Paul R. Kitch
Paul R. Kitch
Internet & Domain Name Disputes
Licensing, Tech Transfer & IP Agreements
B.S., Electrical Engineering, summa cum laude
University of Michigan
University of Michigan
University of Michigan, high distinction
Paul R. Kitch is a partner with Greer, Burns & Crain in Chicago with significant experience in IP prosecution, litigation, and client counseling. Mr. Kitch’s practice focuses on the strategic development, management and enforcement of strong global patent and trademark portfolios. A patent portfolio Mr. Kitch has worked with a client to build for over 20 years has been consistently ranked one of the highest quality portfolios of any Illinois company by Crain’s Chicago Business – being ranked #1 in 2016, #1 in 2015, #2 in 2014, and #1 in 2013.
Mr. Kitch is a past president of the Intellectual Property Law Association of Chicago (IPLAC) and is a current Board Member of the American Intellectual Property Law Association (AIPLA) and a past chair of the Patent Law Committee of AIPLA as well.
Mr. Kitch is registered to practice before the U.S. Patent and Trademark Office and has extensive patent prosecution experience in electrical, mechanical, electro-mechanical, business method, communication and internet related technologies across a variety of industries.
Prior to receiving his law degree, Mr. Kitch was awarded an Electrical Engineering degree, summa cum laude, from the University of Michigan and worked with both the Ford Motor Company and Chrysler Corporation.
- Crain’s Chicago Business: Patent portfolio built with client for over 20 years, quality ranking of portfolios of Illinois companies – ranked #1 in 2016, 2015, & 2013 and #2 in 2014.
- Leading Lawyer by the publisher of Leading Lawyer Magazine (2013 – present)
- Martindall-Hubbell AV Preeminent Rating (2004 – present)
- Illinois Super Lawyer (2019 – present)
- Best Lawyers in America (2020 – present)
- Legal Leaders – Midwest (2017-18)
- Top Attorneys in Illinois (2019 – present)
- Illinois Top Lawyers (2015 – present)
- America’s Most Honored Professionals (2018 – present)
- U.S. Patent Prosecution: Develop and manage one portfolio for over 20 years which now has over 350 issued US patents. Managed and grew separate portfolio having over 500 matters, increasing issued patents by 900% over a two year period. Prepare and prosecute U.S. provisional, U.S. nonprovisional, U.S. reissue, PCT, and foreign patent applications and U.S. reexamination and foreign opposition proceedings.
- U.S. Trademark Prosecution: Searches; U.S., state, and foreign registration.
- Litigation: Seven successful lawsuits for one client securing damages and/or withdrawal of infringing products in every case. Successfully obtained attorneys’ fees from the district court and the United States Court of Appeals for the Seventh Circuit while securing dismissal of a copyright action. Negotiate and draft settlement agreements, evaluate target company patent portfolios for potential infringement counterclaims, Markmen hearings, preliminary injunctions, depositions, witness preparation, discovery and briefs, in representing plaintiffs and defendants in patent and copyright litigation.
- Opinions: Infringement, Non-infringement, Patentability, and Clearance.
- Technological Experience: Flexible and stretchable electronics, OLEDs, medical patient and consumer wearable devices, medical testing devices, semiconductor devices including computer memories (DRAMs, SRAMs) and ESD protect ion, computer software, currency bill and coin processing devices, drilling technology, printers, physical and digital security features, computer communication systems, circuit breakers, internet-based business methods, dental video cameras, sports equipment, packaging devices, hemodialysis catheters, dental implants, infant formula and automotive components.
