Jeanne M. Gills

Jeanne M. Gills

Jeanne M. Gills is a partner with Foley & Lardner LLP and vice-chair of the firm's national Intellectual Property Department and Intellectual Property Litigation Practice.

Her trial experience includes such "bet the company" cases as DeKalb v. Pioneer, a patent case concerning genetically engineered corn where over $500 million was at stake. With her electronics background, Ms. Gills has litigated many patent and technology cases involving semiconductors, memory devices, plasma displays, optical projectors used in aircraft, diesel engines, and other complex electronics and computer software matters.

Throughout her career, she has represented clients in many diverse industries (from electronics to biotechnology) in complex patent, trade secret, trademark, copyright, and unfair competition litigation and appeals. Other recent trial experience includes federal jury trials and arbitrations in multiple forums, including jury trial involving patent infringement of a dual-energy x-ray scanning device; jury trial involving copyright and trade dress infringement of a silo unloader; jury trial involving trade dress infringement of a rotary electric shaver; and arbitration involving copyright infringement, trade secret misappropriation, and other business claims regarding computer software. She has also successfully represented plaintiffs and defendants in numerous preliminary injunction and TRO proceedings, including suits involving copyright infringement and trade secret misappropriation of computer software; patent, trademark, and trade dress infringement of a hand tool; copyright and trade dress infringement of robotic toy designs; copyright infringement of architectural plans; and trade secret misappropriation of customer lists-all of which resulted in favorable settlement terms for her clients. In addition, her experience includes ITC actions and conducting discovery abroad throughout Europe and Japan.

Her broad-based intellectual property experience resulted in her being recognized by the AIPLA and the MCCA as one of the country's "Top Minority IP Partners" (2003), as being one of less than 5% of Illinois attorneys selected for inclusion in Illinois Super Lawyers® (2005, 2006, 2008, 2009), and as a leading patent litigator and trade secrets lawyer by The Legal 500 US (2007). She was also recognized among the notable lawyers in Who's Who in Black Chicago (2006). In addition, Ms. Gills received an "AV" rating from Martindale-Hubbell's peer review process. An "AV" rating is given to those attorneys with "very high to preeminent legal ability," and reflects her "expertise, experience, integrity and overall professional excellence."*

As an attorney registered to practice before the United States Patent and Trademark Office, Ms. Gills regularly counsels clients in all aspects of the procurement, registration, enforcement, advertising, marketing/branding, and protection of intellectual property in the U.S. and abroad. Representative experience includes: counseling companies on the protection of product configuration trade dress and the use of color as a trademark; counseling companies regarding copyright ownership and infringement disputes, particularly in the areas of computer software and associated documentation; handling contractual disputes concerning intellectual property rights and licenses and the theft or use of intellectual property by a company's former employees or independent contractors; counseling clients on IP holding companies, including how to maximize value from an IP portfolio when certain assets are likely to be the subject of IP litigation; and handling cases involving the intersection of trade dress, design patent, and utility patent protection for consumer and industrial products. Apart from her intellectual property litigation and counseling experience, she has prepared various intellectual property licenses, including franchise, software, and disaster recovery agreements.

Ms. Gills is a graduate of the University of Chicago Law School (J.D., 1994) and Michigan State University (B.S., with honors, electrical engineering, 1991). She is admitted to practice in Illinois, the Seventh Circuit, and various federal district and appellate courts, in addition to the USPTO. She is an active member of the AIPLA, IPLAC, and the Intellectual Property Law sections of the ABA and the NBA.

In addition, Ms. Gills co-authored a chapter on Experts for the Patent Litigation Strategies Handbook (BNA Books). She also regularly presents seminars and publishes on a variety of intellectual property topics, including the following recent papers and/or presentations:

· "Networking For Success" (F&L Mentor/Mentee Seminar, 6/09)

· "Emerging Legal Trends In Patent Law" (MCCA CLE Expo, 3/09)

· "KSR: Pharmaceutical Cases Revisited 18 Months Later" (BNA & ABA Section of Intellectual Property Law Conference, 10/08)

· "IP Gone Wild?" (Moderator and Panelist, F&L IP Litigation Conference, 9/08)

· "Strategic Patent Litigation - Venue Selection, Use of IP Injunctions & Defenses" (Presentation at IP Section of National Bar Association Annual Conference, 7/08)

· Pre-Conference Workshop on "Creating & Managing Patent Portfolios" (Presentation at 2nd Annual Summit on Intellectual Property for Wireless Tech & New Media, 6/08)

· "IP Litigation in the 21st Century - A Look at In re Bilski, Post-KSR Litigation Strategies, & Stats on Best Patent Defenses" (Presentation at Northwestern Journal of Technology & Intellectual Property Annual Symposium, 4/08)

· "At the Razor's Edge: Prosecuting and Defending Against Patent Infringement Claims Post-KSR" (F&L Legal News: Medical Devices Newsletter, 1/08)

· "Strategic Venue Selection & Use of IP Injunctions" (Panelist, F&L Business Litigation Conference, 12/07)

