Eligio C. Pimentel Shareholder
312.775.8015
Eligio is a member of the Executive Committee and a Shareholder at McAndrews. For nearly 30 years, he has litigated and tried complex, high-stakes patent cases in courts across the United States. He has represented clients in billion-dollar Federal court disputes, as well as in arbitrations, including one resulting in a $166 million award in favor of his client. As trial counsel, Eligio uses these experiences to guide all aspects of trial strategy and preparation, including complex discovery and related post-grant proceedings before the U.S. Patent and Trademark Office. The result is pragmatic and cost-effective dispute resolution.
Eligio is recognized by both Managing Intellectual Property’s IP Stars and IAM’s Patent 1000. IAM said he litigates “high-stakes patent infringement cases with poise.” It also noted that “Eligio puts his clients first and is the quintessential relationship partner who goes the extra mile to ensure the provision of a timely and high-quality service. He’s a trusted adviser and true partner.”
He maintains an active transactional practice, advising clients on a range of issues, including patent portfolio management, licensing, freedom to operate opinions, and mergers and acquisitions.
His successful litigation and transactional practice has touched on a diverse spectrum of technologies, including orthopedic implants, semiconductor devices, cybersecurity software, coronary stent delivery systems, fuel cells, ocular implants, VR/AR technology, thermal hand-held labelers and printers, ultrasonic medical devices, barcode scanners, and machine vision products. Eligio’s clients benefit from the hands-on experience he gained working for several years as an engineer at 3M Company and Bechtel Corporation.
Accolades received over the years include:
“I’ve said this several times now to my law clerk but I thought I ought to say it to you folks because when the verdict comes in, inevitably one side will be happy, one side will be disappointed. I thought this was a very well-tried case by both sides. I really, you know, patent cases are not the easiest kinds of cases to present to a jury. I thought every single lawyer here did a superb job making the issues straightforward, as simple as they reasonably could be made. The disputes that counsel raised were confined to serious matters, and you didn’t waste the jury’s or my time with unnecessary issues. I really think regardless of the outcome, both sides have reason to be proud as lawyers of the work you did.” (Federal District Court Judge)
“I have sat through an unbelievable number of trials, not quite so many arbitrations and the level of professionalism and the advocacy in this case has been exceptional in my judgment.” (Senior Arbitrator, retired Federal District Court Judge)
“McAndrews rocks! As always, you guys put together a great strategy that allowed truth and justice to prevail! I continue to be impressed with the high quality of the people and work at McAndrews. I have taken the opportunity to send the opinion out to several people, showing them that this sort of early, straight on approach can produce great results. I’m sure you will understand that I refer to it as the “McAndrews Shock and Awe” approach to patent litigation. Thanks again for an outstanding effort.” (Deputy General Counsel)
“Great news. Congratulations, great work. That one got nipped in the bud [via summary judgment]…Well strategized and executed.” (VP Intellectual Property)
“I have now read your claim construction brief, and I wanted to say that I thought it was excellent work. Comprehensible even to a non-technical person and (in my view) compelling…I do realize that you and the McAndrews team must be working all hours to comply with the ludicrous schedule imposed upon us, and it is very much appreciated.” (Director Intellectual Property)
Eligio grew up the son of migrant farm workers in the California Central Valley. As a result, he is a long-time active supporter of closing the educational opportunity and achievement gap for children from marginalized groups and communities. Currently, he serves as chairman of the Board of Directors of AVID Center, and as a member of the Board of Directors of Arts Alliance Illinois and the Grant Park Orchestral Association. He is also a member of the Economic Club of Chicago. Previously, Eligio served as a member and vice chairman of the Illinois State Board of Education. He also is a past member of the Board of Directors of the Cristo Rey Jesuit High School and the Mary Crane Center.
EDUCATION
- University of Minnesota, J.D., cum laude
- Stanford University, B.S.M.E.
BAR ADMISSIONS/REGISTRATIONS
- Illinois
- U.S. District Court for the Northern District of Illinois
- Trial Bar for the Northern District of Illinois
- U.S. District Court for the Western District of Michigan
- U.S. District Court for the Eastern District of Wisconsin
- U.S. Court of Appeals for the Federal Circuit
- U.S. Patent and Trademark Office
Education
- University of Minnesota, J.D., cum laude
- Stanford University, B.S.M.E.
Practices
- IP Transactions
- IP Litigation
- Post-Grant Practice
- Trademarks & Copyrights
- Patent Prosecution
Bar Admissions/Registrations
- Illinois
- U.S. District Court for the Northern District of Illinois
- Trial Bar for the Northern District of Illinois
- U.S. District Court for the Western District of Michigan
- U.S. District Court for the Eastern District of Wisconsin
- U.S. Court of Appeals for the Federal Circuit
- U.S. Patent and Trademark Office
Industries
- Computer & Electronics Technology
- Industrial & Mechanical
- Medical Devices
Representative Matters
- Illinois Tool Works Inc. v. Termax (N.D. Ill. 2020) (patent infringement case involving fastener technology)
- Eisenmann v. Illinois Tool Works Inc. and Ford Motor Company (D. Del. 2020) (patent infringement case involving fuel assembly technology)
- Karamelion v. Fibar USA (N.D. Ill. 2019) (patent infringement case involving computer based distributed control systems)
- Information Systems Audit and Control Association, Inc. v. TeleCommunication Systems, Inc. and Comtech Telecommunications Corp. (N.D. Ill. 2017) (unfair competition, breach of contract, trademark infringement, consumer fraud and deceptive trade practices case involving cybersecurity technology).
