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Edward D. Manzo

Edward D. Manzo

Senior Counsel
Chicago
office: 312.526.1535
fax: 312.655.1501
Overview

With a degree in Physics, Edward’s experience extends across a broad range of technologies.

He is well-known in the intellectual property community and has resolved patent, trademark and trade dress cases for manufacturers of semiconductors circuits and fabrication, consumer goods, computing systems, infrastructure materials and medical technology. Edward traces his industry connection to his prelaw days when he operated equipment in a factory, rebuilt an automobile engine and worked as a motorcycle mechanic for Honda.

He handles patent matters in all levels of the federal courts and in the PTO’s Patent Trial and Appeals Board (PTAB). For example, in representing a baby and children’s products manufacturer charging patent infringement against a competitor, he argued before Judge Gilstrap of the EDTX in 2015 and obtained a claim construction ruling as requested, overcoming a string of defeats by prior counsel where courts (including the EDTX and the Federal Circuit) had limited the scope of ancestor patents based on the doctrine of prosecution disclaimer. He persuaded Judge Gilstrap that the disclaimer had been rescinded in this patent. After the claim construction ruling, the case settled. Nevertheless, the competitor had already initiated an inter partes review at the PTAB which challenged the validity of the patent in suit. On September 21, 2016, the PTAB ruled entirely in favor of Edward’s client, holding that the competitor had failed to show invalidity. (IPR2015-00979)

In another 2015 case in California where the same baby and children’s products client was charged with patent infringement, Edward filed a petition asking the PTAB to commence inter partes review against the patent. Even though he filed the petition without expert testimony, the PTAB agreed with the positions he argued and commenced the PTAB trial, using patent claim constructions very different from the ones adopted by the magistrate judge in California. The PTAB ultimately concluded on September 15, 2016 that all of the patent claims of the competitor’s patent were invalid over prior art and denied the competitor’s motion to amend the claims. (IPR2015-00872)

Years before, Edward 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.

Other relevant industry experience includes defending three simultaneous lawsuits in three separate jurisdictions against his client, a manufacturer of plastic and metal tables and chairs and reaching a global settlement; obtaining injunctive relief for a Japanese tool-making company in a family name-trade name dispute; complex character recognition litigation; and limiting damages for patent infringement involving a certain type of conveyor belt to $1 plus costs. He also has helped clients win reversals at the Court of Appeals of inequitable conduct judgments by trial courts.

In 2007 Edward assimilated his decades of patent law experience into “The Claim Construction Game,®” an acclaimed and popular tool for teaching patent claim interpretation for professionals in the legal field. He has given that lecture for many bar associations and companies. He also taught the doctrinal patent law course at DePaul University College of Law and teaches international patents to M.S. in Law students at Northwestern Law School. He has delivered dozens of lectures for the Patent Resources Group, law schools, bar associations and Intellectual Property Inns of Court.

Edward is widely published in the patent field. He is the author or co-author of four respected reference books: one focuses on patent claim interpretation law in the United States; the second covers the same topic on a global basis; and the third and fourth examine the America Invents Act. He co-authored the pattern jury instructions (patents) adopted by the U.S. Court of Appeals, Seventh Circuit, in 2008 and the local patent rules adopted in 2009 by the U.S. District Court for the Northern District of Illinois. One of his books on claim construction was cited by the U.S. Supreme Court and several federal district courts. Before joining the firm in 2010, Edward was a shareholder and co-founder of Cook Alex Ltd. in Chicago.


Industries

Services

Recognition

  • The Best Lawyers in America, Litigation-Intellectual Property, Litigation-Patent, 2010-2019
  • Illinois Super Lawyers, Intellectual Property Litigation, 2005-2018; Top 100, 2010-2012, 2014-2015
  • IP STARS, Managing Intellectual Property, 2014-2017
  • Martindale-Hubbell AV Preeminent, 1983-2016
  • 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., State University of New York at Buffalo Law School (University at Buffalo)
    • cum laude
  • B.S., Polytechnic Institute of New York University
    • 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
  • 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
  • In connection with defending a global leader in baby and children’s products charged with patent infringement in federal court in California, he successfully invalidated all claims of the patent in suit by filing and winning an inter partes review at the Patent Trial and Appeal Board. See IPR2015-00872, Sept. 15, 2016, Final Written Decision.
  • In connection with asserting infringement of a patent of the same global leader in baby and children’s products against a competitor in federal court in Texas, he successfully defended all claims of the patent in a companion inter partes review at the Patent Trial and Appeal Board 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
  • 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.
  • Rewrote the law of laches and estoppel in patent cases. Hemstreet v. Computer Entry Systems Corp., 972 F.2d 1290 (Fed.Cir. 1992)
  • 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)
  • 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)
  • 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)
  • 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)
  • 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)
Community Leadership
  • Chicago Engineers Foundation, Board of Directors, 2010-2012
  • Concertante di Chicago, Board of Directors, 1997-2005
  • 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
  • Lake Forest Symphony, Board of Directors, 2007-2010
  • Patent Resources Group Inc., Board of Advisors, 2008-present; course lecturer, 2009-2016
  • Polytechnic Institute Alumni Association, International Board of Directors, 2011-2014
  • Stradivari Society of Chicago