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Education
University of Illinois, B.S.
  with honors
University of Michigan, M.S.
Loyola University, J.D.

Admitted to Practice
Illinois
U.S. Court of Appeals, 7th Circuit
U.S. Court of Appeals, Federal Circuit
U.S. Court of Appeals, 5th Circuit
U.S. District Court, Eastern District of Michigan
U.S. District Court, Northern District of Illinois, including Trial Bar
U.S. District Court, Eastern District of Wisconsin
U.S. District Court, Northern District of Ohio
U.S. District Court, Western District of Michigan
U.S. District Court, Eastern District of Texas
U.S. Patent and Trademark Office

Experience

Sternstein has practiced intellectual property law at several Illinois firms and corporations since 1973, including Abbott Laboratories where he was Division Patent Counsel. He has extensive litigation experience, successfully representing companies in complex cases which have earned him a reputation as one of the nation’s most respected IP lawyers. Mr. Sternstein chaired the lawyers' committee responsible for drafting the Local Patent Rules enacted by the Northern District of Illinois. He has also acted as an expert witness and as a mediator in a variety of patent disputes. Sternstein is also an adjunct professor at the University of Illinois, College of Law, where he has taught Patent Litigation, Patent Law and Patent Prosecution. He has also taught classes on Patent Law and Patent Litigation at DePaul University, Chicago; St. Peter’s College, Oxford University, UK; and University of Victoria, Canada.

Representative Cases

• Linde LLC v. Cryogenic Systems Equipment, Inc., (N.D.Ill. 2010), Patent infringement action relating to refrigeration conveyor belt; pending.

• Tsera, LLC v. Bang & Olufsen America, Inc., et al. (E.D.TX. 2009), Patent infringement action relating to touchpads for controlling electronic devices; settled.

• In the Matter of Certain MEMS Devices and Products Containing the Same, Complainant, Analog Devices, Inc./Respondent, Knowles Electronics, LLC, (ITC 2009), Alleged unfair trade practices based upon patent infringement relating to anti-stiction processes for MEMS products; pending.

• Scholle Corporation v. Rapak LLC, (N.D.Ill. 2009), Patent infringement action relating to plastic bags; pending.

• In the Matter of Certain Silicon Microphone Packages & Products Containing the Same, Complainant, Knowles Electronics, LLC/Respondent, Analog Devices, Inc., (ITC 2009), Unfair trade practices based upon patent infringement relating to silicon MEMS microphones; pending.

• Elite Outdoors LLC v. Stingray Enterprises, Inc., et al., (W.D.N.Y. 2009), Trade secrets action relating to archery bows; settled.

• Furstperson, Inc. v. Iscopia Software, Inc. (N.D.Ill. 2009), Trade secrets action relating to computer software and processes over web-based methods for evaluating employee applicants; settled.

• In the Matter of Certain Silicon Microphone Packages and Products Containing the Same, Complainant, Knowles Electronics, LLC/Respondent, MEMS Technology Berhad, (ITC 2007), Unfair trade practices based upon patent infringement relating to silicon MEMS microphone packages for cell phones; won Exclusion Order for Complainant, Knowles Electronics, after trial; affirmed by full Commission.

• Meyer Corporation v. Bodum, Inc., (N.D. Ill. 2006), Patent infringement action relating to milk frothers; pending.

• Square D Company v. E.I. Electronics, Inc., (N.D. Ill. 2006), Patent infringement action relating to power meters; settled after favorable Markman ruling.

• Reber v. High Tech Computer Corp., (N.D. Ill. 2006), Patent infringement action relating to cell phones; settled.

• Textron Innovations Inc. v. Fairplay Electric Cars, (S.D. Georgia 2006), Design patent infringement action relating to golf carts; settled.

• Calphalon Corp. v. Meyer Corporation, (E.D. Calif. 2005), Design patent infringement action relating to cookware; won after jury trial and holding of non-infringement.

• Hypertherm, Inc. v. American Torch Tip Company, (D.N.H. 2005), Patent infringement action relating to plasma arc torches with antitrust counterclaims; settled.