- T-Rex Property AB v. ContextMedia Inc., et al. (N.D. Ill. 2016) (patent infringement case involving digital information displays).
- Illinois Tool Works Inc. and Miller Electric Mfg. Co. v. The ESAB Group Inc. and Victor Technologies International Inc. (E.D. Wisc. 2016) (patent infringement and breach of contract case involving welding equipment).
- The Lincoln Electric Company, et al. v. Seaberry Soluciones, et al. (N.D. Ohio 2015) (patent infringement case involving welding training technology).
- Stryker Corp., et al. v. Zimmer, Inc., et al. (W.D. Mich. 2014) (patent infringement case involving personal protection systems).
- Cognex Corp., et al. v. Microscan Systems, Inc. et al. (S.D. N.Y. 2013) (patent infringement case involving barcode scanners and machine vision products).
- Reaux Medical Industries LLC v. Stryker Corp. et al. (N.D. Tex. 2012) (patent infringement case involving personal protection systems).
- Verco Decking Inc. v. Consolidated Systems, Inc. (D. Ariz. 2011) (patent infringement case involving structural steel decking tools).
- Polyguard Products, Inc. v. W.R. Meadows, Inc. (N.D. Tex. 2011) (patent infringement case involving sealant based moisture barrier composite membranes).
- Reaux Medical Industries LLC v. Stryker Corp. et al. (N.D. Tex. 2009) (patent infringement and trade secrets case involving personal protection systems; jury verdict in favor of client).
- Thomas F. Winters v. Stryker Corp. (M.D. Fl. 2006) (patent infringement case involving portable infusion pumps; dismissed after early summary judgment motion).
- ICU Medical, Inc. v. ALARIS Medical Systems, Inc. (C.D. Cal. 2004) (patent infringement case involving needle-less valves for use with intravenous tubing; requests for TRO and preliminary injunction denied in favor of client).
- Boston Scientific Corp., et al. v. Guidant Corp., et al. (N.D. Cal. 2002) (patent infringement case involving angioplasty catheters).
- Zimmer, Inc. v. Howmedica Osteonics Corp. (N.D. Ind. 2002) (patent infringement case involving orthopedic implants).
- Advanced Cardiovascular Systems, Inc. v. Medtronic AVE, Inc. (N.D. Cal. 1999) (patent infringement arbitration case involving bona fide PTCA perfusion catheters; permanent injunction and favorable verdict of $166 million).
- Comtec Information Systems, Inc. v. Monarch Marking Systems, Inc. (D. R.I. 1996) (patent infringement case involving bar code readers).
- Advanced Cardiovascular Systems, Inc. v. Medtronic, Inc. (N.D. Cal. 1995) (patent infringement case involving angioplasty catheters; client awarded enhanced damages and permanent injunction).
- Advanced Cardiovascular Systems, Inc. v. SciMed Life Systems, Inc. (N.D. Cal. 1995/96) (related patent infringement cases involving angioplasty catheters).
Publications
- Quality or quantity – defining and building the ideal patent portfolio, IAM Innovation & Invention Yearbook 2021 View File.
- Minority Powerbrokers Q&A: McAndrews’ Eligio Pimentel, Law360 (December 16, 2014) View File.
- What Not To Say To Competitors, Post-MedImmune, Executive Counsel, (December/January 2013)
- Value of IP Portfolios at Stake, Pending Supreme Court Decisions Crucial, Executive Counsel, (February/March 2011)
Presentations
- Presenting Complex Cases To A Jury, Annual Minority Bar CLE Conference (June 2013)
- Brand Protection In China: Recent Cases, Managing Intellectual Property Conference (May 2013)
- Supreme Court IP Review, McAndrews, Held & Malloy’s Annual IP Symposium (July 2012)
- The Current State of Intellectual Property in View of Pending Supreme Court Cases, McAndrews, Held & Malloy’s Annual IP Symposium (May 2011)
Professional & Community Involvement
- Arts Alliance Illinois, Board of Directors
- AVID® Center, Vice Chair and Board of Directors
- Illinois State Board of Education, Past Member and Vice-Chairman
- Cristo Rey Jesuit High School Board of Directors, Past Member and Chair of Jobs Committee
- Mary Crane Center Board of Directors, Past Member
- Richard Linn American Inn of Court, Past Master Member
- Hispanic National Bar Association, Member
- American Bar Association, Member
- Illinois Tool Works Inc. v. Termax (N.D. Ill. 2020) (patent infringement case involving fastener technology)
- Eisenmann v. Illinois Tool Works Inc. and Ford Motor Company (D. Del. 2020) (patent infringement case involving fuel assembly technology)
- Karamelion v. Fibar USA (N.D. Ill. 2019) (patent infringement case involving computer based distributed control systems)
- Information Systems Audit and Control Association, Inc. v. TeleCommunication Systems, Inc. and Comtech Telecommunications Corp. (N.D. Ill. 2017) (unfair competition, breach of contract, trademark infringement, consumer fraud and deceptive trade practices case involving cybersecurity technology).
