Sherry L. Rollo

Sherry L. Rollo has handled several high-profile cases as an experienced litigator and licensed patent attorney. Sherry represents clients in domestic and international matters involving patents, trade secrets, trademarks, unfair competition, copyrights and associated licensing issues. In addition, Sherry assists clients in implementing trade secrets audit programs, strategies for conducting effective exit interviews and recovering computer forensic evidence.

She counsels clients in a variety of industries, including cases related to ethanol processing, recycling and industrial resource recovery, camera phones, dental instruments, ultrasonic laser seam welding, precision cutting tools, health care management systems, agricultural machinery, plastic films, aluminum extrusions and electric motors.

Sherry regularly appears in courts across the country, including popular patent venues such as the Northern District of Illinois, District of Delaware, District of New Jersey and Southern District of New York, as well as the Court of Appeals for the Federal Circuit.

Further, Sherry has significant experience counseling clients in transactional matters, including patent protection, portfolio management and licensing. She represents clients large and small in technical areas spanning pharmaceuticals, ethanol processing, recycling and industrial resource recovery, camera phones, dental instruments, ultrasonic laser seam welding, medical devices, precision cutting tools, healthcare management systems, agricultural machinery, plastic films, aluminum extrusions and electric motors. In a recent success, she obtained a permanent injunction on behalf of a company using a catalytic activated vacuum distillation process for extracting by-products, such as carbon, diesel fuel and energy-rich gasses, from recycled tires.

She has been involved in numerous high-profile pharmaceutical Hatch Waxman Act/Abbreviated New Drug Application (ANDA) litigation at both the trial and appellate levels. Some of her more notable cases involved the pharmaceutical products Actonel®, Antara®, Boniva®, Uroxatral®, Eloxatin®, Ultracet®, Omnaris®, Benicar®, Lotrel®, Zometa®, Reclast®, Treanda®, and Plavix®. In addition, Sherry advises clients on Food and Drug Administration marketing exclusivities arising out of ANDA patent litigation, as well as IPRs and post grant proceedings at the U.S. Patent Office.

Sherry’s trademark and copyright experience includes litigating in district court and arguing before the Trademark Trial and Appeal Board on behalf of several major healthcare providers and healthcare insurance providers. She also has written several articles relating to the protection of trademarks in the healthcare industry and related data protection and issues relating to the Health Insurance Portability and Accountability Act.

Professional History

• Partner, Hahn Loeser & Parks LLP, 2015-present

• Partner, Husch Blackwell LLP, 2008-15

• Attorney, Welsh & Katz, Ltd., 2004-08

Experience

Construction Team Secures Mandatory Injunction Against City of Lorain in Bid Dispute

June 21, 2019

• Litigated ANDA disputes at both the trial and appellate level, including Plavix (clopidogrel bisulfate), Actonel (risedronate), Boniva (ibandronate), Antara (fenofibrate) Uroxatral (alfuzosin), Ultracet (tramadol/ acetaminophen), Omnaris (ciclesonide nasal spray), Benicar (olmesartan medoxomil), Lotrel (amlodipine and benazepril), and Eloxatin (Oxaliplatin).

• Obtained favorable settlement for an alternative fuel company in its claim for misappropriation of trade secrets involving catalytic process for refining renewable feedstocks into a variety of products including fuel, oleochemicals and biodegradable lubricants.

• Counseled Apotex in a significant jurisdictional case where the Court of Appeals for the Federal Circuit held that Apotex has standing as a subsequent ANDA filer to challenge one of Daiichi’s Orange Book listed patents for the drug Omnaris® (olmesartan medoxomil), despite the patent having been disclaimed by Daiichi.

• Obtained dismissal of a trade secret misappropriation claim for lack of standing brought against a national manufacturer of aluminum cans. Williamson v. Rexam Beverage Can Co., 497 F. Supp.2d 900 (S.D.Ohio 2007).

• Counseled Illinois Tool Works in patent infringement litigation involving enforcement of company patent on innovative polyester/polyolefin packaging technology. Illinois Tool Works Inc. v. Samuel Son & Co. Ltd. and Samuel Strapping Systems Inc. (N.D.Ill. 2012).

• Argued before the Trademark Trial and Appeal Board and obtained reversal of the trademark examiner’s refusal to register under Section 2(d) In re Capital Blue Cross, Serial No. 78869843.

• Counseled Horizon Healthcare Services Inc. in obtaining summary judgment on the issue of invalidity of federal service mark registration due to application defects and on the issue of priority. Horizon Healthcare Services Inc. v. Allied National Inc., 2006 WL344277 (D.N.J. 2006).

• Advised Apotex Inc. and obtained favorable results for client defending a motion for preliminary injunction by Hoffmann-LaRoche Inc. to prevent the launch of a generic version of the osteoporosis drug Boniva (ibandronate), which enabled client to launch as a first filer. Additionally, the court granted defendant’s motion for summary judgment finding that plaintiff’s patents were invalid for obviousness. Hoffman-La Roche Inc. v. Apotex Inc., et al. (D.N.J. 2012).

• Counseled Apotex and obtained summary judgment of noninfringement on Lupin’s Orange Book listed patents on behalf of client. Avoided prolonged discovery for this case and prevented Lupin’s counsel from engaging in a fishing expedition, while limiting client’s overall expenses in demonstrating that client’s formulation did not infringe. In re Fenofibrate Patent Litigation (S.D.N.Y. 2012).

Publications & Speaking Engagements

USPTO Requires U.S. Licensed Attorney for Foreign Trademark Applicants and Registrants

July 23, 2019

Contractors – Protect Your Confidential Information from Wrongful Disclosure

May 17, 2019

European Data Privacy Regulations Now May Extend to U.S. Businesses

July 18, 2018

Best Practices in the Protection and Management of Trade Secrets

November 14, 2016

Keeping your Company off Thin Ice and Out of the Penalty Box: What you Need to Know About the Defend Trade Secrets Act

November 01, 2016

How to Succeed as an IP Associate

September 27, 2016

Best Practices: US/Canadian/Mexican/European IP Litigation Strategies Tips and Pitfalls, Ethical Considerations

June 10, 2016

Through the Looking Glass or Down the Rabbit Hole? Where is Alice and Other Supreme Court Decisions Taking Patentable Subject Matter in the U.S.?

November 19, 2015

License Negotiations

November 09, 2015

Licensing Compliance – Best Practices: Competing Interests and How to Ensure Licensing Compliance

July 13, 2015

How to Keep your Patent Portfolio off Life Support and Out of the Morgue in View of Bilski, Mayo, Myriad, Alice, and Other Recent Court Decisions

January 01, 2015

Community Involvement

Chicago Metro History Education Center, Board Member, 2015-present

University of Texas Alumni Association, Chicago Chapter, President, 2011-present

Awards & Distinctions

The Best Lawyers in America®, Litigation - Intellectual Property, Trade Secrets Law, 2021

Illinois Super Lawyers®, Intellectual Property, 2018-21

Rising Star, Illinois Super Lawyers®, Intellectual Property, 2011-17

Memberships & Affiliations

International Association for the Protection of Intellectual Property (AIPPI), Member

Intellectual Property Law Association of Chicago (IPLAC), Board of Managers, 2014-present; Chair, 2010-present; Trade Secrets and Unfair Competition Committee

Licensing Executives Society International, YMC Vice-Chair Communications, 2014-present; YMC Chair Elect, 2015; Chemical, Energy, Environmental and Materials Sector, Past Chair

International Trademark Association, Pro Bono Committee, Member, 2014- present

American Bar Association, Member

Chicago Bar Association, Member

Women in BIO, Member