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Eligio C. Pimentel
Shareholder
Email. eligio@mcandrews-ip.com
Tel. (312) 775-8000
Practice Areas
Intellectual Property; Litigation.
Education
Stanford University, B.S.M.E., 1988
University of Minnesota, J.D., cum laude, 1995
Bar Admissions
Admitted to practice in Illinois. Member of the bar of the U.S. District Court for the Northern District of Illinois and the U.S. Court of Appeals for the Federal Circuit. Registered to practice before the U.S. Patent and Trademark Office.
Professional Experience
Eligio practices in all areas of intellectual property, with an emphasis on patent litigation. He has worked with such diverse technologies as coronary stent delivery systems, fuel cells, ocular implants, thermal hand-held labelers and printers, ultrasonic medical devices, orthopedic prosthetic devices, and computer software applications. His extensive nationwide litigation experience includes the following:
• Thomas F. Winters v. Stryker Corporation, Civil Action No. 6:06-CV-00794-ORL-19JGG (M.D. Florida 2006) (patent infringement; case dismissed with prejudice in favor of client shortly after filing of noninfringement and invalidity summary judgment motions).
• ICU Medical, Inc. v. ALARIS Medical Systems, Inc., Civil Action No. SA CV 040689 AHS (RNBx) (C.D. Calif. 2004) (patent infringement; requests for TRO and preliminary injunction denied in favor of client; case resolved favorably on summary judgment).
• Boston Scientific Corp., et al. v. Guidant Corp., et al., Civil Action No. 02-5969 (N.D. Cal. 2002-2004) (patent infringement).
• Zimmer, Inc. v. Howmedica Osteonics Corp., Civil Action No. 3:02 CV 0425 AS (N.D. Ind. 2002) (patent infringement).
• Advanced Cardiovascular Systems, Inc. v. Medtronic AVE, Inc., Civil Action No. 99-5393 (N.D. Cal. 1999) (trial co-counsel in patent infringement arbitration involving coronary stent technology; permanent injunction and favorable verdict of $166 million – one of largest verdicts ever in a patent infringement case).
• Comtec Information Systems, Inc. v. Monarch Marking Systems, Inc., Civil Action No. 96-540 (D.R.I. 1996) (patent infringement; damages and injunction settlement favorable to client).
• Advanced Cardiovascular Systems, Inc. v. SciMed Life Systems, Inc., Civil Action Nos. 95-03580 and 96-00946 (N.D. Cal. 1995) (patent infringement; settlement favorable to ACS).
• Advanced Cardiovascular Systems, Inc. v. Medtronic, Inc., Civil Action No. 95-03577 (N.D. Cal. 1995) (patent infringement; ACS awarded enhanced damages and a permanent injunction).
Eligio also maintains an active transactional practice. He is registered to practice before the United States Patent and Trademark Office and has prepared numerous patent applications on technologies ranging from electronic force-feedback haptic detent devices to transesophageal echocardiography (TEE) probes. In addition, he has (1) provided corporate counseling regarding patent portfolio management, (2) negotiated licensing agreements relating to computer software applications, (3) prepared clearance opinions in the areas of endovascular medical devices, fuel cell technology, and ocular devices, and (4) performed due diligence investigations for the acquisition of multi-million dollar companies. His intellectual property practice continues to benefit from his significant engineering experience at the 3M Corporation and Bechtel Corporation.
Eligio is a member of the board of directors of the Mary Crane Center, a non-profit agency dedicated to providing comprehensive education and early development to low-income children. He is fluent in Spanish.
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