| David Berten | Rhett
Dennerline | Greg
Smith |
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David Powers Berten
Competition Law Group, Partner (1999-present)
Bartlit Beck Herman Palenchar & Scott, Partner (1993-98)
Kirkland & Ellis, Associate (1989-93)
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University of Wisconsin Law
School, J.D., cum laude
Order of the Coif
Articles Editor, Wisconsin Law Review
Member, National Moot Court Team
Best Oral Advocate, Wisconsin Supreme Court
University of Virginia School of Architecture, B.C.P. (Urban
Planning)
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Member of Northern District of Illinois Trial Bar
First chaired more than 25 trials (including jury trials),
multiple binding arbitration hearings, and numerous other
evidentiary
proceedings.
All cases that proceeded to trial have been won at trial
and affirmed when appealed.
Extensive trial team experience (over 50 days) in addition
to first chairing cases.
Trial experience includes trademarks, patents, copyrights,
contracts, securities, tax, immigration, products liability,
Lanham
Act,
unfair competition, fraud, and real estate matters.
Argued Markman hearings, preliminary injunctions (including
evidentiary hearings), many types of dispositive and
non-dispositive
motions, and appeals.
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Extensive experience in all aspects of intellectual property
litigation.
Directed and participated in all aspects of patent and trademark
litigation, including pre-suit investigation, preliminary
injunctions, discovery, motion practice, Markman hearings,
trials, Federal Circuit appeals, coordination of international
litigation, and coordination of litigation with patent prosecution.
Advised clients on patents involving, genetic markers, medical
devices, software, hardware, chemical compositions, optics,
machine
vision,
bar
coding, fax machines, vehicle navigation, and plastics.
Admitted to practice before the United States Court of Appeals
for the Federal Circuit.
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asylumlaw.org, inc., Founder, President and Chief
Executive Officer (1999-present)
Midwest Immigrant and Human Rights Center, Leadership Council
(1997-present)
ABA pro bono award recipient (2000); Midwest Light of Humarn
Rights Award (2004); Edward J. Lewis II Pro Bono Service
Award (2005)
Member, ABA Commission on Immigration Advisory Committee (2005-06)
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United States Supreme Court
United States Courts of Appeals for the Federal, Third and Seventh
Circuits
United States District Courts for the Northern District of Illinois
and Western District of Wisconsin
Supreme Court of Illinois |
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Intellectual Property Trials, Litigation,
Licensing, and Enforcement |
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Ventana
Medical Systems, Inc. v. Abbott Laboratories and Vysis,
Inc. (N.D. Ill. 2003). Represent Ventana
Medical Systems, Inc. in patent infringement matter involving
genetic marking technology. Abbott represented by Jim Hurst
of Winston & Strawn. Case settled. |
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Bank One matters
(2002-03). Represent Bank One in various intellectual property matters. |
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DataQuill
Matters. Represent DataQuill,
Inc. in actions against Handspring, Inc. (N.D. Ill. 2001) and
Kyocera, Inc. (S.D. Cal. 2001) in patent infringement cases
involving cellular telephone technology. Handspring represented
by Darryl Woo and Stuart Meyer of Fenwick & West. Kyocera
represented by Tony Dain of Procopio firm. |
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Trifus N.A.,
LLC v. Knowledge Management Solutions, Inc. (N.D. Ill. 2003) Represented
Trifus in software copyright infringement matter. Obtained
preliminary injunction against defendant. Case subsequently
settled. |
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Cordis
Corp. (subsidiary of Johnson & Johnson) v. Advanced Cardiovascular
Systems, Inc. and Guidant, Inc. (D. Del. 1997-2001) (parallel
proceedings in The Hague, Netherlands and the European Patent
Office, Munich, Germany)
Represented Cordis in patent infringement matter involving nylon
balloon technology for angioplasty catheters. Argued claim interpretation
issues at Markman hearing before three-member arbitration
panel. Case settled favorably following Markman determination. |
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Beneficial
Franchise Co. v. Bank One (N.D. Ill. 2000) 2001 U.S.
Dist. LEXIS 3565; 2001 U.S. Dist. LEXIS 5986; 2001 U.S. Dist.
LEXIS 12004; 2001 U.S. Dist. LEXIS 12006.
