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Banner & Witcoff, Ltd

Chicago

Banner & Witcoff, Ltd - Chicago
  • Ten South Wacker Drive
  • Suite 3000
  • Chicago
  • Illinois
  • USA
  • IL 60606-7407
  • Managing Partner: Gary D Fedorochko
  • Number of partners: 48
  • Number of lawyers: 91
  • Languages: English

Firm Overview: A national law firm with more than 90 attorneys and agents and 90 years of practice, Banner & Witcoff provides legal counsel and representation to the world’s most innovative companies. The firm’s attorneys are known for having the breadth of experience and insight needed to handle complex patent applications as well as handle and resolve difficult disputes and business challenges for clients across all industries and geographic boundaries.

Main Areas of Practice:  

Litigation: Banner & Witcoff is a preferred litigation provider for Fortune 500 companies, midlevel companies and technology-focused start-ups. The firm has a deep bench of seasoned trial and appellate lawyers with industry experience and advanced degrees in engineering and biotechnology fields. Many of the firm’s litigators have served as former law clerks to federal judges and have former in-house counsel experience. The firm has assisted and consulted in connection with enforcement activities worldwide, playing key roles in the strategy and coordination of foreign litigation. Banner & Witcoff lawyers try cases before judges and juries in both federal and state courts around the country, at the appellate levels, and before the ITC and the USPTO. Building on six decades of success in IP infringement bench trials, Banner & Witcoff’s litigators have successfully conducted jury trials throughout the United States in wide ranging technical fields, including in such diverse technologies as computer software, recombinant DNA pharmaceuticals, prosthetic hip implants, process industrial controls, automotive components, plastic injection molds and textiles. The firm has successfully represented clients in numerous landmark cases, including several renowned intellectual property decisions: Tasini v. The New York Times, Deepsouth Packing Co. v. Laitram Corp., and Diamond v. Chakrabarty.
Contact: Joseph M Potenza Tel: 202 824 3000 Email: jpotenza@bannerwitcoff.com
Contact: Christopher J Renk Tel: 312 463 5000 Email: crenk@bannerwitcoff.com

Prosecution: Banner & Witcoff ’s prosecution teams manage large patent portfolios ranging from several hundred to several thousand patents and patent applications and typically including substantial numbers of foreign patents and applications. Many of the firm’s patent prosecutors are former US Patent and Trademark Office examiners.
Contact: Gary D Fedorochko Tel: 202 824 3000 Email: gfedorochko@bannerwitcoff.com
Contact: Charles L Miller Tel: 312 463 5000 Email: cmiller@bannerwitcoff.com

Design Patents: Banner & Witcoff is widely known as the leader in design patent procurement and design patent procurement strategies. In 2013, Banner & Witcoff procured more design patents than any other firm for the 11th consecutive year. In 2013, Banner & Witcoff procured 900 US design patents on behalf of its clients, bringing the total number of design patents procured by the firm in the last 20 years to more than 8,600.
Contact: Robert S Katz Tel: 202 824 3000 Email: rkatz@bannerwitcoff.com
Contact: Richard S Stockton Tel: 312 463 5000 Email: rstockton@bannerwitcoff.com

Trademarks: Trademark attorneys at Banner & Witcoff have extensive experience with evaluating trademark use and registrability issues, and obtaining trademark registrations efficiently and effectively for US and international clients. Banner & Witcoff attorneys devise overarching brand- and product-oriented trademark strategies, both offensive and defensive for the firm’s clients, as well as licensing and assigning trademarks to and from their clients. The firm manages and maintains large and complex trademark portfolios for global corporations, and enforces and defends against trademark infringement allegations both domestically and internationally, including through oppositions, cancellations, court litigation and customs procedures.
Contact: Helen Hill Minsker Tel: 312 463 5000 Email: hminsker@bannerwitcoff.com

Areas of Practice

  • Copyrights
  • Design Patents
  • Jury Trials
  • Litigation
  • Patent Post-Issuance Proceedings
  • Patent Prosecution
  • Trademarks
  • Trade Secrets

Branches

  • 1100 13th Street, NW,
  • Suite 1200,
  • Washington, DC,
  • District of Columbia
  • USA
  • 20005-4051
  • Tel +1 202 824 3000
  • Fax +1 202 824 3001
  • Website : www.bannerwitcoff.com
  • Ten South Wacker Drive,
  • Suite 3000,
  • Chicago,
  • Illinois
  • USA
  • IL 60606-7407
  • Tel +1 312 463 5000
  • Fax +1 312 463 5001
  • Email : info@bannerwitcoff.com
  • 28 State Street,
  • Suite 1800,
  • Boston,
  • Massachusetts
  • USA
  • MA 02109
  • Tel +1 617 720 9600
  • Fax +1 617 720 9601
  • 121 SW Salmon Street,
  • Suite 1100,
  • Portland,
  • Oregon
  • USA
  • OR 97204
  • Tel +1 503 425 6800
  • Fax +1 503 425 6801
  • Email : info@bannerwitcoff.com

Intellectual Property - District of Columbia

What the team is known for Leaders in patent prosecution, enforcement and strategy, and also high-value litigation. This specialist IP firm is also one of the country's most prolific filers of design patents.

Strengths (Quotes mainly from clients)
"We have a very good rapport with them, and have continued to work with the same attorneys because they are familiar with the technologies we use and they keep us updated on their work." 

"They do a lot of patent prosecution for us and they're top notch."

Work highlights Protected award-winning design patents on behalf of Electrolux, Microsoft, Nike, Nokia and Toshiba.

Defended Brother Industries in an ITC action brought by Technology Properties concerning flash memory card readers.

Notable practitioners  

The "excellent" Joseph Potenza has a comprehensive IP practice counseling clients involved in litigation of patent and copyright matters. His expertise includes Section 337 ITC investigations, as well as non-contentious work concerning patents and copyright.

Significant clients Citrix Systems, Seagate Technology, Comcast, Star Scientific, Mentor Graphics.

Intellectual Property - Illinois

What the team is known for Offers significant litigation expertise, including at appellate level. Other areas of expertise include copyright, design patents and patent prosecutions.

Strengths 
"For high-profile matters they are our go-to patent litigation firm."

Work highlights Successfully represented Nike in the US Supreme Court in a case against Already (d/b/a Yums).

Advised Delphi Automotive Systems on a patent dispute with Methode Electronics.

Notable practitioners  

Marc Cooperman is an experienced IP litigator. One client said: "He tends to be two steps ahead of opposing council."

Helen Hill Minsker is a strong practitioner in the trademark field. Her areas of expertise include licensing and enforcement matters.

Significant clients Kimberly-Clark, Harley-Davidson, WMS Gaming, American Dental Association, Jagex.