· "Navigating The Changing Tides of Patent Litigation" (Martindale Hubbell/Lexis Nexis Counsel2Counsel Forum, 11/07)

· "Views from the Bench: Remedies in IP Litigation Cases - A Roundtable of Judges from the Southern District of New York" (Moderator and Panelist, F&L IP Litigation Conference, 10/07)

· "Unexpected Results? - The Litigation Landscape Post-KSR in Pharmaceutical Cases" (BNA & ABA Section of Intellectual Property Law Conference, 10/07)

· "Avoiding a Career Silo: Understanding and Converting Your Value" (10th Annual CYOC Career Development Conference, IP Law Pre-Conference 9/07)

· "Hot Topics in Trademark Law" (DuPont Legal Conference, 9/07)

· "KSR v. Teleflex: Its Practical Implications for Patent Practice" (IPO Annual Meeting, 9/07)

· "KSR International Co. v. Teleflex Inc. - Pharmaceutical Prosecution & Litigation Strategies" (Client CLE Seminar, 6/07)

· "Taking A Company's IP To The Next Level" (Client CLE Seminar, 6/07)

· "Use of Expert Witnesses in Patent Litigation" (BNA/ABA Seminar, 11/06)

· "Are Opinions of Counsel Still the Best Defense to Willfulness in IP (Patent & Trademark) Litigation" (F&L Corporate Counsel Seminar, 10/06)

· "Battling Global IP Piracy & Counterfeiting" (F&L Corporate Counsel Seminar, 9/06)

· "Surfing Trademark Issues on the Web" (F&L White Paper, 9/06; Corporate Legal Times and F&L Webinar, 3/05)

· "Crafting an Effective Patent Invalidity Opinion - Is it the Last Bastion of Defense?" (PLI, 2003-2006; IP Litigator article, 6/04)

· "Being and Finding Good Mentors" (BWLA, 3/06)

· "Trade Secret Protection in the 21st Century" (Presenter, F&L Business Litigation Conference, 12/05)

· "The Dilution Dilemma - Litigating Dilution Claims and the Trademark Dilution Revision Act of 2005" (ABA/Navigant Consulting IP Roundtable, 12/05)

· "Seize the Day: Hearing an Ex Parte Seizure Order for Copyright and Trademark Counterfeiting" (AIPLA Annual Meeting, 10/05)

· "IP Roundtable on Key Patent Appellate Cases, including Blackberry, Lemelson, and Illinois Tool" (F&L Corporate Counsel Seminar, 10/05)

· "Digital, Wireless & New Media Technologies - Is Your IP Future in the Right Hands?" (F&L Corporate Counsel Seminar, 9/05)

· "Discovery Issues in Patent Litigation" (PLI, 9/05)

· "Internet-Related Trademark Litigation Issues & Trends" (INTA Table Topic, 5/05)

· "New Insights into IP Law in China" - Presenter on Trade Secret Protection (F&L Corporate Counsel Seminar, 3/05)

· "Preparing to Initiate or Defend a Patent Lawsuit" (ABA, 10/04)

· "IP Litigation: Avoiding the Money Pit" (Corporate Legal Times and F&L Webinar, 7/04)

· "How Do You Measure Up? Metrics And Measurements for Law Departments" (Counsel to Counsel Forum, 2/04)

· "How to Litigate in the Digital Decade" (Defendants' Patent Counsel (doing damages expert cross-exam and defendants' closing argument) in Mock Trial Plenary Session involving patent and trademark infringement regarding image enhancement software; AIPLA Mid Winter Institute, 1/04)

· "Bank One: Law Firm Diversity Symposium" (Panelist, 12/03)

· "A Woman and Minority Perspective on Client Development" (CBA, 9/03)

· "Intellectual Property Litigation and Opinions - Using Litigation Knowledge to Advance Career Success" (NBA Annual Convention, 8/03)

· "An Ounce of Prevention - Smart Patent Prosecution Can Minimize Litigation Oops" (IP Litigator article, 7/03)

· "Avoiding Litigation Pitfalls through Effective Patent Prosecution" (Corporate Counsel article, 7/03; and ABA IP Seminar, 4/03)

· "Getting Off To A Good Start - Drafting A Patent Application to Survive Prosecution and Litigation" (AIPLA Annual Meeting, 2002)

· "An IP Litigation Perspective on Licensing" (PLI Seminar, 2001)

· "Section 112 Cases and the Impact of Festo" (PLI Seminar, 2001)

· Contributor to the IPLAC Litigation Committee's "Federal Circuit (2001 and 2002) Review of Markman Issues.

Ms. Gills serves on the firm's Diversity Committee. She is also a former member of the firm's national Recruiting Committee (1999 - 2005) and former chair of the firm's African-American Attorneys Affinity Group. In addition, Ms. Gills has been a board member with the Evening Associates of the Art Institute of Chicago since 2002 and in 2008 became a mentor for high school students through Links Unlimited.

*The Illinois Supreme Court does not recognize certifications of specialties in the practice of law and no award or recognition is a requirement to practice law in Illinois.