• Precitec, Inc. v. American Torch Tip Company, (D.C. Mich. 2005), Patent infringement action relating to plasma arc torches; settled.

• Motorola, Inc. and GMP/Wireless Medicine, Inc. v. Nonin Medical, Inc., (N.D. Ill. 2004), Patent infringement action relating to wireless medical monitors; settled after favorable Markman ruling.

• Optivus Technology, Inc. and Loma Linda University v. Ion Beam Applications S.A., (C.D. Calif. 2003), Patent infringement action relating to proton beam therapy systems; settled.

• Motorola, Inc. and GMP/Wireless Medicine, Inc. v. Welch-Allyn Protocol, Inc., (N.D. Ill. 2004), Patent infringement action relating to wireless medical monitors; settled.

• Manitowoc Cranes, Inc. v. Liebherr-America, Inc., (E.D. Wis. 2003), Patent infringement action relating to a control and hydraulic system for liftcranes; settled.

• A.L. Hansen Manufacturing Co. v. Bauer Products, Inc., (N.D. Ill. 2003), Patent infringement action relating to support arm for lids over pick-up truck beds; case settled with license agreement and entry of consent judgment.

• Optobionics v. Peyman, (N.D. Ill. 2002), Misappropriation of trade secrets, breach of contract, Lanham Act violation relating to artificial retina devices; settled.

• Peyman v. Optobionics, (E.D. La. 2002), Declaratory judgment breach of contract action relating to artificial retina devices; case dismissed on motion for abuse of Declaratory Judgment Act and in favor of later filed Illinois action; settled during appeal.

• Technical Concepts v. Zurn, (W.D. Pa. 2002), Patent infringement action relating to automatic flush valve assemblies; settled.

• Technical Concepts v. Zurn, (W.D. Pa. 2002), Declaratory judgment action relating to automatic flush valve assemblies and corresponding patent infringement action, Zurn v. Technical Concepts, (W.D. Pa. 2002); settled.

• Borg-Warner v. New Venture Gear, (N.D. Ill. 2000), Patent infringement action relating to 4WD automobile transfer cases; settled.

• Multi-Tech v. VocalTec Communications Inc., (D. Minn. 2000), Patent infringement action relating to voice over Internet technology; settled.

• Prototype Equipment v. Fallas Automation, (N.D. Ill. 2000), Patent infringement action relating to equipment for positioning and placing articles in containers. Won temporary restraining order and preliminary injunction; settled.

• Panduit v. Band-It Idex, (N.D. Ill. 2000), Patent infringement action relating to bundling straps; won preliminary injunction, affirmed on appeal, case won. Permanent injunction obtained on summary judgment; settled during final appeal.

• Coca-Cola v. Liqui-Box, (N.D. Ga. 1999), Patent infringement action relating to collapsible containers. Obtained permanent injunction after patent found valid and infringed by special master.

• Varis Corporation v. Scitex Digital Printing, Inc., (S.D. Ohio 1999), Patent infringement action relating to high speed printing equipment and processing; settled.

• Champion International Corporation v. Honeywell-Measurex Corporation, (mediation, 1999), Mediator for patent infringement action relating to monitoring systems for continuous manufacturing processes; settled.

• FF Acquisition Corp. v. Icon Fitness Corp., (N.D. Miss. 1999), Patent infringement and antitrust action relating to treadmills; settled.

• Smiths Industries Aerospace & Defense Systems Inc., v. Simmonds Precision Products, Inc., (S.D. Calif. 1999), Declaratory judgment action for misappropriation of trade secrets, breach of contract, copyright infringement relating to Health and Usage Management Systems (HUMS) for helicopters; settled.

• Lund Industries, Incorporated v. Auto Ventshade Company, (D. Minn. 1998), Patent infringement action relating to vehicle shield; settled.

• S.C. Johnson Commercial Markets, Inc. v. The B.F. Goodrich Company, (W.D. Wis. 1998), Patent infringement action relating to graphic arts polymer coatings; settled.