Represented Bank One in defense of patent infringement action
relating to electronic tax returns. Beneficial Finance represented
by Cahill Gordin & Reindel. Case favorably settled following
favorable rulings on motions to dismiss. |
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Weber-Stephens
Products, Co. v. Armitage Hardware (N.D. Ill. 2000) 2000
U.S. Dist. Lexis 6335; 54 U.S.P.Q.2d (BNA) 1766; (Parallel administrative
proceeding before the World Intellectual Property Organization
D-00-1087)
Represented Armitage Hardware. Secured first ruling curbing
the jurisdiction of the Internet Corporation for Assigned Names
and Numbers, Inc. (ICANN) in a domain name dispute involving
the domain "webergrills.com" (link
to National Law Journal article). Weber-Stephens represented
by Baker & McKenzie. Defeated effort to transfer domain
name to trademark holder. (link
to WIPO decision) Federal action dismissed with prejudice. |
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TechSearch
LLC v. UNEXT.com LLC (N.D. Ill. 1999)
Ongoing representation of UNEXT.com in patent infringement
matter involving software patent. TechSearch represented by
Ray Niro of Niro Scavone firm. Case settled. |
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Alexander
Binzel Co. v. Nu-Tecsys, Inc. (N.D. Ill. 1999); 2000
U.S. Dist. Lexis 5238; 1999 U.S. Dist. Lexis 3633
Represented Nu-Tecsys in trademark infringement case. Asserted
counterclaims for violation of Lanham Act, unfair competition,
and tortious interference with prospective economic advantage.
ABC represented by Mark V.B. Partridge of Pattishall McAuliffe.
Case Won. Jury verdict of non-infringement of trademark and
award of $4 million on counterclaims. |
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Cordis Corp. v. SciMed
Life Systems, Inc. (D. Minn. 1996-present) (parallel
proceedings in The Hague, Netherlands) 177 F.R.D. 651 (1997);
982 F. Supp. 1358 (1997); 980 F. Supp. 1030 (1997)
Ongoing representation of Cordis in two patent infringement
matters. The first involves Cordis patents on nylon balloon
technology for angioplasty catheters. The second involves four
SciMed patents on various parts of angioplasty catheters and
stent delivery systems. Both cases pending. |
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Lemelson "Machine Vision"
Licensing & Litigation (1991-2006)
Ongoing representation of Clorox Corporation, Del Monte Foods,
TLC Beatrice International Holdings, Johnson & Johnson, United
Technologies Corporation, Louisiana-Pacific Corporation, Brunswick
Corporation and other companies concerning infringement notices
on patent infringement action involving seventeen patents alleged
to cover machine vision systems, bar code scanning systems,
high-energy beam processing systems and semiconductor manufacturing
processes. Continuing representation conducting settlement negotiations
and pre-suit investigation. |
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Schneider USA, Inc. (division
of Pfizer) v. Cordis Corp. (D. Minn. 1995)
Represented Cordis in a suit alleging infringement of a patent
covering the tips of angioplasty catheters. Retained three months
before jury trial. Plaintiffs represented by Pennie & Edmonds.
Case favorably settled after opening arguments. |
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Ortho Diagnostic Sys.
Inc. (subsidiary of Johnson & Johnson) v. Miles Inc. (subsidiary
of Bayer AG), 865 F. Supp. 1073 (S.D. N.Y. 1994), appeal
dismissed, 48 F.3d 1237 (Fed. Cir. 1995)
Represented Miles in a suit alleging infringement of two patents
relating to blood analysis machines. Retained four weeks before
three-week trial. Plaintiffs represented by Hopgood Calimafdie.
Case won. Jury verdict that the patents were invalid and not
infringed. Named by the National Law Journal as a Top Fifteen
Defense Verdict of 1994. |
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Etak v. Zexel v. Navigation
Technologies (N.D. Cal. 1995-97)
Represented Navigation Technologies in a patent infringement
action regarding vehicle navigation systems. Plaintiffs represented
by Joe Greco, then with Skjerven Morrill; co-defendants represented
by Randy Brown of Brown & Bain. Ninety-five percent of case
won on summary judgment where court determined that the accused
device did not infringe the vast majority of the asserted claims
and held certain claims invalid. Case favorably settled shortly
before trial on sole remaining claim. |
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United Technologies Corp.
v. Heico Corp. (S.D. FL 1989-2000)
Represented United Technologies in case involving infringement
of a thermal barrier coating patent and trade secret misappropriation.
Case settled with $3 million payment to United Technologies. |
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Additional Commercial Trials
and Litigation |
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New Heights
Recovery and Power, LLC v. ComEd (Cook Co., 2000)
Represent New Heights in an action for damages from Commonwealth
Edison relating to the purported repeal of a utility statute.
Case won in circuit court. Argued appeal before Illinois Appellate
Court. Awaiting outcome on appeal. |
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Stone Container
Corp. v. Hartford Steam Boiler, 936 F. Supp. 487 (N.D.