American Intellectual Property Law Association (AIPLA)
- Board of Directors (2020-23)
- Patent Law Committee, Chair (2015–17) | Vice–Chair (2013-15)
- Intellectual Property Law Associations Committee, Vice-Chair (2018-20)
- Professional Programs Committee, Coordinator (2008 – present) |
- Online Programs Committee, Coordinator (2012-13)
- Programs Subcommittee, Chair (2012-13)
Intellectual Property Law Association of Chicago (IPLAC)
- President (2017-18) | Secretary (2012–14) | Board of Managers (2004–06)
- Led IPLAC delegation to Tokyo, Japan for meetings with the Japanese Patent Attorney Association (JPAA) (2019)
- U.S. Patents Committee, Chair (2008–12) | Vice-Chair (2007–08) |
Inventor Services Committee, Chair (2001–04)
- U.S. State Department meeting with delegation of Chinese IP government officials (2014)
- Meeting with USPTO Patent Trial and Appeal Board (2014) Representative
Currency Processing Patent Infringement
- Cummins-Allison Corp. Automated Business Machines, LLC et al., Civ. Action No. 3:11-cv-00299 (N.D. Ohio 2011). Representing high-speed currency bill processing machine manufacturer in suit against US regional distributor after Korean manufacturer of infringing products failed to pay prior judgment against it. (Stayed pending collection actions in Korea).
- Cummins-Allison Corp. Shinwoo Information & Telecommunications Co., Ltd. et al., Civ. Action No. 9:07-CV-196 (E.D. Tex. 2007). Represented high-speed currency bill processing machine manufacturer in suit against US distributor and Korean manufacturer of infringing products. Jury verdict for $12 million. Affirmed on appeal (Appeal Nos. 2011-1049, -1065, -1066, Fed. Cir. 2012).
- Cummins-Allison Corp. Glory Ltd. et al., Civ. Action No. 03-358 (E.D. Tex. 2003) and Cummins-Allison Corp. v. Glory Ltd. et al., Civ. Action No. 02-7008 (N.D. Ill. 2002). Represented high-speed currency bill processing machine manufacturer in suit against Japanese manufacturer of infringing products. Settled. Defendant paid $20 million in damages and removed product from the market.
- Cummins-Allison Corp. De La Rue PLC and De La Rue Cash Systems, Inc. (N.D. Ill. 2000). Represented high-speed currency bill processing machine manufacturer in suit against British manufacturer of infringing products. Settled. Defendant removed product from the market.
- Cummins-Allison Corp. Giesecke & Devrient America, Inc. and Magner Corporation (N.D. Ill. 1999). Represented high-speed currency bill processing machine manufacturer in suit against German manufacturer of infringing products and US distributor. Settled. Defendant removed product from the market.
- Cummins-Allison Corp. Glory U.S.A., Inc. (N.D. Ill. 1998). Represented high-speed currency bill processing machine manufacturer in suit against Japanese manufacturer of infringing products and US subsidiary. Settled. Defendant removed product from the market.
- HyperQuest, Inc. v. N’Site Solutions, Inc. and Unitrin Direct Auto Insurance, Civ. Action No. 08-C-483 (N.D. Ill. 2008). Represented insurance company accused of having purchased copyrighted software from thirdparty. Successfully obtained dismissal with prejudice in favor of defendant Unitrin Direct from United States District Court and affirmance of dismissal from the Seventh Circuit Court of Appeals and an award of attorneys’ fees from both the District Court and the Seventh Circuit.
Semiconductor Patent Litigation
- STMicroelectronics, Inc. Broadcom Corp., Civ. Action No. 02-362 (E.D. Tex. 2002). Represented semiconductor company against rival company. Involved various semiconductor technologies including ESD protection. Confidential settlement.
- Texas Instruments, Inc. v. Samsung Electronics Co., Ltd., Samsung America, Inc., and Samsung Semiconductor, Inc., (E.D. Texas 1996), Samsung Electronics Co., Ltd., Samsung America, Inc., and Samsung Semiconductor, Inc. Texas Instruments, Inc., (E.D. Texas 1996), and Samsung Electric Co., Ltd. v. Texas Instruments, Inc., (N.D. Texas 1996). Represented semiconductor company against rival company. Involved various semiconductor technologies including DRAMs and SRAMs protection. Confidential settlement.
- Cyrix Corporation v. Intel Corporation, (E.D. Tex. 1992). Represented chip manufacturer in licensing and patent dispute over “page mode” operation of memory. Confidential settlement.
