Jeffrey G. Mote concentrates his practice on patent, trademark and copyright matters with a focus on litigation, licensing and IP portfolio management. A former law clerk to Judge Harlington Wood, Jr. of the U.S. Court of Appeals for the Seventh Circuit, Jeff has wide-ranging experience handling appeals in both intellectual property and commercial litigation matters. Jeff's litigation experience includes numerous trademark, copyright, trade secret and unfair competition matters. He is particularly experienced in trademark counterfeiting investigations involving requests for expedited relief such as temporary restraining orders, ex parte seizures and preliminary injunctions.
Jeff also has litigation experience before the Trademark Trial and Appeal Board, including initiating and defending opposition and cancellation proceedings. He is a member of Greenberg Traurig's eDiscovery & eRetention Practice and has counseled clients throughout the country on document retention policies and electronic discovery issues.
In addition, Jeff manages, oversees and polices the intellectual property portfolios for several large, middle market and start-up entities. He also prepares, negotiates and drafts license agreements, and counsels clients in connection with the acquisition and sale of intellectual property rights.
Areas of Concentration
· Intellectual property litigation
· Counterfeit investigations
· Patents
· Trademarks
· Copyrights
· Trade dress
· Trade secrets
· Licensing and distribution agreements
· Electronic discovery and document retention policies
Significant Representations
· Representation of Lorillard Tobacco Company in numerous counterfeit investigations in the Chicago-area, resulting in the filing of more than 40 civil suits in the Northern District of Illinois involving the illegal importation and distribution of counterfeit Newport® cigarettes. Coordinated and conducted numerous ex parte seizures with the U.S. Marshals Service, including the seizure of more than $2.5 million in counterfeit cigarettes from a Chicago-area warehouse.
· Obtained temporary restraining order for the Acushnet Company against a wholesale distributor that was selling counterfeit Titleist golf balls.
· Obtained temporary restraining order and then permanent injunction for Sears, Roebuck & Co. in a trade dress action against a major retail competitor that was distributing "knock-offs" of Sears' Craftsman® Laser Trac® laser levels.
· Defended major sports-flooring manufacturer in arbitration matter involving breach of contract claims relating to a complex asset purchase agreement and associated patent and trademark licenses. All claims against the client were dismissed by the arbitrator.
· Prepared appeal on behalf of recreational-goods manufacturer resulting in the federal circuit's clarification of several novel claim interpretation issues.
· Defended The Boeing Company in patent infringement suit involving machine control technology by "patent troll" firm, resulting in client dismissal for nominal settlement.
· Defended W.W. Grainger in software patent infringement suit, resulting in plaintiff's voluntary dismissal at no cost to client.
· Represent Universal Electronics Inc. in policing and enforcing its patent and trademark portfolio, including the enforcement of numerous patents involving remote-control technology.
· Defended The Walt Disney Company in trademark and copyright infringement action, resulting in summary judgment in favor of client on all of plaintiff's claims as well as client's counterclaims.
· Manages the intellectual property portfolios for a diverse group of companies, ranging from a water park resort developer to a plastic container manufacturer.
Professional & Community Involvement
· Member, American Intellectual Property Law Association (AIPLA)
· Member, International Trademark Association (INTA)
· Member, Chicago Bar Association
· Member, American Bar Association
- Intellectual Property Section
- Litigation Section
- Business Section
· Coach, Youth Soccer and Baseball Programs
· Fundraiser, Juvenile Diabetes Foundation
Clerkship
· Law Clerk, Honorable Harlington Wood, Jr., United States Court of Appeals for the Seventh Circuit
Military Experience
· United States Navy, Officer/Naval Aviator, 1987 - 1994
- F/A-18 Hornet combat fighter pilot
- Flight Instructor, Navy Advanced Jet Training Program
Articles, Publications, & Lectures
· Speaker, "What You Should Know About Patent Pool Licenses," American Intellectual Property Law Association Spring Meeting, New York, New York, May 6 - 8, 2010
· Presenter, Strategies for Intellectual Property Enforcement for Individuals and Small Businesses, Chicago Bar Association's Young Lawyers Section, IP Law Committee CLE Program, February 7, 2006