Thomas J. Wimbiscus Shareholder
312.775.8000
Thomas J. Wimbiscus, a Shareholder and member of the Executive Committee at McAndrews, has more than thirty years of experience and practices in all areas of intellectual property litigation with a special emphasis on patent litigation. He has appeared in over 100 litigations and over 100 inter partes reviews (IPRs).
Tom’s litigation successes include numerous multi-million-dollar awards and settlements, including patent infringement victories before the U.S. International Trade Commission, an $80 million jury trial victory, and multiple litigations supporting an $891 million settlement.
He has been named one of the world’s leading patent professionals by IAM Patent 1000 since 2018 and as a leading IP Strategist by both IAM Strategy 300 and Strategy 300: Global Leaders. The publication calls him one of the “star quarterbacks” in McAndrews’ “flourishing post-grant practice.” IAM also notes “his more than three decades of frontline litigation experience and limitless post-grant expertise” and that his “many years of success in litigating IP cases in the U.S. courts, the U.S. International Trade Commission, and the PTAB have led clients to trust him with their most important IP disputes.” Tom has also been inducted as a Senior 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. He is also a member of LCA’s Trial Law Institute and Diversity Law Institute. He was named one of the Top 500 Leading Lawyers Across the Globe by Intercontinental Finance & Law in 2016 and one of the Top 100 Lawyers for 2016/17 by LegalComprehensive.com. Tom was also 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). In addition, Tom was named a prominent practitioner by the Practical Law Company in PLC’s Cross-Border IP in Business Transactions Handbook. Since 2004, he has been recognized as a “Leading Lawyer,” an honor awarded to less than five percent of licensed Illinois lawyers. Tom has also been named a Best Lawyer for Litigation – Intellectual Property.
Tom has worked in such diverse technologies as semiconductors for cellular telephones, Wi-Fi, and GPS technologies; computer memory devices; pharmaceutical technologies; polyurethane, surfactant, and other technologies in the chemical arts; oil refining and alternative fuels; prodrug and other biotechnologies; and medical devices including implantable glucose monitors, implantable cardiac defibrillators, pacemakers, and balloon angioplasty catheters.
EDUCATION
- University of Illinois, J.D., magna cum laude
- University of Illinois, B.S. Chemistry, with honors
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
Practices
- IP Litigation
- Post-Grant Practice
- Trademarks & Copyrights
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
Industries
- Chemical
- Computer & Electronics Technology
- Industrial & Mechanical
- Medical Devices
- Life Sciences
- Pharmaceuticals
Representative Matters
- Counsel in offensive action for infringement of twelve patents on wearable continuous glucose monitoring systems and defense counsel in cross-filed actions filed by competitor for infringement of multiple patents, culminating in a successful jury verdict in March 2024.
- Counsel in five offensive actions for infringement of multiple patents against leading providers of cable and satellite networks involving multimedia over Coax (MoCA) technologies, pending in the District of Delaware (2024).
- 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).
- Co-trial counsel in two jury trial victories in seven months finding patent on DSL technology valid and infringed. T.Q. Delta, LLC v. 2Wire, Inc. (May 2019 and January 2020).
- 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.
- 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 campaign settled for $891 million.)
- Lead trial counsel in multiple patent infringement litigations on behalf of Broadcom Corp. involving GPS and digital tuner technologies (cases settled on confidential terms).
- Counsel in over 100 IPRs with numerous pre-institution and post-institution 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. 2016-1811 (Aug. 2017).
- 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.
- Co-Counsel in trial victory, Int’l Trade Comm’n Inv. No. 337-TA-910; patent infringement (digital TV tuners).
- 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. Tom 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 successfully persuaded the district court to reverse its prior award of liability – and later award attorney’s fees to his 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. Tom 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.
- Co-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.
Presentations
- Speaker, IP Law and Management Conference, Maximizing the Success of Your IP Department, Lake Tahoe, CA, November 2022
- Speaker, IP Law and Management Conference, Building, Managing and Leading a Successful IP Team in 2021, August 2021
- Speaker, IP Counsel Exchange, What Your Company Needs to Know to Obtain Successful Results at the PTAB, San Jose, CA, May 2017
- Speaker, The Knowledge Group, Patent Infringement: Practical Guide and Best Practices to Prove Royalty Damages, Webinar, December 2016
- Speaker, The IP Enforcement Strategy Summit, Chicago, IL, April 2016
- Speaker, American Conference Institute, Post-Grant PTO Proceedings, New York, NY, March 2016
- Speaker, The Knowledge Group, The Changing Landscape of Intellectual Property Strategies: What Every Firm Needs to Know, Webinar, December 14, 2015
- Speaker, IP Law & Management Institute, Pasadena, CA, November 2015
- 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
Publications
- Tom Wimbiscus and Christian Hallerud, “The Central Issues Facing Fed. Circ. In Patent Damages Case,” Law360, March 2025
- “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, Dec. 2005
- Counsel in offensive action for infringement of twelve patents on wearable continuous glucose monitoring systems and defense counsel in cross-filed actions filed by competitor for infringement of multiple patents, culminating in a successful jury verdict in March 2024.
- Counsel in five offensive actions for infringement of multiple patents against leading providers of cable and satellite networks involving multimedia over Coax (MoCA) technologies, pending in the District of Delaware (2024).
- 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).
- Co-trial counsel in two jury trial victories in seven months finding patent on DSL technology valid and infringed. T.Q. Delta, LLC v. 2Wire, Inc. (May 2019 and January 2020).
- 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.
- 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 campaign settled for $891 million.)
- Lead trial counsel in multiple patent infringement litigations on behalf of Broadcom Corp. involving GPS and digital tuner technologies (cases settled on confidential terms).
- Counsel in over 100 IPRs with numerous pre-institution and post-institution 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. 2016-1811 (Aug. 2017).
- 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.
- Co-Counsel in trial victory, Int’l Trade Comm’n Inv. No. 337-TA-910; patent infringement (digital TV tuners).
- 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. Tom 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 successfully persuaded the district court to reverse its prior award of liability – and later award attorney’s fees to his 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. Tom 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.
- Co-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.
- Speaker, IP Law and Management Conference, Maximizing the Success of Your IP Department, Lake Tahoe, CA, November 2022
- Speaker, IP Law and Management Conference, Building, Managing and Leading a Successful IP Team in 2021, August 2021
- Speaker, IP Counsel Exchange, What Your Company Needs to Know to Obtain Successful Results at the PTAB, San Jose, CA, May 2017
- Speaker, The Knowledge Group, Patent Infringement: Practical Guide and Best Practices to Prove Royalty Damages, Webinar, December 2016
- Speaker, The IP Enforcement Strategy Summit, Chicago, IL, April 2016
- Speaker, American Conference Institute, Post-Grant PTO Proceedings, New York, NY, March 2016
- Speaker, The Knowledge Group, The Changing Landscape of Intellectual Property Strategies: What Every Firm Needs to Know, Webinar, December 14, 2015
- Speaker, IP Law & Management Institute, Pasadena, CA, November 2015
- 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
- Tom Wimbiscus and Christian Hallerud, “The Central Issues Facing Fed. Circ. In Patent Damages Case,” Law360, March 2025
- “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, Dec. 2005
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