Electrical Patent Litigation
- Andrew Corporation California Amplifier, Inc. (E.D. Tex. 2000). Antenna patent litigation. Confidential settlement.
- Lucent Technologies Inc. v. Newbridge Networks Inc. (D. Del. 1997). Various telephonic technologies including voice encoding. Confidential settlement.
- Square D Company Power Measurement Ltd. and C.D. Power Measurement Ltd. (D. Del. 1995). Electronic controls for power monitoring systems. Confidential settlement.
Medical Patent Litigation
- Bristol-Myers Squibb Company Abbott Laboratories (S.D. Ind. 1998) and Abbott Laboratories v.Mead Johnson & Company, 47 U.S.P.Q.2d 1305 (S.D. Ohio 1998). Dispute over patent covering amino-acid sequences in baby infant formula. Settled.
- Mahurkar Bard (N.D. Ill. 1996). Dispute over patent covering medical catheters. Resolved on appeal.
- Nobelpharma v. Implant Innovations Inc., 875 F. Supp. 481 (N.D. Ill. 1995); 930 F. Supp. 1241 (N.D. Ill. 1996), aff’d, 141 F.2d 1059 (Fed. Cir.), denied, 119 S. Ct. 178 (1998). Represented dental implant manufacturer accused of infringement. Jury trial. Patent held invalid, $10 million antitrust damages and $2 million attorney fees awarded to Implant Innovations.
- Baxter International Inc., and Baxter Healthcare, Corp. v. Cobe Laboratories, Inc. and Cobe BCT, Inc. (N.D. Ill. 1989, 1993). Dispute over patent covering blood centrifuges. Settled.
Miscellaneous Patent Litigation
- H.R. Technologies, Inc. v. Astechnologies, Inc. (E.D. Mich. 2000) and H. R. Technologies, Inc. v.Astechnologies, Inc., (E.D. Mich. 1999). Dispute over patent covering headliners for roofs of automobiles. Represented manufacturer accused of infringement. Obtained dismissal. Settled after we filed motion for sanctions against plaintiff.
- Research Corporation Technologies, Inc. v. Lexmark International, Inc. (D. Ariz. 2000); Lexmark International, Inc. Research Corporation Technologies, Inc. (E.D. Ky. 2000); and Lexmark International, Inc. v. The University of Rochester, Kevin J. Parker, and Theophano Mitsa (E.D. Ky. 2000). Represented inkjet printer manufacturer in dispute over “blue noise” patents related to screens used for printing images and related litigation related to patent ownership. Settled.
- Apple’s Aggressive Stance at PTAB is Paying Off, Law360 | February 11, 2016
- Nautilus Standard Used by CAFC to Overturn Pre-Nautilus Patent Indefiniteness Judgment, BNA’s Patent, Trademark & Copyright Journal | March 11, 2015
- High Court Nixes ‘Amenable to Construction,’ ‘Insolubly Ambiguous’ Indefiniteness Rules, Bloomberg BNA | June 3, 2014
SELECT PUBLICATIONS AND PRESENTATIONS
- Alice. v. CLS
- 2019 USPTO Guidance on Patent Subject Matter Eligibility, USPTO (2019) Speaker
- New USPTO Rules for Patent-Eligible Subject Matter Under Section 101, Japanese Patent Attorney Associates (JPAA), Tokyo, Japan (2019) Speaker
- AIPLA Response to Request for Comments and Extension of Comment Period on Examination Instruction and Guidance Pertaining to Patent Eligible Subject Matter (re: Alice .Corp. Pty. Ltd. v. CLS Bank International) 2014, Co-Author
- Post-Alice—Wonderland or Rabbit Hole?, IPLAC IP Law Symposium (2015) Speaker
- Patent Eligibility Post-Alice: Practical Advice for Navigating the Current 35 USC § 101 Regime, AIPLA Webinar (2016) and Annual Meeting (2015) Moderator
- Alice Packs a Punch—A Look at the Impact of the Supreme Court’s Alice vs. CLS Bank Decision, Nixon Peabody Chicago Corporate Counsel IP Seminar (2015) Speaker and Coordinator
