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Overview

Edward champions client technologies by challenging adversely held patents. He also obtains and asserts patents for client inventions.

Edward draws on decades of successfully defending clients' intellectual property interests to focus on issues before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO). He also represents appellants and appellees at the U.S. Court of Appeals for the Federal Circuit. Colleagues frequently confer with and refer cases to Edward, who prepares or supervises petitions to challenge patents at the PTAB and to pursue patents for clients.

Clients from a spectrum of industries trust Edward’s counsel, including a major manufacturer of products geared to infants and children, as well as manufacturers of:

  • Semiconductor circuits, technology and fabrication
  • Consumer goods
  • Computing systems
  • Infrastructure systems
  • Medical technology

Clients also rely on Edward's reputation as a thought leader in the intellectual property sector. Co-author of four respected reference books on patents, Edward has taught patent law courses at both DePaul University College of Law and Northwestern Pritzker School of Law.


Industries

Services

Recognition

  • The Best Lawyers in America, Litigation-Intellectual Property, Litigation-Patent, 2010-2020
  • Illinois Super Lawyers, Intellectual Property Litigation, 2005-2019; Top 100, 2010-2012, 2014-2015
  • IP STARS, Managing Intellectual Property, 2014-2019
  • Martindale-Hubbell AV Preeminent, 1983-2019
  • Burton Award, Distinguished Legal Writing, 2015
  • The Linn IP Inn of Court Alliance, Distinguished Service Medal, 2012
  • Outstanding Service Award, Intellectual Property Law Association of Chicago, 2008

Education

  • J.D., University at Buffalo Law School
    • cum laude
  • M.A., Trinity Evangelical Divinity School
    • Theological Studies
  • B.S., New York University Tandon School of Engineering
    • Physics
    • Unified Honors Program

Admissions

  • Illinois
  • U.S. District Court, Northern District of Illinois
  • New York
  • U.S. District Court, Southern District of New York
  • U.S. District Court, Western District of New York
  • U.S. Patent and Trademark Office
  • U.S. Court of Appeals, Seventh Circuit
  • U.S. Court of Appeals, Federal Circuit
  • U.S. Supreme Court

Professional Associations and Memberships

  • Association of Patent Law Firms, Board of Directors, 2007-2008
  • Federal Circuit Bar Association
  • Intellectual Property Law Association of Chicago (IPLAC), Council of Past Presidents, chair, 2012-2015; president, 2010-2011; president-elect, 2009-2010; vice president, 2008-2009; Membership Committee, chair, 2007-2009; Board of Managers, 2005-2007; Litigation Committee, chair, 2002-2005; Litigation Committee, vice chair, 2001-2002; Claim Construction Book, chair, 2002-2019
  • Richard Linn American Inn of Court, Master; group chair, 2009-2010, 2011-2012; group vice chair, 2007-2008
  • U.S. Court of Appeals, Seventh Circuit, Pattern Jury Instruction Committee, Patents Subcommittee, 2005-2008, 2012
  • U.S. District Court, Northern District of Illinois, Local Patent Rules Committee, 2008-2009, 2012
Experience

Patent Infringement Defense

  • Successfully invalidated all claims in federal court in California against a global leader in baby and children's products charged with patent infringement by filing and winning an inter partes review at the Patent Trial and Appeal Board (PTAB). See IPR2015-00872, Sept. 15, 2016, Final Written Decision.
  • Successfully defended all claims of the same patent in federal court in Texas in a companion inter partes review at the PTAB brought by the competitor. No claims were invalidated, an infrequent outcome at the PTAB. See IPR2015-00979, Sept. 21, 2016, Final Written Decision.
  • Represented a global leader in baby and children’s products in a patent claim interpretation hearing in the Eastern District of Texas. In a 46-page claim construction ruling released two weeks after the oral argument, the Court found in client’s favor on all but one point, which was not outcome determinative. F.Supp.3d, 2015 WL 4455761 (E.D.Tex.), 2015 Markman 4455761.
  • Limited damages for patent infringement to $1 plus costs. Serpentix Conveyor Corp. v. Roth, 726 F.Supp. 282; 15 USPQ 2d 1074, (D.Colo. 1989).
  • Led a team of nine lawyers defending a manufacturer of plastic and metal tables and chairs in three lawsuits. After the court construed the patent claims largely in favor of the client in the Illinois action, the case settled amicably before trial in all venues. Lifetime Prods. v. GSC Technologies Corp., 2004 U.S. Dist. LEXIS 11282, (N.D.Ill. 2004).
  • Defended against a trade dress infringement claim for the styling of a window air conditioner. Fedders Corp. v. Elite Classics et al., 2003 U.S. Dist. LEXIS 7570 (S.D.Ill. 2003) (preliminary injunction denied).
  • Defended Mattel in one of the earliest video game patent infringement cases, leading to the first appeal to the Federal Circuit from the U.S. District Court. See Magnavox v. Mattel, 219 USPQ 28 (N.D. Ill. 1982), appeal no. 83-500 (Fed. Cir. 1982), appeal settled; see Fed. Cir. Bar J. vol. 25, no. 1 (Fall 2015).
  • Successfully defended sippy cup company Luv N' Care against a patent infringement suit brought by competitor Munchkin.