Ill. 1995), rev'd, 1999 U.S. App. LEXIS 934 (7th Cir.
1999) (related proceedings in London, UK)
Represented Hartford Steam Boiler in an $80 million insurance
coverage action arising out of the explosion of a pulp digester
at a paper mill in Panama City, Florida. Primary responsibility
for all actions in the trial court and briefs on appeal. Case
won; summary judgment for HSB granted on appeal in the Seventh
Circuit. Continuing representation post-appeal. |
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Kennedy v.
Veazie and Restoration Services (Cal. 1998)
Represented plaintiff in breach of contract and fraud case related
to restoration and repair of antique collectable automobile.
First-chaired trial. Three day jury trial. Case won. Jury verdict
of liability on all three counts. |
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First Olefins
Limited Partnership v. Phillips Petroleum Co., (Del.
Ch. 1995-96)
Defended Phillips Petroleum in preliminary injunction action
against joint venture partner over Phillips' rights to undertake
a $105 million project to increase the output of an ethylene
facility in Sweeny, Texas. Conducted expedited discovery compressed
into five-week period. Case won. Preliminary injunction denied.
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Macario v.
Pratt & Whitney Canada, Inc., 17 F.3d 1430 (3d Cir.),
cert. denied, 115 S.Ct. 291 (1994)
Represented Pratt & Whitney Canada in breach of contract action
over an existing settlement agreement. Drafted winning briefs
in District Court, Third Circuit, and United States Supreme
Court. Case won on summary judgment; decision affirmed throughout
appeal process. |
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Fish v. Beech
Aircraft and Pratt & Whitney Canada, Inc. (Cal. 1992)
Represented Pratt & Whitney Canada in product liability action
arising from crash of Beechcraft King Air aircraft. Case favorably
settled on eve of trial. Continued representation during trial
against remaining defendant through expert and fact witness
preparation. Case won. |
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NL Industries,
Inc. v. Lockheed (C.D. Cal. 1992)
Represented NL in three-week jury trial alleging securities
fraud and D&O liability. Case won; NL received $30 million judgment.
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MEDCARE HMO
v. Bradley, 788 F. Supp. 1460 (N.D. Ill. 1992)
Represented HMO in preliminary injunction action against Illinois
Department of Public Aid, which sought to terminate MEDCARE's
contract. Second-chaired three day bench trial. Case won. Injunction
issued. |
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Resolution
Trust Co. v. Murphy (N.D. Ill. 1992)
Represented former director of failed savings and loan in an
action alleging breach of fiduciary duty. Case favorably settled
without monetary payment from client. |
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Zeigler Coal
Co. v. Tampa Electric Co. (Arbitration 1990)
Represented major coal producer in action to enforce long-term
coal supply contract. Case favorably settled after three-week
evidentiary hearing. |
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Other Matters Involving Trials
or Evidentiary Hearings |
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Holden v. U.S. Mills, Inc. (AAA
Arbitratrion, 2003; D. Mass action 2002)
Represented shareholder of company sold to U.S. Mills in federal
court and arbitration relating to post-closing obligations.
Case won. Client awarded substantial award following arbitration
hearing.
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In re Various
Applications for Asylum (I.N.S. 1991-present)
Represent individuals and families seeking political asylum
in the United States. Cases include Somalis seeking asylum from
persecution from large clans in Somalia, a woman from Uganda
fleeing religious persecution, a Zairian national seeking asylum
for stance taken against the regime of dictator Mobutu Sese
Seko, Ethiopians escaping persecution for their political opinions,
and a Colombian family seeking asylum for taking a public stand
against drug producers in Colombia. First-chaired all matters.
Won every case to date. |
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Powers v.
Queen City Sec. (NASD Arbitration 1990; Adv. Bank. Proc.1996)
Represented widow's estate against stockbroker. First-chaired
presentation before an NASD arbitration panel and trial before
Bankruptcy Court. Case won; decision affirmed on appeal. Related
case dismissed; adversary bankruptcy case won. |
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Wolinsky
v. City of Chicago Police Department (N.D. Ill. 1995)
Appointed by U.S District Court Judge Ruben Castillo to represent
an indigent plaintiff in a police brutality case. Case favorably
settled after pre-trial discovery. |
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Illinois
Dept. of Revenue v. Marketing Corp. of America (Ill.
Dept. Rev. 1993)
Represented corporate taxpayer in an administrative action before
the Illinois Department of Revenue. First chaired administrative
hearing. Case won. |
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David Berten | 