- A Look at the ‘Spaced Relationship’ Between the Supreme Court and the Federal Circuit and the Supreme’s Other Top Ten IP Hits” IPLAC IP Law Symposium (2014); Rochester Intellectual Property Law Association (2014); Nixon Peabody Chicago Corporate Counsel IP Seminar (2014) Speaker and Coordinator
- America Invents Act
- AIA—Will the New System Work? Featuring: the Hon. David Kappos, Under Secretary of Commerce for Intellectual Property and Director, USPTO; Robert Armitage (Eli Lilly); Aaron Cooper, Senior Counsel, IP and Antitrust, US Senate Committee on the Judiciary; AIPLA Annual Meeting (2012) Coordinator
- Declarations and Assignments and Effective Filing Date of Claims under the AIA, AIPLA Annual Meeting (2012) Moderator
- Reinventing the Patent Process: What You Need to Know about the America Invents Act, Nixon Peabody Spring CLE Symposium on Intellectual Property, AIA, Damages, Ethics, Oh My! Hot Topics in IP (2012) Moderator, Speaker, and Coordinator
- America Invents Act: Patent Reform (2011), IPLAC Seminar (2011) Moderator, Speaker
- Limelight Networks v. Akamai Technologies
- Developments in Joint Infringement Law, Expert Analysis (column), Law360 (2011) Author
- EXTRA! EXTRA! En Banc Federal Circuit Overrules Its Precedent on Induced Infringement, IP Today (2012) Author
- Supreme Court Rejects Federal Circuit’s View of Induced Infringement but Suggests the Issue of Multi-Party Direct Infringement Is Still Up for Grabs, Nixon Peabody Alert, Limelight Networks v. Akamai Technologies (2014) Author
- Patent Prosecution and Litigation
- International Trade Commission and Intellectual Property – More Than Just Patents, AIPLA Mid-Winter Institute, Corporate Committee (2018) Speaker, Moderator
- The Drivers Behind Examiner and Customer Prosecution Decisions, United States Patent and Trademark TC 3600 & 3700 Customer Partnership Meeting (2016) Moderator
- Making a Better Patent – From the System to the Practitioner, American Intellectual Property Law Association Webinar, (October 2016) Moderator
- The Nuts and Bolts of Licensing: Strategies for Negotiating to Yes, American Intellectual Property Law Association Webinar, (October 2016) Coordinator
- The New Local Patent Rules for the Northern District of Illinois – How Will These Impact You?, Nixon Peabody IP Corporate Seminar (2010) Moderator, Speaker, Coordinator
- Fundamentals of Patent Prosecution 2015: A Boot Camp for Claim Drafting & Amendment Writing, Practising Law Institute, Chicago (2012 – present) Faculty
- Eeny, Meeny, Miny, MOVE! Taking the Guess Work Out of Selecting from the Plethora of Accelerated Patent Prosecution Options, BNA’s Patent, Trademark & Copyright Journal (2011); AIPLA Spring Meeting (2011); Michigan Intellectual Property Law Association (2012) Author, Speaker
- Managing Intellectual Property in a Recessionary Environment, AIPLA Spring Meeting (2009) Moderator
- Patent Donations: Big Money. Big Trouble?, Intellectual Property Today (2004) Author
- U.S. Patent and Trademark Office
- Supreme Court of the State of Illinois
- U.S. District Court for the Northern District of Illinois
- U.S. Court of Appeals for the Federal Circuit
- U.S. Court of Appeals for the Seventh Circuit
EXAMPLE TECHNICAL FIELDS
- Currency Processing Equipment
- Medical Devices
- Computer Software and Data
- Consumer Goods
- Sporting Equipment
- Financial Services
- Laser and Scanning Technology
- Product Packaging
- Printing Technology
- Communication Systems
- Lighting Systems