Patent and Development Representation

  • Patented a semiconductor client’s invention which later became the prevalent worldwide approach for biasing a substrate in a low voltage system. The patent became the crown jewel in a licensing program worth hundreds of millions of dollars.
  • Extricated clients from judgments of inequitable conduct. Hemstreet v. Burroughs Corp., 861 F.2d 728 (Fed. Cir. 1988); Hycor Corp. v. Schlueter Co., 740 F.2d 1529, (Fed.Cir. 1984).
  • Established an exception to the Supreme Court’s Lear Doctrine to preserve a client’s right to receive settlement payments even after the patents in lawsuit were ruled unenforceable. Hemstreet v. Spiegel Inc. and Recognition Equipment Inc., 851 F.2d 348 (Fed.Cir. 1988).
  • Obtained injunctive relief for Japanese corporation in a family name dispute with former CEO of tool-making company. Miyano Machinery USA Inc. v. MiyanoHitec Machinery Inc., 576 F.Supp.2d 868 (N.D.Ill. 2008).
  • Represented an individual patent owner and won five consecutive appeals at the Federal Circuit, establishing an exception to Supreme Court law in one case, rewriting the equitable defense of laches in three others, and reversing an inequitable conduct ruling in yet another. Hemstreet v. Computer Entry Systems Corp., 972 F.2d 1290 (Fed.Cir. 1992).

Other Intellectual Property Matters

  • Served as lead counsel or of-counsel for Intellectual Property Law Association of Chicago amicus curiae briefs to the U.S. Supreme Court and the U.S. Court of Appeals, Federal Circuit, in 2004, 2005, 2006, 2009 and 2010.
  • Developed law regarding inventorship. See In re Application of Hardee, 223 USPQ 1122 (Comm’r Pat. 1984) (cited in the U.S. Patent and Trademark Office’s Manual of Patent Examining Procedure).

Other Experience

  • Co-authored pattern jury instructions (patents) adopted by U.S. Court of Appeals, Seventh Circuit, in 2008 and local patent rules adopted in 2009 by U.S. District Court for Northern District of Illinois.
  • Developed the Claim Construction Game presentation, an acclaimed and popular tool for teaching patent claim interpretation for professionals in the legal field.
Thought Leadership
Outside the Office

A rock guitarist in high school, he transitioned to acoustic and resumed classical guitar lessons after 20 years, now studying with a maestro trained by Andrés Segovia. Edward performs with a church group and occasionally gives solo classical performances. He is also the patron of a violin, formerly owned by the concertmaster of the Chicago Symphony Orchestra, which he loans through the Stradivari Society of Chicago to a violin prodigy for concert solos.

Community Leadership
  • DePaul University College of Law, Center for Intellectual Property and Law and Information Technology, Board of Advisors, 2002-present
  • Edward D. Manzo Scholars in Patent Law program, DePaul University College of Law, founder, 2006-present
  • Patent Resources Group Inc., Board of Advisors, 2008-2016; course lecturer, 2009-2016
  • Polytechnic Institute Alumni Association, International Board of Directors, 2011-2014
  • Stradivari Society of Chicago, Patron, 1994-present
  • Highland Park Hospital (a member of North Shore University HealthSystem) Ethics Committee, Community Representative
  • Chicago Engineers Foundation, Board of Directors, 2010-2012
  • Lake Forest Symphony, Board of Directors, 2007-2010
  • Concertante di Chicago, Board of Directors, 1997-2005