• Simmonds Precision Products v. Global Associates, Ltd., (D. Md. 1998), Misappropriation of trade secrets, breach of contract, copyright infringement relating to Health and Usage Management Systems (HUMS) for helicopters; settled.

• Circadian Pharmaceuticals (Australia) Pty Limited v. Eli Lilly and Company, (The Supreme Court of Victoria at Melbourne, 1997), Expert witness on United States patent practices; settled.

• Autonomous Technology Corp. v. VISX, Inc. et al., (D. Del. 1996), Patent declaratory judgment action relating to excimer laser system and processes for Photorefraction keratectomy (PRK) eye surgery; settled.

• Discovision Associates v. Disc Manufacturing Inc., and DLC Manufacturing, Inc., v. Pioneer Electronic Corp. et al., (D. Del. 1995), Consolidated cases of patent infringement and antitrust violations relating to compact discs and CD encoding and mastering system; settled.

• Square D Company v. Power Measurement Ltd., (D. Del. 1995), Patent infringement action relating to power monitors, with antitrust and unfair competition counterclaims; settled.

• Viskase Corp. v. American National Can Company, (N.D. Ill. 1993), Patent infringement action relating to heat shrinkable plastic films. Won $102.3 million jury verdict, increased to $164.9 million judgment including enhanced damages and prejudgment interest; settled during appeal.

• Carabillo v. Norm Thompson Outfitters [Hartmarx Corp.], (D. Ore. 1993), Patent infringement action relating to trouser construction. Case won; dismissed on summary judgment.

• Herman Miller, Inc. v. Teknion, (N.D. Ill. 1993), Patent infringement action relating to office wall panels; settled.

• Facility Management Systems v. DataFlo, (D. Neb. 1993), Patent infringement action relating to security monitoring devices; settled.

• Wolverine v. NIKE, (W.D. Mich. 1993), Patent infringement action relating to shoe design; case won/dismissed on summary judgment.

• Haworth v. Herman Miller, Inc., (W.D. Mich. 1992), Patent infringement action relating to office wall panels; settled.

• B.F. Goodrich Flightsystems v. Insight Instruments, (S.D. Ohio 1992), Patent infringement action relating to stormscope radar devices; settled.

• Laser Pacific v. Encor Video, (C.D. Calif. 1991), Patent infringement action, with antitrust, RICO, Lanham Act counter-claims; settled.

• Kelsey-Hayes v. Motor Wheel Corp., (W.D. Mich. 1990), Patent declaratory judgment action relating to steel wheel construction; settled.

• W.R. Grace & Company v. Viskase Corp., (N.D. Ill. 1990), Patent infringement action relating to patched bags; settled.

• ALCOA v. Reynolds Metals Co., (N.D. Ill. 1988), Patent infringement action relating to aluminum formulations. Patent held valid and infringed after jury trial, case settled before appeal.

• Thomas & Betts v. AMP, (D. N.J. 1988), Patent infringement action relating to electrical connectors; settled.

• Atari v. Taito, (N.D. Ill. 1987), Copyright infringement action; settled.

• Kasper v. I-Tech, (N.D. Ill. 1987), Patent infringement action relating to hockey helmets. Case won; dismissed after motion for lack of personal jurisdiction.

• Rolls-Royce, Renishaw v. Daishowa Seiki Co., (E.D. Mich. 1987), Patent infringement action relating to machine sensors; settled.

• Kaken v. Eli Lilly, (S.D. Ind. 1986), Breach of contract action; settled.

• Williams & Humbert v. Ruiz Mateos, (D. D.C. 1985), Trademark valuation and ownership; won at trial.

• Baxter v. Abbott Laboratories, (N.D. Ill. 1985), Patent infringement action relating to peritoneal dialysis procedure; settled.

• M.I.T. v. Abbott Laboratories, (D. Mass. 1983), Patent infringement action relating to amino acid feeding procedures; settled.

• Information International Inc. v. Compugraphic, (C.D. Calif. 1983), Patent infringement action relating to computerized photo-typesetters; settled.