- T-Rex Property AB v. ContextMedia Inc., et al. (N.D. Ill. 2016) (patent infringement case involving digital information displays).
- Illinois Tool Works Inc. and Miller Electric Mfg. Co. v. The ESAB Group Inc. and Victor Technologies International Inc. (E.D. Wisc. 2016) (patent infringement and breach of contract case involving welding equipment).
- The Lincoln Electric Company, et al. v. Seaberry Soluciones, et al. (N.D. Ohio 2015) (patent infringement case involving welding training technology).
- Stryker Corp., et al. v. Zimmer, Inc., et al. (W.D. Mich. 2014) (patent infringement case involving personal protection systems).
- Cognex Corp., et al. v. Microscan Systems, Inc. et al. (S.D. N.Y. 2013) (patent infringement case involving barcode scanners and machine vision products).
- Reaux Medical Industries LLC v. Stryker Corp. et al. (N.D. Tex. 2012) (patent infringement case involving personal protection systems).
- Verco Decking Inc. v. Consolidated Systems, Inc. (D. Ariz. 2011) (patent infringement case involving structural steel decking tools).
- Polyguard Products, Inc. v. W.R. Meadows, Inc. (N.D. Tex. 2011) (patent infringement case involving sealant based moisture barrier composite membranes).
- Reaux Medical Industries LLC v. Stryker Corp. et al. (N.D. Tex. 2009) (patent infringement and trade secrets case involving personal protection systems; jury verdict in favor of client).
- Thomas F. Winters v. Stryker Corp. (M.D. Fl. 2006) (patent infringement case involving portable infusion pumps; dismissed after early summary judgment motion).
- ICU Medical, Inc. v. ALARIS Medical Systems, Inc. (C.D. Cal. 2004) (patent infringement case involving needle-less valves for use with intravenous tubing; requests for TRO and preliminary injunction denied in favor of client).
- Boston Scientific Corp., et al. v. Guidant Corp., et al. (N.D. Cal. 2002) (patent infringement case involving angioplasty catheters).
- Zimmer, Inc. v. Howmedica Osteonics Corp. (N.D. Ind. 2002) (patent infringement case involving orthopedic implants).
- Advanced Cardiovascular Systems, Inc. v. Medtronic AVE, Inc. (N.D. Cal. 1999) (patent infringement arbitration case involving bona fide PTCA perfusion catheters; permanent injunction and favorable verdict of $166 million).
- Comtec Information Systems, Inc. v. Monarch Marking Systems, Inc. (D. R.I. 1996) (patent infringement case involving bar code readers).
- Advanced Cardiovascular Systems, Inc. v. Medtronic, Inc. (N.D. Cal. 1995) (patent infringement case involving angioplasty catheters; client awarded enhanced damages and permanent injunction).
- Advanced Cardiovascular Systems, Inc. v. SciMed Life Systems, Inc. (N.D. Cal. 1995/96) (related patent infringement cases involving angioplasty catheters).
- Quality or quantity – defining and building the ideal patent portfolio, IAM Innovation & Invention Yearbook 2021 View File.
- Minority Powerbrokers Q&A: McAndrews’ Eligio Pimentel, Law360 (December 16, 2014) View File.
- What Not To Say To Competitors, Post-MedImmune, Executive Counsel, (December/January 2013)
- Value of IP Portfolios at Stake, Pending Supreme Court Decisions Crucial, Executive Counsel, (February/March 2011)
- Presenting Complex Cases To A Jury, Annual Minority Bar CLE Conference (June 2013)
- Brand Protection In China: Recent Cases, Managing Intellectual Property Conference (May 2013)
- Supreme Court IP Review, McAndrews, Held & Malloy’s Annual IP Symposium (July 2012)
- The Current State of Intellectual Property in View of Pending Supreme Court Cases, McAndrews, Held & Malloy’s Annual IP Symposium (May 2011)
- Arts Alliance Illinois, Board of Directors
- AVID® Center, Vice Chair and Board of Directors
- Illinois State Board of Education, Past Member and Vice-Chairman
- Cristo Rey Jesuit High School Board of Directors, Past Member and Chair of Jobs Committee
- Mary Crane Center Board of Directors, Past Member
- Richard Linn American Inn of Court, Past Master Member
- Hispanic National Bar Association, Member
- American Bar Association, Member
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