 00-20144 (N.D. Cal. 2000-2001) (Patent infringement; unfair business practices; false advertising).
  • 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).
  • Boston Scientific Corp. v. ACS, et al., Civil Action No. 95-12715 (D. Mass. 1995-1997) (Antitrust).
  • SciMed Life Systems, Inc. v. ACS, Civil Action No. 94-1932 (N.D. Cal. 1994-2001) (Patent infringement).
  • SciMed Life Systems v. ACS (1994-1997) (3 Arbitrations; breach of contract; patent infringement).
  • ACS v. Boston Scientific Corporation, Civil Action No. 93-20330 (N.D. Cal. 1993-1994) (Patent infringement).
  • F.E. Moran, Inc. v. Gregg R. Huennekens and U.S. Fire Protection, Case Nos. 87-L-03279 and 87-L-13940, Appeal Nos. 93-0983 and 93-1049 (Illinois Trial and Appellate Courts 1992-1995). (Corporate breach of fiduciary duty; tortuous interference with contractual relations).
  • Monarch Marking Systems, Inc. v. NCR Corporation, Civil Action No. 93-CV-86 (S.D. Ohio 1993-1995) (Patent infringement).
  • Beloit Corporation v. J.M. Voith, GmbH, Civil Action No. 92-C-68-C (W.D. Wis. 1993-1994) (Patent infringement).
  • Nike, Inc. v. Nike Securities, LLP, Opposition No. 88,485 (TTAB 1992-1994) (Trademark opposition).
Honors & Awards
  • Named one of “The World’s Leading Patent Practitioners” by Intellectual Asset Management magazine (2012 and 2013)
  • Recognized as one of “The World’s Leading Life Sciences Patent Litigators” by Intellectual Asset Management magazine (2010)
  • Selected by peers as a “Leading Lawyer” in Illinois
  • Earned the Outstanding Trial Advocacy award from the University of Pennsylvania
  • Award-winning member of the University of Pennsylvania’s National Moot Court Team
Professional & Community Involvement
  • American Bar Association, Member
  • Illinois Bar Association, Member
  • American Intellectual Property Law Association, Member
  • Lake County Stealth Youth Baseball, Founder & Coach

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