• Moore v. Stewart, (W.D. Ark. 1982), Design patent infringement action relating to toy train whistle; won at trial.

• Precision-Cosmet v. Surgidev, (D. Minn. 1982), Patent infringement action relating to intra-ocular lenses; settled.

• Rockwell v. Eltra, (C.D. Calif. 1981), patent infringement action relating to computerized photo-typesetters; settled.

• W.R. Grace & Co. v. Union Carbide Corp., (N.D. Ill. 1978), Patent infringement action relating to layered, oriented polymer bags; settled.

• Schumann v. IPCO, (Ill. Circuit Court 1978), Trade secrets; case won/dismissed on summary judgment, affirmed.

• EMI v. Ohio Nuclear, (N.D. Ohio 1976), Patent infringement action relating to CAT scanners; settled.

Seminars and Speeches

• 2010  Working with Local Patent Rules (Panel Speaker), The John Marshall Law School, Chicago, IL

• 2006  Emerging IP Trends in Mergers & Acquisitions (Speaker), Dykema Seminar, Chicago, IL; Grand Rapids, MI

• 2005  Calculating & Proving Patent Damages (Speaker), Law Seminars International, Chicago, IL

• 2003  U.S. Patent Law and Litigation (Lecturer/Instructor), St. Peter's College, Oxford University, United Kingdom

• 2002  U.S. Patent Law and Litigation (Lecturer/Instructor), University of Victoria, Victoria, Canada

• 1998  Assessing and Proving Damages in Patent Cases (Speaker), The John Marshall Law School, Chicago, IL

• 1997  Patent Licensing Agreement Provisions (Speaker), Chicago Bar Association, Chicago, IL

• 1995  Efficient and Effective Damages Discovery (Speaker), Licensing Executives Society Annual Meeting

• 1994  U.S. Patent Prosecution, National Science and Technology Development Agency, Chulalongkorn University, Bangkok, Thailand

• 1992  Alternative Dispute Resolution - Case Studies (Speaker), Brinks Hofer 75th Anniversary Seminar, Chicago, IL

Publications

• "IP: Patent Holders Score Victories in Qui Tam Lawsuits," Inside Counsel (August 24, 2010)

• "IP: Considerations When Filing Patent Infringement Claims," Inside Counsel (August 10, 2010)

• "Baseless Trademark Suits," Inside Counsel (July 13, 2010)

• "Patent Case Damages are in Decline," Inside Counsel (June 29, 2010)

• "The Ethos, Logos and Pathos of Patent Cases," Inside Counsel (June 15, 2010)

• "The Shrinking Lure of the Eastern District of Texas," Inside Counsel (June 1, 2010)

• "Federal Circuit's Ariad Decision Important to Patent Community," Inside Counsel (May 18, 2010)

• "Are Significant Patent Damages Being Overlooked?," The National Law Journal  (2006)

• "The Changing Tides in Patent Infringement Damages," Aspen Law & Business, Intellectual Property Law Update  (2003)

• "Increasing Trends in Patent Infringement Damages," Wiley Intellectual Property Law Update  (1998)

• "Reaching for the Sky and Beyond-Patent Infringement damages are set to get higher in the United States," Managing Intellectual Property  (1997)

• "Designing an Effective Intellectual Property Compliance Program,"  West Publishing (Co-author)  (1993)

Professional Associations

• Chicago Bar Association

• American Bar Association

• Intellectual Property Law Association of Chicago (Chairman: Inventor Services Committee, 1981; Membership Committee, 1987-1989)

• American Intellectual Property Law Association

• Intellectual Property Owners Association

Awards

• Named an Illinois Leading Lawyer for 2009
  
  
• Named Super Lawyer by Law & Politics and Chicago Magazine in Intellectual Property Litigation category (2005, 2006, 2007, 2008, 2009 and 2010)
  
  
  
• Named one of the Leading American Attorneys in the area of Intellectual Property and Computer Law by the American Research Corporation
  
  
  
• Listed in Who's Who in the World
  
  
  
• Listed in Who's Who in America
  
  
  
• Listed in Who's Who in American Law